`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`_________________
`
`Case IPR2017-00913
`Patent 8,402,384 B2
`_________________
`
`PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`I.
`II.
`
`TABLE OF CONTENTS
`
`B.
`
`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`The “Selectable Link” Is “Embedded” in the “Additional
`A.
`Dynamic Preview Information,” Which Can Include
`Information That Is Not Dynamic ......................................................... 1
`PO’s Reliance on the Specification is Undermined by the
`Testimony of Its Expert ......................................................................... 5
`The Prosecution History Does Not Support PO’s Construction ........... 6
`C.
`III. THE CHALLENGED CLAIMS ARE OBVIOUS ......................................... 8
`A.
`Cadiz’s Person-Centric Interface Renders Obvious Claim 1 ................ 8
`Cadiz’s Person-Centric Interface Discloses the “Software
`1.
`Application” Limitations ............................................................ 8
`Cadiz’s Person-Centric Interface Discloses or Renders
`Obvious a “Selectable Link Embedded in the Additional
`Dynamic Preview Information” ................................................ 12
`Cadiz’s Email-Centric Interface Renders Obvious Claim 1 ............... 14
`B.
`Cadiz Renders Obvious Claim 4 ......................................................... 17
`C.
`Cadiz Renders Obvious Claim 7 ......................................................... 24
`D.
`The Combination of Cadiz and Smith Renders Obvious Claim 9 ...... 24
`E.
`IV. CONCLUSION .............................................................................................. 26
`
`
`2.
`
`
`
`
`
`i
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Allied Erecting and Dismantling Co., Inc. v. Genesis Attachments,
`LLC,
`825 F. 3d 1373 (Fed. Cir. 2016) ......................................................................... 26
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .......................................................................... 16
`
`
`
`ii
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`LIST OF EXHIBITS
`
`
`U.S. Patent No. 8,402,384
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`Declaration of Dr. Dan R. Olsen Jr.
`
`Curriculum Vitae of Dr. Dan R. Olsen Jr.
`
`Prosecution History of U.S. Patent No. 8,402,384
`
`U.S. Patent Application Publication No. 2002/0186257 (“Cadiz”)
`
`U.S. Patent Publication No. 2004/0075701 (“Ng”)
`
`RESERVED
`
`U.S. Patent Publication No. 2005/0198584 (“Matthews”)
`
`U.S. Patent No. 6,333,973 (“Smith”)
`
`European Patent Application No. EP1265157 (“Cadiz-EP”)
`
`Prosecution History of European Patent Application No. 06125884.4
`
`Caroline Rose et al., “Inside Macintosh Volume 1” (1985)
`
`“Macintosh Human Interface Guidelines,” Apple Computer, Inc.
`(1995)
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`Deposition Transcript of Dr. George T. Ligler (March 13, 2018)
`
`iii
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`I.
`INTRODUCTION
`Petitioner replies to Patent Owner’s (PO) Response (Paper 17, “Resp.”) and
`
`the Board’s decision to institute IPR (Paper 7, “Dec.”) of the ’384 patent. PO’s
`
`arguments should be rejected and claims 1-13 of the ’384 patent found
`
`unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”) and
`
`accompanying exhibits, and the additional reasons provided below.
`
`II. CLAIM CONSTRUCTION
`PO argues that “a selectable link embedded in the additional dynamic
`
`preview information,” as recited in claim 1, requires (i) “the ‘additional dynamic
`
`preview information’ to be preview information that is dynamic” and (ii) “the
`
`‘selectable link’ to include such dynamic preview information.” (Resp., 11
`
`(emphasis omitted).) As it did in its Institution Decision (Dec., 7-12), the Board
`
`should reject PO’s construction because it is inconsistent with the intrinsic
`
`evidence, and cannot be reconciled with the testimony of PO’s expert. Moreover,
`
`PO’s construction is irrelevant because the Petition demonstrates that this
`
`limitation would have been obvious even under PO’s construction.
`
`A. The “Selectable Link” Is “Embedded” in the “Additional
`Dynamic Preview Information,” Which Can Include Information
`That Is Not Dynamic
`Given the claim language, there is no dispute that “additional dynamic
`
`preview information” includes dynamic information. The only dispute is whether
`
`“additional dynamic preview information” can also include other types of
`
`1
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`information. The specification establishes that it can. The specification does not
`
`recite the term “additional dynamic preview information,” but explains that
`
`“dynamic preview information” may include both a dynamic “count” and “details
`
`of a recent event,” such as “Missed call from NNN.” (Ex. 1001, 7:46-58.) PO
`
`essentially admits that such event details are not dynamic when discussing FIG. 6
`
`by identifying only the “50” in expansion pop-up 602 as dynamic information.
`
`(Resp., 21-22.) In other words, according to PO, the remaining links in FIG. 6
`
`(e.g., “Call Voice Mail”) do not include “additional dynamic preview
`
`information,” presumably because the dynamic counts (e.g., “5”) are not part of the
`
`selectable links. (Id.)
`
`The claim language states that the “selectable link” is “embedded” in this
`
`“additional dynamic preview information,” which means the “selectable link” may
`
`or may not include dynamic information. Indeed, the specification provides several
`
`examples of “selectable link[s]” that do not include dynamic information. For
`
`example, when the claims were amended during prosecution to recite the
`
`“embedded” limitation (Ex. 1004, 109), the applicant noted that support for this
`
`amendment can be found “in FIGS. 4 and 6” and “in paragraphs [0046] and
`
`[0048]” (id., 114), which correspond to column 7:21-42 and columns 7:60-8:2 of
`
`the ’384 patent, respectively. Both FIGS. 4 and 5 include embedded selectable
`
`links that contain information that is not dynamic.
`
`2
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`Referring to FIG. 4, interface 407 does not disclose a “selectable link” that
`
`includes dynamic information. Column 7:21-42 of the ’384 patent states that
`
`“[c]licking on the list will automatically invoke the email application, preferably at
`
`a view showing the selected email.” (Ex. 1001, 7:39-40.) The listed emails are
`
`more akin to “details of a recent event” that do not continuously change over time
`
`(id., 7:52-58), rather than a dynamic count. (Id., FIG. 4.) At a minimum, as
`
`recognized by the Board, “From” and “Subject” are not dynamic because they do
`
`not continuously change over time.1 (Dec., 11.) Nevertheless, the list of emails
`
`discloses a “selectable link embedded in the additional dynamic preview
`
`information” at least because the “additional dynamic preview information” in
`
`interface 407 includes the dynamic counts “150 Messages” and “30 New.” (Id.)
`
`FIG. 6 also shows several “selectable link[s]” that do not include dynamic
`
`information. For example, interface 602 includes count 608 (i.e., “5”) next to
`
`selectable link 610 (i.e., “Call Voice Mall”). (Id., 7:60-8:2, FIG. 6.) Although link
`
`610 does not include dynamic information, it is “embedded in the additional
`
`dynamic preview information” at least because the “additional dynamic preview
`
`1 PO argues that “Petitioner agrees that such information regarding email
`
`messages…is dynamic” (Resp., 20 n.3), which is not true. The Petition is referring
`
`to the “‘From,’ ‘Subject’ and ‘Received’ information”—not the word “From,” etc.
`
`(Pet., 34.)
`
`3
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`information” in interface 602 includes dynamic count 608. (Id.) The only
`
`selectable link in interface 602 that includes dynamic information is “50 unread”
`
`(id., FIG. 6), but the applicant pointed to the entirety of FIG. 6 as providing
`
`support for the “embedded” limitation (Ex. 1004, 114). Moreover, the only
`
`selectable link specifically identified in FIG. 6 and described in the specification is
`
`link 610, which does not include but is next to dynamic information (i.e., count
`
`608). (Id., 7:60-8:2, FIG. 6.) Accordingly, the “selectable link” need not include
`
`information that is dynamic.
`
`PO’s overly narrow claim construction leads to absurd results. For example,
`
`PO’s arguments with respect to FIG. 6 turn the meaning of “embedded” on its
`
`head. According to PO, “additional dynamic preview information” cannot include
`
`“non-dynamic preview information.” (Resp., 13-14; id., 11.) In FIG. 6, PO points
`
`to “50 unread” as the “selectable link” but identifies “50” as the only dynamic
`
`information. (Id., 22.) Therefore, only the “50” in “50 unread” can be “additional
`
`dynamic preview information” under PO’s construction. However, this would
`
`mean that the “additional dynamic preview information” (“50”) is “embedded” in
`
`the “selectable link” (“50 unread”), rather than the “selectable link [being]
`
`embedded in the additional dynamic preview information,” as claimed. Such a
`
`result counsels against adopting PO’s construction.
`
`4
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`B.
`
`PO’s Reliance on the Specification is Undermined by the
`Testimony of Its Expert
`According to PO’s expert, the specific portions of FIGS. 4 and 6 identified
`
`by PO as supporting its construction do not satisfy the limitations of claim 1. In its
`
`Response, PO points to interface 407 of FIG. 4 as disclosing “additional dynamic
`
`preview information.” (Resp., 19-21.) However, during his deposition, PO’s expert
`
`explained that interface 407 does not include “additional dynamic preview
`
`information” because dynamic bar 304 does not include “dynamic preview
`
`information.” (Ex. 1018, 60:22-64:6, 134:19-136:20.) According to PO’s expert,
`
`for information to be “additional dynamic preview information” “it needs to be
`
`additional to dynamic preview information in the dynamic bar.” (Id., 62:14-64:6.)
`
`In FIG. 6, PO points to “50” in expansion pop-up interface 602 as disclosing
`
`“additional dynamic preview information” (Resp., 21-22), and PO’s expert
`
`identified both “50 unread” and “No new email messages” as the only information
`
`in interface 602 disclosing “additional dynamic preview information.” (Ex. 1018,
`
`94:13-95:4, 97:18-98:17.) However, PO’s expert testified that dynamic bar 304
`
`does not include information managed by an email application. (Id., 94:13-97:17,
`
`99:23-100:2.) The only information in dynamic bar 304 relates to a phone
`
`application, a SMS application, and a chat application. (Id., 93:3-23, 94:13-97:17,
`
`99:8-104:21.) Accordingly, the “50 unread” and “No new email messages” in
`
`interface 602 cannot be “additional dynamic preview information,” because,
`
`5
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`according to PO’s expert, the “dynamic preview information in the dynamic bar of
`
`claim 1 needs to be determined from information managed by a software
`
`application, and the displaying additional dynamic preview information in the
`
`expanded dynamic bar needs to be determined from the information managed by
`
`the same software application.” (Id., 136:24-140:11 (emphasis).) Thus, the only
`
`“selectable link” in FIG. 6 that includes dynamic information is not embedded in
`
`“additional dynamic preview information” according to PO’s expert.
`
`C. The Prosecution History Does Not Support PO’s Construction
`PO primarily relies on the prosecution history in support of its construction
`
`(Resp., 15-19), but nothing in the prosecution history supports PO’s contention that
`
`“additional dynamic preview information” can only include dynamic information
`
`and that the “selectable link” must itself include dynamic information.
`
`PO first cites statements made during prosecution to overcome a rejection
`
`based on Ögren. (Resp., 15-16 (citing (Ex. 1004, 109, 114-15).) These statements,
`
`however, merely confirm that the “selectable link” is “a portion of the additional
`
`dynamic preview information,” which the parties do not dispute. (Ex. 1004, 114-
`
`15.) These statements do not address whether the term “additional dynamic
`
`preview information” can include information that is not dynamic or whether the
`
`“selectable link” must itself include dynamic information. This is because,
`
`according to the applicant, “Ögren does not teach any selectable link embedded in
`
`6
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`any displayed information, nor any input that invokes a link.” (Id., 116.) The “two
`
`separate actions” method in Ögren for accepting “user input is entirely different
`
`from that of the present claims, and does not function at all like the embedded
`
`selectable link of the present claims.” (Id., 115.)
`
`PO then cites statements made during prosecution to overcome a rejection
`
`based on Aaltonen. (Resp., 16-18 (citing (Ex. 1004, 70-71, 84-85).) As the Board
`
`recognized, however, Aaltonen was not overcome based on these statements.
`
`(Dec., 9-10.) Instead, Aaltonen was overcome because it was not prior art. (Ex.
`
`1004, 45, 62-63.) Additionally, all arguments that Aaltonen does not disclose a
`
`selectable link “embedded in the additional dynamic preview information” were
`
`“expressly disclaim[ed].” (Id., 63.) PO cannot avoid these facts by stating that the
`
`applicant and the examiner agreed that the “[p]resentation of static icons in, for
`
`example, a dynamic bar is distinct from presentation of dynamic preview
`
`information in a dynamic bar” (Resp., 19 (citing Ex. 1004, 62), because this
`
`agreement has nothing to do with the claim language at issue here related to the
`
`“expanded dynamic bar.” Indeed, Aaltonen was not even relied on by the examiner
`
`to disclose the claim features related to the “presentation of dynamic preview
`
`information in a dynamic bar.” (Ex. 1004, 84.)
`
`Finally, PO cites statements made during prosecution to overcome a
`
`rejection based on Wagner. (Resp., 18 (citing (Ex. 1004, 39, 48-50).) These
`
`7
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`statements, however, are identical to those made with respect to Ögren. As
`
`discussed above, these statements do not address whether the term “additional
`
`dynamic preview information” can include information that is not dynamic or
`
`whether the “selectable link” must itself include dynamic information. Here, there
`
`was no need to discuss these issues because, according to the applicant, “Wagner
`
`does not show any selectable link anywhere.” (Ex. 1004, 39.)
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS
`PO’s Response raises a handful of arguments concerning the prior art; all are
`
`unavailing.
`
`A. Cadiz’s Person-Centric Interface Renders Obvious Claim 1
`With respect to the person-centric interface, PO makes only the two
`
`following arguments: (i) the Petition “fails to identify in Cadiz a ‘software
`
`application’ that meets all of the requirements of claim 1” (Resp., 23-30) and (ii)
`
`that Cadiz’s action buttons are not “embedded in the additional dynamic preview
`
`information” (id., 30-34). Both arguments lack merit.
`
`1.
`
`Cadiz’s Person-Centric Interface Discloses the “Software
`Application” Limitations
`PO argues that Cadiz does not disclose a “software application” because
`
`“Gavin’s overall availability in Figure 8A (the alleged ‘dynamic preview
`
`information’) was not provided by the same application that provides Gavin’s
`
`availability with respect to any of the communications channels in Figure 8B (the
`
`8
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`alleged ‘additional dynamic preview information’) at least because Gavin’s
`
`availability with respect to the five communications channels in Figure 8B is
`
`provided by five different applications.” (Resp., 26.) According to PO, Gavin’s
`
`availability in FIG. 8A is provided by some undisclosed availability application
`
`that aggregates Gavin’s availability with respect to the five communications
`
`channels in Figure 8B. (Id., 26-27.) PO’s argument is misplaced because it is based
`
`on a misreading of claim 1 and is inconsistent with Cadiz’s teachings.
`
`Claim 1 recites that the “dynamic preview information” is “determined from
`
`information managed by a software application.” (Ex. 1001, 11:33-35 (emphasis
`
`added).) Similarly, claim 1 recites that the “additional dynamic preview
`
`information” is “determined from the information managed by the software
`
`application.” (Id., 11:43-45 (emphasis added).) As explained in the Petition, Cadiz
`
`discloses “dynamic preview information” (e.g., availability information in person
`
`item 810 of FIG. 8A) and “additional dynamic preview information” (e.g.,
`
`availability information in person window 825 of FIG. 8B) that are “determined
`
`from information managed by” the same “software application” (services 230).
`
`(Pet., 17-22, 29-33.) Indeed, PO and its expert concede that Gavin’s availability in
`
`item 810 is determined from the same availability information that is used to
`
`determine Gavin’s availability in window 825. (Resp., 26-27 (explaining that
`
`Gavin’s “overall availability…accounts for Gavin’s availability via all
`
`9
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`communications channels”); Ex. 2007, ¶60.) It is irrelevant whether Cadiz also
`
`describes some other application that aggregates Gavin’s availability information
`
`for purposes of displaying an overall availability in item 810. The existence of
`
`such an application would not change the fact that the availability information is
`
`managed by the same communications application(s).
`
`That said, PO’s argument that Cadiz discloses an application that aggregates
`
`a person’s availability information is entirely unsupported. (See Resp., 26-27.) PO
`
`does not explain where in Cadiz this application is described or how it is
`
`implemented. PO instead relies on its expert, who states that “a POSA would have
`
`understood that such availability information is determined from information
`
`managed by an ‘availability’ application that integrates information from multiple
`
`communications channels.” (Ex. 2007, ¶60.) PO’s expert, however, also does not
`
`explain where in Cadiz this availability application is described or how it is
`
`implemented, and failed to adequately explain his opinion during cross-
`
`examination. (Ex. 1018, 154:13-163:23.) PO’s expert’s opinion appears to be
`
`based solely on the fact that the exemplary person window 825 in FIG. 8B
`
`provides a person’s “availability on multiple communications channels.” (Id.) This
`
`alone does not mean that such an application exists, and PO’s expert does not
`
`provide any explanation proving otherwise.
`
`10
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`In fact, such an application would be directly at odds with Cadiz. As
`
`explained in the Petition (Pet., 5-6, 13-15, 21, 30, 55), Gavin’s availability in FIG.
`
`8A is indicated in person “item” 810 (Ex. 1005, ¶[0201]), which is “a combination
`
`of a ‘ticket’ describing the information or contact of interest and a specialized
`
`‘viewer’ for displaying whatever information or communications contact is
`
`represented by the ticket” (id., ¶[0017]). After the ticket is created, “the system and
`
`process of the present invention then automatically tracks or receives the current
`
`state of the items 200…us[ing] one or more of the previously described services
`
`for accessing and/or interacting with one or more information sources.” (Id.,
`
`¶[0103].)
`
`Cadiz explains that these tickets are “customizable.” (Id., ¶[0020]; id.,
`
`¶[0080].) For example, Cadiz explains that each ticket includes “pointers to [the]
`
`particular ‘services,’” and that the “services are automatically or manually selected
`
`from a predefined or user definable library of services.” (Id., ¶[0020]; id., ¶¶
`
`[0065]-[0066], [0075]-[0076].) A user may also customize how to view any
`
`particular information in the specialized viewer. (Id., ¶¶[0023], [0068], [0091]-
`
`[0092].) Thus, a user may customize a ticket for a person item to track, receive,
`
`and display the person’s availability via a single service or multiple services. (Id.,
`
`¶[0171] (“person centric interface provides a communication status 485 via any of
`
`a number of communications channels” (emphasis added)).) Additionally, the
`
`11
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`ticket may track, receive, and display the person’s availability based on a
`
`determination of “a ‘best available’ communications channel.” (Id.) Thus, Cadiz
`
`does not disclose an availability application, as PO contends, but rather a
`
`customizable ticket that causes the display of availability information in item 810
`
`(e.g., Gavin’s availability) that is determined from information managed by one or
`
`more services 230.
`
`Accordingly, PO’s attempt to distinguish Cadiz based on a hypothetical
`
`availability application that is neither described by Cadiz nor consistent with its
`
`disclosure should be rejected.
`
`2.
`
`Cadiz’s Person-Centric Interface Discloses or Renders
`Obvious a “Selectable Link Embedded in the Additional
`Dynamic Preview Information”
`PO’s argument that Cadiz’s person-centric interface does not disclose a
`
`“selectable link embedded in the additional dynamic preview information” is based
`
`on PO’s overly narrow claim construction. (Resp., 30.) According to PO, Cadiz’s
`
`“action buttons do not include any dynamic information and are thus not
`
`‘embedded in’ the alleged ‘additional dynamic preview information.’” (Id.) As
`
`discussed above, however, PO’s construction requiring the claimed “selectable
`
`link” to include dynamic information is flawed. Nevertheless, even under PO’s
`
`construction, Cadiz discloses or renders obvious this limitation because a POSA
`
`12
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`would have understood that the action buttons could have been the dynamic text in
`
`the person-centric interface.
`
`As discussed in the Petition, because Cadiz explains that the “person
`
`window includes…action buttons,” the action buttons are embedded in the
`
`additional dynamic preview information. (Pet., 37 (quoting Ex. 1005, ¶[0183]).)
`
`Indeed, Petitioner’s expert testified that Cadiz does not specify which portion of
`
`the person window 825 in FIG. 8B represents the action buttons, but that a POSA
`
`“would have understood that they could have put action buttons in a variety of
`
`places in FIG. 8B.” (Ex. 2009, 102:22-104:22; id., 109:20-110:4, 112:10-21.)
`
`Therefore, the action buttons could have been dynamic text in person window 825,
`
`such as “possibly not available,” which would satisfy PO’s construction. (Id.,
`
`112:10-21.)
`
`Despite Cadiz’s disclosure, PO and its expert argue that the action buttons
`
`can only be the five circles shown in person window 825. (Resp., 31-32; Ex. 2007,
`
`¶¶52, 67.) However, PO and its expert fail to provide any explanation or evidence
`
`in support of their argument. This is unsurprising given Cadiz does not identify or
`
`describe what these circles represent. As such, the five circles could just as well be
`
`13
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`nothing more than bullet points or graphical elements representing availability via
`
`different colors.2
`
`Moreover, PO’s argument with respect to Cadiz’s action buttons ignores
`
`Petitioner’s position that it would have been obvious to include an embedded
`
`selectable link to provide the same functionality as the action buttons. (Pet., 40-
`
`41.) The Petition identifies functionalities described by Cadiz that could have been
`
`used to implement the claimed “selectable link,” and Petitioner’s expert explained
`
`why a POSA would have been motivated to do so in person window 825. (Id.; Ex.
`
`1002, ¶¶86-88.) PO and its expert ignore this argument entirely. Therefore, even if
`
`Cadiz’s action buttons are not embedded in the additional dynamic preview
`
`information in person window 825, as suggested by PO, Petitioner’s argument that
`
`it would have been obvious to embed a selectable link in the additional dynamic
`
`preview information is unrebutted.
`
`B.
`Cadiz’s Email-Centric Interface Renders Obvious Claim 1
`PO’s only argument with respect to Cadiz’s email-centric interface is that it
`
`would not have been obvious to modify Cadiz’s email window 1020 in FIG. 10 to
`
`include a “selectable link” that “invoke[s]” or “activat[es]” the “software
`
`application.” (Resp., 34-38.) PO’s argument falls short. As explained in the
`
`2 Cadiz describes features that tie color representations to information age or status.
`
`(See, e.g., Ex. 1005, ¶¶[0024], [0081], [0094], [0169].)
`
`14
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`Petition, a POSA would have been motivated to modify Cadiz so that selecting an
`
`email message entry in email window 1020 invokes the email application to
`
`provide a better user experience. (Pet., 43-45.)
`
`As explained in the Petition (Pet., 42), and acknowledged by PO (Resp., 35),
`
`email window 1020 can be implemented in two different ways: (i) “providing an
`
`email specific viewer having the desired email functionality” or (ii) “providing a
`
`viewer that instantiates an instance of the user[’]s email program for purposes of
`
`displaying the tracked/watched inbox folder.” (Ex. 1005, ¶[0072].) In both
`
`implementations, email window 1020 provides only a subset of possible email
`
`functionalities. (Pet., 44.) Even PO’s expert acknowledged that email window
`
`1020 appears to include functionality for reading, deleting, replying, replying all,
`
`forwarding, and moving an email, but not other conventional email functionalities
`
`such as composing a new email message, accessing a deleted folder, or creating a
`
`new folder. (Ex. 1018, 176:23-182:8, 29:18-43:15; Ex. 1005, ¶[0072], FIG. 10.)
`
`Accordingly, as explained in the Petition, a POSA would have been motivated to
`
`modify email window 1020 so that selecting an email entry invokes the email
`
`application to provide access to functionalities not provided by email window
`
`1020.3 (Pet. 44.)
`
`3 PO’s expert even explained the capabilities offered by other functionalities
`
`known in conventional email applications. (Ex. 1018, 29:18-43:15.)
`
`15
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`In response, PO does not appear to dispute that a POSA would have been
`
`“motivated to provide the user with all of the features of an email software
`
`application,” but instead argues that the motivation would have led a POSA to use
`
`the second way of implementing email window 1020. (Resp., 36-37.) According to
`
`PO, this would have provided a better user experience by requiring fewer steps
`
`than Petitioner’s modification. (Id., 37.) PO’s argument misses the point, which is
`
`that if email window 1020 is implemented by providing an email specific viewer
`
`having only certain desired email functionality (which may be preferred to avoid
`
`clutter and/or lessen resource needs), a POSA would have been motivated to
`
`invoke the email application to access other email functionalities.
`
`The fact that a different (or even potentially better) implementation is
`
`possible is irrelevant. Obviousness “does not require that a particular combination
`
`must be the preferred, or the most desirable, combination described in the prior art
`
`in order to provide motivation for the current invention.” In re Fulton, 391 F.3d
`
`1195, 1200 (Fed. Cir. 2004). “[T]he question is whether there is something in the
`
`prior art as a whole to suggest the desirability, and thus the obviousness, of making
`
`the combination.” Id. (internal quotation marks and citations omitted). Thus, even
`
`if the second way of implementing email window 1020 is preferred or most
`
`desirable (it is not), the claims are nevertheless obvious because the Petition
`
`16
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`demonstrates that a POSA would have desired to modify email window 1020 in the
`
`way described in the Petition.
`
`PO also argues that the second implementation of email window 1020 does
`
`not disclose a selectable link “to invoke the software application” because “once
`
`the email viewer…is open, the email application…is already invoked.” (Resp., 37.)
`
`However, PO’s expert explained during deposition that a POSA would have
`
`known that an application could be periodically and temporarily instantiated to
`
`provide information for display in an interface (e.g., email window 1020) and that
`
`selecting a link in the interface (e.g., an email entry) could instantiate a different
`
`instance of the application, which discloses “invoke[ing] the software application.”
`
`(Ex. 1018, 71:14-90:24.) This testimony supports Petitioner’s argument that the
`
`second implementation of Cadiz’s email window 1020 also discloses a selectable
`
`link “to invoke the software application,” as recited in claim 1.
`
`C. Cadiz Renders Obvious Claim 4
`PO argues that Cadiz does not disclose “the apparatus comprises a cellular
`
`telephone,” as recited in claim 4, because Cadiz does not disclose that the
`
`interfaces illustrated in FIGS. 6B, 8A-8C, and 10 “could have or would have been
`
`implemented in exactly the same way on a cellular telephone.” (Resp., 38-39.)
`
`However, Petitioner does not argue that these interfaces would have been
`
`implemented on a cell phone in “exactly the same way,” as PO contends. Instead,
`
`17
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`with numerous supporting citations to Cadiz, the Petition explains that Cadiz
`
`discloses “implementing the present invention” on a cell phone. (Pet., 45-46.)
`
`Cadiz generally describes the “present invention,” including the concepts that
`
`disclose the elements of claim 1, with reference to FIGS. 1-3, 4A, and 5. With
`
`respect to these figures, Cadiz clearly states that the present invention can be
`
`implemented on a cell phone. (See id.) FIGS. 6B, 8A-8C, and 10 are merely
`
`exemplary screen images of working examples implementing the general concepts
`
`described with respect to FIGS. 1-3 and 4A. Accordingly, whether these exemplary
`
`screen images can be implemented in exactly the same way on a cell phone is
`
`irrelevant.
`
`As discussed throughout the Petition, Cadiz describes the “present
`
`invention” as “automatically providing dynamic communication access and
`
`information awareness in an integrated interactive peripheral display.” (Ex. 1005,
`
`¶[0016]; id., ¶[0059].) Each contact and information element is represented by a
`
`“[c]ustomized dynamic thumbnail[]” or “item[],” which “comprise[s] a
`
`combination of a ‘ticket’ describing the information or contact of interest and a
`
`specialized ‘viewer’ for displaying whatever information or communications
`
`contact is represented by the ticket.” (Id., ¶¶[0016]-[0017]; id., ¶¶[0063]-[0065].)
`
`Each ticket includes “instructions” and “pointers to particular ‘services’ that
`
`represent any of a number of conventional means for interacting with the
`
`18
`
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`information or communications contacts.” (Id., ¶[0021]; id., ¶¶[0066]-[0067].)
`
`The “present invention” then “automatically tracks or receives the current state of
`
`the information and communications contacts described by the tickets, and
`
`dynamically provides current information as well as availability and status of the
`
`communications contacts in an interactive ‘peripheral awareness’ interface for
`
`displaying the items.” (Id., ¶[0017]; id., ¶[0063].) The interface for
`
`communications contacts (i.e., person-centric interface) includes “communications
`
`access and interactions for particular contacts via any of a number of access points
`
`or communication channels.” (Id., ¶[0019]; id., ¶¶[0061]-[0062].) An interface for
`
`viewing emails is also described (i.e., email-centric interface), which allows for
`
`“watching an email inbox folder” and “interact[ing] with any message.” (Id.,
`
`¶[0072].)
`
`Cadiz describes these basic concepts in more detail with reference to its
`
`figures. For example, Cadiz explains that FIG. 1 illustrates “a suitable computing
`
`system environment 100 on which the invention may be implemented” (id.,
`
`¶[0049]), and identifies a “cell phone[]” as
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
