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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`BLACKBERRY LTD.,
`Patent Owner.
`
`_________________
`
`Case IPR2017-00914
`Patent 8,713,466 B2
`_________________
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`PETITIONER’S REPLY
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`IPR2017-00914
`Patent 8,713,466 B2
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`I.
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`The “Additional Dynamic Preview Information” Can Include
`A.
`Information That Is Not Dynamic and “Compris[es] a
`Selectable Link” .................................................................................... 2
`PO’s Reliance on the Specification is Undermined by the
`Testimony of Its Expert ......................................................................... 5
`The Prosecution History of the ’384 Patent Does Not Support
`PO’s Proposed Construction ................................................................. 7
`III. THE CHALLENGED CLAIMS ARE OBVIOUS ....................................... 10
`Cadiz’s Person-Centric Interface Renders Obvious Claims 1,
`A.
`14, and 22 ............................................................................................ 10
`Cadiz’s Person-Centric Interface Discloses the “Software
`1.
`Application” Limitations .......................................................... 10
`Cadiz’s Person-Centric Interface Discloses or Renders
`Obvious a “Additional Dynamic Preview Information
`Comprising a Selectable Link” ................................................. 14
`Cadiz’s Email-Centric Interface Renders Obvious Claims 1, 14,
`and 22 .................................................................................................. 16
`The Combination of Cadiz and Siedlikowski Renders Obvious
`Claims 7-9, 18, 19, and 25 .................................................................. 19
`The Combination of Cadiz and Yamadera Renders Obvious
`Claims 10, 11, 20, and 21 .................................................................... 22
`IV. CONCLUSION .............................................................................................. 25
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`D.
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`B.
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`C.
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`B.
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`C.
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`2.
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`Patent 8,713,466 B2
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`In re Fulton,
`391 F.3d 1195 (Fed. Cir. 2004) .................................................................... 18, 21
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`Patent 8,713,466 B2
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`LIST OF EXHIBITS
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`U.S. Patent No. 8,713,466
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`Declaration of Dr. Dan R. Olsen Jr.
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`Curriculum Vitae of Dr. Dan R. Olsen Jr.
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`Prosecution History of U.S. Patent No. 8,713,466
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`Prosecution History of U.S. Patent No. 8,402,384
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`U.S. Patent Application Publication No. 2002/0186257 (“Cadiz”)
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`U.S. Patent No. 7,007,239 (“Hawkins”)
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`U.S. Patent No. 6,741,232 (“Siedlikowski”)
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`U.S. Patent Publication No. 2002/0123368 (“Yamadera”)
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`U.S. Patent No. 7,454,714 (“Totman”)
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`European Patent Application No. EP1265157 (“Cadiz-EP”)
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`Caroline Rose et al., “Inside Macintosh Volume 1” (1985)
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`“Macintosh Human Interface Guidelines,” Apple Computer, Inc.
`(1995)
`Prosecution History of European Patent Application No. 06125884.4
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`RESERVED
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`RESERVED
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`RESERVED
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`Deposition Transcript of Dr. George T. Ligler (March 13, 2018)
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`iii
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`IPR2017-00914
`Patent 8,713,466 B2
`I.
`INTRODUCTION
`Petitioner replies to Patent Owner’s (PO) Response (Paper 17, “Resp.”) and
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`the Board’s decision to institute inter partes review (Paper 7, “Dec.”) of the ’466
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`patent. PO’s arguments should be rejected and claims 1-26 of the ’466 patent
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`found unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”)
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`and accompanying exhibits, and the additional reasons provided below.
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`II. CLAIM CONSTRUCTION
`PO argues that the limitation “additional dynamic preview information
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`comprising a selectable link,” as recited in claims 1, 14, and 22, requires (i) “the
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`‘additional dynamic preview information’ to be preview information that is
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`dynamic” and (ii) “the ‘selectable link’ to include such dynamic preview
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`information.” (Resp., 12 (emphasis omitted).) As it did in its Institution Decision
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`(Dec., 5-10), the Board should reject PO’s construction because it is inconsistent
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`with the claim language, specification, and prosecution history, and cannot be
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`reconciled with the testimony of PO’s expert regarding this limitation. Moreover,
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`PO’s proposed construction is irrelevant because the Petition demonstrates that this
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`limitation would have been obvious even under PO’s construction.
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`1
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`A. The “Additional Dynamic Preview Information” Can Include
`Information That Is Not Dynamic and “Compris[es] a Selectable
`Link”
`Given the claim language, there is no dispute that “additional dynamic
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`preview information” includes dynamic information. The only dispute is whether
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`“additional dynamic preview information” can also include other types of
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`information. The specification establishes that it can. The specification does not
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`recite the term “additional dynamic preview information,” but explains that
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`“dynamic preview information” may include both a dynamic “count” and “details
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`of a recent event,” such as “Missed call from NNN.” (Ex. 1001, 7:60-67.) PO
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`essentially admits that such event details are not dynamic when discussing FIG. 6
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`by identifying only the “50” in expansion pop-up 602 as dynamic information.
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`(Resp., 23.) In other words, according to PO, the remaining links in FIG. 6 (e.g.,
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`“Call Voice Mail”) do not include “additional dynamic preview information,”
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`presumably because the dynamic counts (e.g., “5”) are not part of the selectable
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`links. (Id.)
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`The claim language unambiguously states that “additional dynamic preview
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`information comprising a selectable link,” which means the “selectable link” may
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`or may not include dynamic information. Indeed, the specification provides several
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`examples of such “selectable link[s]” that do not include dynamic information. For
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`example, during prosecution of the parent application, which matured into the ’384
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`patent, the applicant amended the pending claims to recite that the “selectable link”
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`is “embedded in the additional dynamic preview information.” (Ex. 1005, 109.)
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`The applicant noted that support for this amendment can be found “in FIGS. 4 and
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`6” and “in paragraphs [0046] and [0048]” (id., 114), which correspond to column
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`7:29-50 and column 8:1-10 of the ’466 patent, respectively. Both FIGS. 4 and 5
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`include selectable links that contain information that is not dynamic.
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`Referring to FIG. 4, expansion pop-up interface 407 does not disclose a
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`“selectable link” that includes dynamic information. Column 7:29-50 of the ’466
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`patent states that “[c]licking on the list will automatically invoke the email
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`application, preferably at a view showing the selected email.” (Ex. 1001, 7:47-48.)
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`The listed emails are more akin to “details of a recent event” that do not
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`continuously change over time (id., 7:60-66), rather than a dynamic count, such as
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`the counts “150 Messages” and “30 New” shown at the top of interface 407. (Id.,
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`FIG. 4.) At a minimum, as recognized by the Board, “From” and “Subject” are not
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`dynamic because they do not continuously change over time.1 (Dec., 9-10.)
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`Nevertheless, the list of emails discloses “additional dynamic preview information
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`1 PO argues that “Petitioner agrees that such information regarding email
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`messages…is dynamic” (Resp., 22 n.4), which is not true. The Petition is referring
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`to the “‘From’/‘Subject’/‘Received’ information”—not the word “From,” etc.
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`(Pet., 22.)
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`comprising a selectable link” at least because the “additional dynamic preview
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`information” in interface 407 includes the dynamic counts “150 Messages” and
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`“30 New.” (Id.)
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`FIG. 6 also shows several “selectable link[s]” that do not include dynamic
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`information. For example, expansion pop-up 602 includes count 608 (i.e., “5”)
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`next to selectable link 610 (i.e., “Call Voice Mall”). (Id., 8:1-10, FIG. 6.) Although
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`selectable link 610 does not include dynamic information, it discloses “additional
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`dynamic preview information comprising a selectable link” at least because the
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`“additional dynamic preview information” in interface 602 includes dynamic count
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`608 (among other dynamic information). (Id.) The only selectable link in interface
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`602 that includes dynamic information is “50 unread” (id., FIG. 6), but the
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`applicant pointed to the entirety of FIG. 6 as providing support for the “embedded”
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`claim amendment during prosecution of the application leading to the ’384 patent
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`(Ex. 1005, 114). Moreover, the only selectable link specifically identified in FIG. 6
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`and described in the specification is selectable link 610, which does not include but
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`is next to dynamic information (i.e., count 608). (Id., 8:1-10, FIG. 6.) Accordingly,
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`the claimed “selectable link” need not include information that is dynamic. The
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`claims only require the “additional dynamic preview information comprising a
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`selectable link.”
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`PO’s overly narrow claim construction leads to absurd results. For example,
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`PO’s arguments with respect to FIG. 6 turn the meaning of “embedded” on its
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`head. According to PO, “additional dynamic preview information” cannot include
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`“non-dynamic preview information.” (Resp., 14-15; see also id., 12.) In FIG. 6, PO
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`points to “50 unread” as the “selectable link” but identifies “50” as the only
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`dynamic information. (Id., 23.) Therefore, only the “50” in “50 unread” can be
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`“additional dynamic preview information” under PO’s construction. However, this
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`would mean that the “selectable link” (“50 unread”) “compris[es]” “additional
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`dynamic preview information” (“50”), rather than the “additional dynamic preview
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`information comprising a selectable link,” as claimed. Such a result counsels
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`against adopting PO’s construction.
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`B.
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`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
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`by PO as supporting its proposed construction do not satisfy the limitations of
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`claim 1. In its Response, PO points to a single email in the list of new emails 406
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`shown in expansion pop-up interface 407 of FIG. 4 as disclosing “additional
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`dynamic preview information.” (Resp., 21-22.) However, during his deposition,
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`PO’s expert explained that interface 407 does not include “additional dynamic
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`preview information” because dynamic bar 304 does not include “dynamic
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`preview information.” (Ex. 1018, 60:22-64:6, 134:19-136:20.) According to PO’s
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`expert, for information to be “additional dynamic preview information” “it needs
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`to be additional to dynamic preview information in the dynamic bar.” (Id., 62:14-
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`64:6.)
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`In FIG. 6, PO points to “50” in expansion pop-up interface 602 as disclosing
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`“additional dynamic preview information” (Resp., 23), and PO’s expert identified
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`both “50 unread” and “No new email messages” as the only information in
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`interface 602 disclosing “additional dynamic preview information.” (Ex. 1018,
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`94:13-95:4, 97:18-98:17.) However, PO’s expert testified that dynamic bar 304 in
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`FIG. 6 does not include information managed by an email application. (Id., 94:13-
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`97:17, 99:23-100:2.) The only information in dynamic bar 304 relates to a phone
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`application, a SMS application, and a chat application. (Id., 93:3-23, 94:13-97:17,
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`99:8-104:21.) Accordingly, the “50 unread” and “No new email messages” in
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`interface 602 cannot be “additional dynamic preview information,” because,
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`according to PO’s expert, the “dynamic preview information in the dynamic bar of
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`claim 1 needs to be determined from information managed by a software
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`application, and the displaying additional dynamic preview information in the
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`expanded dynamic bar needs to be determined from the information managed by
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`the same software application.” (Id., 136:24-140:11 (emphasis).) Thus, the
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`testimony of PO’s expert undermines PO’s positions in its Response, and instead
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`supports Petitioner’s contention that “additional dynamic preview information” can
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`include information that is not dynamic and that a “selectable link” need not
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`include dynamic information. This is because the only “selectable link” in FIG. 6
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`that includes dynamic information is not part of “additional dynamic preview
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`information” according to PO’s expert.
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`C. The Prosecution History of the ’384 Patent Does Not Support
`PO’s Proposed Construction
`PO primarily relies on the prosecution history of the ’384 patent in support
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`of its claim construction (Resp., 16-21), but nothing in the prosecution history
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`supports PO’s contention that the “additional dynamic preview information” can
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`only include dynamic information and that the “selectable link” must itself include
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`dynamic information.2
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`2 Additionally, the limitations in the claims pending during prosecution of the ’384
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`patent are different than those at issue here. For example, the claims of the ’466
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`patent do not recite the term “embedded,” which was a focus of applicant’s
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`arguments during prosecution of the ’384 patent. Other than stating that the claims
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`of the ’466 patent “recite features relating to the concept of displaying a selectable
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`link embedded in additional dynamic preview information” (Resp., 10), PO has not
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`explained why arguments made during prosecution of the ’384 patent related to the
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`term “embedded” are relevant to the claims of the ’466 patent. Nevertheless, for
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`PO first cites statements made during prosecution of the ’384 patent to
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`overcome a rejection based on Ögren. (Resp., 16-18 (citing (Ex. 1005, 109, 114-
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`15).) These statements, however, merely confirm that the “selectable link” is “a
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`portion of the additional dynamic preview information,” which the parties do not
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`dispute. (Ex. 1005, 114-15.) These statements do not address whether the term
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`“additional dynamic preview information” can include information that is not
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`dynamic or whether the “selectable link” must itself include dynamic information.
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`This is because, according to the applicant, “Ögren does not teach any selectable
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`link embedded in any displayed information, nor any input that invokes a link.”
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`(Id., 116.) The “two separate actions” method in Ögren for accepting “user input is
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`entirely different from that of the present claims, and does not function at all like
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`the embedded selectable link of the present claims.” (Id., 115.)
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`PO then cites statements made during prosecution of the ’384 patent to
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`overcome a rejection based on Aaltonen. (Resp., 18-19 (citing (Ex. 1005, 70-71,
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`84-85).) As the Board recognized, however, Aaltonen was not overcome based on
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`these statements. (Dec., 7-8.) Instead, Aaltonen was overcome because it was not
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`prior art. (Ex. 1005, 45, 62-63.) Additionally, all arguments that Aaltonen does not
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`disclose a selectable link “embedded in the additional dynamic preview
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`the reasons explained herein, the prosecution history of the ’384 patent does not
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`support PO’s proposed construction.
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`information” were “expressly disclaim[ed].” (Id., 63.) PO cannot avoid these facts
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`by stating that the applicant and the examiner agreed that the “[p]resentation of
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`static icons in, for example, a dynamic bar is distinct from presentation of dynamic
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`preview information in a dynamic bar” (Resp., 20-21 (citing Ex. 1005, 62),
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`because this agreement has nothing to do with the claim language at issue here
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`related to the “expanded dynamic bar.” Indeed, Aaltonen was not even relied on by
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`the examiner to disclose the claim features related to the “presentation of dynamic
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`preview information in a dynamic bar.” (Ex. 1005, 84.)
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`Finally, PO cites statements made during prosecution of the ’384 patent to
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`overcome a rejection based on Wagner. (Resp., 19-20 (citing (Ex. 1005, 39, 48-
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`50).) These statements, however, are identical to those made with respect to Ögren.
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`As discussed above, these statements do not address whether the term “additional
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`dynamic preview information” can include information that is not dynamic or
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`whether the “selectable link” must itself include dynamic information. Here, there
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`was no need to discuss these issues because, according to the applicant, “Wagner
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`does not show any selectable link anywhere.” (Ex. 1005, 39.)
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`III. THE CHALLENGED CLAIMS ARE OBVIOUS
`PO’s Response raises a handful of arguments concerning the prior art; all are
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`unavailing.
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`A. Cadiz’s Person-Centric Interface Renders Obvious Claims 1, 14,
`and 22
`With respect to the person-centric interface, PO makes only the two
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`following arguments: (i) the Petition “fails to identify in Cadiz a ‘software
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`application’ that meets all of the requirements of each of these independent
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`claims” (Resp., 24-32) and (ii) that Cadiz’s action buttons cannot be the claimed
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`“selectable link” (id., 32-36). Both arguments lack merit.
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`1.
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`Cadiz’s Person-Centric Interface Discloses the “Software
`Application” Limitations
`PO argues that Cadiz does not disclose a “software application” that meets
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`all of the requirements of claims 1, 14, and 22 because “Gavin’s overall
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`availability in Figure 8A (the alleged ‘dynamic preview information’) was not
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`provided by the same application that provides Gavin’s availability with respect to
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`any of the communications channels in Figure 8B (the alleged ‘additional dynamic
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`preview information’) at least because Gavin’s availability with respect to the five
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`communications channels in Figure 8B is provided by five different applications.”
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`(Resp., 28.) According to PO, Gavin’s availability in FIG. 8A is provided by some
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`undisclosed availability application that aggregates Gavin’s availability with
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`respect to the five communications channels in Figure 8B. (Id., 28-29.) PO’s
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`argument is misplaced because it is based on a misreading of the claims and is
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`inconsistent with Cadiz’s teachings.
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`Claim 1, 14, and 22 recite that the “dynamic preview information” is
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`“determined from information managed by a software application.” (E.g., Ex.
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`1001, 11:43-45 (emphasis added).) Similarly, these claims recite that the
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`“additional dynamic preview information” is “determined from the information
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`managed by the software application.” (E.g., id., 11:51-53 (emphasis added).) As
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`explained in the Petition, Cadiz discloses “dynamic preview information” (e.g.,
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`availability information in person item 810 of FIG. 8A) and “additional dynamic
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`preview information” (e.g., availability information in person window 825 of FIG.
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`8B) that are “determined from information managed by” the same “software
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`application” (services 230, e.g., MSN Messenger). (Pet., 5-12, 18-21.) Indeed, PO
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`and its expert concede that Gavin’s availability in item 810 (FIG. 8A) is
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`determined from the same availability information that is used to determine
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`Gavin’s availability in window 825 (FIG. 8B). (Resp., 28-29 (explaining that
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`Gavin’s “overall availability…accounts for Gavin’s availability via all
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`communications channels”); Ex. 2007, ¶62.) It is irrelevant whether Cadiz also
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`describes some other application that aggregates Gavin’s availability information
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`for all communication channels for purposes of displaying an overall availability in
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`item 810. The existence of such an application would not change the fact that the
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`availability information is managed by the same communications application(s).
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`That said, PO’s argument that Cadiz discloses an application that aggregates
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`a person’s availability information is entirely unsupported. (See Resp., 28-29.) PO
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`does not explain where in Cadiz this application is described or how it is
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`implemented. PO instead relies on its expert, who states that “a POSA would have
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`understood that such availability information is determined from information
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`managed by an ‘availability’ application that integrates information from multiple
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`communications channels.” (Ex. 2007, ¶62.) PO’s expert, however, also does not
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`explain where in Cadiz this availability application is described or how it is
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`implemented, and failed to adequately explain his opinion during cross-
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`examination. (Ex. 1018, 154:13-163:23.) PO’s expert’s opinion appears to be
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`based solely on the fact that the exemplary person window 825 in FIG. 8B
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`provides a person’s “availability on multiple communications channels.” (Id.) This
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`alone does not mean that such an application exists, and PO’s expert does not
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`provide any explanation proving otherwise.
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`In fact, such an application would be directly at odds with Cadiz. As
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`explained in the Petition (Pet., 5-8, 11, 18-19), Gavin’s availability in FIG. 8A is
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`indicated in person “item” 810 (Ex. 1006, ¶[0201]), which is “a combination of a
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`‘ticket’ describing the information or contact of interest and a specialized ‘viewer’
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`for displaying whatever information or communications contact is represented by
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`the ticket” (id., ¶[0017]). After the ticket is created, “the system and process of the
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`present invention then automatically tracks or receives the current state of the
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`items 200…us[ing] one or more of the previously described services for accessing
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`and/or interacting with one or more information sources.” (Id., ¶[0103].)
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`Cadiz explains that these tickets are “customizable.” (Id., ¶[0020]; see also
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`id., ¶[0080].) For example, each ticket includes “pointers to [the] particular
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`‘services,’” and that the “services are automatically or manually selected from a
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`predefined or user definable library of services.” (Id., ¶[0020]; see also id., ¶¶
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`[0065]-[0066], [0075]-[0076].) A user may also customize how to view any
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`particular information in the specialized viewer. (Id., ¶¶[0023], [0068], [0091]-
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`[0092].) Thus, a user may customize a ticket for a person item to track, receive,
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`and display the person’s availability via a single service or multiple services. (Id.,
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`¶[0171] (“person centric interface provides a communication status 485 via any of
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`a number of communications channels” (emphasis added)).) Additionally, the
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`ticket may track, receive, and display the person’s availability based on a
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`determination of “a ‘best available’ communications channel.” (Id.) Thus, Cadiz
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`does not disclose an availability application, as PO contends, but rather a
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`customizable ticket that causes the display of availability information in item 810
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`(e.g., Gavin’s availability) that is determined from information managed by one or
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`more services 230 (e.g., MSN Messenger).
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`Accordingly, PO’s attempt to distinguish Cadiz based on a hypothetical
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`availability application that is neither described by Cadiz nor consistent with its
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`disclosure should be rejected.
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`2.
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`Cadiz’s Person-Centric Interface Discloses or Renders
`Obvious a “Additional Dynamic Preview Information
`Comprising a Selectable Link”
`PO’s argument that Cadiz’s person-centric interface does not disclose
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`“additional dynamic preview information comprising a selectable link” is based
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`only on PO’s overly narrow claim construction. (Resp., 32.) According to PO,
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`Cadiz’s “action buttons do not include any dynamic information and are thus the
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`alleged ‘additional dynamic preview information’ does not ‘compris[e] a
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`selectable link.’” (Id.) As discussed above, however, PO’s construction requiring
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`the claimed “selectable link” to include dynamic information is flawed.
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`Nevertheless, even under PO’s construction, Cadiz discloses or renders obvious
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`this limitation because a POSA would have understood that the action buttons
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`could have been the dynamic text in the person-centric interface.
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`As discussed in the Petition, because Cadiz explains that the “person
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`window includes…action buttons for initiating communication via any of a
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`number of conventional communication channels,” the additional dynamic preview
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`information comprises the action buttons. (Pet., 24 (quoting Ex. 1006, ¶[0183]).)
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`Indeed, Petitioner’s expert explained during cross-examination that Cadiz does not
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`specify which portion of the person window 825 in FIG. 8B represents the action
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`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; see also 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.)
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`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., 33-34; Ex. 2007,
`
`¶¶56, 69.) 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
`
`nothing more than bullet points or graphical elements representing availability via
`
`different colors.3
`
`Moreover, PO’s argument with respect to Cadiz’s action buttons ignores
`
`Petitioner’s position that it would have been obvious to include a selectable link in
`
`the additional dynamic preview information to provide the same functionality as
`
`3 Cadiz describes features that tie color representations to information age or status.
`
`(See, e.g., Ex. 1006, ¶¶[0024], [0081], [0094], [0169].)
`
`15
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`Patent 8,713,466 B2
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`the action buttons. (Pet., 26-27.) 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, ¶¶85-88.) PO and its expert ignore this
`
`argument entirely. Therefore, even if Cadiz’s action buttons are not in the
`
`additional dynamic preview information in person window 825, as suggested by
`
`PO, Petitioner’s argument that it would have been obvious to include a selectable
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`link in the additional dynamic preview information is unrebutted.
`
`B.
`
`Cadiz’s Email-Centric Interface Renders Obvious Claims 1, 14,
`and 22
`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
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`include a “selectable link” that “invokes the software application.” (Resp., 37-40.)
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`PO’s argument falls short. As explained in the 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., 29-31.)
`
`As explained in the Petition (Pet., 28), and acknowledged by PO (Resp., 37-
`
`38), 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
`
`16
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`IPR2017-00914
`Patent 8,713,466 B2
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`displaying the tracked/watched inbox folder.” (Ex. 1006, ¶[0072].) In both
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`implementations, email window 1020 provides only a subset of possible email
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`functionalities. (Pet., 30.) Even PO’s expert acknowledged that email window
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`1020 appears to include functionality for reading, deleting, replying, replying all,
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`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; see also Ex. 1006, ¶[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 1020.4 (Pet. 30.)
`
`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 rather than “implement an
`
`email view with fewer than all email functionality and then modify that email
`
`viewer such that the message entries are or include an embedded link that would,
`
`when selected, activate the fully-functional email application.” (Resp., 38-39.)
`
`4 PO’s expert even explained the capabilities offered by other functionalities
`
`known in conventional email applications. (Ex. 1018, 29:18-43:15.)
`
`17
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`IPR2017-00914
`Patent 8,713,466 B2
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`According to PO, this would have provided a better user experience by requiring
`
`fewer steps than Petitioner’s modification. (Id., 39.) 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,’ not whether there is something in the prior art as a whole to
`
`suggest that the combination is the most desirable combination available.” Id.
`
`(quoting In re Beattie, 974 F.2d 1309, 1311 (Fed. Cir. 1992)). 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 demonstrates that a
`
`POSA would have desired to modify email window 1020 in the way described in
`
`the Petition. See Fulton, 391 F.3d at 1200.
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`18
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`PO also argues that the second implementation of email window 1020 does
`
`not meet the claim requirement of a selectable link “to invoke the software
`
`application” because “once the email viewer…is open, the email application…is
`
`already invoked.” (Resp., 39-40.) 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
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`discloses “invoke[ing] the software application.” (Ex. 1018, 71:14-90:24.) This
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`testimony undermines PO’s argument and supports Petitioner’s argument that the
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`second implementation of Cadiz’s email window 1020 also discloses a selectable
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`link “to invoke[] the software application,” as claimed.
`
`C. The Combination of Cadiz and Siedlikowski Renders Obviou
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