Paper No. 17
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR 2017-00914
`U.S. Patent No. 8,713,466
`
`––––––––––––––––––
`
`PATENT OWNER’S RESPONSE
`
`
`
`

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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The ’466 Patent ................................................................................................ 1
`
`A. Overview of the ’466 Patent .................................................................. 1
`
`B.
`
`Priority Date and Relevant Prosecution History ................................... 4
`
`i.
`
`ii.
`
`The ’384 Patent’s Prosecution History ....................................... 5
`
`The ’466 Patent’s Prosecution History ....................................... 9
`
`C.
`
`Person of Ordinary Skill in the Art ..................................................... 10
`
`III. Claim Construction ........................................................................................ 11
`
`A.
`
`“Additional Dynamic Preview Information Comprising a Selectable
`Link” (All Claims) ............................................................................... 12
`
`IV. The Challenged Claims Are Not Obvious In View Of Cadiz’s Person-
`Centric Interface or Email-Centric Interface ................................................. 24
`
`A.
`
`The Challenged Claims Are Not Obvious In View of Cadiz’s Person-
`Centric Interface .................................................................................. 24
`
`i.
`
`ii.
`
`Cadiz’s Person-Centric Interface Does Not Disclose or Render
`Obvious The Claimed “Software Application” ........................ 24
`
`Cadiz’s Person-Centric Interface Does Not Disclose or Render
`Obvious “Additional Dynamic Preview Information
`Comprising A Selectable Link” ................................................ 32
`
`B.
`
`The Challenged Claims Are Not Obvious In View Of Cadiz’s Email-
`Centric Interface .................................................................................. 37
`
`i.
`
`Cadiz’s Email-Centric Interface Does Not Disclose or Render
`Obvious “A Selectable Link” that “Invokes the Software
`Application” .............................................................................. 37
`
`i
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`V.
`
`Cadiz In View Of Siedlikowski Does Not Render Obvious Claims 7-9, 18-
`19, or 25 ......................................................................................................... 40
`
`VI. Cadiz In View Of Yamadera Does Not Render Obvious Claims 10-11 or 20-
`21 ................................................................................................................... 45
`
`VII. Reservation of Rights .................................................................................... 49
`
`VIII. Conclusion ..................................................................................................... 50
`
`
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`ii
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Adv. Cardiovascular Sys., Inc. v. Medtronic Vascular, Inc.,
`182 F. App’x 994 (Fed. Cir. 2006) ..................................................................... 16
`D’Agostino v. MasterCard Int’l Inc.,
`844 F.3d 945 (Fed. Cir. 2016) ................................................................ 13, 16, 21
`Ex parte Gundrum,
`Appeal No. 2015-7620 .................................................................................. 39, 49
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015), overruled on other grounds, Aqua
`Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) ....... 11, 12, 16
`Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,
`No. 2015-1855, 639 F. App’x 639 (Fed. Cir. May 4, 2016), cert.
`granted, No. 16-712 (U.S. June 12, 2017) ......................................................... 49
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
`815 F.3d 747 (Fed. Cir. 2016) ............................................................................ 23
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ............................................................................ 12
`Statutes
`35 U.S.C. § 316(e) ..................................................................................................... 1
`
`
`
`iii
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`EXHIBIT LIST
`
`Exhibit Description
`No.
`2001 U.S. Patent App. Pub. No. 2006/0020904 A1 to Aaltonen et al.
`2002 U.S. Patent App. Pub. No. 2004/0155908 A1 to Wagner
`2003 U.S. Patent No. 8,402,384 B2 to Scott
`2004
`[RESERVED]
`2005 The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`2006 Declaration of Sharon Lee
`2007 Declaration of Dr. George Ligler
`2008 CV of Dr. George Ligler
`2009 Deposition Transcript of Dr. Daniel R. Olsen, Jr. (Nov. 21, 2017)
`
`
`iv
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`I.
`
`Introduction
`
`Patent Owner BlackBerry Limited (“Patent Owner”) submits this Response
`
`to the Petition for inter partes review (Paper 1, “Pet.”) of U.S. Patent No.
`
`8,713,466 (“’466 patent”). In its Institution Decision (Paper 7, “Dec.”), the Board
`
`instituted trial on four grounds of unpatentability: (1) claims 1, 4, 6, 12-14, 17, 22,
`
`and 24 as obvious over Cadiz; (2) claims 2, 3, 15, and 23 as obvious over Cadiz
`
`and Hawkins; (3) claims 7-9, 18, 19, and 25 as obvious over Cadiz and
`
`Siedlikowski; and (4) claims 5, 10, 11, 16, 20, 21, and 26 as obvious over Cadiz
`
`and Yamadera. Dec. 24. For the reasons discussed below, Petitioner Google LLC
`
`(“Petitioner”) has failed to meet its burden of proving, by a preponderance of the
`
`evidence, that any of claims 1-26 are unpatentable. See 35 U.S.C. § 316(e).
`
`II. The ’466 Patent
`A. Overview of the ’466 Patent
`
`The ’466 patent describes an improved graphical user interface with
`
`particular applicability to wireless mobile devices such as cellular phones. Ex.
`
`1001, 1:20-33; Declaration of Dr. George Ligler (Ex. 2007), ¶¶26-31. Wireless
`
`mobile devices by 2004 were capable of a large number of communications
`
`services, and it became increasingly complex to create a single device that could
`
`excel at many different functions. Id. Representing multiple services and
`
`1
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`Patent Owner’s Response
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`functions to a user on a single wireless mobile device presented challenges to user
`
`interface designers, particularly given the small display area. Id., 1:34-42.
`
`The ’466 patent provides a solution to this and other problems through, for
`
`example, a dynamic bar and an expanded dynamic bar, which is an expansion pop-
`
`up interface. Ex. 1001, 7:51-54. The dynamic bar 304 of Figure 5 includes counts
`
`of new events, e.g., new voice mail messages, email messages, SMS messages, or
`
`contacts online with which to chat. Id., 7:54-58. The dynamic bar could also
`
`include some details of a recent event, such as “Missed call from NNN ….” Id.,
`
`7:60-67. Figure 5 illustrates one example of a dynamic bar:
`
`Ex. 1001, Fig. 5.
`
`
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`2
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`
`
`The ’466 patent also describes expanding the dynamic bar to display
`
`additional information, such as unread emails in addition to new emails. Ex. 1001,
`
`7:29-40. This additional information can also include a preview of recent new
`
`emails. Id., 7:40-50. Expanded dynamic bars can also include links embedded in
`
`the additional information that allow the user to invoke the associated application.
`
`Id., 7:8:1-10. For example, the link “50 unread” in Figure 6 is additional
`
`information with an embedded link that would invoke the mail application:
`
`Ex. 1001, Fig. 6. The ’466 patent further describes this functionality with respect
`
`to, for example, Figures 3 and 4. Id., 7:20-50.
`
`
`
`Claim 1 is representative at this stage of the proceeding:
`
`1. A method for displaying preview information, the method
`comprising:
`
`3
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`displaying on a display dynamic preview information in a
`dynamic bar, the dynamic preview information being determined from
`information managed by a software application, the dynamic preview
`information being updated to reflect a change to the information
`managed by the software application; and
`
`expanding the dynamic bar to display an expanded dynamic bar
`in response to a first input, displaying the expanded dynamic bar
`comprising:
`
`displaying additional dynamic preview information determined
`from the information managed by the software application, the
`additional dynamic preview information being different from the
`dynamic preview information displayed in the dynamic bar;
`
`the additional dynamic preview information comprising a
`selectable link which when activated, invokes the software
`application.
`
`B.
`
`Priority Date and Relevant Prosecution History
`
`The ’466 patent is a continuation of and claims priority to the application
`
`that issued as U.S. Patent No. 8,402,384 (“’384 patent”), which was filed on
`
`November 9, 2004. The ’466 patent is entitled to this claim of priority, and the
`
`Petition does not argue otherwise. See Pet. 2-3. Because the prosecution history of
`
`the ’384 patent relates to the prosecution history of the ’466 patent and is relevant
`
`to the issues raised by the Petition, both are summarized in relevant part below.
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`4
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`i.
`
`The ’384 Patent’s Prosecution History
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`The application that led to the ’384 patent was filed on November 9, 2004
`
`and issued on March 19, 2013. Ex. 2003, Face. After several rounds of
`
`prosecution, including an appeal and subsequent reversal by the Board of Patent
`
`Appeals and Interferences (Ex. 1004, 294-301), the Examiner rejected the claims
`
`over Ögren (EP 1434411A1), which discloses selectable icons that initiate certain
`
`actions. See Ex. 1005, 266 (citing id., 579, 9:11-28). In response, Patent Owner
`
`amended the claims to recite “expanding the dynamic bar,” “displaying additional
`
`dynamic preview information,” and “displaying a selectable link embedded in the
`
`additional dynamic preview information to invoke the software application.” Id.,
`
`109.
`
`With respect to “a selectable link embedded in the additional dynamic
`
`preview information to invoke the software application,” the Patent Owner
`
`explained that the claimed “selectable link is embedded in the additional dynamic
`
`preview information of the expanded dynamic bar. That is, the selectable link may
`
`be selected by selecting a portion of the additional dynamic preview information,
`
`such as by moving a cursor over a portion of the dynamic preview information and
`
`actuating an input device.” Ex. 1005, 114-15. Patent Owner further argued that
`
`the claims require two levels of dynamic preview information, which “provides the
`
`user with at-a-glance information at two levels of detail, helping the user to decide
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`5
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`the level of interaction with the apparatus.” Ex.1005, 116-17 (emphasis in
`
`original). For example, “the user can see the count of unread emails in the
`
`dynamic bar, and make a decision whether he needs to check the unread emails.”
`
`Ex. 1005, 117. “When the user wants to check the emails, the user can expand the
`
`dynamic bar and see the sender and subject line of unread emails in the expanded
`
`dynamic bar. . . . [and] decide which, if any, of the unread emails to open up. . . .
`
`[by] invok[ing] the email application. . . .” Ex. 1005, 117. According to Patent
`
`Owner, this two-level dynamic preview information has a number of benefits,
`
`including “allow[ing] the user to minimize interaction with the apparatus, thereby
`
`improving convenience to the user and reducing the burden on the processing
`
`resources of the apparatus.” Ex. 1005, 117.
`
`The Examiner then rejected the claims as obvious over Ögren in view of
`
`Aaltonen et al. (U.S. Pat. App. Pub. No. 2006/0020904 A1). Ex. 1005, 84. The
`
`Examiner concluded that Ögren did not disclose “displaying a selectable link
`
`embedded in the additional dynamic preview information to invoke the software
`
`application,” but argued that this feature was obvious in view of Aaltonen. Id., 49.
`
`The Examiner relied on Aaltonen’s disclosure in Figure 22E, pointing to the
`
`“Mail” icon in element 2251 as the “selectable link” (yellow) and the mail
`
`information next to it on the right as the “dynamic preview information” (green):
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`6
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`
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`Ex. 2001, Fig. 22E (annotated); Ex. 1005, 85 (citing Fig. 22E, element 2251).
`
`In response, Patent Owner explained that Aaltonen did not teach or suggest
`
`“a selectable link embedded in the additional dynamic preview information to
`
`invoke the software application.” Ex. 1005, 70-71. Patent Owner characterized
`
`this requirement as follows:
`
`Claim 28 recites “displaying a selectable link embedded in the
`additional dynamic preview information to invoke the software
`application”. This is shown, for example, in FIGS. 4 and 6 of the present
`application, and described in paragraphs [0046] and [0048]. A person
`skilled in the art would understand that a “selectable link” is a portion
`of the display, often text, which a user can select, for example by
`positioning a cursor over the link and actuating an input device, such as
`a mouse button or a clickable trackball switch. This selectable link is
`embedded in the additional dynamic preview information of the
`expanded dynamic bar. That is, the selectable link may be selected by
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`7
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`selecting a portion of the additional dynamic preview information, such
`as by moving a cursor over a portion of the dynamic preview
`information and actuating an input device.
`
`Id., 70. Patent Owner explained that Aaltonen did not disclose selectable links that
`
`are “embedded in the additional dynamic preview information.” Id., 71.
`
`Specifically, “[a]s shown in FIG. 22e, the mail icon, which the Office Action has
`
`interpreted as being a selectable link, is separate from and not embedded in the
`
`displayed information. For example, in the item 2251, the mail icon is shown apart
`
`from the information about the mail (in this case, the name of the sender, the time
`
`of receipt and a portion of the mail message) and is not embedded in the mail
`
`information.” Id. In other words, because Aaltonen’s “Mail” icon was not
`
`“embedded in” the “dynamic information,” it could not meet the requirements of
`
`the claims.
`
`The Examiner subsequently withdrew the rejections and issued a new non-
`
`final rejection, which dropped Aaltonen in favor of Wagner (U.S. Pat. App. Pub.
`
`No. 2004/0155908 A1) (Ex. 2002) as a secondary reference determining that
`
`Wagner discloses “displaying a selectable link embedded in the additional
`
`dynamic preview information to invoke the software application.” Ex. 1005, 48-
`
`50. In response, Patent Owner repeated—for the third time—that “[a] person
`
`skilled in the art would understand that a ‘selectable link’ is a portion of the
`
`display, often text, which a user can select, for example by positioning a cursor
`8
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`over the link and actuating an input device, such as a mouse button or a clickable
`
`trackball switch. This selectable link is embedded in the additional dynamic
`
`preview information of the expanded dynamic bar. That is, the selectable link may
`
`be selected by selecting a portion of the additional dynamic preview information,
`
`such as by moving a cursor over a portion of the dynamic preview information and
`
`actuating an input device.” Ex. 1005, 39. The Examiner then allowed the claims
`
`“in light of applicants’ arguments and prior art made of record,” id., 12. This
`
`“prior art made of record” includes Cadiz-EP (EP-1265157 A2) (Ex. 1011), which
`
`has the same operative disclosure as the Cadiz reference now relied upon by the
`
`Petition. Ex. 1001, [56] (citing Cadiz-EP); Ex. 1005, 91, 213-56 (showing
`
`consideration of Cadiz-EP). See also Ex. 2007, ¶¶33-37.
`
`ii.
`
`The ’466 Patent’s Prosecution History
`
`The application that led to the ’466 patent was filed on February 19, 2013 as
`
`a continuation of the application that led to the ’384 patent, and the ’466 patent
`
`issued on April 29, 2014. After an initial round of prosecution, the Examiner
`
`rejected (1) the independent claims for obviousness-type double patenting over
`
`claim 1 of the ’384 patent, and (2) many of the claims over the Ögren reference in
`
`view of Anderson (U.S. Patent No. 6,486,914). Ex. 1004, 61-72. The Examiner
`
`also indicated that dependent claim 39 was allowable over the art of record. Id.,
`
`70. Claim 39 recited the following limitations:
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`9
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`displaying a selectable link embedded in the additional dynamic
`preview information to invoke the software application; and
`
`activating the software application in response to a second input
`invoking the link
`
`Id., 105. These limitations correspond to the limitations that Patent Owner
`
`repeatedly discussed during prosecution of the ’384 patent. See Ex. 1005, 39, 70-
`
`71, 114-15; see § II.B.i above.
`
`
`
`In response, Patent Owner filed a terminal disclaimer against the ’384 patent
`
`and amended all of the pending independent claims to recite features relating to the
`
`concept of displaying a selectable link embedded in the additional dynamic
`
`preview information: “the additional dynamic preview information comprising a
`
`selectable link which when activated, invokes the software application.” Ex. 1004,
`
`44-53. After entering the amendment, the Examiner noted that “[a]s a result of the
`
`amendments and in light of the arguments, the claims as a whole are allowable
`
`over the cited prior art.” Ex. 1004, 20. The ’466 patent issued on April 29, 2014.
`
`Ex. 1004, 1. See also Ex. 2007, ¶¶31, 38-39.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art in the field of the ’466 patent would have had
`
`(1) at least a bachelor’s degree in computer science, electrical engineering, or the
`
`equivalent, and (2) at least two years of experience in researching, designing,
`
`and/or developing graphical user interfaces for communication devices, such as
`10
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`cellular telephones, personal digital assistances (PDA), and other communication
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`devices, particularly those which communicate over a wireless network. Ex. 2007,
`
`¶¶40-43.
`
`The key difference between Patent Owner’s level of skill in the art and
`
`Petitioner’s level of skill in the art is that Petitioner identifies the “relevant field”
`
`broadly as graphical user interfaces. Pet. 3 (“at least two years of experience in the
`
`relevant field, e.g., graphical user interfaces.”) (emphasis added). But the ’466
`
`patent is not directed to graphical user interfaces generally. Rather it is directed to
`
`user interfaces for communications devices. Ex. 1001, 1:15-17 (“The present
`
`invention relates generally to communication devices, and more particularly to a
`
`graphical user interface for controlling such devices.”); Ex. 2007, ¶44.
`
`III. Claim Construction
`
`Under the broadest reasonable interpretation standard, claims are evaluated
`
`using the plain and ordinary meaning of their words from the perspective of a
`
`person of ordinary skill in the art in the context of the entire patent disclosure.
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“A
`
`construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect
`
`the plain language and disclosure’ will not pass muster.”), overruled on other
`
`grounds, Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc).
`
`In an inter partes review, this meaning requires consideration of the prosecution
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`history: “The PTO should also consult the patent’s prosecution history in
`
`proceedings in which the patent has been brought back to the agency for a second
`
`review.” Microsoft, 789 F.3d at 1298 (citing Tempo Lighting Inc. v. Tivoli LLC,
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`742 F.3d 973, 978 (Fed. Cir. 2014)). This includes giving weight to clarifying
`
`amendments made during the original prosecution. Tempo Lighting, 742 F.3d at
`
`977-78.
`
`A.
`
`“Additional Dynamic Preview Information Comprising a
`Selectable Link” (All Claims)
`
`Each of independent claims 1, 14, and 22 recites, among other elements,
`
`“additional dynamic preview information comprising a selectable link.”
`
`The plain language of the claims, ’466 patent specification, and prosecution
`
`history all demonstrate that the claim element “additional dynamic preview
`
`information comprising a selectable link” requires the “additional dynamic
`
`preview information” to be preview information that is dynamic and requires the
`
`“selectable link” to include such dynamic preview information.
`
`In its Institution Decision, the Board agreed with Patent Owner that, based
`
`on the plain and ordinary meaning of “comprising,” “additional dynamic preview
`
`information comprising a selectable link” requires that the selectable link be part
`
`of the additional dynamic preview information. Dec. 6. The Board found,
`
`however, that “as long as some of the preview information in a display window,
`
`for example, contains dynamic preview information not shown in the dynamic bar,
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`the entirety of the preview information may be considered ‘additional dynamic
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`preview information’” and that “[s]uch additional dynamic preview information
`
`may include information, such as a static link . . . .” Dec. 10. The Board’s
`
`preliminary construction is overly broad—even under the BRI standard applicable
`
`here—and unsupported by the intrinsic evidence. See D’Agostino v. MasterCard
`
`Int’l Inc., 844 F.3d 945, 948 (Fed. Cir. 2016) (“‘The protocol of giving claims their
`
`broadest reasonable interpretation . . . does not include giving claims a legally
`
`incorrect interpretation.’”) (citation omitted).
`
`First, by construing “additional dynamic preview information” broadly to
`
`cover information that is not dynamic, the Board is reading the term “dynamic” out
`
`of the claims. The plain language of the claims recites “additional dynamic
`
`preview information,” not merely “additional preview information” or even
`
`“additional preview information comprising dynamic information.”
`
`In its Institution Decision, the Board claims to have adopted Petitioner’s
`
`“implicit” construction of “additional dynamic preview information” (Dec. 6, 10),
`
`but even Petitioner did not propose—either expressly or implicitly—a construction
`
`as broad as the Board’s. The Petition does not allege that all of the information in
`
`a display window may be considered “additional dynamic preview information” so
`
`long as the window includes dynamic preview information not shown in the
`
`dynamic bar, as the Board asserts (Dec. 6, 10). Instead, the Petition points to
`
`13
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`Patent Owner’s Response
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`specific elements within the display window (not the entire window itself) as the
`
`alleged “additional dynamic preview information” and argues that such elements
`
`qualify as “additional dynamic preview information” because they are, among
`
`other things, dynamic. See, e.g., Pet. 19 (regarding person-centric interface: “As
`
`shown in FIG. 8B, the further information includes additional and more detailed
`
`dynamic preview information, such as unread items/topics . . . , ‘a time 845 since
`
`the person represented by the person item 820 was last available . . . for each
`
`communication channel 840’ . . . , and ‘historical, average, or predicted
`
`availability for particular entities. . . . Therefore, the further information displayed
`
`in the person window of FIG. 8B . . . is dynamic and different than the information
`
`displayed in the sidebar of FIG. 8A . . . .”) (emphasis added), 22 (regarding email-
`
`centric interface: “[T]he email window 1020 includes additional dynamic
`
`information about the email messages, such as ‘From’/‘Subject’/‘Received’
`
`information. . . . Therefore, the additional information displayed in the email
`
`window 1020 . . . is dynamic and different from the information displayed in the
`
`sidebar 1000 . . . .”) (emphasis added). Thus, contrary to the Board’s
`
`interpretation, even Petitioner appears to agree that the claimed “additional
`
`dynamic preview information” must be preview information that is dynamic.
`
`According to the claims, the claimed “expanded dynamic bar” comprises
`
`“additional dynamic preview information.” See, e.g., Ex. 1001, cl. 1. Thus, while
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`14
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`IPR2017-00914 (U.S. Patent No. 8,713,466)
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`an “expanded dynamic bar” (e.g., a display window) may comprise both dynamic
`
`and non-dynamic preview information, only the additional dynamic preview
`
`information meets the requirement of the plain language of the claims.
`
`Accordingly, the plain language of the claims requires “additional dynamic
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`preview information” to be preview information that is dynamic. And because the
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`claims recite that the “additional dynamic preview information” comprises (or
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`includes) a “selectable link,” it logically follows that the selectable link must also
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`include information that is dynamic.
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`The ’466 patent specification further supports Patent Owner’s construction.
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`The specification uses the term “dynamic preview information” twice and each
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`time describes information that is itself dynamic (e.g., counts of new events,
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`information about a missed call):
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`Dynamic bar 304 of FIGS. 5 and 6 includes counts of new events 502
`(e.g. new voice mail messages, email messages, SMS messages or
`contacts online with which to chat). As such, mobile stations status
`portion 306 need not display such dynamic preview information.
`Other events types may be counted and displayed such as available
`friends or groups for Push-to-Talk over Celluar (POC) calls etc. The
`dynamic preview information need not be limited to a count. For
`example, the information may include some details of a recent event,
`which may be displayed temporarily for example. One such example
`is information about a missed call (e.g. “Missed call from NNN . . . ”)
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`Patent Owner’s Response
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`which may be temporarily displayed. Thereafter, count or other
`preview information may be displayed.
`Ex. 1001, 7:54-67 (emphasis added)1. Thus, the ’466 patent specification further
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`supports that “additional dynamic preview information” is limited to preview
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`information that is dynamic.
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`The prosecution history of the parent ’384 patent further “reinforces the
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`evident meaning” of “additional dynamic preview information comprising a
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`selectable link.” D’Agostino, 844 F.3d at 949 (vacating final written decisions
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`where Board’s construction was inconsistent with patent’s prosecution history);
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`Microsoft, 789 F.3d at 1298 (“The PTO should also consult the patent’s
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`prosecution history in proceedings in which the patent has been brought back to the
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`agency for a second review.”); Adv. Cardiovascular Sys., Inc. v. Medtronic
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`1 The Board appears to discount this disclosure in the specification because it
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`describes “dynamic preview information” rather than “additional dynamic preview
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`information.” Dec. 6-7. But the specification’s description of “dynamic preview
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`information” would have informed a POSA’s understanding of “additional
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`dynamic preview information” because a POSA would have understood that
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`“additional dynamic preview information,” as used in the claims, is merely other
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`and different “dynamic preview information.” Ex. 2007, ¶49 n.1.
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`Vascular, Inc., 182 F. App’x 994, 998-99 (Fed. Cir. 2006) (prosecution history of
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`parent application applies equally to child patent where claim terms are
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`synonymous because “like terms should be construed consistently across related
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`claims”). As explained above (§II.B.i), during prosecution of the parent ’384
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`patent, the Examiner rejected the pending claims in view of Ögren (EP 1434411
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`A1). The Patent Owner amended then-pending limitation “a link to invoke the
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`software application” to “displaying a selectable link embedded in the additional
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`dynamic preview information to invoke the software application.” Ex.1005, 109
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`(added language underlined).2 The Patent Owner then explained that in the
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`amended claims the “selectable link is embedded in the additional dynamic
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`preview information of the expanded dynamic bar. That is, the selectable link may
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`
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`2 The limitation “selectable link embedded in the additional dynamic preview
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`information” is the same as the limitation that was in pending claim 39 during
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`prosecution of the ’466 patent and that the Examiner deemed allowable. Ex. 1004,
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`70, 105. Prior to allowance, Patent Owner amended all of the pending independent
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`claims to recite features relating to the concept of displaying a selectable link
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`embedded in the additional dynamic preview information: “the additional dynamic
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`preview information comprising a selectable link which when activated, invokes
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`the software application.” Ex. 1004, 44-53.
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`be selected by selecting a portion of the additional dynamic preview information,
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`such as by moving a cursor over a portion of the dynamic preview information
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`and actuating an input device.” Ex. 1005, 114-15 (bolded italics added). Because,
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`as Patent Owner explained, the “selectable link” is a “portion” of the “additional
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`dynamic preview information,” the “selectable link” must include dynamic
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`preview information.
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`The Examiner subsequently rejected the claims as obvious in view of Ögren
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`and Aaltonen (US2006/0020904 A1). E.g., Ex. 1005, 84-85. The Examiner
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`determined that Figure 22E (items 2251-2255) of Aaltonen (annotated below)
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`disclosed “displaying a selectable link embedded in the additional dynamic
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`preview information to invoke the software application . . . .” Ex. 1005, 85.
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`In response, Patent Owner distinguished the Aaltonen reference by explaining that
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`Aaltonen’s Figure 22E does not disclose “a selectable link embedded in the
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`additional dynamic preview information to invoke the software application”
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`because Aaltonen’s “link” (yellow) is not “embedded” in the “additional dynamic
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`preview information” (green):
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`[T]here is . . . no teaching or suggestion of selectable links that are
`“embedded in the additional dynamic preview information,” as
`presently claimed. As shown in FIG. 22E, the mail icon, which the
`Office Action has interpreted as being a selectable link, is separate from
`and not embedded in the displayed information. For example, in the
`item 2251, the mail icon is shown apart from the information about
`the mail (in this case, the name of the sender, the time of receipt and a
`portion of the mail message) and is not embedded in the mail
`information.
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`Ex. 1005, 71 (italicized emphasis added). The Patent Owner again emphasized
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`that, on the other hand, the ’384 patent’s claimed “selectable link may be selected
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`by selecting a portion of the additional dynamic preview information, such as by
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`moving a cursor over a portion of the dynamic preview information and actuating
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`an input device.” Ex. 1005, 70 (bolded italics added).
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`Thereafter, the Examiner rejected the claims as obvious in vi