Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`
`
`U.S. Patent No. 8,209,634 B2
`Issue Date: June 26, 2012
`
`Title: PREVIEWING A NEW EVENT ON A SMALL SCREEN DEVICE
`
`DECLARATION OF SANDEEP CHATTERJEE, PH.D.
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`Facebook's Exhibit No. 1002
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`Table of Contents
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`Page
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`2. 
`
`B. 
`
`
`
`I. 
`
`II. 
`III. 
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`
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`
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A.  Qualifications and Experience ............................................................. 1 
`B.  Materials Considered ............................................................................ 4 
`PERSON OF ORDINARY SKILL IN THE ART ......................................... 6 
`STATEMENT OF LEGAL PRINCIPLES ..................................................... 8 
`A. 
`Claim Construction .............................................................................. 8 
`IV.  THE ’634 PATENT ...................................................................................... 10 
`A.  Overview of the Specification ............................................................ 10 
`B. 
`The Challenged Claims ...................................................................... 13 
`C. 
`Disputed Claim Terms ....................................................................... 14 
`1. 
`“Wireless Communication Device” ......................................... 14 
`2. 
`“Messaging Correspondent” .................................................... 23 
`3. 
`“numeric character representing a count of the plurality
`of different message correspondents for which one or
`more of the electronic messages have been received and
`remain unread” ......................................................................... 24 
`V.  APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ........... 25 
`A. 
`Brief Summary of Prior Art ............................................................... 26 
`1. 
`Prior Art for Ground 1 ............................................................. 26 
`(a)  Ording [Ex. 1003] .......................................................... 26 
`(b)  Canfield [Ex. 1004] ....................................................... 29 
`(c) 
`Schwartz [Ex. 1005] ...................................................... 39 
`Prior Art for Ground 2 ............................................................. 40 
`(a)  McPherson [Ex. 1012] ................................................... 40 
`Ground 1: Obviousness of Claims 1, 4-5, 7, 10-11, 13 and 16-
`17 Over Ording in view of Canfield and Schwartz ............................ 43 
`1. 
`Claim 1 ..................................................................................... 43 
`-i-
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`Table of Contents
`(continued)
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`Page
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`(a) 
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`(b) 
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`(c) 
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`
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`C. 
`
`“displaying at least one icon relating to electronic
`messaging on a graphical user interface of the
`wireless communication device” (Claim 1[a]) .............. 55 
`“receiving a plurality of electronic messages on the
`wireless communication device, the plurality of
`electronic messages including messages from a
`plurality of different messaging correspondents”
`(Claim 1[b]) ................................................................... 58 
`“in response to receiving at least one of the
`plurality of electronic messages, visually
`modifying at least one displayed icon relating to
`electronic messaging to include a numeric
`character representing a count of the plurality of
`different messaging correspondents for which one
`or more of the electronic messages have been
`received and remain unread.” (Claim 1[c]) .................. 63 
`Claim 4 ..................................................................................... 80 
`2. 
`Claim 5 ..................................................................................... 81 
`3. 
`Claim 7 ..................................................................................... 84 
`4. 
`Claims 10-11 ............................................................................ 88 
`5. 
`Claim 13 ................................................................................... 89 
`6. 
`Claims 16-17 ............................................................................ 91 
`7. 
`Ground 2: Obviousness of Claims 6, 12 and 18 Over Ording in
`view of Canfield, Schwartz, and McPherson ..................................... 92 
`D.  Grounds 3-4: Further Combination with Strom if “Wireless
`Communication Device” Requires a Small Screen Display ............ 100 
`VI.  NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .... 114 
`VII.  CONCLUSION ........................................................................................... 117 
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`-ii-
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`Facebook's Exhibit No. 1002
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`I, Sandeep Chatterjee, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I am the Chief Executive Officer of Experantis LLC, a technology
`
`consulting company. I am also the Dean of the Mobility Center of Excellence at the
`
`International Institute of Digital Technologies. Previously, I was the Executive Vice
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`President and Chief Technology Officer of SourceTrace Systems, Inc., a technology
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`and services company enabling the delivery of secure remote electronic services
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`over landline and wireless telecommunications networks.
`
`2.
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`I received my bachelor’s degree in Electrical Engineering and
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`Computer Science from the University of California, Berkeley in 1995. I received
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`my master’s degree in Computer Science from the Massachusetts Institute of
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`Technology (MIT) in 1997, and my doctorate in Computer Science from MIT in
`
`2001. I received a certificate of completion for an executive education program on
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`global leadership from Harvard University in 2011. My doctoral dissertation at MIT,
`
`entitled “Composable System Resources for Networked Systems,” which involved
`
`networked client architectures and systems, was selected as one of the top inventions
`
`in the history of MIT’s Laboratory for Computer Science. This invention is
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`showcased in a time capsule at the Museum of Science in Boston, Massachusetts.
`
`3.
`
`In 2011, I was named a Young Global Leader. This honor, bestowed
`1
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`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`each year by the World Economic Forum, recognizes and acknowledges the top
`
`leaders—all below the age of 40—from around the world for their professional
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`accomplishments, commitment to society, and potential to contribute to shaping the
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`future of the world. In 2016, I was appointed to the World Economic Forum’s expert
`
`network as an expert in technology and innovation, and I advise world leaders on
`
`issues related to technology and innovation.
`
`4.
`
`From 1997, I was the Entrepreneur-in-Residence at FidelityCAPITAL,
`
`the venture capital arm of Fidelity Investments. In 1999, I founded and served as
`
`President and Chief Technology Officer (CTO) of Satora Networks, which
`
`developed tools and technologies for building appliances and services for the
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`Internet using wireless and other technologies to extend it beyond the desktop.
`
`5.
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`In 2001, I joined Bluestone Software’s Mobile Middleware Labs as a
`
`Senior Engineer developing applications and systems infrastructure for enterprise
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`Java/J2EE, Web services, and enterprise mobile solutions. After the completion of
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`Hewlett-Packard’s (“HP”) acquisition of Bluestone, I became a Senior Member of
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`the Technical Staff at HP’s Middleware Division. I was responsible for architecting
`
`and developing the company’s next-generation Web services platform for enterprise
`
`as well as mobile environments, known as the Web Services Mediator.
`
`6.
`
`I was part of the Expert Group that developed the JSR-00172 J2ME
`
`
`
`2
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`(Java 2 Platform, Micro Edition) Web Services Specification, the worldwide
`
`standard for mobile Web services. I am the co-author, with James Webber, of the
`
`book “Developing Enterprise Web Services: An Architect’s Guide” (published by
`
`Prentice-Hall in 2004). This book has been adopted by over 100 universities and
`
`colleges around the world and has been translated or reprinted in numerous countries
`
`around the world.
`
`7.
`
`I have extensive experience in architecting, developing, optimizing,
`
`deploying, and managing complex computing systems, including mobile computing
`
`systems and messaging based systems, throughout the world. I have architected and
`
`developed mobile and distributed computing systems, including hardware and
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`software for these systems. I have developed mobile messaging solutions that
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`support different types of multimedia messages and that provide notifications. As
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`part of supporting multiple devices and form factors, I have extensive experience
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`with a number of relevant technologies, including web technologies, and with the
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`design and creation of client and server software, devices, and systems, as well as
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`user interfaces that allow users to send, receive, access, and view content distributed
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`on the web, including text and multimedia.
`
`8.
`
`I have been an invited speaker at conferences throughout the world,
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`including the 2003 Automated Software Engineering Conference, the 2003 and 2004
`
`
`
`3
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`International Multiconference in Computer Science & Computer Engineering, the
`
`2004 IASTED International Conference on Software Engineering and Applications,
`
`and the 2004 IEEE International Conference on e-Technology, e-Commerce, and e-
`
`Service. I served as the General Chair for the 2004 International Symposium on Web
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`Services and Applications. I also have served as a columnist on mobile and
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`enterprise software systems for a number of IT magazines, including Java Boutique
`
`and Dataquest.
`
`9.
`
`I have attached a more detailed list of my qualifications as Exhibit A.
`
`10. Experantis is being compensated for my time working on this matter at
`
`my standard hourly rate plus expenses. Neither Experantis nor I have any personal
`
`or financial stake or interest in the outcome of the present proceeding, and the
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`compensation is not dependent on the outcome of this IPR and in no way affects the
`
`substance of my statements in this Declaration.
`
`B. Materials Considered
`11. The analysis that I provide in this Declaration is based on my education
`
`and experience in the field of computer systems, as well as the documents I have
`
`considered, including U.S. Patent No. 8,209,634 B2 (“’634 patent”) [Ex. 1001] and
`
`its prosecution history. The ’634 patent states on its face that it issued from an
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`application filed on February 24, 2004 and claims priority to provisional application
`
`
`
`4
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`filed on December 1, 2003. For purposes of this Declaration, I have assumed
`
`December 1, 2003 as the effective filing date for the ’634 patent. I have cited to the
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`following documents in my analysis below:
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 8,209,634 B2 to Gerhard D. Klassen et al. (filed Feb.
`24, 2004, issued June 26, 2012) (“’634” or “’634 patent”)
`1003 U.S. Patent No. 7,434,177 B1 to Bas Ording et al. (filed Dec. 20,
`1999, issued Oct. 7, 2008) (“Ording”)
`1004 U.S. Patent No. 7,281,215 B1 to James Andrew Canfield et al. (filed
`July 31, 2002, issued Oct. 9, 2007) (“Canfield”)
`1005 Excerpts from Joe Schwartz, The Complete Idiot’s Guide to Online
`Dating and Relating (1999) (“Schwartz”)
`1006 U.S. Patent Application Pub. No. 2004/0056893 A1 to James Andrew
`Canfield et al. (filed Oct. 31, 2002, published Mar. 25, 2004)
`1007 Redline comparison between U.S. Patent No. 7,281,215 B1 (Ex. 1004)
`and U.S. Patent Application Pub. No. 2004/0056893 (Ex. 1006)
`1008 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`1009 U.S. Patent Application Pub. No. 2002/0142758 A1 to Hajime Abiko
`et al. (filed Jan. 7, 2002, published Oct. 3, 2002) (“Abiko”)
`1012 Excerpts from Frank McPherson, How to Do Everything with Your
`Pocket PC (2d ed. 2002) (“McPherson”)
`
`1013
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`Prosecution history for U.S. Patent Application No. 10/784,781, which
`issued as the ’634 patent
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`5
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`Exhibit
`Description of Document
`No.
`1014 Nokia 9210i Communicator, web page from <www.nokia.com>, cited
`by the Examiner during prosecution of the ’634 patent and included
`among non-patent literature (NPL) in the ’634 file history
`1015 David Strom, Three New Wireless E-Mail Devices, Computerworld,
`Nov. 8, 1999 (“Strom”)
`1016 Affidavit of Christopher Butler
`https://web.archive.org/web/20010806175758/http://www.blackberry.
`net/solutions/enterprise/handhelds/specifications.shtml
`1017 Excerpts from Random House Webster’s College Dictionary (2000)
`1018
`Stephen Manes, A Pocketful of Windows, Forbes, Oct. 29, 2001
`1022
`
`Joint Statement Regarding Disputed Claim Terms, BlackBerry Limited
`v. Facebook, Inc. et al., No. 2:18-cv-01844-GW-KS (C.D. Cal.), ECF
`No, 135, filed on March 26, 2019
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`12.
`I understand that an assessment of claims of the ’634 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is December 1, 2003. I have also
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`been advised that to determine the appropriate level of a person having ordinary skill
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`in the art, the following factors may be considered: (1) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (2) the
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`sophistication of the technology in question, and the rapidity with which innovations
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`occur in the field; (3) the educational level of active workers in the field; and (4) the
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`educational level of the inventor.
`
`13. The ’634 patent states
`
`that
`
`it “relates generally
`
`to wireless
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`communication devices, and more particularly to graphical user interfaces for
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`controlling such devices.” (’634, 1:12-14.) In my opinion, a person of ordinary skill
`
`in the art as of December 2003 would have possessed at least a bachelor’s degree in
`
`software engineering, computer science, computer engineering, or electrical
`
`engineering with at least two years of experience in software application
`
`development, including development of graphical applications on wireless devices,
`
`such as development of associated user interface features and functionality (or
`
`equivalent degree or experience). A person could also have qualified as a person of
`
`ordinary skill in the art with some combination of (1) more formal education (such
`
`as a master’s of science degree) and less technical experience or (2) less formal
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`education and more technical or professional experience in the fields listed above.
`
`For example, a person of ordinary skill in the art would have acquired, as part of his
`
`or her basic computer education and/or experience, a working knowledge about
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`messaging applications, such as e-mail and instant messaging applications (e.g.,
`
`AOL Instant Messenger), and related notification functionality, such as notification
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`icons, which the ’634 patent acknowledges were known. (’634, 1:41-67.)
`
`14. My opinions regarding the level of ordinary skill in the art are based
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`
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`7
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`on, among other things, my more than 20 years of experience in computer science,
`
`my understanding of the basic qualifications that would be relevant to an engineer
`
`or scientist tasked with investigating methods and systems in the relevant area, and
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`my familiarity with the backgrounds of colleagues, co-workers, and employees, both
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`past and present.
`
`15. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’634 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of December 2003.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`16.
`I understand that under the legal principles, claim terms are generally
`
`given their ordinary and customary meaning, which is the meaning that the term
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application. I further
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`understand that the person of ordinary skill in the art is deemed to read the claim
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`term not only in the context of the particular claim in which a claim term appears,
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`but in the context of the entire patent, including the specification.
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`17.
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`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`understand for terms that do not have a customary meaning within the art, the
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`specification usually supplies the best context of understanding the meaning of those
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`terms.
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`18.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as to
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`the meaning of a claim term. Because the claim terms are normally used consistently
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`throughout the patent, the usage of a term in one claim can often illuminate the
`
`meaning of the same term in other claims. Differences among claims can also be a
`
`useful guide in understanding the meaning of particular claim terms.
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`19.
`
`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`and whether the inventors limited the invention in the course of prosecution, making
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
`
`be consulted in construing the claim terms, such as my expert testimony.
`
`20.
`
`I have been informed by counsel that, in Inter Partes Review (IPR)
`
`proceedings, a claim of a patent shall be construed using the same claim construction
`
`standard that would be used to construe the claim in a civil action filed in a U.S.
`
`district court (which I understand is called the “Phillips” claim construction
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`standard), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.
`
`21.
`
`I have been instructed by counsel to apply the “Phillips” claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the “Phillips” standard
`
`as provided to me by counsel.
`
`IV. THE ’634 PATENT
`A. Overview of the Specification
`22. The ’634 patent, entitled “Previewing a New Event on a Small Screen
`
`Device,” states that it “relates generally to wireless communication devices, and
`
`more particularly to graphical user interfaces for controlling such devices.” (’634,
`
`1:12-14.) The ’634 patent acknowledges the availability and use of commercially-
`
`available messaging systems, such as AOL Instant Messenger and Microsoft
`
`Network (MSN), including their use on wireless devices. (’634, 1:53-58.) The ’634
`
`patent asserts the operation or use of these systems could be improved:
`
`When a user is notified of a new event such as a new IM [instant
`messaging] message, the user is required to check each of their IM
`service applications separately, via their respective activation icons, to
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`determine which IM service is responsible for the new event. Checking
`each service is inconvenient. Moreover, there is a demand to have
`information made available to a user quicker than previously available
`in order to optimize the control of the wireless device.
`
`(’634, 1:60-67.)
`
`23. The specification of the ’634 patent describes a mobile station (also
`
`referred to in the specification and claims as a “wireless communication device”)
`
`that provides a graphical user interface having “a main screen and a plurality of sub-
`
`screens navigable from the main screen.” (’634, 7:28-31.) An example of a main
`
`screen is depicted in Figure 3, below:
`
`
`(’634, Fig. 3 (red box added).) Referring to Figure 3, the ’634 patent states that main
`
`
`
`screen 300 may display icons for various software applications, such as icons 304,
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`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`306, and 308 for respective IM applications IM 1, IM 2, and IM 3 (see red box in
`
`figure above). (’634, 7:36-44.)
`
`24. The ’634 patent states that “an icon (e.g. 304) may be visually modified
`
`in response to a new event from the application associated with the icon to provide
`
`an immediate notification of the event via a change in main screen 300.” (’634,
`
`7:59-63.) For example, Figure 4 shown below depicts “an illustration of the main
`
`screen 300 after a new IM event, for example, a new message, has arrived into one
`
`of the IM applications, namely IM 2, associated with icon 306.” (’634, 8:1-4.)
`
`
`(’634, 8:4-8, Fig. 4 (red box and yellow highlighting added).) As shown above, the
`
`
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`main screen 300 includes a “visual modification 400 comprising a bubble, alluding
`
`to new received text, and a numeric indicator ‘1’ representing a count of new events,
`
`which in this case are unread messages.” (’634, 8:4-8.)
`
`25. The ’634 patent further states that “[p]ersons of ordinary skill in the art
`
`will appreciate that a visual modification 400 different from a bubble may be used
`
`and the count may represent other information, such as the number of correspondents
`
`or ‘buddies’ from which one or more messages have been received but remain
`
`unread.” (’634, 8:8-13 (underlining added).)
`
`B.
`The Challenged Claims
`26. This Declaration addresses claims 1, 4-7, 10-13, and 16-18 of the ’634
`
`patent. Independent claim 1 and dependent claims 4-6 are representative and recite:
`
`1. A method of providing notifications of unread messages on a wireless
`communication device, comprising:
`
`[a]
`
`[b]
`
`[c]
`
`displaying at least one icon relating to electronic messaging on a
`graphical user interface of the wireless communication device;
`
`the wireless
`receiving a plurality of electronic messages on
`communication device, the plurality of electronic messages including
`messages from a plurality of different messaging correspondents; and
`
`in response to receiving at least one of the plurality of electronic
`messages, visually modifying at least one displayed icon relating to
`electronic messaging to include a numeric character representing a
`13
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`
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`

`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`count of the plurality of different messaging correspondents for which
`one or more of the electronic messages have been received and remain
`unread.
`
`4.
`
`5.
`
`6.
`
`The method of claim 1, the at least one icon relating to electronic
`messaging being selectable to invoke an electronic messaging
`application.
`
`The method of claim 1, comprising displaying on the graphical user
`interface an identifier of the correspondent from whom at least one of
`the plurality of messages was received.
`
`The method of claim 1, comprising displaying on the graphical user
`interface at least one preview of content associated with at least one of
`the received electronic messages.
`
`(’634, 11:13-28 (Claim 1).) The remaining claims are, for purposes of my
`
`Declaration, substantially similar to claims 1 and 4-7. Claims 7/10-12 and claims
`
`13/16-18 recite a “computer-readable memory” and a “wireless communication
`
`device,” respectively, for performing the steps recited in method claims 1 and 4-7,
`
`above. I address the claims further in my detailed analysis in Part V below.
`
`C. Disputed Claim Terms
`1.
`“Wireless Communication Device”
`I understand that in the related district court litigation, Patent Owner
`
`27.
`
`has contended that the term “wireless communication device” refers to a “small-
`
`
`
`14
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`screen wireless mobile device.” (Ex. 1022, at p.5:20-23.) I respectfully disagree
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`with this interpretation for several reasons. I have nevertheless provided analysis
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`that accounts for this proposed construction, so even if “wireless communication
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`device” were construed in the manner suggested by the Patent Owner, it would not
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`change my opinion that the challenged claims would have been obvious to a person
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`of ordinary skill.
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`28. Wireless communications capabilities were well known by December
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`2003, including through popular IEEE 802.11 (also known as “Wi-Fi”) wireless
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`networking.1 Laptop computers frequently came with Wi-Fi capability, and persons
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`of ordinary skill in the art would not have considered typical laptop computers to be
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`1 For example, the Microsoft Computer Dictionary (5th ed. 2002) (Ex. 1008),
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`includes an entry for “IEEE 802.11” and explains that it refers to “[t]he Institute of
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`Electrical and Electronics Engineers’ (IEEE) specifications for wireless networking.
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`These specifications, which includes 802.11, 802.11a, 802.11b, and 802.11g, allow
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`computers, printers, and other devices to communicate over a wireless local area
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`network (LAN).” (Ex. 1008, p.266; see also id., p.572 (entry for “wireless LAN”
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`stating that “[w]ireless LANs are often used in office or factory settings where a user
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`must carry a portable computer from place to place.”).)
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`15
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`Facebook's Exhibit No. 1002
`0018
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`

`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`small screen devices (like personal digital assistants (PDAs)), as they were designed
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`to run the same applications that could be run on a desktop with a full-size display.
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`29.
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`I understand that Patent Owner has argued, among other things, that its
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`construction is supported by the title of the patent: “Previewing a New Event on a
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`Small Screen Device.” I am informed by counsel that, under the patent laws, the
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`purpose of a patent’s title is not to demarcate the precise boundaries of the claimed
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`invention but rather to provide a useful reference tool for classification purposes. In
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`this case, I find the title to have little relevance in assessing claim construction issues
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`because the specification of the patent itself makes clear that a “mobile station” may
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`be (but is not limited to) a small screen device.
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`30. For example, “Description of the Related Art” states that “[w]ireless
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`devices are usually small relative to less portable computing devices such as laptops
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`and desktop computers.” (’634, 1:36-37 (underlining added).) The Detailed
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`Description that follows explains that the “mobile station” on which the alleged
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`invention is carried out can include any wireless computing device without regard
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`to screen size – including ordinary computers and laptop computers:
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`Mobile station 102 may consist of a single unit, such as a data
`communication device, a multiple-function communication device with
`data and voice communication capabilities, a personal digital assistant
`(PDA) enabled
`for wireless communication, or a computer
`
`
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`16
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`Facebook's Exhibit No. 1002
`0019
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`incorporating an internal modem. Alternatively, mobile station 102
`may be a multiple-module unit comprising a plurality of separate
`components, including but in no way limited to a computer or other
`device connected to a wireless modem. In particular, for example, in
`the mobile station block diagram of FIG. 1, RF transceiver circuitry 108
`and antenna 110 may be implemented as a radio modem unit that may
`be inserted into a port on a laptop computer. In this case, the laptop
`computer would include display 112, keyboard 114, one or more
`auxiliary UIs 116, and controller 106 embodied as the computer’s CPU.
`It is also contemplated that a computer or other equipment not normally
`capable of wireless communication may be adapted to connect to and
`effectively assume control of RF transceiver circuitry 108 and antenna
`110 of a single-unit device such as one of those described above. Such
`a mobile station 102 may have a more particular implementation as
`described later in relation to mobile station 202 of FIG. 2.
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`(’634, 4:55-5:9 (underlining added).) A person of ordinary skill in the art would not
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`have understood “a computer or other device connected to a wireless modem,” or “a
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`laptop computer,” as being limited to a small screen device. The passage above
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`makes this even more clear by explaining that even computing composed of multiple
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`different modules can qualify as a “mobile station” provided that they are connected
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`to some kind of wireless communications circuitry. The specification thus describes
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`capability for wireless communication – and not form factor or screen size – as the
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`touchstone for determining whether a particular device qualifies as a “wireless
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`17
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`Facebook's Exhibit No. 1002
`0020
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`Declaration of Sandeep Chatterjee, Ph.D. in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`communication device” as claimed.
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`31. The passage above is entirely consistent with the understanding of a
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`person of ordinary skill in the art that the term “wireless communication device”
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`simply refers to a device that can communicate without wires without regard to its
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`form factor or screen size. (See Microsoft Computer Dictionary (5th ed. 2002), Ex.
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`1008, p.572 (“wireless adj. Of, pertaining to, or characteristic of communications
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`that take place without the use of interconnecting wires or cables, such as by radio,
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`microwave, or infrared light.”); id. (“wireless communication n. Communication
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`between a computer and another computer or device without wires.”) (bold and
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`italics in original).) When describing the disclosed embodiments, the ’634 patent
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`later refers generally to a “wireless communication device” and does not refer to it
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`as a “small-screen” device. (