Reply Declaration of Sandeep Chatterjee, Ph.D.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`IPR2019-00925
`U.S. Patent No. 8,209,634
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`REPLY DECLARATION OF SANDEEP CHATTERJEE, PH.D.
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`Facebook's Exhibit No. 1129
`IPR2019-00925 - Page 001
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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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`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`
`
`
`IPR2019-00925
`U.S. Patent No. 8,209,634
`
`REPLY DECLARATION OF SANDEEP CHATTERJEE, PH.D.
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`Facebook's Exhibit No. 1129
`IPR2019-00925 - Page 001
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`Table of Contents
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`Page
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`I.
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`Response to Dr. Surati’s Opinions on Field of Art and Person of
`Ordinary Skill in the Art ................................................................................. 1
`Response to Dr. Surati’s Opinions on the Alleged Lack of Motivation
`to Combine Ording’s Userbar with Abiko’s Email System ........................... 2
`III. Response to Dr. Surati’s Opinions on the Alleged Lack of Motivation
`to Adapt the Icon in Ording to Show the Number of Distinct Senders .......... 7
`IV. Response to Dr. Surati’s Opinions on Whether Disclosures in
`Crumlish Undermine the Stated Motvations to Combine ............................ 10
`Response to Dr. Surati’s Opinions on Whether Disclosures in Abiko
`Undermine My Stated Motivations to Combine .......................................... 15
`VI. Response to Dr. Surati’s Opinions on McPherson and Dependent
`Claims 6, 12 and 18 ...................................................................................... 17
`VII. Conclusion .................................................................................................... 20
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`II.
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`V.
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`-i-
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`I, Sandeep Chatterjee, Ph.D., declare as follows:
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`1.
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`I have been asked to review and respond to certain points raised in the
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`“Second Declaration of Rajeev Surati, Ph.D.” dated February 10, 2020 (Ex. 2013)
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`(“Surati Declaration”) filed with respect to the IPR petition for U.S. Patent No.
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`8,209,634 in IPR2019-00925 in support of the Patent Owner’s Response.
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`2.
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`This Declaration responds to the portions of the Surati Declaration that
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`affirmatively present new facts or new rationale to which a response is warranted. I
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`note that in many instances, Dr. Surati merely states general disagreements with the
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`conclusions that I reached (on which the Petition relied), without actually providing
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`contrary evidence or analysis. As to those statements, I adhere to the analysis in my
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`opening declaration (Ex. 1102).
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`I.
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`RESPONSE TO DR. SURATI’S OPINIONS ON FIELD OF ART AND
`PERSON OF ORDINARY SKILL IN THE ART
`3.
`Dr. Surati provides a formulation of a person of ordinary skill in the art
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`similar to the one in my opening declaration. (Ex. 2013, ¶¶7-9.) His formulation
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`shares approximately the same amount of education and experience as mine, but
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`mine also adds experience in development of applications for messaging on wireless
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`devices. (Ex. 1102, ¶13.) In any event, I do not perceive material differences
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`between the two that would impact the application of the prior art to the claims. My
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`opinions would therefore not change if I applied Dr. Surati’s formulation.
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`II. RESPONSE TO DR. SURATI’S OPINIONS ON THE ALLEGED
`LACK OF MOTIVATION TO COMBINE ORDING’S USERBAR
`WITH ABIKO’S EMAIL SYSTEM
`4.
`Dr. Surati argues that the Petitioner did not sufficiently show that a
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`person of ordinary skill in the art would have been motivated to combine Ording
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`with Abiko. (Ex. 2013, ¶¶41, 44-48.) The crux of Dr. Surati’s argument is that the
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`Petitioner did not show that a skilled artisan would have been motivated to adapt
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`Ording to incorporate the email program described in Abiko. (Id.)
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`5.
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`Dr. Surati points to Paragraph 80 of my opening declaration to argue
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`that I did not identify a reason for a person of ordinary skill in the art to modify
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`Ording to incorporate Abiko’s email program. (Ex. 2013, ¶48.) But Paragraph 80
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`was not intended to describe motivations to combine Ording and Abiko, but rather,
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`to lay out the combination itself, i.e. that userbar 600 of Ording would be adapted to
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`include an icon for the Abiko email program. (Ex. 1102, ¶80.) Other portions of
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`my declaration, as discussed below, provided motivations to combine Ording and
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`Abiko. I will briefly summarize them and also respond to Dr. Surati’s positions.
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`6.
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`First, my opening declaration explained that a person of ordinary skill
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`in the art would have been motivated to combine Ording with Abiko because Abiko
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`provided wireless communications capabilities not disclosed in Ording. (Ex. 1102,
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`¶¶67, 71-73.) The wireless capabilities of Abiko, as previously explained, “provide
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`a key convenience in that the user need not be tethered to wires to connect to a
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`computing network,” a benefit that was “particularly advantageous in the context of
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`electronic messaging, as it allows users to send and receive messages on the go, as
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`Abiko expressly confirms.” (Ex. 1102, ¶73 (citing Abiko, Ex. 1109, ¶0004).) Dr.
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`Surati also did not address, let alone dispute, my opinion that “market and
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`competitive forces would have further encouraged a person of ordinary skill in the
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`art to support the ability to use wireless computing devices, as disclosed in Abiko,
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`with the user interface techniques in Ording.” (Ex. 1102, ¶73.)
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`7.
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`Second, with respect to Abiko’s email program itself, I explained that
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`the “sender-centric” nature of Abiko’s program makes it easier to organize messages
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`based on their senders. (Ex. 1102, ¶¶48, 105.) For example, “Abiko recognized that
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`for many users, it is more important to organize and present messages based on their
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`senders.” (Ex. 1102, ¶105.) Abiko itself explains that “a user who wishes, for
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`example, to create a list of all received mail messages from a particular sender must
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`search through numerous messages one by one by means of a manual input
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`operation.” (Abiko, Ex. 1109, ¶0005 (quoted in Ex. 1102, ¶105).) “Some received
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`messages required are therefore likely to be overlooked and many operations are
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`needed to find the messages.” (Id.) Abiko addresses this problem by providing a
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`technique for automatically organizing and displaying received messages based on
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`their respective senders, a unique feature of Abiko that Dr. Surati does not claim was
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`provided by other conventional email clients (including “Apple Mail”).
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`8.
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`Dr. Surati relies primarily on the fact that Ording describes a feature
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`that was implemented in connection with the Apple Macintosh user interface. (Ex.
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`2013, ¶¶29, 46-47.) The commercial embodiment of userbar 600 in Ording appears
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`to have been the Macintosh OS user interface feature known as the “Dock,” which
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`was part of the Macintosh user interface as of at least December 2003. (Ex. 2014,
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`p.5.) Dr. Surati also states that Apple provided an email client known as “Apple
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`Mail” for use with its Macintosh computers in the 2003 timeframe. (Ex. 2013, ¶¶46-
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`47.) Dr. Surati appears to argue that a person of ordinary skill in the art would not
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`have been motivated to combine Ording with the email teachings of Abiko because
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`the commercial embodiment of Ording – the Apple Macintosh – already offered a
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`suitable email client. (Id, ¶47.) I find several problems with his analysis.
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`9.
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`First of all, Dr. Surati’s argument appears to conflate the disclosures of
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`the Ording patent with its commercial embodiment in the Apple Macintosh system,
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`but the two are different and would have been recognized as such by a person of
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`ordinary skill in the art. Ording itself makes crystal clear that its user interface
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`techniques are not limited to the Apple Macintosh but “can be used in combination
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`with any system having a processor and a display.” (Ording, Ex. 1103, 6:19-23.)
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`And nothing in Ording makes any mention of “Apple Mail” or limits itself to any
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`particular email software – it more broadly teaches that any “e-mail applications”
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`can reside on the userbar. (Ex. 1102, ¶¶44-45; Ording, Ex. 1103, 8:64-67
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`(“Candidate items for such permanent residency on the userbar 600 include, for
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`example … e-mail applications”), 9:19-23, 13:12-21.)
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`10. Dr. Surati himself acknowledged at his deposition that nothing in
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`Ording suggests that its techniques were limited to the Apple Mail email client.
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`(Surati Depo., Ex. 1130, 90:24-91:7.) He further acknowledged, and I agree, that
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`the user interface teachings in Ording could have been applied to any email
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`application. (Id., 91:2-10.) The Ording patent, as he explained, was “trying to patent
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`concepts in a more general way.” (Id., 92:8-10.) A person of ordinary skill in the
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`art would have understood Ording in precisely this way, and as such, would have
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`appreciated that any suitable email system could have been represented in the
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`userbar 600 of Ording, including the one in Abiko. A skilled artisan would have
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`regarded the availability of “Apple Mail” on Apple Macintosh systems as irrelevant
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`to the motivation to combine the userbar 600 of Ording with the Abiko email system.
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`11. To the extent a skilled artisan’s knowledge of the Apple Macintosh
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`commercial embodiment had any relevance to the obviousness analysis, that
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`knowledge would actually undermine Dr. Surati’s opinions. Because the “Dock” of
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`the Apple Macintosh appears to already embody the userbar 600 feature of Ording,
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`a skilled artisan as of December 2003 would have found Ording more applicable to
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`non-Macintosh systems. Stated another way, a person of ordinary skill in the art
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`seeking to apply Ording would not have used the Apple Macintosh as the platform
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`on which to implement the disclosed userbar 600, as such an implementation would
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`have been redundant of capabilities the Macintosh user interface already had.
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`12. Finally, the apparent premise of Dr. Surati’s argument – that the
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`availability of “Apple Mail” for the Apple Macintosh would have eclipsed Abiko’s
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`email client and made it unnecessary – is also undermined by the multitude of email
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`programs in existence as of December 2003. Dr. Surati himself acknowledged that
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`the list of “common e-mail programs as of 2003” included at least America Online,
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`Lotus cc:mail, CompuServe, Qualcomm Eudora, Microsoft Exchange, NetCruiser,
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`Pegasus Mail and Pine. (Surati Depo., Ex. 1130, at 93:19-95:3; see also id., 83:18-
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`84:8 (acknowledging that Eudora and Mozilla Thunderbird were both available for
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`the Macintosh).) The availability of so many email products reflected differences in
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`the available features in each product, the consumer base each product targeted,
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`general user preferences, and many other factors. In fact, as Dr. Surati
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`acknowledged at his deposition, it would have been common for a computer user as
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`of December 2003 to have multiple different messaging applications on his or her
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`computer. (Id., 86:14-23.) For example, it was common for computer users to have
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`at least a first email application from an online service such as America Online, and
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`a second email application to send or receive business- or work-related messages.
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`13. Accordingly, even if the existence of “Apple Mail” had some relevance
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`to the specific teachings of Ording and the motivations to combine (which it does
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`not), it would not have deterred a skilled artisan from using different email
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`applications with Ording, including the one in Abiko. As I explained above, Abiko
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`would have provided specific advantages, including wireless communication and the
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`ability to easily organize display of messages by sender. Dr. Surati does not claim
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`that Apple Mail provided those same benefits.
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`III. RESPONSE TO DR. SURATI’S OPINIONS ON THE ALLEGED
`LACK OF MOTIVATION TO ADAPT THE ICON IN ORDING TO
`SHOW THE NUMBER OF DISTINCT SENDERS
`14. Dr. Surati’s arguments about the claimed “numeric character” follow
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`much the same approach as his arguments addressed above regarding the
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`combination of Ording and Abiko – asserting that the petition did not provide any
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`motivation to combine, while ignoring the specific motivations that were actually
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`provided. (Ex. 2013, ¶¶49-58.) I respectfully disagree with Dr. Surati’s arguments.
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`15. First, Dr. Surati nitpicks language in the Petition (and similar
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`statements in my opening declaration) arguing that a numeric value representing the
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`number of distinct senders “might be” preferable to some users. (Ex. 2013, ¶¶50-
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`51.) The point behind Dr. Surati’s argument is unclear, but I used this type of
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`language to acknowledge what was well-known to persons of ordinary skill in the
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`art – there was no “one-size-fits-all” approach to organizing and presenting email
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`messages that would have been ideal for every user. As explained in my opening
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`declaration, “a person of ordinary skill in the art would have understood that there is
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`no single solution, applicable to all users, for organizing electronic messages and
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`notifying users of new (unread) messages.” (Ex. 1102, ¶110.) This is reflected in
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`part by the existence of so many different email applications in December 2003, as
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`explained above. I further explained that “[f]or certain categories of users, such as
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`users of the message sorting and organizing system in Abiko, a more ‘sender-centric’
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`approach to received messages might be preferable.” (Id.) I am informed that under
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`applicable patent law, a motivation to combine may exist even if the course of action
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`proposed by the combination does not present advantages in every conceivable
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`situation, or has both advantages and disadvantages.
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`16. Second, Dr. Surati attacks Abiko on the ground that the sender table in
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`Figure 8 of Abiko shows four (4) listed items and then two “dots” indicating the
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`presence of additional (and unshown) items. (Ex. 2013, ¶55.) However, a person of
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`ordinary skill in the art would have understood the dots in Figure 8 to simply indicate
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`the presence of additional numbered items in the list. Abiko explains that each entry
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`in the sender table is sorted and ranked through a sequential numbering scheme
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`(starting at “1”) based on the mail volume associated with each sender. (Abiko, Ex.
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`1109, ¶¶0116 (“[T]he mail volume numbers are stored starting with the sender from
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`whom the most messages were received in the order of smaller to larger number
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`(No) 1, 2, 3 ... in the sender table sorted by mail volume.”), 0121 (“This screen [Fig.
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`10(b)] displays, for example, multiple sets of ‘Sender name’ information stored in
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`the ‘Sender name’ column (“KAWADA, Hanako’ ‘satoh@def.or.jp’ etc.) and ‘Mail
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`volume’ information (‘10, 13’ etc.) in association with the numbers thereof (1, 2, 3
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`...) of the sender table sorted by date shown in FIG. 8….”) (underlining added).)
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`Accordingly, as Dr. Surati acknowledged at his deposition, if the list in Figure 8
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`contained items beyond the four specifically listed, those additional items would
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`have been sequentially numbered “5,” “6,” etc., until the total number of items to be
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`displayed was reached. (Surati Depo., Ex. 1130, 98:6-11, 99:1-19.) The presence
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`of the “dots” in Figure 8 is thus immaterial; the number (i.e., “No”) associated with
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`the last sender appearing in the list will always correspond to the total number of
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`distinct senders of messages.
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`17. Third, Dr. Surati misunderstands my reliance on Dvorak (Ex. 1111).
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`My opening declaration made clear that Dvorak was not cited with respect to any
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`specific claim limitation, but to bolster a motivation to combine. (Ex. 1102, ¶56.)
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`Dr. Surati does not address the fact that Dvorak identifies as his “biggest headache”
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`the fear of non-receipt of email, which causes senders to “send multiple copies” of
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`the same message to the same user. (Ex. 1111, at 018; Ex. 1102, ¶107.) Nor does
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`Dr. Surati dispute that this “biggest headache” would have resulted in an increase in
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`the number of unnecessary messages from the same sender, such that “a numeric
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`value representing the total number of new e-mail messages may not have been
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`particularly informative to some users.” (Ex. 1102, ¶108.)
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`18. Dr. Surati points instead to a separate “mail storm” problem identified
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`in Dvorak, a problem that Dr. Surati contends would have resulted in “new messages
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`[being] generated from different senders.” (Ex. 2013, ¶57 (bold in original).) To
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`the extent Dr. Surati contends that the “mail storms” problems undermines the
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`motivation to combine, I respectfully disagree. Dvorak itself clearly identifies the
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`fear of non-receipt (and resulting multiple copies) as the more significant problem,
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`as it is listed above mail storms in the article and identified as the “biggest headache”
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`of general Internet email. (Ex. 1111, at 018.) More fundamentally, the variety of
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`different problems facing e-mail merely confirms the existence of tradeoffs that a
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`skilled artisan would have to weigh in considering potential approaches, not factors
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`that render the combination non-obvious. (Ex. 1102, ¶110.)
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`IV. RESPONSE TO DR. SURATI’S OPINIONS ON WHETHER
`DISCLOSURES IN CRUMLISH UNDERMINE THE STATED
`MOTVATIONS TO COMBINE
`19. Dr. Surati cites portions of Crumlish in which the author states that “I
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`keep my mail around until I’ve replied to it,” and advising users not to “create a new
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`mailbox when an existing mailbox will suffice….” (Ex. 2013, ¶¶61-62 (quoting
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`Crumlish, Ex. 1110 at 049 & Ex. 2015 at 18).) Dr. Surati appears to argue that these
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`statements from Crumlish would have discouraged a skilled artisan from adopting
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`the approach of Pegasus Mail in which new messages are stored in a “New mail
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`folder” separate from the folder holding old messages. (Ex. 2013, ¶62.)
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`20.
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`I respectfully disagree. The statements in Crumlish cited by Dr. Surati
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`have nothing to do with an email program automatically placing new messages in a
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`separate folder to separate them from old messages. They instead advise users not
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`to create an excessive number of user-created mailboxes for manual filing of email
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`messages. (Ex. 2015, at 18.) For example, Crumlish explains that different email
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`programs “offer different commands for creating mailboxes and transferring
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`messages into them, but the principles are more or less the same as those used for
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`real-life filing.” (Ex. 2015, at 18 (underlining added).) The separate new mail folder
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`in Pegasus Mail does not serve this same purpose of facilitating manual filing or
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`archiving old messages – it instead provides a technique to automatically and
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`temporarily separate and identify new incoming messages.
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`21.
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`In fact, the new mail technique in Pegasus Mail would actually be
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`complementary to Crumlish’s advice. Crumlish explains that after the new message
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`has been read, it is automatically moved from the New Mail folder to the Main mail
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`folder. (Crumlish, Ex. 1110, 063 (“Once you’ve read a message, it will
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`automatically be moved to the Main mail folder after you close the New Mail folder
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`or exit Pegasus.”).) Accordingly, after an email message has been read and
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`automatically moved to the Main mail folder, the user could file that message away
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`in an appropriate mailbox in accordance with Crumlish’s advice on managing
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`mailboxes, or any other organizational scheme the user deems most appropriate.
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`Even if a user chose to follow Crumlish’s advice, therefore, that advice has nothing
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`to do with the Pegasus Mail technique of automatically and temporarily storing new
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`mail in a separate folder before it could be subject to manual filing by the user.
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`22. Another problem with Dr. Surati’s reliance on Crumlish’s statements is
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`that those statements merely reflect the author’s subjective opinions, and which a
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`person of ordinary skill in the art would have felt free to disregard. Dr. Surati himself
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`acknowledged that he does not follow Crumlish’s advice to “keep my mail around
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`until I’ve replied to it.” (Ex. 1110, at 049; Surati Depo., Ex. 1130, at 95:10-20.) Dr.
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`Surati also acknowledged (and I agree) that during the 2003 timeframe, email users
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`employed various different approaches for reviewing and organizing their own email
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`messages. (Id. at 95:21-96:15.) As he acknowledged, “everyone has their own
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`preferences in how they respond to mail.” (Id. at 96:13-15.) For example, Dr. Surati
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`acknowledged that it was “not unusual” for users to keep all of their email in one
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`place, and for other users to crate folders based on subject matter categories, or for
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`users to employ different strategies with respect to retaining and deleting messages.
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`(Id., 96:16-97:18.) It would have been apparent to a person of ordinary skill in the
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`art (and even end users of email products) that the organization schemes that work
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`for one user might not work for another, consistent with the diversity of techniques
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`human beings employ to organize physical letters in the “real” world.
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`23. Accordingly, a person of ordinary skill in the art would have treated
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`Crumlish’s comments as mere suggestions that reflect the author’s personal
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`preferences, not a mandate that email must be organized in a particular way. And a
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`skilled artisan would have understood that those preferences have no bearing on the
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`motivation to employ the particular technological approach for storing new mail in
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`a separate folder implemented by Pegasus Mail.
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`24. Dr. Surati next cites a statement from Crumlish that new email
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`“typically appears with some indicator that it’s new, such as the Subject line
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`appearing in bold, or a bullet or checkmark appearing next to the new
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`messages.” (Ex. 1013, ¶63 (quoting Ex. 1110 at 048) (boldface added by Dr.
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`Surati).) Dr. Surati appears to suggest that these user interface indicators would have
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`taught away from the new folder technique of Pegasus Mail. (Id.) This argument is
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`unpersuasive for at least two reasons.
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`25. First, I am informed by counsel that under applicable patent law, the
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`mere disclosure of alternative designs in a prior art reference does not amount to a
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`“teaching away,” where those alternative designs do not discredit or otherwise
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`discourage use of other disclosed techniques. This principle certainly applies here,
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`as the statements cited by Dr. Surati merely recite capabilities of “typical” email
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`programs, and as such, would not have discouraged a skilled artisan from following
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`the path set out by Crumlish’s description of Pegasus Mail.
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`26. The lack of any discouragement is further demonstrated by the fact that
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`the cited statements from Crumlish identify the Subject line appearing in bold and
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`the bullets or checkmarks as mere examples of how to visually differentiate new
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`from old messages. (Ex. 1110 at 048 (“Unread (usually new) mail typically appears
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`with some indicator that it’s new, such as the Subject line appearing in bold, or a
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`bullet or checkmark appearing next to new messages.”) (underlining added).)
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`Pegasus Mail itself also provides “some indicator that [the email] is new,” i.e. by
`
`placing it in a separate new mail folder. (Id. at 064-065, Fig. 2.15).) Nothing in
`
`Crumlish suggests that this approach is unacceptable or even inferior in any way.
`
`27. Second, the statements that Dr. Surati identifies relate to user-facing
`
`user interface features for identifying new messages, whereas I cited Crumlish in
`
`combination with Abiko for its disclosure of an underlying storage technique in
`
`which new messages were initially stored in a separate new mail folder. (Ex. 1102,
`
`¶¶101-102.) As explained in my opening declaration, a skilled artisan would have
`
`been motivated to adapt Crumlish’s approach to Abiko to obtain the benefit of
`
`allowing Abiko’s mail program to separate new messages (which are of more
`
`immediate concern to the user) from older ones. (Id., ¶103.) These benefits are not
`
`impacted by Crumlish’s identification of exemplary visual indicators for separating
`
`new from older email messages.
`
`
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`14
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`V. RESPONSE TO DR. SURATI’S OPINIONS ON WHETHER
`DISCLOSURES
`IN ABIKO UNDERMINE MY
`STATED
`MOTIVATIONS TO COMBINE
`28. Dr. Surati next suggests that it would be improper to modify Abiko to
`
`only process and display new messages. (Ex. 2013, ¶¶68-74.) Dr. Surati contends
`
`that Abiko only discloses processing all mail messages and cannot properly be
`
`adapted to only process only new messages. (Id.)
`
`29. Dr. Surati’s argument cannot be squared with the plain language of
`
`Abiko that I cited in my opening declaration. (Ex. 1102, ¶53.) Abiko plainly states:
`
`“The received messages used to create the menu information including identifying
`
`senders may include all received messages or only received messages that satisfy
`
`prescribed conditions.” (Abiko, ¶0011 (underlining added).) The “menu
`
`information” in this statement plainly includes “‘Sender selection by mail volume
`
`menu’ information” (id., ¶0121 (underlining added)), i.e., the information used to
`
`create the sender screen shown in Figure 10(b). (Id., ¶¶0121, 0122.)
`
`30. Abiko’s statement that sender information can be based on all received
`
`messages or some subset “that satisfy prescribed conditions” (id., ¶0011) directly
`
`refutes Dr. Surati’s suggestion that the sender information displayed in Figure 10(b)
`
`must account for all received messages. As I fully explained in my opening
`
`declaration, it would have been obvious based on disclosures in Abiko alone “to
`
`create the sender table and menu (e.g., Figs. 8, 10) – and thus count the number of
`
`
`
`15
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`distinct senders – based on received messages that were new (unread).” (Ex. 1102,
`
`¶95.) I further explained why this feature would been obvious in further view of
`
`Crumlish, which discloses a particular technique for temporarily storing new
`
`messages in a separate folder. (Id., ¶¶96-103.) Under either approach, the
`
`motivation to combine is straightforward and compelling – “new messages generally
`
`hold more immediate importance to the user because their contents are yet
`
`unknown,” and “may require immediate attention and further action.” (Id., ¶96.)
`
`31. Dr. Surati also contends that the Petitioner did not explain how the
`
`proposed combination would operate with respect to read and unread messages.
`
`(Ex. 2013, ¶73.) Dr. Surati appears to suggest that the Petitioner was required to
`
`describe further user interface mechanisms in Abiko for allowing the user to access
`
`both read and unread messages. (Id.) But again this argument is refuted by ¶0011
`
`of Abiko, which makes clear that the sender table and menu may either include “all
`
`received messages” or “only received messages that satisfy prescribed conditions.”
`
`(Abiko, ¶0011.) Abiko thus discloses both possibilities, and expressly discloses an
`
`embodiment in which the sender table and menu includes “all received messages,”
`
`which would have included both read and unread messages.
`
`32. Dr. Surati also attempts to discount the importance of the numerical
`
`value shown in the last row of the Abiko sender table and menu (Figs. 8, 10) by
`
`arguing that the number is used in the context of selecting a row on the interface.
`
`
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`16
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`(Ex. 2013, ¶77.) Dr. Surati thus contends that this number would not have had “the
`
`elevated level of importance” to warrant highlighting it on a displayed icon. (Id.)
`
`33.
`
`I respectfully disagree. As I explained extensively in my opening
`
`declaration, the key feature of Abiko is the ability to organize and group email
`
`messages based on their respective senders. (Ex. 1102, ¶105 (citing Abiko, Ex.
`
`1109, ¶¶0004-0005).) Figures 8 and 10(b) of Abiko, for example, show a sender
`
`table and menu organized around the four distinct senders, who collectively sent 37
`
`mail messages. (Ex. 1102, ¶¶50-51 (citing Abiko, Figs. 8 & 10(b)).) Because of the
`
`sender-centric nature of the sender table and menu in Abiko, it would not have made
`
`sense to a person of ordinary skill in the art to place the total message count (e.g.
`
`“37”) in the email application’s icon in userbar 600 of Ording, as that number has
`
`far less significance in the context of the Abiko sender table and menu. A skilled
`
`artisan would have found it obvious instead for the numeric character to correspond
`
`to the number of distinct items in the Abiko sender list, i.e. the number of distinct
`
`senders of received email messages.
`
`VI. RESPONSE TO DR. SURATI’S OPINIONS ON MCPHERSON AND
`DEPENDENT CLAIMS 6, 12 AND 18
`34. My opening declaration explained that the “notification bubble”
`
`described in McPherson disclosed the display of “at least one preview of content,”
`
`and thus rendered claims 6, 12, and 18 obvious in combination with the other
`
`references. (Ex. 1102, ¶¶135-137, 140-143.)
`
`
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`17
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
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`35. Dr. Surati contends that a person of ordinary skill in the art would not
`
`have been motivated to combine McPherson in this manner because, according to
`
`him, McPherson’s description of the “notification bubble” relates to the PocketPC
`
`instant messaging functionality, not its email features. (Ex. 2013, ¶80.) Dr. Surati
`
`therefore asserts that a skilled artisan would not have adapted McPherson’s instant
`
`messaging “notification bubble” to the email systems in Ording, Abiko, and
`
`Crumlish. Dr. Surati’s argument is unpersuasive for a number of reasons.
`
`36. First, a person of ordinary skill in the art would have found
`
`McPherson’s “notification bubble” feature adaptable to both instant messaging and
`
`email systems. Chapter 20 of McPherson that Dr. Surati submits with his
`
`declaration, in fact, specifically explains in connection with the email interface: “If
`
`a new message arrives while the device is connected, Inbox will notify you. You will
`
`see a notification bubble or hear a sound, unless notification sounds are turned off.”
`
`(Ex. 2016, at 30 (emphasis added).) Dr. Surati did not address this disclosure in his
`
`declaration. I note that McPherson uses the same term “notification bubble” to
`
`describe the same instant messaging notification and preview feature that I cited in
`
`my opening declaration for claims 6, 12, and 18. (Ex. 1102, ¶135.)
`
`37.
`
`I acknowledge that McPherson’s chapter on email (Chapter 20) does
`
`not provide a specific screenshot or description of the “notification bubble” for
`
`email, but it also does not suggest that the email notification bubbles show different
`
`
`
`18
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`Reply Declaration of Sandeep Chatterjee, Ph.D.
`
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