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.,
`Petitioner
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case No. IPR2019-00925
`Patent No. 8,209,634
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`PATENT OWNER’S RESPONSE
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`Case No.: IPR2019-00925
`Attorney Docket No.: 21828-0048IP1
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1 
`I. 
`II.  OVERVIEW OF THE ’634 PATENT ......................................................... 2 
`III.  OVERVIEW OF THE PRIOR ART ........................................................... 5 
`A.  Ording .................................................................................................... 5 
`B. 
`Abiko ..................................................................................................... 6 
`C. 
`Crumlish ................................................................................................ 9 
`D.  Dvorak ................................................................................................. 10 
`E.  McPherson ........................................................................................... 11 
`IV.  LEVEL OF ORDINARY SKILL ............................................................... 12 
`V.  CLAIM CONSTRUCTION ........................................................................ 12 
`VI.  THE PETITION FAILS TO SHOW A REQUISITE MOTIVATION
`FOR EACH OF THE PROPOSED LAYERS OF MODIFICATIONS
`TO ORDING’S COMPUTER (ALL GROUNDS 1-4) ............................. 13 
`A. 
`Petitioner fails to satisfy its burden of demonstrating why a POSITA
`would have been motivated to modify Ording’s computer to include
`Abiko’s e-mail program (Elements 1[a] and 1[b]) .............................. 17 
`The Petition fails to show that, at the time of the invention, a POSITA
`would have been motivated to modify Ording’s icon in the manner
`proposed (Element 1[c]) ...................................................................... 24 
`VII.  PETITIONERS’ PROPOSED MODIFICATIONS TO ABIKO’S E-
`MAIL PROGRAM ARE UNSUPPORTED BY THE EVIDENCE AND
`CONTRARY TO THE SUGGESTIONS IN ABIKO AND CRUMLISH
`(ALL GROUNDS 1-4) ................................................................................. 34 
`A. 
`The Petition’s further modifications to Abiko’s e-mail program based
`on Crumlish’s description of “Pegasus mail” suffer from multiple
`errors (Element 1[c]) ........................................................................... 35 
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`B. 
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`Case No.: IPR2019-00925
`Attorney Docket No.: 21828-0048IP1
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`1. 
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`2. 
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`3. 
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`The Petition Ignores Crumlish’s Explicit Teaching to Avoid
`Automatically Moving E-mails to Another Folders, and Also Omits
`The Next Chapter of Crumlish Repeating This Same Caution ........... 36 
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`The Petition Ignores That Crumlish Describes Solutions That Already
`Achieved the Purported Motivation Without Petitioner’s Proposed
`Modification ........................................................................................ 39 
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`The Petition’s Hindsight Proposal Ignores the Detrimental Effects
`Resulting From the Fourth and Fifth Modifications ........................... 41 
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`4. 
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`B. 
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`Even if Abiko was Combined with Crumlish, The Petition Fails to
`Show that a POSITA Would Have Been Motivated To Modify Abiko
`To Create the “Sender Information” Menu Using Only “Unread”
`Messages ............................................................................................. 42 
`The Petition’s fourth and fifth proposed modifications ignore Abiko’s
`stated purpose for creating and displaying Abiko’s “sender selection”
`menus (Element 1[c]) .......................................................................... 45 
`VIII.  NO PUBLICATION IN THIS PROCEEDING ACTUALLY
`DISCLOSES THE STEP OF VISUALLY MODIFYING A
`“DISPLAYED ICON” TO ACHIEVE THE SPECIFIC TYPE OF
`“COUNT” RECITED IN THE CLAIMS (ALL GROUNDS 1-4) .......... 51 
`IX.  THE PETITION OMITS RELEVANT PORTIONS OF MCPHERSON
`AND FAILS TO SHOW THAT CLAIMS 6, 12, AND 18 WERE
`OBVIOUS BY THE COMBINATION IN FURTHER VIEW OF
`MCPHERSON (GROUNDS 2 AND 4) ...................................................... 58 
`X.  CONCLUSION ............................................................................................ 62 
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`Case No.: IPR2019-00925
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`LIST OF EXHIBITS
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`EX2001
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`Declaration of Rajeev Surati, Ph.D.
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`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`EX2008
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`EX2009
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`EX2010
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`Corrected Final Ruling on Claim Construction/Markman
`Hearing, BlackBerry Limited v. Snap Inc., Case Nos. CV 18-
`1844-GW & 18-2693-GW (C.D. Cal. April 5, 2019)
`(“Markman Order”)
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`Defendant’s Notice and Motion to Stay Pending Inter Partes
`Review, BlackBerry Limited v. Facebook, Inc. et al., Case Nos.
`2:18-cv-01844-GW & 2:18-cv-02693-GW (C.D. Cal. April 16,
`2019)
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`Minutes of Status Conference, Initial Thoughts re Joint Report,
`BlackBerry Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-
`01844-GW & 2:18-cv-02693-GW (C.D. Cal. April 22, 2019)
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`Notice Withdrawing Pre-Institution Motion to Stay In View of
`Court’s Guidance, BlackBerry Limited v. Facebook, Inc. et al.,
`Case Nos. 2:18-cv-01844-GW & 2:18-cv-02693-GW (C.D.
`Cal. April 26, 2019)
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`Minutes of Order In Chambers, Trial Schedule, BlackBerry
`Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW
`& 2:18-cv-02693-GW (C.D. Cal. May 15, 2019)
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`BlackBerry Limited’s Final Election of Asserted Claims,
`BlackBerry Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-
`01844-GW & 2:18-cv-02693-GW (C.D. Cal. May 31, 2019)
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`Defendant’s Final Election of Asserted Prior Art, BlackBerry
`Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW
`& 2:18-cv-02693-GW (C.D. Cal. June 14, 2019)
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`RESERVED
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`RESERVED
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`Order Modifying Scheduling Order BlackBerry Limited v.
`Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW & 2:18-cv-
`02693-GW (C.D. Cal. July 12, 2019)
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`Order Denying Renewed Motion for Stay, The California
`Institute of Technology v. Broadcom Ltd. et al., Case No. 2:16-
`cv-03714-GW (C.D. Cal. October 5, 2017)
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`Second Declaration of Rajeev Surati, Ph.D.
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`Apple iMac User’s Guide (2002)
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`Chapter 3 of Crumlish (missing from EX110)
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`Chapter 20 of McPherson (missing from EX1112)
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`Transcript of Deposition of Dr. Sandeep Chatterjee (February 5,
`2020)
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`EX2011
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`EX2012
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`EX2013
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`EX2014
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`EX2015
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`EX2016
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`EX2017
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`Case No.: IPR2019-00925
`Attorney Docket No.: 21828-0048IP1
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`I.
`INTRODUCTION
`In this proceeding, the parties agree that none of the publications cited in
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`Grounds 1-4 disclose the critical method step emphasized in the Patent Office’s
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`original reasons for allowance—namely, the claimed step of visually modifying a
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`“displayed icon” to include “a numeric character representing a count of the
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`plurality of different messaging correspondents for which one or more of the
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`electronic messages have been received and remain unread.” To be clear, neither
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`the Patent Office nor any petitioner has cited a prior art device achieving this step
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`of visually modifying a displayed icon in this specific manner. Not one.
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`Instead, this PTAB trial is premised upon Petitioners’ assertions that mere
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`fragments of this critical step would have been collected from different
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`publications, and then pieced together in 2003 according to a four- or five-way
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`combination that demands several layers of modifications to Ording’s “Apple
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`Macintosh computer.” Pet., 14-15. This flawed theory is riddled with legal errors,
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`unsupported assumptions, and hindsight. For Elements 1[a]-1[b] (Pet., 33-37), the
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`Petition assumes one modification to Ording’s computer, but never sets forth the
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`requisite motivation for prompting that particular layer of modification. Infra,
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`Section VI.A. For Element 1[c] (Pet., 40-42), the Petition attempts to describe yet
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`another layer of modification to Ording’s computer, but relies upon improper
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`reasoning of what “could” have been done and “might appear.” Infra, Section
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`1
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`VI.B. Also, regarding Crumlish and McPherson, Petitioners’ obviousness theories
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`rely on modifications that directly contradict the authors’ express suggestions in
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`those publications. Infra, Section VII. The Petition ignores these teachings
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`without explanation (and oddly omits relevant pages from EX1110 and EX1112).
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`See EX2015, EX2016. These fatal flaws cannot withstand scrutiny.
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`In sum, Petitioners’ obviousness theories in Grounds 1-4 fall short of the
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`now-heightened burden under §316(e), especially where the law forbids
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`subsequently adding new theories/arguments that “could have been included in a
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`properly-drafted petition, but was not.” In re Magnum Oil Tools Int’l, 829 F.3d
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`1364, 1378-80 (Fed. Cir. 2016); Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“utmost importance”).
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`The Institution Decision properly noted that “there is a significant difference
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`between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at
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`institution, and actually proving invalidity by a preponderance of the evidence at
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`trial.” Inst. Dec., 28 (citing Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068
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`(Fed. Cir. 2016)). This difference is meaningful here.
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`II. OVERVIEW OF THE ’634 PATENT
`The ’634 patent, titled “Previewing a New Event On a Small Screen
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`Device,” describes systems, devices, and methods for notifying and previewing a
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`new event, such as receipt of new messages, on a computing device. EX1101,
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`2
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`Abstract; 2:6-8; FIGS. 4 and 6. The claimed methods and devices require visual
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`modification of an electronic messaging icon to display information related to a
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`count of the plurality of different messaging correspondents that have sent unread
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`messages. The ’634 patent explains that, as a result of the “proliferation of
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`communications available on mobile devices,” mobile users received messages
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`from a litany of separate applications. EX1101, 1:18-60. Some prior systems
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`responded to each incoming message by showing a notification “on a major
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`portion of the main screen,” which for mobile users “has a small display area.” Id.,
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`1:38-52. The notification was not application-specific, forcing users “to check
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`each of their … applications separately” to determine which application triggered
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`the notification, a process which involved navigating to “a main or home screen
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`and one or more sub-screens that may be navigated from the main screen.” Id. at
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`1:41-43, 60:64.
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`The inventors of the ’634 patent recognized that this exercise “is
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`inconvenient,” and can make it difficult for a user to check the new event quickly
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`and in a manner to optimize the control of a single wireless mobile device running
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`multiple instant messaging services and email counts. Id., 1:60-68; EX2013, ¶11.
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`The ’634 patent identified these shortcomings and addressed them with a solution
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`that involved visually modifying a displayed icon to provide a unique type of count
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`recited in the claims. EX2013, ¶¶10-12. In particular, unlike some prior systems
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`that were focused only on a number of received messages, the’634 patent claims
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`require the step of visually modifying the “displayed icon” to include “a numeric
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`character representing a count of the plurality of different messaging
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`correspondents for which one or more of the electronic messages have been
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`received and remain unread.” EX1101, cls. 1, 7, and 13, 8:8-13, 8:19-29, FIG. 4;
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`EX2013, ¶13-14; see also EX1113, 677 (“By displaying the number of distinct
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`correspondents from whom messages have been received, Applicant’s claimed
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`invention opens new possibilities for users of such communications.”); id., 678
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`(“by expending such resources and modifying an icon associated with a
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`corresponding communications application, as claimed, they could allow a user to
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`very efficiently track sometimes crucial information while making very efficient
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`use of display resources, and significantly reducing input, output, display, and
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`other processing tasks that previously were required for the users to obtain and
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`track such information.”). The ’634 patent also describes that the wireless
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`communication device can display a preview of content associated with a received
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`electronic message, such as a portion of the received message. EX2013, ¶15 (citing
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`EX1101, Abstract, cls. 6, 12, and 18; 8:41-42, 8:51-65, FIGS. 6-7).
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`The ’634 patent was issued only after going through a meaningful
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`examination involving multiple office action/response cycles, with several
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`references applied in rejections, and dozens more considered by the Examiner. In
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`the Notice of Allowance, the Examiner indicated that the “prior art of record fails
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`to disclose a numeric character that represents a count of the plurality of
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`different messaging correspondents for which one or more of the electronic
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`messages have been received and remain unread.” EX1113, 826 (emphasis
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`added); EX2013, ¶¶16-19.
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`Critically, the same remains true of the current record—not one of the
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`publications cited in Grounds 1-4 discloses a device that performed the specifically
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`recited step of visually modifying a “displayed icon” to include “a numeric
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`character that represents a count of the plurality of different messaging
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`correspondents for which one or more of the electronic messages have been
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`received and remain unread.” Under these same circumstances, the Patent Office
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`previously determined the claims were patentable. EX1113, 826.
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`III. OVERVIEW OF THE PRIOR ART
`A. Ording
`Ording (EX1103) describes a graphical user interface for a computer device,
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`which according to Petitioners’ theory, would be recognized by “[a]nyone who has
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`used an Apple Macintosh computer.” Pet. 14. Ording’s graphical user interface
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`includes a “userbar” that displays a collection of tiles/icons for frequently used
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`items. EX1103, Abstract; 1:6-7. The tiles are “aligned along a bottom portion of a
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`user interface,” and include “user-selected” favorites or frequently-accessed
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`applications, files, and windows, for example. Id., 7:26-46; FIG. 6; EX2013, ¶28.
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`In particular, the “userbar” can include an icon configured to launch an “e-
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`mail application” when selected. EX1103, 7:47-52; 8:64-67. Before 2003,
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`practitioners knew which e-mail application was already installed on such Apple
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`Macintosh computers—the “Apple Mail” application. EX2013, ¶39 (citing
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`EX2014, 21-22). This fact is consistent with Ording’s statement that the “e-mail
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`application’s tile can present the number of new messages, superimposed over the
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`application’s icon.” EX1103, 9:18-23.
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`Petitioners concede that Ording does not describe the step of visually
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`modifying a “displayed icon” to include “a numeric character representing a count
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`of the plurality of different messaging correspondents for which one or more of the
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`electronic messages have been received and remain unread.” Pet., 16-17. Indeed,
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`as described below, none of the publications cited in Grounds 1-4 disclose a device
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`that performs this specific step. EX2013, ¶30.
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`B. Abiko
`Abiko (EX1109) is titled “Message Communication Device” and describes a
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`sender information menu that includes “information identifying senders of received
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`messages.” EX1109, [0008]. Abiko describes shortcomings of the “conventional
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`mobile telephone” that hinder a user’s ability “to create a list of all received mail
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`messages from a particular sender.” EX1109, [0005] (“user who wishes, for
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`example, to create a list of all received mail messages from a particular sender
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`must search through numerous messages one by one by means of a manual input
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`operation. Some received messages required are therefore likely to be overlooked
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`and many operations are needed to find the messages.”); EX2013, ¶31.
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`Abiko presents its menu as a solution to overcome these shortcomings, and
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`explains that the menu is designed to allow a user to select received messages from
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`a sender for viewing. EX1109, [0006]-[0008]. Consistent with its stated
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`preference of identifying senders of received messages in its menu, Abiko provides
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`several examples in which the sender information may be ordered according to
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`mail volume, by date, alphabetically, etc. EX1109, [0018]; FIGS. 2-10. In each
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`example that Abiko provides, the menu information is created using all sender
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`information that is available on the device. Id. Notably, Abiko describes in the
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`summary that “received messages used to create the menu information including
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`information identifying senders may include all received messages or only
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`received messages that satisfy prescribed conditions,” and Abiko’s next sentence
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`confirms a POSITA’s understanding of this “prescribed conditions” alternative—
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`“Taking mail messages as a concrete example, it is possible to use messages
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`received and stored in memory.” Id., [0011] (emphasis added). In other words,
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`the example “prescribed condition” Abiko describes is that the received messages
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`be “stored in memory,” still utilizing all available messages. Abiko’s description
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`in the summary, and the specific examples Abiko provides, each utilize all
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`message information available, furthering Abiko’s stated objective to overcome
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`shortcomings of prior systems that risked received messages being “overlooked” or
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`requiring many manual operations to access. EX2013, ¶¶32-33.
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`Here again, Abiko never discloses the actual step of visually modifying a
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`“displayed icon” to include “a numeric character representing a count of the
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`plurality of different messaging correspondents for which one or more of the
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`electronic messages have been received and remain unread.” Instead, Abiko
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`discloses a “table” (FIG. 8) that is generated on the user’s screen only after
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`Abiko’s email program interface is presented onscreen. EX1009, FIG. 8; EX2013,
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`¶34. The Petition (p. 18) cites to the numbered rows in this table even though
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`Abiko indicates the final row is so unimportant compared to the first few rows that
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`it is not actually numbered in FIG. 8 and need not initially appear on the small
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`screen of Abiko’s mobile phone without subsequent scrolling:
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`8
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`Id.; EX2013, ¶35 (annotated).
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`C. Crumlish
`Crumlish (EX1110) is titled “The ABC’s of the Internet,” and describes the
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`“Internet, e-mail, and the World Wide Web.” EX1110, 20. Crumlish describes
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`user keyboard commands for basic features of several “common e-mail programs,”
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`including “America Online,” “cc:Mail,” “CompuServe,” “Eudora,” “Microsoft
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`Exchange,” “NetCruiser,” “Netscape Mail,” “Pegasus Mail,” and “Pine.” EX1110,
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`53-66. The Petition relies upon the pages mentioning the existence of an older
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`“Pegasus Mail” program. Pet., 43.
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`Crumlish provides various techniques to implement, and actions to avoid,
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`for effective use of “e-mail.” EX2013, ¶¶36-37. Regarding management of
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`received e-mails, the author explicitly recommended that users should maintain all
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`read/unread e-mails in the original inbox until such e-mail has been “replied to”
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`or “delete[d].” EX2013, ¶37 (EX1110, 49 (“until I’ve replied to it”)).
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`Additionally, Crumlish explains that new/unread versus read mail can be readily
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`distinguished (while maintained in the inbox) by an “indicator that its new.”
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`EX1110, 48 (“Unread (usually new) mail typically appears with some indicator
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`that its new, such as the Subject line appearing in bold, or a bullet or checkmark
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`appearing next to new messages.”). In other words, Crumlish acknowledges the
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`existence of the older “Pegasus Mail” program, but contrary to Petitioners’ flawed
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`assumptions, the author plainly suggests the opposite solution—one that avoids
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`automatically moving read messages to a different folder and instead maintains
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`them in the original folder until a reply is sent. EX1110, 49; EX2013, ¶¶37-38.
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`D. Dvorak
`Dvorak (EX1111) is an article from PC Magazine titled Scarier than Spam,
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`authored by John C. Dvorak. Dvorak describes that e-mail has “become a disaster”
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`because of its widespread adoption, and that “overreliance on e-mail has created” a
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`“mess.” EX1111, 018. In particular, Dvorak describes several problems with e-
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`mail, such as the ease with which mail can be sent/replied to, a “fear of
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`nonreciept,” “mail storms” in which different senders reply to a common, pre-
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`existing thread, and “poor tools to sort and organize (or even find) the mail we
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`collect.” Id.; EX2013, ¶39.
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`Notably, Dvorak does not suggest any solution to these purported problems
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`and instead concludes otherwise—that e-mail is a “monster that no tool can easily
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`fix.” EX1111, 018. Indeed, Dvorak reaches the conclusion that there is “no easy
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`cure for this situation except discipline.” Id. Petitioners rely on Dvorak as
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`evidence of a motivation to combine with respect to Ording, Abiko, and Crumlish.
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`Inst. Dec. 16. But, as discussed below, Petitioners’ modification purportedly
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`motivated by Dvorak is contrary to many problems Dvorak raises.
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`E. McPherson
`McPherson is an excerpt from a book titled How to Do Everything with Your
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`Pocket PC. The Petition cites Chapter 21 of McPherson, which is directed to
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`“Instant Messages” on the mobile device. Pet., 24-25. Even though Petitioners’
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`proposed combination relies upon Abiko’s e-mail program (not an instant
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`messaging application) on a mobile phone, EX1112 inexplicably omitted
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`McPherson’s Chapter 20, which actually described the author’s preferred e-mail
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`program features on the mobile device. EX2013, ¶40. Nothing in McPherson’s
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`teaching regarding the preferred e-mail interface on mobile devices (Chapter 20)
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`indicates a “preview” notification for any received e-mail. Id.; see also EX2016.
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`Because McPherson’s Chapter 20 was inexplicably omitted, the Petition never
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`recognized McPherson’s different suggestions for e-mail interfaces/notifications on
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`mobile devices at the time.
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`IV. LEVEL OF ORDINARY SKILL
`The evidence here demonstrates that—based upon the relevant factors—a
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`person of ordinary skill in the art at the time of the invention (“POSITA”) would
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`have had a bachelor of science degree in Computer Engineering/Computer Science
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`or similar subject matter, or at least approximately two years of work or research
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`experience in the fields of computer hardware, networking, and/or user experience
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`design, or an equivalent subject matter, sufficient to understand fundamental
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`computer networking and hardware architecture and user-interface design.
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`EX2013, ¶¶7-9. Also, an increase in experience could compensate for less
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`education, and an increase in education could likewise compensate for less
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`experience. Id.
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`V. CLAIM CONSTRUCTION
`All claim terms should be construed according to the Phillips standard.
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100. Under
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`the Phillips standard, the purpose of claim construction is “to understand and
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`explain, but not to change, the scope of the claims.” Embrex, Inc. v. Serv. Eng’g
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`Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000). The Institution Decision noted that
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`the District Court previously provided a claim construction ruling, and “for
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`purposes of institution, those constructions are reasonable.” Inst. Dec., 8-9
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`(identifying three constructions, and citing EX2002). Patent Owner does not
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`dispute these three interpretations for purposes of this PTAB trial, but notes that
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`the shortcomings of Grounds 1-4 and the reasons for patentability detailed below
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`do not appear to turn upon the claim constructions set forth in the Institution
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`Decision.1 See also EX2013, ¶¶20-26.
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`VI. THE PETITION FAILS TO SHOW A REQUISITE
`MOTIVATION FOR EACH OF THE PROPOSED LAYERS OF
`MODIFICATIONS TO ORDING’S COMPUTER (ALL GROUNDS 1-4)
`As an initial matter, each of Grounds 1-4 rely on multiple layers of
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`modifications to Ording’s Apple Macintosh computer. Petitioners had a burden to
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`demonstrate why a POSITA would have been motivated to implement each of
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`these distinct modifications to Ording’s computer. In re Lee, 277 F.3d 1338, 1343-
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`44 (Fed. Cir. 2002); Cutsforth v. Motivepower, 636 Fed. Appx. 575, 577-79 (Fed.
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`Cir. 2016). The Petition assumed too much.
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`1 Patent Owner notes that Grounds 3-4 are duplicative with Grounds 1-2, except
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`that Grounds 3-4 add the Strom reference to purportedly account for an alternative
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`interpretation of the term “wireless communication device” that requires a “small-
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`screen wireless mobile device.” Pet., 25. Given that the term “wireless
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`communication device” that is not so limited in the District Court’s claim
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`construction ruling, Grounds 3-4 add nothing beyond Grounds 1-2. Thus, as
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`detailed below, Grounds 3-4 suffer from the same fatal flaws as Ground 1-2.
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`First, to properly assess the Petition’s obviousness theory, the Board must
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`unpack these layers of modifications. Starting with the proposed modifications to
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`Ording’s computer based upon Abiko, each of Grounds 1-4 relies upon at least
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`three layers of modifications:
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`1) modifying Ording’s computer to have “wireless communications
`capabilities of the mobile terminal in Abiko” (Pet., 31 (analysis of
`preamble);
`2) further modifying Ording’s computer to store “the e-mail program of
`Abiko” so that it is launched using an icon on Ording’s userbar 600 (Pet.,
`33-34 (analysis of claim element 1[a]) (“software control program in
`Abiko,” and “e-mail program of Abiko in userbar 600 of Ording”));
`EX2017, 33:4-12; and
`3) even further modifying Ording’s icon to display a count of the number of
`distinct senders of new messages (Pet., 39-41 (analysis of claim element
`1[c]).
`Moreover, even after Petitioners assume these first three layers of modifications
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`are implemented to alter Ording’s original computer, the Petition then relies on at
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`least two additional layers of proposed modifications to Abiko’s e-mail program
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`that now supposedly resides on Ording’s altered computer:
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`4) modifying Abiko’s e-mail program “to separately store new messages” by
`adding a “New mail folder” and a “Main mail folder” in “the same way”
`mentioned in Crumlish (Pet., 44); and
`5) modifying Abiko’s e-mail program by creating a sender information
`menu—in addition to the newly added “New mail folder”—that is
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`generated “by processing only the messages in the new message folder”
`(Pet., 44).2
`In other words, starting from Ording’s original computer, the Petition assumes that
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`a POSITA would have been motivated back in 2003 to implement at least five
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`layers of modifications so to achieve the claimed solution on the ’634 patent.
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`EX2013, ¶¶4, 27, 41-43.
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`The hindsight is palpable. Worse yet, the Petition’s failure to demonstrate a
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`sufficient motivation for each of these proposed modifications is fatal—especially
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`under Petitioners’ now-heightened burden under §316(e).
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`The law requires that each of these distinct modifications to Ording’s Apple
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`Macintosh computer must be supported by an articulated reasoning as to why a
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`POSITA would have been motivated to do so, but the Petition fatally ignored this
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`requirement. Cutsforth, 636 Fed. Appx. at 578-79 (“When the Board determines
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`2 The Petition alternatively proposes further modifying Abiko’s sender information
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`menu to “identify distinct senders with respect to only received messages that were
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`unread,” based on Abiko alone. Pet., 42. But the Petition points only to Abiko’s
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`description of a temporal trigger of when the menu is created, without any prior art
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`evidence of limiting the sender information menu to unread messages. Pet., 45;
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`EX2013, ¶43. Moreover, the only explanation of how the modification would
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`have been implemented relies upon citations to Crumlish’s book, not Abiko. Id.
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`that modifications and combinations of the prior art render a claimed invention
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`obvious, the Board must fully explain why a person of ordinary skill in the art
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`would find such changes obvious.” (emphasis added)); Lee, 277 F.3d at 1343-44
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`(noting the requirement for an explicit “reason the skilled artisan, with no
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`knowledge of the claimed invention, would have selected these components for
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`combination in the manner claimed,” and explaining that an omission of this
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`required factor “is both legal error and arbitrary agency action.” (emphasis
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`added)); In re Rouffet, 149 F.3d 1350, 1359, (Fed. Cir. 1998) (“would have been
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`motivated to select the references and to combine them”); ActiveVideo Networks,
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`Inc. v. Verizon Communs., Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (“fails to
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`explain why a person of ordinary skill in the art would have combined elements
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`from specific references in the way the claimed invention does”).
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`Moreover, the law forbids Petitioners from subsequently backfilling the
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`Petition by adding new theories/arguments that “could have been included in a
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`properly-drafted petition, but was not.” Magnum Oil, 829 F.3d at 1378-80;
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`Intelligent Bio-Systems, 821 F.3d at 1369 (“utmost importance”); In re Nuvasive,
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`841 F.3d 966, 977 (Fed. Cir. 2016). The Petition alone set forth Petitioners’ case-
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`in-chief for Grounds 1-4, and it was irreparably defective. Henny Penny Corp. v.
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`Frymaster LLC, 938 F.3d 1324, 1331 (Fed. Cir. 2019) (“the Board did not abuse its
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`discretion by holding [Petitioner] to the obviousness theory in its petition”).
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`A.
`Petitioners fail to satisfy its burden of demonstrating why a
`POSITA would have been motivated to modify Ording’s computer to include
`Abiko’s e-mail program (Elements 1[a] and 1[b])
`The second modification of Petitioners’ five proposed modifications (supra,
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`p. 14) is defective. The Petition entirely fails to present any articulated reasoning
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`as to why a POSITA would have been motivated to modify Ording’s Apple
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`Macintosh computer to include Abiko’s e-mail program so that Ording’s userbar
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`600 will display the icon for launching Abiko’s e-mail program. EX2013, ¶44.
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`The omission of this requisite factor in the Petition is a fatal legal error. Lee, 277
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`F.3d at 1343-44; Cutsforth, 636 Fed. Appx. at 577-79; Apple Inc. v. Qualcomm
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`Inc., IPR2018-01252, Pap. 28, 23-28 (January 22, 2020) (holding “[w]e do not
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`consider that new theory,” and citing §312(a) and the PTAB’s Trial Practice
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`Guide). This error is highlighted in the Petition’s analysis of claim element 1[a]
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`(pp. 33-35), and is then cemented when the Petition addresses claim element 1[b]
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`(pp. 35-37) in a manner that assumes this second modification was already
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`implemented on Ording’s computer. EX2013, ¶45.
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`More specifically, in the Petition’s analysis of claim element 1[a] at pages
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`33-34, Petitioners’ express their reliance on this second modification to Ording:
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`“[U]nder the combination of Ording and Abiko, the ‘at least one icon relating to
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`electronic messaging’ would take the form of an icon in userbar 600, but the icon
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`would correspond to the software control program