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`IPR2019-00925
`U.S. Patent No. 8,209,634
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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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`Case IPR2019-00925
`U.S. Patent No. 8,209,634
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`PETITIONERS’ REPLY
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`Table of Contents
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`Page
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`B.
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`C.
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`I.
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`II.
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`PETITIONER PROVIDED COMPELLING MOTIVATIONS TO
`COMBINE FOR EACH GROUND AND PRIOR ART REFERENCE ....... 1
`A.
`The IPR Petition provided a compelling motivation to combine
`the teachings of Ording and Abiko. ..................................................... 3
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`The Apple Macintosh’s commercial embodiment is
`irrelevant to the instituted grounds and obviousness. ................ 6
`The IPR Petition provided a compelling motivation to adapt the
`application icon numeric character in Ording to report the
`number of distinct senders of messages. .............................................. 9
`The IPR Petition provided a compelling motivation to adapt
`Abiko to process only new (unread) messages. ................................. 13
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`Crumlish ................................................................................... 14
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`Abiko ........................................................................................ 17
`PATENT OWNER’S ARGUMENTS IMPROPERLY ATTACK THE
`PRIOR ART REFERENCES INDIVIDUALLY AND IGNORE THE
`INSTITUTED OBVIOUSNESS COMBINATIONS .................................. 19
`III. DEPENDENT CLAIMS 6, 12, AND 18 ARE UNPATENTABLE
`BASED ON THE PRIOR ART CITED IN GROUND 2 ............................ 20
`IV. CONCLUSION ............................................................................................. 23
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`IPR2019-00925
`U.S. Patent No. 8,209,634
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`Petitioner respectfully submits the following Reply in support of its Petition
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`for Inter Partes Review:
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`I.
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`PETITIONER PROVIDED COMPELLING MOTIVATIONS TO
`COMBINE FOR EACH GROUND AND PRIOR ART REFERENCE
`In an attempt to make the instituted obviousness grounds seem more complex
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`than they are, or improperly suggest that the instituted grounds require a physical
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`combination,1 Patent Owner structured its response around a list of five purported
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`technical “modifications” it claims must be applied to the computer system of
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`Ording to meet the claim limitations of the challenged claims. (Response at 14-15.)
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`For each of these purported “modifications,” Patent Owner primarily argues that the
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`Petition did not articulate a sufficient motivation to combine. Patent Owner does
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`not appear to seriously contest that the prior art cited in the instituted grounds, as a
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`whole, discloses all limitations of the challenged claims.
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`1 See, e.g, Allied Erecting & Dismantling Co., Inc. v. Genesis Attachments, LLC,
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`825 F.3d 1373, 1381 (Fed. Cir. 2016) (“‘The test for obviousness is not whether the
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`features of a secondary reference may be bodily incorporated into the structure of
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`the primary reference,’ but rather whether ‘a skilled artisan would have been
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`motivated to combine the teachings of the prior art references to achieve the claimed
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`invention.’”) (citations omitted).
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`U.S. Patent No. 8,209,634
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`A closer look at Patent Owner’s list of “modifications” confirms that the
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`instituted obviousness combinations, even under the stilted and complex way in
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`which Patent Owner frames them, are straightforward, well-reasoned, and not based
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`on hindsight analysis. The Petition supported each of these so-called modifications
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`with multiple motivations to combine. Patent Owner does not dispute any of
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`Petitioner’s evidence that a skilled artisan would have had a reasonable expectation
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`of success in combining the prior art references in the manner described.
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`Patent Owner makes no challenge whatsoever to its first modification (nor
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`could it) – adapting the Ording computer to incorporate wireless communication
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`capabilities. (Response at 14, ¶1.) The second purported modification – combining
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`Ording with the email program of Abiko – is fully supported by the record and the
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`multiple motivations to combine set forth in the Petition. The same is true for the
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`third purported modification – adapting the numeric character in Ording to report
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`the number of distinct senders as opposed to the number of new messages – as also
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`explained in the Petition. And as for the fourth and fifth modifications, they merely
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`relate to the ability to identify new messages (and separate them from all received
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`messages), a feature of prior art messaging systems so basic that Patent Owner
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`cannot credibly claim provides any point of novelty or distinction over the prior art.
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`Nevertheless, even as to this trivial feature, the Petition provided an exhaustive
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`analysis of the motivations to combine with respect to Abiko and Crumlish.
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`IPR2019-00925
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`U.S. Patent No. 8,209,634
`A. The IPR Petition provided a compelling motivation to combine the
`teachings of Ording and Abiko.
`Patent Owner’s first attack focuses on its second so-called modification, i.e.
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`combining the user interface of Ording with the email capabilities of Abiko.
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`(Response at 17-24.) But Patent Owner’s arguments ignore the actual motivations
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`set forth in the Petition.2
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`The Petition explained that a person of ordinary skill in the art would have
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`been motivated to combine Ording with Abiko because Abiko provided wireless
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`communications capabilities not disclosed in Ording. (Ex. 1102, ¶¶67, 71-73.) This
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`motivation is not only relevant to Patent Owner’s first so-called modification (which
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`Patent Owner does not dispute), but also the second. The Petition explained that
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`wireless capabilities “provide a key convenience in that the user need not be tethered
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`2 Patent Owner claims that Petitioner’s entire motivation to combine analysis was
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`contained on pages 33-34 of the Petition (and the corresponding paragraphs of its
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`expert declaration). (Response at 17-18.) But those pages were devoted to simply
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`laying out and explaining the combination itself, i.e. adapting the userbar 600 of
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`Ording to include an icon for the Abiko email program. (Petition at 33-34; Ex. 1102,
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`¶80.) Patent Owner ignored other disclosures in the Petition (under sections
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`conspicuously entitled “Rationale and Motivation to Combine”) that provide the
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`motivations to combine the teachings of Ording and Abiko, as explained in the text.
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`U.S. Patent No. 8,209,634
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`to wires to connect to a computing network,” a convenience that was “particularly
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`advantageous in the context of electronic messaging, as it allows users to send and
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`receive messages on the go, as Abiko expressly confirms.” (Petition at 32; see also
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`Chatterjee Opening Declaration, Ex. 1102, ¶73 (“[M]arket and competitive forces
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`would have further encouraged a person of ordinary skill in the art to support the
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`ability to use wireless computing devices, as disclosed in Abiko, with the user
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`interface techniques in Ording.”) (underlining added).) An email system that can
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`communicate wirelessly (such as Abiko) obviously has advantages over one that
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`cannot. And although not expressly required by the claim, the Petition also
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`explained how the Abiko email system was adaptable to small-screen wireless
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`devices, a further benefit known to persons of ordinary skill in the art. (Petition at
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`30-33, 71-72; Ex. 1102, ¶¶165-166.)
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`Patent Owner appears to argue that the law on obviousness required Petitioner
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`to articulate a separate motivation to combine directed specifically to the decision to
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`combine the specific email program of Abiko with Ording. Putting aside the fact
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`that such a motivation was apparent from the Petition (as explained below), Patent
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`Owner cites no authority for such a granular an inflexible approach to obviousness.
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`See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[T]he question is whether
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`there is something in the prior art as a whole to suggest the desirability, and thus the
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`obviousness, of making the combination….”) (quoting In re Beattie, 974 F.2d 1309,
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`1311 (Fed. Cir. 1992)) (underlining added). A motivation to combine the teachings
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`of Ording and Abiko was provided by the benefit of adapting Abiko’s wireless
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`capabilities, the sufficiency of which is not challenged by Patent Owner.
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`The Petition also explained that Ording expressly discloses that an “e-mail
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`application” may be presented in its userbar 600, and both sides’ experts agree, that
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`could be any email application. (Petition at 28-29; Chatterjee Reply, Ex. 1129, ¶10;
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`Surati Depo., Ex. 1130, 90:24-91:10.) It would not have required any leap of logic
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`or inventiveness for a skilled artisan, already armed with Ording and Abiko and the
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`indisputably compelling justification to combine described above, to consult Abiko
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`for a suitable email application for use with the userbar of Ording.
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`And even if the law required motivations to combine on a feature-by-feature
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`basis (which it does not), the Petition identified a specific benefit of Abiko’s email
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`program – its “sender-centric” approach that makes it easier to organize messages
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`based on their senders. (Petition at 46-47; Ex. 1102, ¶¶48, 105.) As the Petition
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`explained, “Abiko recognized that for many users, it is more important to organize
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`and present messages based on their senders.” (Petition at 46 (underlining added)
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`(citing Abiko, Ex. 1109, ¶¶0002, 0004-0006, 0008, 0017, 0098-99); Ex. 1102, ¶105.)
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`This observation not only supports the motivation to combine with respect to
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`“numeric character” and “count” limitations discussed below, but also explains why
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`a skilled artisan would have selected Abiko’s email program in the first instance.
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`U.S. Patent No. 8,209,634
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`The Petition cited and quoted passages from Abiko explaining that “a user who
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`wishes, for example, to create a list of all received mail messages from a particular
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`sender must search through numerous messages one by one by means of a manual
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`input operation.” (Abiko, Ex. 1109, ¶0005.) “Some received messages required are
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`therefore likely to be overlooked and many operations are needed to find the
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`messages.” (Id.) Abiko addresses this problem through a “sender-centric” approach
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`of automatically organizing received messages based on their respective senders.
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`(Petition at 39-40, 46; Abiko, Ex. 1109, e.g., ¶¶0006, 0017 (“The listing of the sender
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`identification information in a prescribed order in the menu information improves
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`ease-of-use because
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`it permits
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`the user
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`to readily find required sender
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`information.”).) Patent Owner does not contest the benefits of this feature or attempt
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`to identify other conventional email clients or applications that offered it.
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`Petitioner did not simply “pluck” Abiko out of a “sea of references,” as Patent
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`Owner argues. (Response at 20-21.) Petitioner articulated compelling reasons that
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`a skilled artisan would have selected Abiko and chosen to combine its teachings with
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`Ording. Patent Owner’s arguments to the contrary should be rejected.
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`The Apple Macintosh’s commercial embodiment
`irrelevant to the instituted grounds and obviousness.
`The commercial embodiment of the userbar 600 in Ording appears to have
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`been an Apple user interface feature known as the “Dock,” which was part of the
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`Apple Macintosh operating system as of at least December 2003. (Ex. 2014, p.5.)
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`Patent Owner argues that a skilled artisan would not have been motivated to combine
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`Ording with Abiko because Ording deals with an Apple Macintosh computer, and
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`those computers already had an available email client known as Apple Mail.
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`(Response at 20.) This argument is unpersuasive for several reasons.
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`First, there is no basis for Patent Owner to conflate the disclosures of the
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`Ording patent with Ording’s commercial embodiment. Ording itself states that its
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`user interface techniques are not limited to the Apple Macintosh or any other specific
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`computing platform, but “can be used in combination with any system having a
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`processor and a display.” (Ording, Ex. 1103, 6:19-23.) If anything, the fact that the
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`Apple Macintosh already implemented a user interface feature corresponding to the
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`userbar 600 of Ording actually undermines Patent Owner’s argument. This is
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`because a person of ordinary skill in the art seeking to implement the user interface
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`techniques in Ording would likely not have chosen the Apple Macintosh as the
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`platform on which to do so because such an implementation would have been
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`redundant of the existing Macintosh user interface. (Ex. 1129, ¶11.)
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`Second, the inferential leaps on which Patent Owner’s argument relies
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`become even more attenuated with respect to the “Apple Mail” email client. Patent
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`Owner’s expert acknowledged that nothing in Ording even mentions Apple Mail, let
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`alone suggests that Ording’s techniques were limited to that specific email
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`application. (Surati Depo., Ex. 1130, 90:24-91:7.) He acknowledged that the user
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`U.S. Patent No. 8,209,634
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`interface teachings in Ording could have been applied to other any email application,
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`and that Ording was “trying to patent concepts in a more general way.” (Id., 91:2-
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`10, 92:8-19.) A person of ordinary skill in the art would have appreciated that any
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`suitable email system could have been represented in userbar 600 of Ording,
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`including the one in Abiko. (Ex. 1129, ¶10.) A skilled artisan would thus have
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`found the availability of “Apple Mail” on Apple Macintosh systems irrelevant to the
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`motivation to combine the userbar 600 of Ording with the teachings of Abiko.
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`Third, there is no basis for Patent Owner’s apparent suggestion that the
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`availability of Apple Mail for the Apple Macintosh would have eclipsed the need for
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`any other email client. It is undisputed that numerous other email programs existed
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`as of December 2003 – Patent Owner’s own expert identified nine of them. (Surati
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`Depo., Ex. 1130, at 93:19-95:3, 83:18-84:8; Ex. 1129, ¶12.) It is also undisputed
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`that computer users in December 2003 frequently had multiple different messaging
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`applications on their computers. (Ex. 1129, ¶12; Surati Depo., Ex. 1130, at 86:14-
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`23.) Thus, even if one assumes that a skilled artisan would have chosen the Apple
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`Macintosh as the computing platform on which to implement Ording, and that same
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`skilled artisan already had Apple Mail installed on her computer, that would not have
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`discouraged use of other email applications such as the one in Abiko. As explained
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`above, Abiko provided specific advantages, including wireless communication and
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`U.S. Patent No. 8,209,634
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`the ability to automatically display messages by sender. Patent Owner does not
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`claim that Apple Mail provided those features.
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`B.
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`The IPR Petition provided a compelling motivation to adapt the
`application icon numeric character in Ording to report the number
`of distinct senders of messages.
`With respect to the so-called third “modification,” Patent Owner argues that
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`the Petition did not articulate a sufficient motivation to modify the “numeric
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`character” described in Ording, which presents a numeric character representing the
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`number of new email messages, to instead present the number of senders.
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`Patent Owner spends a considerable portion of its arguments parsing words
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`and phrases in the IPR Petition that explained that a person of ordinary skill in the
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`art “might” have found the combination preferable. (Response at 25-27.) But Patent
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`Owner has misinterpreted this language from the Petition, which merely
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`acknowledges that email users have different preferences in how to treat incoming
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`email messages. The Petition explained that a numeric character representing the
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`number of distinct senders would have alleviated a number of known drawbacks of
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`a raw new message count, including duplicate messages from the same sender or a
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`sudden spike in the number of distinct senders from one day to the next. (Petition at
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`47-48.) But the Petition candidly acknowledged that “there is no ‘one size fits all’
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`approach for organizing electronic messages and notifying users of new (unread)
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`messages,” and as such, “[f]or certain categories of users, a more ‘sender-centric’
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`U.S. Patent No. 8,209,634
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`approach to received messages might be preferable.” (Petition at 48 (emphasis
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`added); Ex. 1102, ¶110). It would have been obvious that in any user interface
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`decision, there may be tradeoffs, advantages, and disadvantages such that a
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`particular design decision might be preferred by some category of users, but not
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`others. The existence of such tradeoffs presents no obstacle to a finding of
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`obviousness. See In re Fulton, supra, 391 F.3d at 1200 (“Thus, a finding that the
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`prior art as a whole suggests the desirability of a particular combination need not be
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`supported by a finding that the prior art suggests that the combination claimed by
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`the patent applicant is the preferred, or most desirable, combination.”).
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`Page 31 of the Patent Owner Response reproduces the sender table from
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`Figure 8 from Abiko, which shows four (4) listed items followed by two sets of
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`“dots” indicating the presence of additional (and unshown) items. (Response at 30-
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`31.) Patent Owner’s reliance on these dots is unavailing. A person of ordinary skill
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`in the art would have understood that they merely signify the presence of additional
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`numbered items in the list. Abiko explains that each entry in the sender table in
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`Figure 8 (and the corresponding screen display in Figure 10(b)) is sorted and ranked
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`through a numbering scheme that starts at “1” and sequentially increases. (Abiko,
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`Ex. 1109, ¶¶0116, 0121, Ex. 1129, ¶16.) Patent Owner’s expert acknowledged at
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`his deposition that if the sender table in Figure 8 contained items beyond the four
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`specifically listed, the sequential numbering scheme would continue such that the
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`U.S. Patent No. 8,209,634
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`additional items would have been numbered “5,” “6,” etc., through the total number
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`of items. (Surati Depo., Ex. 1130, 98:6-11, 99:1-19; Ex. 1129, ¶16.) As the Board
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`recognized in its Institution Decision, “a person of ordinary skill in the art would use
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`the highest number in the ‘No’ column of that table as representing the number of
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`senders tabulated in the sender table.” (Decision at 22.)
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`Patent Owner also argues that the purpose of the sender list in Abiko is to
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`identify individual senders and facilitate their selection from the list, rather than
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`provide a total number of distinct senders. (Response at 30, 54-55.) But Patent
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`Owner does not dispute that, in creating that sender list, Abiko calculates that
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`number and displays that number with the sender list. (Petition at 39-40.)
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`Patent Owner’s arguments about the purpose of the sender list in Abiko only
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`further reinforce the motivations to combine. One of the key features of Abiko is its
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`ability to organize and display messages based on their senders. (Petition at 46
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`(citing Abiko, Ex. 1109, ¶¶0004-0006).) This is apparent from Figure 10(b):
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`(Petition at 39 (yellow annotation in Petition).) The Petition explained that, in this
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`example, the sender list shows four distinct senders who collectively sent 37
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`messages. (Id. at 19-21, 36-37, 41.) As the Petition further explained, it “would
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`have been obvious that the number of senders who sent unread messages might be
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`more valuable to certain users than a simple count of new messages.” (Id. at 46-47.)
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`Indeed, in the context of Abiko and its overriding purpose of organizing email by
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`sender, the total message count (e.g. “37”) would have been less significant to a user
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`of such the Abiko system. The number of distinct senders would obviously have
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`been more the relevant metric to present on userbar 600 of Ording, as that number
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`would have corresponded exactly to the number of senders that the Abiko email
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`program would display on the sender list. “A person of ordinary skill in the art is
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`also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 421 (2007).
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`Patent Owner’s attack on the Dvorak reference (Ex. 1111) also fails. Patent
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`Owner cannot dispute that Dvorak expressly identifies, as “the biggest headache
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`with general Internet mail,” the fear of non-receipt that causes senders to “send
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`multiple copies” of the same message to the same user. (Ex. 1111 at 018 (emphasis
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`added); Petition at 47.) Patent Owner also cannot dispute that this “biggest
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`headache” would have made a raw count of unread messages far less useful because
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`of the possibility that many of those unread messages are duplicates from the same
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`senders. (Petition at 47-48.) The fact that Dvorak identifies other problems with
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`email (such as the “mail storm” problem) does not undermine the suggestions and
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`motivations affirmatively provided. The existence of different challenging in
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`handling email messages merely confirms the existence of tradeoffs that a skilled
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`artisan would have weighed in considering potential approaches. (Ex. 1129, ¶18.)
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`Patent Owner also points to Dvorak’s statement that “I see no easy cure for
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`this situation except discipline.” (Response at 33 (quoting Ex. 1111 at 018).) But
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`Patent Owner does not explain how this statement would have discouraged a skilled
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`artisan from implementing the “cure” in Abiko, particularly considering the fact that
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`Abiko was filed three years after Dvorak’s publication.
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`C. The IPR Petition provided a compelling motivation to adapt Abiko
`to process only new (unread) messages.
`The so-called fourth and fifth “modifications” identified by Patent Owner
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`concern a feature so trivial that it is surprising that Patent Owner devotes nearly 18
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`pages of its Response to it. (Response at 34-51.) Patent Owner does not claim that
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`the ’634 patent invented the ability of an email system to identify new (unread)
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`messages and separate them from older messages. Patent Owner instead attempts to
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`undermine the instituted combinations by distorting statements in Crumlish and
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`Abiko that do not address, let alone discourage, those combinations.
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`Crumlish
`Patent Owner cites portions of Crumlish in which the author states that “I keep
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`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….” (Response at 36-37 & 37 n.6
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`(quoting Crumlish, Ex. 1110 at 049 & Ex. 2015 at 18); Ex. 2013, ¶¶61-62.) Patent
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`Owner appears to argue that those statements would have discouraged a skilled
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`artisan from adopting the approach of Pegasus Mail in which new messages are
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`stored in a “New mail folder” separate from the folder holding old messages.
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`But those statements have nothing to do with the proposed combination,
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`which cites Crumlish’s description of Pegasus Mail to show an email program that
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`automatically places new messages in a separate folder to distinguish them from old
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`messages. (Petition at 43-44.) The statements cited by Patent Owner instead advise
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`users to avoid creating too many new user-created mailboxes for manual filing of
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`messages. (Ex. 2015 at 18.) For example, the passage of Crumlish cited by Patent
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`Owner explains that different email programs “offer different commands for creating
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`mailboxes and transferring messages into them, but the principles are more or less
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`the same as those used for real-life filing.” (Ex. 2015 at 18 (underlining added).)
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`The separate new mail folder in Pegasus Mail does not serve this same purpose of a
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`manually-created mailbox for facilitating archiving of old messages – it instead
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`automatically and temporarily stores new incoming messages. (Ex. 1129, ¶20.)
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`If anything, a skilled artisan would have found the technique in Pegasus Mail
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`complementary to Crumlish’s advice. (Id., ¶21.) Crumlish explains that in Pegasus
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`Mail, after the new message has been read, it is automatically moved from the New
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`Mail folder to the Main mail folder. (Crumlish, Ex. 1110, 063.) Accordingly, after
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`an email message has been read and automatically moved to the Main mail folder,
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`the user could file that message away in an appropriate mailbox in accordance with
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`Crumlish’s advice on managing mailboxes, or whatever organizational scheme the
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`user deems best. (Ex. 1129, ¶21.) Crumlish’s advice could not have discouraged a
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`skilled artisan from using the Pegasus Mail technique of automatically and
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`temporarily storing new mail in a separate folder because the automatic storage
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`would not interfere with any subsequent manual filing by the user. (Id.)
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`Moreover, Crumlish’s statements would have been regarded as mere
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`subjective opinions, with which a skilled artisan would have felt free to agree or
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`disagree. (Id., ¶22.) Patent Owner’s expert acknowledged that he personally does
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`not follow Crumlish’s advice to “keep my mail around until I’ve replied to it.” (Ex.
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`1110 at 049; Surati Depo., Ex. 1130, at 95:10-20.) Both sides’ experts agree that in
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`the 2003 timeframe, email users employed various approaches for reviewing and
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`organizing email messages, and for deciding whether to retain or delete them. (Ex.
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`1129, ¶22; Ex. 1130 at 95:21-97:18.) A skilled artisan would have regarded
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`Crumlish’s comments as merely identifying the author’s personal preferences.
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`Patent Owner next points to a disclosure in Crumlish that unread 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.” (Response at 40 (quoting Ex. 1110 at 048) (boldface added by Patent
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`Owner); Ex. 2013, ¶63.) Patent Owner appears to suggest that these user interface
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`indicators would have discouraged a skilled artisan from using the new folder
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`technique of Pegasus Mail, but this argument is unpersuasive.
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`Federal Circuit law is clear that the “mere disclosure of alternative designs
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`does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (quoting
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`In re Fulton, supra, 391 F.3d at 1201). Patent Owner does not explain how the mere
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`disclosure of displaying new messages with boldface type, bullets, or checkmarks
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`would have discouraged a skilled artisan from using the separate folder technique of
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`Pegasus Mail. Not only does Crumlish provide no such discouragement, it identifies
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`the boldface type, bullets, and checkmarks as mere examples of how to visually
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`differentiate new from old messages. (Ex. 1110 at 048 (“Unread (usually new) mail
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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 new messages.”)
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`(underlining added).) Pegasus Mail itself also provides “some indicator that [the
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`email] is new,” id., by placing the new email in a separate folder that the user can
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`review in the new mail window. (Id. at 064-065, Fig. 2.15).) Patent Owner does not
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`point to anything in Crumlish discouraging this approach.
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`Abiko
`Patent Owner recycles its pre-institution argument that Abiko discloses only
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`the ability to process all received email messages, and thus cannot be properly
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`adapted to process only new or unread messages (either alone or in combination with
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`Crumlish). But this argument cannot be squared with express disclosures of Abiko.
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`Abiko plainly states: “The received messages used to create the menu
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`information including identifying senders may include all received messages or only
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`received messages that satisfy prescribed conditions.” (Abiko, ¶0011 (underlining
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`added).) The “menu information” in this statement includes “‘Sender selection by
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`mail volume menu’ information” that is used to create the sender volume screen
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`shown in Figure 10(b) of Abiko and reproduced above. (Id., ¶0121; Ex. 1129, ¶29.)
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`The fact that sender information in Abiko can be based on “only received messages
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`that satisfy prescribed conditions” (Abiko, Ex. 1109, ¶0011) fatally undermines
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`Patent Owner’s repeated arguments that the sender information displayed in Figure
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`10(b) must always reflect all received messages.
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`As the Petition explained and the Board noted, one of those “prescribed
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`conditions” could have identified unread messages. (Decision at 22 (citing Petition
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`at 42 and Ex. 1102, ¶¶95-96); Ex. 1129, ¶30.) The Petition provided compelling
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`motivations to adapt Abiko (alone or in combination with Crumlish), which Patent
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`Owner does not dispute. (Petition, e.g., at 42 (explaining that “new messages
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`generally hold more immediate importance to the user because their contents are
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`unknown.”), 45 (explaining that “new or unread messages are often of more
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`immediate concern to the user because they have not been reviewed or processed,
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`and may require further action.”); Ex. 1102, ¶¶96, 103.)
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`Patent Owner also contends that the Petition did not explain “‘how’ the
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`proposed combination would operate with respect to read/unread messages.”
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`(Response at 49.) Petitioner contends that limiting the sender information to unread
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`messages “would have prevented the user from fully identifying the actual volume
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`of messages from those senders correlated to both read and unread messages.” (Id.)
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`This argument is again refuted by ¶0011 of Abiko, which plainly contemplates
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`that sender information can be based on “only received messages that satisfy
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`prescribed conditions.” (Ex. 1111, ¶0011.) The fact that certain embodiments in
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`Abiko may process all received messages does not suggest that Abiko’s invention is
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`operable or useful only in that situation. The express statement in ¶0011 of Abiko
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`confirms that the purposes and objectives of Abiko’s invention can be realized by
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`processing fewer than all received messages.
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`II.
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`PATENT OWNER’S ARGUMENTS IMPROPERLY ATTACK THE
`PRIOR ART REFERENCES INDIVIDUALLY AND IGNORE THE
`INSTITUTED OBVIOUSNESS COMBINATIONS
`The Federal Circuit has consistently held that “[a] finding of obviousness…
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`cannot be overcome ‘by attacking references individually where the rejection is
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`based upon the teachings of a combination of references.’” Bradium Techs. LLC v.
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`Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019) (quoting In re Merck & Co., 800 F.2d
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`1091, 1097 (Fed. Cir. 1986)). But this is precisely what Part VIII of the Patent
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`Owner Response does in arguing that no single prior art reference in this proceeding
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`discloses the complete claim step of “visually modifying at least one displayed
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`icon… to include a numeric character representing 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.”
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`It is true that no single prior art reference discloses the entire “visually
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`modifying” step, but this is irrelevant as the combination of references in this
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`proceeding discloses every aspect of that step. Patent Owner does not dispute that
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`Ording expressly discloses the vast majority of the “visually modifying” step, except
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`that the numeric character in Ording represents the number of new messages rather
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`than the number of distinct senders. (Petition at 37-38; Ording, Ex. 1003, 9:21-23
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`(“For example,
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