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
`Patent 8,209,634
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`PATENT OWNER’S SUR-REPLY
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` 
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`TABLE OF CONTENTS
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` 
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`THE REPLY DOES NOT CURE THE SHORTCOMINGS OF
`PETITIONER’S ALLEGED MOTIVATION TO COMBINE (ELEMENT
`1[a]) .................................................................................................................. 1 
` Petitioner ignores its burden to expressly articulate the motivation for
`modifying Ording’s computer hardware to store “the e-mail program of
`Abiko” ........................................................................................................ 1 
`  The Reply belatedly attempts to recast its original purported motivations
`for incorporating “wireless capability” (Preamble) or modifying Ording’s
`“icon” display (Element 1[c]) into a distinct showing for modifying
`Ording’s computer to store/execute the “e-mail program of Abiko”
`(Element 1[a]). ............................................................................................ 4 
`  Even if the purported motivation to “automatically display messages by
`sender” was tethered to the Petition’s modification proposed in Element
`1[a] (which it was not), it fails to satisfy Petitioner’s burden .................... 8 
`THE REPLY DOES NOT CURE THE PETITION’S FAILURE TO
`SATISFY ITS BURDEN OF DEMONSTRATING WHY A POSITA
`WOULD HAVE MODIFIED ORDING’S ICON (ELEMENT 1[c]) ........... 12 
` Dr. Surati’s testimony regarding the significance of numbers in the first
`column of Abiko’s FIG. 8 is uncontroverted. .......................................... 12 
`  Petitioner ignores “tradeoffs” without properly analyzing the prior art’s
`stated preferences and evidence of reasons not to modify Ording’s
`numeral. .................................................................................................... 14 
`  THE REPLY DOES NOT CURE THE PETITION’S FAILURE TO
`DEMONSTRATE WHY A POSITA WOULD HAVE FURTHER
`MODIFIED ABIKO IN THE PROPOSED MANNER (ELEMENT 1[c]) .. 16 
` The Reply fails to cure errors in the Petition’s further modifications to
`Abiko’s e-mail program based on Crumlish’s description of “Pegasus
`mail” (Element 1[c]) ................................................................................ 16 
`  The Reply does not cure the Petition’s deficiencies with respect to fourth
`and fifth proposed modifications—modifying Abiko’s e-mail program
`“to separately store new messages” and create the sender information
`menu using only unread messages (Pet., 44). .......................................... 20 
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`i
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`  LACK OF PRIOR ART DISCLOSURE OF THE CRITICAL METHOD
`ELEMENT HIGHLIGHTS PETITIONER’S LEGALLY-DEFICIENT
`OBVIOUSNESS THEORIES. ...................................................................... 22 
`THE REPLY FAILS TO CURE MULTIPLE DEFECTS IN THE
`PETITION’S ANALYSIS OF DEPENDENT CLAIMS 6, 12, AND 18 IN
`GROUND 2. .................................................................................................. 24 
`  CONCLUSION .............................................................................................. 26 
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`ii
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`EX2001
`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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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`EXHIBITS
`Declaration of Rajeev Surati, Ph.D.
`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)
`
`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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`iii
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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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`Transcript of Deposition of Dr. Sandeep Chatterjee (May 8,
`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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`EX2018
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`iv
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`THE REPLY DOES NOT CURE THE SHORTCOMINGS OF
`PETITIONER’S ALLEGED MOTIVATION TO COMBINE
`(ELEMENT 1[a])
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`Petitioner ignores its burden to expressly articulate the motivation
`for modifying Ording’s computer hardware to store “the e-mail
`program of Abiko”
`As explained in the Response (p. 14), the Petition relied upon three distinct
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`modifications to Ording’s computer followed by two further modifications to the
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`resulting system. The Reply, for the first time, argues that the alleged motivation
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`for the first modification (altering Ording’s computer hardware to provide
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`Abiko’s “wireless capabilities”) thereafter opens the door for Petitioner to freely
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`select the entirely different second modification (altering Ording’s software
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`store/execute Abiko’s “e-mail program”) without any articulated motivation for
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`doing so. Reply, 5 (“which it does not”). This is legal error.
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`Petitioner ignores the mandatory authority imposing the burden upon
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`Petitioner to expressly demonstrate motivation/articulated reasoning for distinct
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`modifications to different parts of a primary reference to achieve different claim
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`elements. Reply, 4-5. Nothing in the Petition’s analysis of the preamble element
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`(“wireless capabilities”) necessitated the distinct modification assumed for
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`Element 1[a] (further modifying Ording’s computer to have a particular species of
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`email program). Petitioner’s hindsight alone demanded it. Nothing else.
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`1
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`The Federal Circuit’s holding in Polaris Indus., Inc. v. Arctic Cat, Inc.
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`required that a petitioner must prove separate motivations to modify based on the
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`secondary reference when different claim limitations require different (further)
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`modifications to the primary reference. 882 F.3d 1056, 1069 (Fed. Cir. 2018).
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`The Polaris court held that the Board properly assessed a first “motivation” to
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`modify the primary reference to achieve a particular “four-wheel-drive” claim
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`element in claim 1. Id. at 1070-71. Critically, for subsequent claim elements that
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`required distinct modifications to the primary reference (e.g., a specific location of
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`the “front driveshaft,” and an altered location of a “fuel tank”), the Polaris court
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`separately analyzed whether the petitioner had proven distinct motivations to
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`justify those further modifications. Id. at 1066-68. Based on this requirement that
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`the petitioner must articulate distinct motivations for the distinct modifications to
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`different parts of a primary reference, the court held there was a sufficient showing
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`to achieve the “four-wheel drive” modification and the “front drive shaft”
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`modification, but an insufficiently alleged motivation for the “fuel tank”
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`modification. Id. at 1068-71.
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`This understanding of Polaris is no secret to the Board. Previously, the
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`Board analyzed Polaris and its requirement that a petitioner must separately prove
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`motivations to combine in these circumstances. Stingray Digital Group Inc. v.
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`Music Choice, IPR2017-01191, Paper 38 (PTAB Oct. 11, 2018). Facebook now
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`erroneously contends that, contrary to Polaris and Stingray, if its first motivation
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`(for “wireless capabilities”) is sufficient to justify modifying Ording’s computer
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`based upon a secondary reference’s teaching for wireless device, then it is no
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`longer burdened to justify subsequent modifications to Ording’s computer based
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`upon that secondary reference. The Board must avoid Facebook’s invitation for
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`error.
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`The Reply incorrectly asserts that Patent Owner “cites no authority”—oddly
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`ignoring the Response’s citations to the Polaris, Lee and Cutsforth decisions. In
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`Cutsforth, the petitioner proposed several distinct modifications to the primary
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`reference for achieving different claim elements, including a “mounting block
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`[that] includes a spring” and a “mounting block [that] includes a movable portion.”
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`Cutsforth v. Motivepower, 636 Fed. Appx. 575, 577-79 (Fed. Cir. 2016). Much
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`like the Polaris case, the Federal Circuit separately analyzed whether sufficient
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`motivations to combine were articulated with respect to each proposed
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`modification to the primary reference, not whether there was one motivation to
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`combine the references generally. Id.; In re Lee, 277 F.3d 1338, 1343-44 (Fed.
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`Cir. 2002); In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000) (“particular
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`findings must be made as to the reason the skilled artisan, with no knowledge of
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`the claimed invention, would have selected these components for combination in
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`the manner claimed” (emphasis added)).
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`3
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`Finally, the Reply’s assumed starting point—for the POSITA being “already
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`armed with Ording and Abiko” (p. 5)—also highlights another error rooted in
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`Petitioner’s gravity toward hindsight. Not only is such an argument plainly
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`contrary to the tact taken by the Federal Circuit in Polaris, Cutsforth, and Kotzab
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`(cited above), but this is the exact error in PersonalWeb that led to a reversal of a
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`PTAB final written decision. 848 F.3d 987, 993-94 (Fed. Cir. 2017) (“But that
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`reasoning seems to say no more than that a skilled artisan, once presented with
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`the two references, would have understood that they could be combined. And that
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`is not enough.” (emphasis added)); Response, 21-22 (citing PersonalWeb).
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`Simply put, a mere showing of a motivation to provide “wireless
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`capabilities” in the analysis of the preamble (Pet., 31) does not unburden Petitioner
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`from articulating a motivation for distinct (further) modifications to Ording’s
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`computer, such as storing/executing Abiko’s particular species of “e-mail
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`program.” (Pet., 33-34). It was a fatal error for the Petition to assume otherwise,
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`and the Reply cannot cure it at this late stage. See Response, 16 (“subsequently
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`backfilling”).
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`The Reply belatedly attempts to recast its original purported
`motivations for incorporating “wireless capability” (Preamble) or
`modifying Ording’s “icon” display (Element 1[c]) into a distinct
`showing for modifying Ording’s computer to store/execute the “e-
`mail program of Abiko” (Element 1[a]).
`A straightforward review of pages 33-35 of the Petition (analysis of Element
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`4
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`1[a]) demonstrates the lack of any articulated reasoning as to why a POSITA
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`would have been motivated to modify Ording’s computer to store/execute Abiko’s
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`particular species of “e-mail program.” The Reply does not dispute this
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`deficiency, acknowledging that “those pages were devoted to simply laying out
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`and explaining the combination itself.” Reply, 3, fn. 2. Of course, the Petition
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`then proceeds to Element 1[b] where the result of this modification is now
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`assumed—Ording’s computer executing Abiko’s particular species of email
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`software with the “sender table.” Pet., 35-36. This was not enough. Response, 19
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`(“by the time the Petition reaches the end of its analysis of Elements 1[a]-1[b]”).
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`Now, the Reply belatedly attempts to recast “other disclosures in the
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`Petition” as providing motivation for the modification of Element 1[a]. Reply, 3.
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`Critically, however, those “other disclosures” are directed to other distinct
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`modifications (necessary to Petitioner’s alleged modifications in the preamble and
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`1[c]), and assume Ording’s computer has already been modified to incorporate
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`Abiko’s software. Federal Circuit precedent shows why such newly shifted
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`theories at this late stage should be disregarded. Henny Penny Corp. v. Frymaster
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`LLC, 938 F.3d 1324, 1330-1331 (Fed. Cir. 2019) (“may not raise in reply ‘an
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`entirely new rationale’”); Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd.,
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`821 F.3d 1359, 1369 (Fed. Cir. 2016) (“utmost importance”); In re Magnum Oil
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`Tools Int’l, 829 F.3d 1364, 1378-81 (Fed. Cir. 2016) (“could have been included in
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`5
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`a properly drafted petition, but was not”).
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`First, the Reply argues that the first motivation to provide Ording with
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`“wireless communication capabilities” (Pet., 31 (analysis of Preamble)) is “not
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`only relevant to” modifying Ording’s computer to provide wireless capabilities, but
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`also to modifying Ording’s computer to incorporate Abiko’s email program.
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`Reply, 3. The Petition, however, never made this connection. Henny Penny, 938
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`F.3d at 1330-1331. This part of the Petition explains (and emphasizes in
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`Petitioner’s italics) that the proposed combination modifies Ording’s computer to
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`provide “wireless communication capabilities.” Pet., 31. It never proposes
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`modifying Ording’s computer to store/execute the particular species of Abiko’s
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`email program, and never offers any alleged motivation for doing so. Pet., 31-33.
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`Moreover, Petitioner’s assertion of “expectation of success” is directed to this
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`“wireless” capability, not storing/executing Abiko’s email software, further
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`highlighting the Petition’s exclusive focus on “wireless communication
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`capabilities” in the analysis of the preamble. Pet., 33.
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`In this same vein of relying upon the Petition’s analysis of the preamble, the
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`Reply also cites to page 32 of the Petition for the contention that the wireless
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`capabilities provided “a convenience that was ‘particularly advantageous in the
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`context of electronic messaging, as it allows users to send and receive messages on
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`the go, as Abiko expressly confirms. (Petition at 32).’” But page 32 of the Petition
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`6
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`plainly relates to modifying Ording’s computer hardware to be a “wireless
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`communication device,” not an articulated reason for storing/executing a particular
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`species of email program on Ording’s computer. At best, it is directed to types of
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`suitable computing devices—namely, “wireless” devices that allowed users to send
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`and receive messages “on the go.” Pet., 32 (“pertinent to identifying the types of
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`computing devices that can be used in Ording” (emphasis added)). Indeed, page
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`32 explains why “the user interface techniques in Ording,” not in Abiko, would be
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`used in the resulting system. Id. (emphasis added).
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`Second, the Reply argues for the first time that the modification proposed in
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`the Petition’s analysis of Element 1[a] would have been motivated by Abiko’s
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`ability to automatically display messages “by sender.” Reply, 8-9; see also 5
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`(“based on their senders”). The Reply alleges that the motivation can be found
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`under the “Rationale and Motivation to Combine” headings of the Petition, but
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`review of each instance of this heading confirms the Petition’s analysis was
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`directed to modifications of Ording’s icon display (and then further proposed
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`alterations to Abiko’s sender table in the resulting system), not the initial
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`modification of Ording’s computer to store/execute the particular species of email
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`program of Abiko. Pet., 43-49. Indeed, the Petition states these “Motivation to
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`Combine” sections are expressly tethered to “this claim limitation” in Element
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`1[c], not Element 1[a]. Pet., 45 (“in connection with this claim limitation”
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`7
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`(emphasis added)); 43 (“With respect to this limitation” (emphasis added)). The
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`Reply cannot rewrite these pages of the Petition.
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`Likewise, before the Reply, even Petitioner’s declarant did not consider the
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`purported “sender-centric” motivation for the modification proposed in Element
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`1[c] to be tethered to the analysis of Element 1[a]. When asked about Element 1[a]
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`before the Reply, Dr. Chatterjee indicated Element 1[a] was addressed in the
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`section with the Element 1[a] heading, and in the preceding “analysis related to the
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`preamble as well as the summary of the prior art,” never referring to subsequent
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`analysis related to the claim limitation in Element 1[c]. EX2017, 31:3-10; see also
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`30:21-31:2.
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` Even if the purported motivation to “automatically display
`messages by sender” was tethered to the Petition’s modification
`proposed in Element 1[a] (which it was not), it fails to satisfy
`Petitioner’s burden
`The Response noted the Petition’s original reliance on Ording’s mention of
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`the genus of “email applications,” but the Petition’s analysis of Element 1[a] (Pet.,
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`33-34) never provided a specific reasoning why a POSITA would have selected
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`Abiko’s particular species from the mere mention of a genus. Response, 18. The
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`Reply’s new theory suffers the same shortcoming. It describes a generic benefit
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`provided by a wide swath of email applications at the time, not a specific reason to
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`select Abiko’s particular species from the genus. The only documentary evidence
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`8
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`of such common email applications used on Ording’s Apple Macintosh computer
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`at the time—the Apple Mail1 program—demonstrates exactly why these
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`conventional email applications already achieved a solution to “automatically
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`display messages by sender.” For example, Petitioner and its declarant never
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`dispute Dr. Surati’s testimony that “the POSITA in 2003 already knew of the
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`‘Apple Mail’ solution prevalent” on such Apple Macintosh computer. EX2013,
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`¶47. Worse yet, Petitioner never addresses the fact that Apple Mail, much like
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`others in Ording’s genus of “email applications” used at the time (and now),
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`1 Petitioner demands consideration of the prevalence of Apple Macintosh
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`computers using Ording’s userbar “for almost two decades” (Pet., 14), but then
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`inconsistently dismisses the ubiquitous Apple Mail software bundled with those
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`same computers as “irrelevant” (Reply, 6). This ignores the law and the burden
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`imposed on Petitioner. Evidence of the predominant email program on Ording’s
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`Apple Macintosh computer must be considered here just as a POSITA would have
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`done so back in 2003. Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876
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`F.3d 1350, 1363 (Fed. Cir. 2017) (“Evidence suggesting reasons to combine cannot
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`be viewed in a vacuum apart from evidence suggesting reasons not to combine”);
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`Infra, Section II.B.
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`includes “buttons” that automatically sort on selected parameters, including by
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`sender (i.e. “From”):
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`EX2014, 21 (color added); see also EX1110, 45 (showing inbox sort “buttons”).
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`Petition’s declarant confirmed Apple Mail’s capability to automatically sort using
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`column header “buttons.” EX2018, 20:18-21:5.
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`Petitioner identifies “numerous other email programs” in use in 2003, yet
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`does not address the functionality of these programs, and does not allege that any
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`of these programs lacked the capability to automatically display messages by
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`sender. In fact, Petitioner’s declarant indicated these traditional email programs,
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`such as Microsoft Exchange (depicted at EX2013, 45), included this standard
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`inbox sort-by-sender capability. EX2018, 18:13-20 (“click on that, the column
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`header and it would sort based on the received time stamp.”); 20:18-22:4 (“it may
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`have allowed to press the column title or some other means to sort the messages
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`10
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`below that.”); 23:9-21.
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`Ultimately, the uncontroverted documentary evidence confirms that
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`Petitioner’s belated motivation relates to a generic feature—“automatically display
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`messages by sender”—which was a benefit of Ording’s genus of “email
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`applications,” not a specific reason to select Abiko’s particular species from that
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`genus back in 2003. Petitioner’s newly concocted motivation is thus “not enough”
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`because it fails to provide a reason for a POSITA to select Abiko’s particular
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`species from the genus. Knauf Insulation, Inc. v. Rockwool Int’l A/S, 788 Fed.
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`Appx. 728, 733 (“It is not enough, even after KSR, to support a determination of
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`obviousness that a reference includes a broad generic disclosure and a common
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`utility to that in the claims and other prior art references—there must be some
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`reason to select a species from the genus.” (emphasis added)).
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`Moreover, Petitioner’s assertion that “Patent Owner does not contest the
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`benefits of this feature” (Reply, 6 and 9) attempts to impermissibly shift its burden
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`to Patent Owner—an erroneous theory the Board cannot adopt. Magnum Oil, 829
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`F.3d at 1378 (“improperly shifted the burden to [Patent Owner] to disprove
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`obviousness.”). Petitioner had the burden of establishing a reason why a POSITA,
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`starting from Ording’s computer and without hindsight, would have been
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`motivated to make the unique sequence of modifications demanded by the Petition.
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`Id.
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`11
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`The Petition failed. The original obviousness theory of Element 1[a] was
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`not enough and supported only by an insufficient “ipse dixit declaration.” TQ
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`Delta, LLC v. Cisco Sys., 942 F.3d 1352, 1362-63 (Fed. Cir. 2019); Response, 22.
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` THE REPLY DOES NOT CURE THE PETITION’S FAILURE TO
`SATISFY ITS BURDEN OF DEMONSTRATING WHY A POSITA
`WOULD HAVE MODIFIED ORDING’S ICON (ELEMENT 1[c])
` Dr. Surati’s testimony regarding the significance of numbers in
`the first column of Abiko’s FIG. 8 is uncontroverted.
`There is no dispute that the rows of “dots” in Abiko’s FIG. 8 signify the
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`presence of additional rows of data in the list. Reply, 10. Such additional rows
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`were not shown on Abiko’s suggested initial screen, and instead required the user
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`to manually scroll down to see the later information. Id.; see also EX2017, 76:18-
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`78:4. Critically, the Reply likewise never actually disputes Dr. Surati’s testimony
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`that these teachings suggest the unimportance of Abiko’s final row. EX2013,
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`¶¶53-55 (“the final row of Abiko’s sender menu was buried at the end of the
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`listing”).2 Yet, despite Abiko’s indication of relative unimportance of the final row
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`compared to the preeminence of initial rows in the sender menu, the Petition
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`2 The Reply does not dispute Dr. Surati’s testimony that [0099] of Abiko is
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`contrary to Petitioner’s assertion that a number of unread messages might be more
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`valuable than a number of all messages. EX2013, ¶56.
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`assumes that a POSITA would have plucked only the last row number from Abiko
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`for the pinnacle importance of being superimposed as a notification on Ording’s
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`userbar icon. Id. Such an assumption is classic hindsight guided by the map of
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`claim 1, which is highlighted by the Petition’s present-day speculation being
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`copied verbatim into the paragraphs of an “ipse dixit declaration.” Response, 27-
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`28 (citing TQ Delta, 942 F.3d at 1362-63).
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`Petitioner assumes that “in the context of Abiko and its overriding purpose
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`of organizing email by sender, the total message count (e.g., ‘37’) would have been
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`less significant to a user of such the Abiko system.” Reply, 12. But Petitioner here
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`again fails to address that Abiko belies this assumption. Abiko itself displays the
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`total message counts for each sender and elevates the row number with the highest
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`total message count. According to Abiko, the final number for Abiko’s last row is
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`not worthy of initially displaying to the user, and may never be displayed without
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`additional manual scrolling by the user. Patent Owner fails to square the relative
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`unimportance of a number in the last sender row of Abiko, with Petitioner’s
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`assertion that “the number of senders who sent unread messages might be more
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`valuable to certain users than a simple count of new messages.” Reply, 12.3
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`3 Petitioner fails to reconcile its purported count of “four” senders/“37” messages
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`13
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`Trial was instituted in part based on a finding that “Patent Owner’s
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`Case IPR2019-00925
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`arguments thus, at this juncture, do not address the significance of the number to a
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`person of ordinary skill in the art and how the tracking mechanism would report
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`the total number of senders in the sender table.” Decision, 22. Both of these issues
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`have been addressed in detail by Dr. Surati, and the level of insignificance of the
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`final row number is not disputed. See, e.g. EX2013, ¶55; Reply, 10; EX2017,
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`76:18-78:4.
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`
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`Petitioner ignores “tradeoffs” without properly analyzing the
`prior art’s stated preferences and evidence of reasons not to
`modify Ording’s numeral.
`The Reply notes the “existence of such tradeoffs” without fulfilling
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`Petitioner’s burden of actually weighing those specific “tradeoffs.” (Reply, 10.
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`Petitioner’s theory that “tradeoffs” may not prevent a finding of obviousness is not
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`license to entirely ignore its burden to provide evidence weighing those tradeoffs.
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`Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)
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`(tradeoffs “should be weighed against one another”); Arctic Cat, 876 F.3d at 1363
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`(“Evidence suggesting reasons to combine cannot be viewed in a vacuum apart
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`from evidence suggesting reasons not to combine”). Petitioner impermissibly flips
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`(Reply, 12) with Petitioner’s own statement that the dots “signify the presence of
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`additional numbered items in the list.”
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`14
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`the burden, attempting to place upon Patent Owner the burden of demonstrating
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`that the “tradeoffs” weigh against the proposed combination. Reply, 13; 16; 17.
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`The Board should avoid this error. Magnum Oil, 829 F.3d at 1378.
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`With respect to Dvorak, Petitioner assumes Dvorak’s complaints about
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`email would be resolved by Petitioner’s hindsight proposal of presenting a numeric
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`character identifying the number of senders of unread messages (Reply, 12-13),
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`without citing anything in Dvorak describing use of a “number of senders” or
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`otherwise suggesting any solution at all. Worse, the Reply dismisses Dvorak’s
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`complaints that do not support Petitioner’s modification, such as “mail storms,” as
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`merely confirming “the existence of tradeoffs” for potential approaches. Reply,
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`13. The Petition, however, never actually weighed these tradeoffs to address why
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`they would have led to Petitioner’s sequence of modifications. Petitioner failed to
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`meet this burden.
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`Likewise, Petitioner attempts to explain away its improper focus on what
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`“might” or “could” be done (Response, 25-26), without providing the proper
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`analysis of whether a POSITA “would have been” motivated to modify Ording in
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`the manner proposed in view of the tradeoffs. Reply, 9-10. Without identifying
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`what “category of users” allegedly “might” have preferred Petitioner’s unique
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`sequence of modifications to Ording’s computer back in 2003, Petitioner’s
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`assertion reduces to a non-sequitur. Petitioner takes no position as to whether such
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`15
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`users existed or would have been motivated to make the proposed modification,
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`only that this “might” be the case.4
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`Lacking any analysis of the “tradeoffs” a POSITA would have faced,
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`Petitioner’s analysis reduces to bare assertions that the proposed modifications
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`were feasible—mere combinability. Response, 25-29. This is insufficient to
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`demonstrate motivations for the unique sequence of modifications to Ording’s
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`original computer. Winner, 202 F.3d at 1349 (Fed. Cir. 2000) (“Trade-offs often
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`concern what is feasible, not what is, on balance, desirable. Motivation to combine
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`requires the latter.”).
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` THE REPLY DOES NOT CURE THE PETITION’S FAILURE TO
`DEMONSTRATE WHY A POSITA WOULD HAVE FURTHER
`MODIFIED ABIKO IN THE PROPOSED MANNER (ELEMENT 1[c])
` The Reply fails to cure errors in the Petition’s further
`modifications to Abiko’s e-mail program based on Crumlish’s
`description of “Pegasus mail” (Element 1[c])
`Petitioner’s dismissal of Crumlish’s teachings as “mere subjective opinions”
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`to be ignored introduces legal error. Reply, 15. The Federal Circuit has made
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`clear that a cited reference’s “statements regarding preferences are relevant to a
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`4 Additionally, the Reply never disputes Dr. Surati’s testimony regarding the
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`shortcomings of Petitioner’s “obvious to try” theory, essentially waiving its
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`position.
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`16
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`finding regarding whether a skilled artisan would be motivated to combine that
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`reference with another reference.” Polaris, 882 F.3d at 1069; Apple Inc. v.
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`Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc)
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`(“statements regarding users preferring other forms of switches are relevant”);
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`Arctic Cat, 876 F.3d at 1363; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
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`567 F.3d 1314, 1326 (Fed. Cir. 2009).
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`Instead of properly addressing Crumlish’s stated preferences, Petitioner
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`attempts to dismiss them as “having nothing to do with the proposed combination.”
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`Reply, 14; 15 (“merely identifying the author’s personal preferences”). Petitioner
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`speculates that Crumlish’s teachings for managing mailboxes “could,” contrary to
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`Crumlish’s express statements, be followed “after an email message has been read
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`and automatically moved to the Main mail folder.” Reply, 15. Petitioner’s
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`configuration, however, highlights the very problem that Crumlish was concerned
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`with—forgetting about a message before the user “replied to it.” Response, 36-38.
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`According to Crumlish’s concern, a user in the habit of looking at the default
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`folder (“New Mail folder”) would more easily forget about the read-but-never-
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`replied-to messages because they were automatically moved out of view. EX2013,
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`17
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`¶¶61-62.5 Crumlish identified this problem and explicitly suggested it should be
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`avoided. Petitioner ignored it, and thus ignored Petitioner’s burden.
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`The Reply also does not cure the Petition’s failure to address Crumlish’s
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`solutions of indicating new mail, which are not taught to suffer from the problems
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`of Pegasus mail. The Reply merely asserts that such solutions do “not teach away”
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`from the “separate folder technique of Pegasus Mail.” Reply, 16. But even if
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`discussion of these solutions did not rise to explicitly “teaching away,” Petitioner
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`still had a burden to address the common sol