Facebook, Inc., Instagram, LLC and WhatsApp Inc.
`v.
`BlackBerry Limited
`
`IPR2019-00925
`U.S. Patent No. 8,209,634
`Petitioners’ Demonstratives
`
`July 16, 2020
`
`Before Miriam L. Quinn, Gregg I. Anderson, and Robert L. Kinder,
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Facebook's Exhibit No. 1131
`IPR2019-00925
`
`
`v.
`BlackBerry Limited
`
`IPR2019-00925
`U.S. Patent No. 8,209,634
`Petitioners’ Demonstratives
`
`July 16, 2020
`
`Before Miriam L. Quinn, Gregg I. Anderson, and Robert L. Kinder,
`Administrative Patent Judges
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`Facebook's Exhibit No. 1131
`IPR2019-00925
`
`
`
`Claim 1 of the ’634 Patent
`
`U.S. Patent 8,209,634
`Ex. 1101
`
`•
`
`Independent claims 7 and 13 substantially the same
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`Instituted Grounds
`
`• For all grounds, Ording is primary reference
`• Grounds 3-4 add Strom for “small-screen” wireless communication device
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`
`
`Key Disputes
`
`• Motivation to combine prior art re:
`
`•
`
`“visually modifying at least one displayed icon …
`to include numeric character representing a count
`of the plurality of different messaging
`correspondents for which one or more of the
`electronic messages have been received and
`remain unread”
`
`•
`
`“displaying … at least one preview”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`
`
`Claim Construction
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`
`
`Institution Decision: District Court Constructions Adopted
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Institution Decision at 8-9)
`6
`
`
`
`The Prior Art
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`Ording – U.S. Patent No. 7,434,177
`
`Ording:
`“visually modifying at least one displayed icon relating to electronic
`messaging to include numeric character representing a count of the … one or
`more of the electronic messages have been received and remain unread”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ording, Ex. 1103, Fig. 6, 13:12-21; Petition at 14-17, 37-38)
`8
`
`
`
`Abiko – U.S. Patent App. Pub. No. 2002/0142758
`
`Abiko:
`“numeric character representing a count of the plurality of different
`messaging correspondents for which one or more of the electronic messages
`have been received …”
`
`Four different
`messaging
`correspondents
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Abiko, Ex. 1109, Figs. 8 & 10, [0106]; Petition at 17-21, 37-42)
`9
`
`
`
`Ording + Abiko
`
`Ording’s number overlay
`
`Abiko’s number of distinct senders
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 39-43)
`
`10
`
`
`
`Ording + Abiko
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 41-42)
`
`11
`
`
`
`Crumlish – The ABCs of the Internet (1996)
`
`Crumlish: Separating and presenting new messages
`
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Crumlish, Ex. 1110, at 063-064; Petition at 42-43)
`12
`
`
`
`Dvorak – Scarier than Spam (1999)
`
`Dvorak: Cited as further motivation to combine, e.g., that users might find
`numeric character of the number of senders more informative than a number of
`new messages
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Dvorak, Ex. 1111, at 018; Petition at 23-24, 47-48)
`13
`
`
`
`McPherson – How to Do Everything with Your PocketPC (2d ed 2002)
`
`McPherson: “displaying … at least one preview” (claim 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(McPherson, Ex. 1112, at 0170; Petition at 24-25)
`14
`
`
`
`Strom – Three New Wireless E-Mail Devices (1999)
`
`Strom: small-screen “wireless communication device”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Strom, Ex. 1115, at 004; Petition at 26)
`15
`
`
`
`Motivation to combine re “visually modifying at least one
`displayed icon relating to electronic messaging to
`include a numeric character representing a count of the
`plurality of different messaging correspondents…”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`
`
`’634 Patent – Number of Different Messaging Correspondents
`
`(’634, Ex. 1101, 8:4-16; Petition at 8; Ex. 1102, ¶¶25, 111)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`Obviousness – KSR Decision
`
`“The combination of familiar elements according to known methods is likely to be
`obvious when it does no more than yield predictable results.”
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
`“When a work is available in one field of endeavor, design incentives and other
`market forces can prompt variations of it, either in the same field or a different one.
`If a person of ordinary skill can implement a predictable variation, § 103 likely bars
`its patentability.”
`
`Id. at 417.
`
`• The Board:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`(Institution Decision at 25.)
`
`
`
`Obviousness – KSR Decision
`
`“The obviousness analysis cannot be confined by a formalistic conception of the
`words,
`teachings, suggestion, and motivation, or by overemphasis on the
`importance of published articles and the explicit content of issued patents.”
`
`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007)
`
`“[T]he analysis need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences and
`creative steps that a person of ordinary skill in the art would employ.”
`
`Id. at 418.
`
`“Our suggestion test is in actuality quite flexible and not only permits, but requires,
`consideration of common knowledge and common sense.”
`
`Id. at 416
`(quoting DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006)
`(emphasis in original).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`Obviousness – Federal Circuit
`
`“In KSR, the Supreme Court criticized a rigid approach to determining obviousness
`based on the disclosures of individual prior-art references, with little recourse to the
`knowledge, creativity, and common sense that an ordinarily skilled artisan would
`have brought to bear when considering combinations or modifications.” Randall
`Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013)…. “The court should consider a
`range of real-world facts to determine ‘whether there was an apparent reason to
`combine the known elements in the fashion claimed by the patent at
`issue.’”
`Intercontinental Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344
`(Fed. Cir. 2017) (quoting KSR, 550 U.S. at 418).
`
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: provide wireless communication abilities:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶70; Petition at 32; Reply at 3-4)
`
`21
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: provide wireless communication abilities:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 32; Reply at 3-4; Ex.1101, ¶¶72-73)
`
`22
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Further motivations to combine:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶104; Petition at 45-46; Reply at 3-4)
`
`23
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: enhanced usability
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶104; Petition at 45-46)
`
`24
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: Abiko’s sender-centric approach
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶105; Petition at 46-47; Reply at 5-6)
`
`25
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: Abiko’s sender-centric approach
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶105; Petition at 46-47; Reply at 5-6)
`
`26
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: Use of small-screen device
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 30-33, 71-72; Reply at 4; Ex. 1101, ¶69)
`
`27
`
`
`
`Motivation to Combine Ording and Abiko
`
`• Motivation to combine: Use of small-screen device
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶74; Petition at 32-33)
`
`28
`
`
`
`New Messages: Motivation to Further Combine with Crumlish
`
`• Crumlish: Confirms that it would have been obvious to adapt the Abiko
`sender menu to count distinct senders for new messages.
`
`Abiko
`
`Crumlish
`
`. . .
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 42-44)
`
`29
`
`
`
`Motivation to Further Combine with Crumlish
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶101; Petition at 44)
`
`30
`
`
`
`Motivation to Further Combine with Crumlish
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶103; Petition at 45)
`
`31
`
`
`
`Motivation to Further Combine with Crumlish
`
`• Motivation to combine consistent with Abiko:
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`(Ex. 1109, ¶0011; Petition at 42-43, 45-47; Petitioner Reply at 17-18)
`
`
`
`Motivation to Further Combine with Dvorak
`
`• Dvorak: reinforces motivation to adapt Ording’s numeric character to
`include number of distinct senders per teachings of Abiko
`
`Ording’s numeric character
`
`Abiko’s number of distinct senders
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 23-24, 47, 39-41)
`
`33
`
`
`
`Motivation to Further Combine with Dvorak
`• Dvorak:
`•
`“Email is too easy to send”
`•
`“It’s too easy to reply to e-mail.”
`•
`“Fear of nonreceipt,” considered “the biggest
`headache,” causing users to “send multiple
`copies” of an email to the same recipient.
`
`(Petition at 23-24, 47-48; Petitioner Reply at 12-13; Ex. 1102, ¶¶108-110)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`
`
`Motivation to Further Combine with Dvorak
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶109; Petition at 48)
`
`35
`
`
`
`Motivation to Further Combine with Dvorak
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Ex. 1102, ¶110; Petition at 48)
`
`36
`
`
`
`PO on Numeric Overlay of Distinct Senders of New Messages
`
`PO Argues:
`• Superimposing the last row number from Abiko as a notification on Ording’s userbar
`icon is “classic hindsight.”
`
`(Patent Owner Sur-Reply at 12-13.)
`
`Petitioner Response:
`• Highest number in Abiko’s “No.” column represents number of distinct senders
`• Number of distinct senders in Ording userbar would have corresponded to the
`number of senders displayed in Abiko email program’s sender list
`
`• The number of distinct senders in Ording userbar would have provided useful,
`meaningful, valuable information
`
`(Petitioner Reply at 9-12; see also Petition at 46-48)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`
`
`Motivation to combine re
`“displaying … at least one preview”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`McPherson
`
`McPherson: “displaying … at least one preview” (claim 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(McPherson, Ex. 1112, at 0170; Petition at 24-25)
`39
`
`
`
`Combination with McPherson
`
`• Obvious to display a notification bubble that provides a preview
`of content associated with a newly-received message
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 58-61)
`
`40
`
`
`
`Motivation to Combine with McPherson
`
`• McPherson’s notification bubble allows the user to preview the content
`of a newly-received message
`• Provides more efficient way to use screen space; does not require
`user to open the underlying messaging application window
`• Allows user to make more informed choice as to whether to launch
`the messaging application window
`• Because McPherson’s notification bubble is compact and only appears
`for about 30 seconds before disappearing, it would have provided dual
`advantage of providing useful information while only temporarily
`consuming screen space
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petition at 60-61; Ex. 1102, ¶¶142-143)
`
`41
`
`
`
`PO on Notification Bubble
`
`PO Argues:
`•
`“Fundamental differences” between an email program on a mobile
`device and the IM application mentioned in McPherson Chapter 21.
`
`(Patent Owner Response at 59)
`
`Petitioner Response:
`• McPherson describes “notification bubble” as new message notification
`technique for email in Chapter 20, undermining suggestion that user
`interface techniques for IM systems are not adaptable to email
`• Differences in communications technology irrelevant; both email and
`IM benefit from user being notified of the receipt of new messages
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Petitioner Reply at 20-22; Ex. 1126, ¶¶36-40)
`
`42
`
`
`
`PO on Alternative Techniques in the Prior Art
`
`PO relies on:
`
`• Apple Macintosh computers already had “Apple Mail”
`
`• Crumlish already provides visual indicators for new messages
`
`• McPherson describes Yahoo! messenger feature that can provide
`notification of new emails.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`(Patent Owner Response at 19-21, 40, 61.)
`
`
`
`Federal Circuit
`
`“[O]ur case law does not require that a particular combination must be
`the preferred, or the most desirable, combination described in the prior
`art
`in order
`to provide motivation for
`the current
`invention. The
`question is whether there is something in the prior art as a whole to
`suggest
`the desirability, and thus the obviousness, of making the
`combination, not whether there is something in the prior art as a whole
`to suggest that the combination is the most desirable combination
`available…. Thus, a finding that the prior art as a whole suggests the
`desirability of a particular combination need not be supported by a
`finding that the prior art suggests that the combination claimed by the
`patent applicant is the preferred, or most desirable, combination.”
`
`In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (emphasis in original) (internal citations, brackets, and quotation marks omitted)
`(See also Petitioner Reply at 4.)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`
`
`Thank you
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`
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