Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`
`Case IPR2019-00924
`U.S. Patent No. 8,209,634 B2
`Issue Date: June 26, 2012
`
`Title: PREVIEWING A NEW EVENT ON A SMALL SCREEN DEVICE
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,209,634 B2
`
`
`
`
`Snap Inc. Ex. 1124 Page 0001
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`

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`Table of Contents
`
`
`Page
`
`V.
`
`
`
`Introduction ............................................................................................................... 1 
`I. Mandatory Notices under §42.8(A)(1) ........................................................... 1 
`A.
`Real Party-In-Interest under §42.8.(b)(1) ............................................. 1 
`B.
`Related Matters under §42.8(b)(2) ....................................................... 1 
`C.
`Lead and Back-Up Counsel under §42.8(b)(3) .................................... 2 
`D.
`Service Information .............................................................................. 3 
`Fee Payment .................................................................................................... 4 
`II.
`III. Requirements under §§ 42.104 and 42.108 .................................................... 4 
`A. Grounds for Standing ........................................................................... 4 
`B.
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 4 
`IV. Overview of the ’634 Patent ........................................................................... 4 
`A.
`Level of Ordinary Skill in the Art ........................................................ 4 
`B.
`Specification Overview ........................................................................ 5 
`C.
`The Challenged Claims ........................................................................ 7 
`Claim Construction ......................................................................................... 8 
`A.
`“wireless communication device” ........................................................ 8 
`B.
`“messaging correspondent” ................................................................ 10 
`C.
`“a numeric character representing a count of the plurality of
`different message correspondents for which one or more of the
`electronic messages have been received and remain unread”............ 11 
`VI. The Challenged Claims are Unpatentable .................................................... 12 
`A. Overview of the Grounds of Unpatentability ..................................... 12 
`B.
`Summary and Date Qualification of the Prior Art ............................. 13 
`
`Prior Art for Ground 1 ............................................................. 13 
`(a) Ording [Ex. 1003] .......................................................... 13 
`(b) Canfield [Ex. 1004] ....................................................... 16 
`-i-
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`Snap Inc. Ex. 1124 Page 0002
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`

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`Table of Contents
`(continued)
`
`Page
`
`-ii-
`
` 
`
`Schwartz [Ex. 1005] ...................................................... 22 
`(c)
`Additional Prior Art for Ground 2 ........................................... 23 
`(a) McPherson [Ex. 1012] ................................................... 24 
`Additional Prior Art for Grounds 3-4 ...................................... 25 
`(a)
`Strom [Ex. 1015] ........................................................... 25 
`C. Ground 1: Obviousness of Claims 1, 4-5, 7, 10-11, 13 and 16-
`17 Over Ording in view of Canfield and Schwartz ............................ 26 
`
`Claim 1 ..................................................................................... 26 
`(a)
`“A method of providing notifications of unread
`messages on a wireless communication device,
`comprising:” (Preamble) ................................................ 26 
`“displaying at least one icon relating to electronic
`messaging on a graphical user interface of the
`wireless communication device;” (1[a]) ........................ 32 
`“receiving a plurality of electronic messages on the
`wireless communication device, the plurality of
`electronic messages including messages from a
`plurality of different messaging correspondents;
`and” (1[b]) ..................................................................... 34 
`“in response to receiving at least one of the
`plurality of electronic messages, 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 for which one
`or more of the electronic messages have been
`received and remain unread.” (1[c]) .............................. 37 
`Claim 4: “The method of claim 1, the at least one icon
`relating to electronic messaging being selectable to
`invoke an electronic messaging application.”.......................... 49 
`
`(b)
`
`(c)
`
`(d)
`
`
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`Snap Inc. Ex. 1124 Page 0003
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`

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`Table of Contents
`(continued)
`
`Page
`
`
`
`
`
`Claim 5: “The method of claim 1, comprising displaying
`on the graphical user interface an identifier of the
`correspondent from whom at least one of the plurality of
`messages was received.” .......................................................... 49 
`Claim 7 ..................................................................................... 53 
`
`Claims 10-11 ............................................................................ 53 
`
`Claim 13 ................................................................................... 54 
`
`Claims 16-17 ............................................................................ 55 
`
`D. Ground 2: Obviousness of Claims 6, 12 and 18 Over Ording in
`view of Canfield, Schwartz, and McPherson ..................................... 55 
`Grounds 3-4: Further Combination with Strom if “Wireless
`Communication Device” Requires a Small Screen Display .............. 61 
`
`How Small is a “Small-Screen Device”? ................................. 62 
`
`Strom Discloses a “Small-Screen” Wireless Device ............... 65 
`VII. Conclusion .................................................................................................... 71 
`
`
`E.
`
`  
`
`
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`-iii-
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`Snap Inc. Ex. 1124 Page 0004
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`List of Exhibits
`
`
`
`
` 
`
`
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 8,209,634 B2 to Gerhard D. Klassen et al. (filed Feb.
`24, 2004, issued June 26, 2012) (“’634” or “’634 patent”)
`1002 Declaration of Sandeep Chatterjee, Ph.D. (“Chatterjee”)
`1003 U.S. Patent No. 7,434,177 B1 to Bas Ording et al. (filed Dec. 20,
`1999, issued Oct. 7, 2008) (“Ording”)
`1004 U.S. Patent No. 7,281,215 B1 to James Andrew Canfield et al. (filed
`July 31, 2002, issued Oct. 9, 2007) (“Canfield”)
`1005 Excerpts from Joe Schwartz, The Complete Idiot’s Guide to Online
`Dating and Relating (1999) (“Schwartz”)
`1006 U.S. Patent Application Pub. No. 2004/0056893 to James Andrew
`Canfield et al. (filed Oct. 31, 2002, published Mar. 25, 2004)
`1007 Redline comparison between U.S. Patent No. 7,281,215 B1 (Ex. 1004)
`and U.S. Patent Application Pub. No. 2004/0056893 (Ex. 1006)
`1008 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`1009 U.S. Patent Application Pub. No. 2002/0142758 A1 to Hajime Abiko
`et al. (filed Jan. 7, 2002, published Oct. 3, 2002) (“Abiko”)
`
`Reserved
`
`1010 –
`1011
`1012 Excerpts from Frank McPherson, How to Do Everything with Your
`Pocket PC (2d ed. 2002) (“McPherson”)
`
`1013
`
`Prosecution history for U.S. Patent Application No. 10/784,781, which
`issued as the ’634 patent
`
`‐i‐ 
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`Snap Inc. Ex. 1124 Page 0005
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`List of Exhibits
`
`
`
` 
`
`
`
`Exhibit
`Description of Document
`No.
`1014 Nokia 9210i Communicator, web page from <www.nokia.com>, cited
`by the Examiner during prosecution of the ’634 patent and included
`among non-patent literature (NPL) in the ’634 file history
`1015 David Strom, Three New Wireless E-Mail Devices, Computerworld,
`Nov. 8, 1999 (“Strom”)
`1016 Affidavit of Butler
`https://web.archive.org/web/20010806175758/http://www.blackberry.
`net/solutions/enterprise/handhelds/specifications.shtml
`1017 Excerpts from Random House Webster’s College Dictionary (2000)
`1018
`Stephen Manes, A Pocketful of Windows, Forbes, Oct. 29, 2001
`1019 Certificates of Service from BlackBerry Limited v. Facebook, Inc. et
`al., No. 2:18-cv-01844-GW-KS (C.D. Cal.), ECF Nos. 20-23, showing
`that service on Petitioners was effected on April 6, 2018
`
`1020
`
`First Amended Complaint for Patent Infringement from BlackBerry
`Limited v. Facebook, Inc. et al., No. 2:18-cv-01844-GW-KS (C.D.
`Cal.), ECF No. 15, filed on April 4, 2018
`1021 Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis”)
`1022
`Joint Statement Regarding Disputed Claim Terms, BlackBerry Limited
`v. Facebook, Inc. et al., No. 2:18-cv-01844-GW-KS (C.D. Cal.), ECF
`No. 135, filed on March 26, 2019
`1023 Tentative Ruling on Claim Construction in BlackBerry Limited v.
`Facebook, Inc. et al., No. 2:18-cv-01844-GW (C.D. Cal.), ECF No.
`152, filed April 1, 2019
`
`‐ii‐ 
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`Snap Inc. Ex. 1124 Page 0006
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`INTRODUCTION
`The ’634 patent attempts to lay claim over the well-known user interface
`
`feature of placing a numeric character (or “badge”) over an icon
`
`relating to the number of new (or unread) messages. The
`
`purported novel feature of the ’634 patent – and the sole reason
`
`the claims were allowed – was providing a numeric character identifying the number
`
`of distinct senders who sent unread messages, rather than the number of unread
`
`messages. But this feature was also known and obvious based on the prior art cited
`
`herein, which was not considered during prosecution. The Board should therefore
`
`institute IPR and find all challenged claims obvious under §103.
`
`I. MANDATORY NOTICES UNDER §42.8(A)(1)
`A. Real Party-In-Interest under §42.8.(b)(1)
`Facebook, Inc. and subsidiaries Instagram, LLC and WhatsApp Inc. are the
`
`real parties-in-interest to this IPR petition. For ease of reference, this Petition will
`
`refer to Facebook, Instagram, and WhatsApp collectively as “Petitioner” (singular).
`
`B. Related Matters under §42.8(b)(2)
`The ’634 patent is the subject of pending litigation involving Petitioner:
`
`BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844-GW-KS (C.D.
`
`Cal.). The ’634 patent is also the subject of BlackBerry Ltd. v. Snap Inc., Case No.
`
`2:18-cv-02693-GW-KS (C.D. Cal.) (filed April 3, 2018). No trial date has been set.
`
` 
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`
`
`-1-
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`Snap Inc. Ex. 1124 Page 0007
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`Petitioner was first served in the pending litigation on April 6, 2018. (Ex.
`
`1019.)1 The First Amended Complaint in that action alleges that Facebook,
`
`Instagram and WhatsApp infringe the ’634 patent. (Ex. 1020, ¶¶144-157.)
`
`As of the filing of this Petition, the district court has not issued any final claim
`
`construction rulings. On April 1, 2019, the district court issued its written Tentative
`
`Ruling on Claim Construction with respect to disputed terms of the ’634 patent,
`
`which are also addressed in Part V below. (Ex. 1023 at pp.19-25.) The district
`
`court did not indicate when it would issue its final order on claim construction.
`
`Petitioner is accordingly filing the present Petition at this time, but will provide a
`
`copy of the district court’s final claim construction order when it issues.
`
`C. Lead and Back-Up Counsel under §42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`
`1 The initial Complaint in that action was filed on March 6, 2018, and a First
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`
`Amended Complaint on April 4, 2018. Service on Petitioner first took place on April
`
`6, 2018, after the filing of the First Amended Complaint. (Ex. 1019.)
`
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`-2-
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`Snap Inc. Ex. 1124 Page 0008
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`Washington D.C. 20004
`Tel: (650) 843-5287
`Fax: (650) 849-7400
`Mark R. Weinstein (Admission pro hac
`vice to be requested)
`mweinstein@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5007
`Fax: (650) 849-7400
`Yuan Liang (Admission pro hac vice to
`be requested)
`yliang@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (202) 728-7132
`Fax: (202) 842-7899
`
`
`
`
`
`D.
`Service Information
`This Petition is being served by Federal Express to the attorney of record for
`
`the ’634 patent, BlackBerry Limited - Direct Practice - (US Team), ATTN: PATENT
`
`TEAM, 2200 University Avenue, E. Waterloo ON N2K 0A7 Petitioner consents to
`
`electronic service at the addresses provided above for lead and back-up counsel.
`
` 
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`-3-
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`Snap Inc. Ex. 1124 Page 0009
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`II.
`FEE PAYMENT
`Petitioner requests review of twelve claims, with a $30,500 payment.
`
`III. REQUIREMENTS UNDER §§ 42.104 AND 42.108
`A. Grounds for Standing
`Petitioner certifies that the ’634 patent is available for IPR and that Petitioner
`
`is not barred or otherwise estopped.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`Petitioner requests institution of IPR based on:
`
`Ground
`1
`
`Claims
`1, 4-5, 7, 10-
`11, 13, 16-17
`
`Basis for Challenge under §103(a)
`Ording (Ex. 1003), Canfield (Ex. 1004), and Schwartz
`(Ex. 1005)
`
`2
`
`3
`
`4
`
`6, 12, 18
`
`Ording, Canfield, Schwartz, and McPherson (Ex.
`1012)
`
`1, 4-5, 7, 10-
`11, 13, 16-17 Ording, Canfield, Schwartz, and Strom (Ex. 1015)
`6, 12, 18
`Ording, Canfield, Schwartz, McPherson, and Strom
`
`Submitted with this Petition is the Declaration of Sandeep Chatterjee, Ph.D.
`
`(Ex. 1002) (“Chatterjee”), a qualified technical expert. (Chatterjee, ¶¶1-8, Ex. A.)
`
`IV. OVERVIEW OF THE ’634 PATENT
`A. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art as of December 2003 (the date of the
`
`earliest patent application for the ’634 patent) would have possessed at least a
` 
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`-4-
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`Snap Inc. Ex. 1124 Page 0010
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`bachelor’s degree in software engineering, computer science, computer engineering,
`
`or electrical engineering with at least two years of experience in software application
`
`development, including development of graphical applications on wireless devices,
`
`such as development of associated user interface features and functionality (or
`
`equivalent degree or experience). (Chatterjee, ¶¶12-15.)
`
`B.
`Specification Overview
`The ’634 patent, entitled “Previewing a New Event on a Small Screen
`
`Device,” states that it “relates generally to wireless communication devices, and
`
`more particularly to graphical user interfaces for controlling such devices.” (’634,
`
`1:12-14.) The patent acknowledges commercially available messaging systems,
`
`such as AOL Instant Messenger and Microsoft Network (MSN), including their use
`
`on wireless devices. (’634, 1:53-58.)
`
`The specification describes a mobile station (also referred to as a “wireless
`
`communication device”) that provides a graphical user interface having “a main
`
`screen and a plurality of sub-screens navigable from the main screen.” (’634, 7:28-
`
`31.) Figure provides an example of main screen 300:
`
` 
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`-5-
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`Snap Inc. Ex. 1124 Page 0011
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`
`(’634, Fig. 3 (red box added).) Main screen 300 may display icons for various
`
`
`
`software applications, such as icons 304, 306, and 308 for respective IM applications
`
`IM 1, IM 2, and IM 3 (see red box). (’634, 7:36-44.)
`
`The ’634 patent states that “an icon (e.g. 304) may be visually modified in
`
`response to a new event from the application associated with the icon to provide an
`
`immediate notification of the event via a change in main screen 300.” (’634, 7:59-
`
`63.) For example, Figure 4 below depicts “an illustration of the main screen 300
`
`after a new IM event, for example, a new message, has arrived into one of the IM
`
`applications, namely IM 2, associated with icon 306.” (’634, 8:1-4.)
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` 
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`-6-
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`Snap Inc. Ex. 1124 Page 0012
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`
`(’634, 8:4-8, Fig. 4 (red box/yellow highlighting added).) Main screen 300 here
`
`
`
`includes a “visual modification 400 comprising a bubble, alluding to new received
`
`text, and a numeric indicator ‘1’ representing a count of new events, which in this
`
`case are unread messages.” (’634, 8:4-8.) The patent further states that “a visual
`
`modification 400 different from a bubble may be used and the count may represent
`
`other information, such as the number of correspondents or ‘buddies’ from which
`
`one or more messages have been received but remain unread.” (’634, 8:8-13.)2
`
`C. The Challenged Claims
`This Petition addresses claims 1, 4-7, 10-13, and 16-18 of the ’634 patent.
`
`
`2 Unless noted otherwise, all emphasis has been added by Petitioner.
` 
`-7-
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`Snap Inc. Ex. 1124 Page 0013
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`Independent claim 1 and dependent claims 4-6 are representative. The remaining
`
`claims are substantially similar to claims 1 and 4-7.
`
`V. CLAIM CONSTRUCTION
`A.
`“wireless communication device”
`The term “wireless communication device” is recited in the challenged claims.
`
`Patent Owner argued in the pending litigation that “wireless communication device”
`
`refers to a “small-screen wireless mobile device.” (Ex. 1022, at p.5:20-23.)
`
`Petitioner disagrees that the term requires a “small-screen” device. On April 1, 2019,
`
`the district court issued a tentative claim construction ruling also finding that the
`
`intrinsic record does not support such a restriction. (Ex. 1023, pp.19-21.)3 Petitioner
`
`respectfully requests that the Board, to the extent it deems a construction necessary,
`
`decline to construe this term as suggested by Patent Owner. But in the event the
`
`Board adopts Patent Owner’s narrow proposal, the analysis in Part VI accounts for
`
`it and demonstrates why the claims would still be obvious over the prior art.
`
`The term “wireless communication device” simply refers to a device that can
`
`communicate without wires. (Chatterjee, ¶31.) Nothing in its plain meaning
`
`
`3 As noted in Part I, the district court’s final ruling on claim construction was not
`
`available as of the filing of this Petition. Petitioner will provide the Board a copy of
`
`that ruling when it becomes available.
`
` 
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`-8-
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`Snap Inc. Ex. 1124 Page 0014
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`imposes a restriction on form factor or screen size. (Id., ¶¶28, 31.)
`
`The specification further confirms that “wireless communication device” is
`
`not limited to a small screen device. It explains that the “mobile station” on which
`
`the alleged invention is carried out can include any wireless computing device
`
`without regard to screen size – including “a computer or other device connected to
`
`a wireless modem,” “a laptop computer,” among others. (’634, 4:55-5:9; Chatterjee,
`
`¶30; Ex. 1023, p.20.) The specification does not support requiring a small screen
`
`device. (Chatterjee, ¶31; Ex. 1023, p.20.)
`
`The prosecution history further supports this view. On January 28, 2008, the
`
`applicants amended claim 21 to recite (with amendments shown in underlining): “A
`
`method for providing notifications of new events on a wireless communication
`
`device having a small display…” (Ex. 1013 at 0152.) The preamble of claim 1,
`
`for example, was amended as follows:
`
`(Id. (yellow highlighting added).)
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` 
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`-9-
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`Snap Inc. Ex. 1124 Page 0015
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`But the applicants later canceled all their previous claims (including claim 21
`
`shown above), and proposed a series of new claims that would ultimately become
`
`the issued claims. (Ex. 1013 at 0418.) None of the newly-proposed claims – or any
`
`of the issued claims – recited a wireless communication device “having a small
`
`display,” or similar limitation. (Id.) As the district court observed, none of the
`
`applicants’ subsequent arguments after proposing these new claims effected a clear
`
`disclaimer of claim scope with respect to the claimed wireless communication
`
`device. (Ex. 1023, at p.21; Chatterjee, ¶35.)
`
`The prosecution history thus does not support Patent Owner’s position.
`
`(Chatterjee, ¶¶32-36.) To the contrary, it confirms that when the applicants intended
`
`to describe a wireless device with a small-display, they knew precisely how to do so
`
`using express claim language.
`
`B.
` “messaging correspondent”
`Petitioner in the pending litigation has proposed that this term be construed as
`
`a “distinct sender associated with an electronic messaging account,” while Patent
`
`Owner proposed a “distinct sender of an electronic message to the user of the
`
`wireless communication device.” (Ex. 1022, at p.5:24-27.) On April 1, 2019, the
`
`district court tentatively concluded that the term refers to a “distinct sender of an
`
`electronic message.” (Ex. 1023, pp.22-24.)
`
`Petitioner identifies the dispute relating to “messaging correspondent” for
`
` 
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`-10-
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`Snap Inc. Ex. 1124 Page 0016
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`completeness, but with respect to the specific prior art addressed in this Petition, the
`
`differences in the various constructions are not material. The same disclosures in
`
`the prior art upon which this Petition relies disclose the claimed messaging
`
`correspondents under any of the articulated constructions (or any other reasonable
`
`construction of “messaging correspondent”). (Chatterjee, ¶38.)
`
`C.
`
`“a numeric character representing a count of the plurality of
`different message correspondents for which one or more of the
`electronic messages have been received and remain unread”
`Patent Owner argued that this phrase be given its plain and ordinary meaning.
`
`Petitioner argued that it means “a number that enables the user to track the number
`
`of correspondents from whom the user has received unread messages.” Snap Inc. (a
`
`defendant in a co-pending litigation filed by Patent Owner) has proposed that it be
`
`construed as “the number of different messaging correspondents for which one or
`
`more of the electronic messages have been received and remain unread.” (Ex. 1022,
`
`at p.6:1-11.) The district court tentatively construed this phrase as “a numeric
`
`character representing the number of different messaging correspondents for one or
`
`more of the plurality of electronic messages that have been received and remain
`
`unread.” (Ex. 1023, pp.24-26.)
`
`But as with “messaging correspondent,” Petitioner has notified the Board of
`
`the dispute in the pending litigation in the interest of completeness, but the Board
`
`need not construe this term at this time. The construction of this phrase has relevance
`
` 
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`
`-11-
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`Snap Inc. Ex. 1124 Page 0017
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`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`to non-infringement issues in the pending litigation, but will not affect how the
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`specific prior art references here apply to the challenged claims. (Chatterjee, ¶40.)
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`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Overview of the Grounds of Unpatentability
`The ’634 patent attempts to lay claim over the well-known user interface
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`technique of placing a numeric character over an icon for a messaging application
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`to provide information about new (or unread) messages. The sole reason the
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`Examiner gave for allowing the claims over the prior art was the fact that the claimed
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`“numeric character” identifies the number of messaging correspondents (i.e. distinct
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`senders) who have sent unread messages. (Ex. 1013 at 0826.) But counting the
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`number of distinct senders was also known and disclosed by Canfield (Ex. 1004).
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`All four grounds rely on Ording (Ex. 1003), which discloses the familiar user
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`interface technique of displaying an icon for a messaging application with a numeric
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`character reflecting a number of unread messages.
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`Because Ording does not disclose a numeric character representing the
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`number of distinct senders who sent unread messages, Ground 1 cites Canfield (Ex.
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`1004) which discloses this feature and renders it obvious in view of Schwartz (Ex.
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`1005). Ground 1 establishes that it would have been obvious to adapt the numeric
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`character in Ording to display, instead of or in addition to the number of unread
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`messages, the number of distinct senders who sent unread messages.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`Ground 2 addresses three dependent claims that further require a “preview”
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`of content associated with an electronic message, for which it cites McPherson (Ex.
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`1012). Grounds 3-4 mirror Grounds 1-2 but add Strom (Ex. 1015) to account for
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`Patent Owner’s narrow construction of “wireless communication device,” which the
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`district court has tentatively rejected as explained in Part V above.
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`B.
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`Summary and Date Qualification of the Prior Art
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`Prior Art for Ground 1
`(a) Ording [Ex. 1003]
`Ording, entitled “User Interface for Providing Consolidation and Access,”
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`discloses a user interface tool for displaying a collection of tiles about frequently
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`used items. (Ording, Abstract.) Ording qualifies as prior art to the ’634 patent under
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`§102(e) because it issued from a patent application filed on December 20, 1999.
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` Anyone who has used an Apple Macintosh computer might recognize Ording
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`(which names Steve Jobs as a co-inventor) as describing the icon dock that has
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`prominently adorned the bottom of Macintosh computer screens for almost two
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`decades. Ording refers to its user interface tool as “userbar” 600, and Figure 6
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`provides an example displayed on the bottom of the screen:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`
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`(Ording, Fig. 6.) Ording explains that the userbar 600 may contain frequently used
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`or favorite items, such as an application program. (Ording, 7:32-37.) Ording
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`explains that a tile in userbar 600 can contain an icon corresponding to an application
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`frequently used by the user:
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`Applications can be presented on the userbar 600 by, for example, one
`of two methods. First, the application’s icon can be added to the
`userbar 600 as a permanent fixture, e.g., for most frequently launched
`applications. Alternatively, the application may not be a permanent
`fixture of the userbar 600, but may be added thereto because it is
`currently running.
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`Petition for Inter Partes Review of
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`(Ording, 7:47-52.) In fact, Ording specifically suggests permanently adding “e-mail
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`applications” to the userbar 600. (Ording, 8:64-67.)
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`Ording further explains that the application icons in the userbar 600 can be
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`visually modified based on events occurring in the associated program. With respect
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`to an e-mail application, Ording explains:
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`Applications can also supply additional tile images to be substituted for,
`or composited on, the running application’s tile in the userbar 600. For
`example, an e-mail application’s tile can present the number of new
`messages, superimposed over the application’s icon.
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`(Ording, 9:19-23.) Ording confirms that such a number can be visually updated to
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`reflect the current number of new messages in a user’s in-box:
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`An application can update its status on the userbar 600, resulting in a
`change in the appearance or behavior of its representative tile. For
`example, a tile representing an e-mail application that is resident on the
`userbar 600 can be overlaid with a number representing the number of
`new messages in a user’s inbox. This number can be updated and
`changed to reflect changes in the status of the in-box, e.g., increasing
`as new messages are received in the inbox or decreasing after the user
`reviews his or her messages.
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`(Ording, 13:12-21.)
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`This Petition relies on Ording for the user interface aspects of the challenged
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`claims relating to the claimed “icon relating to electronic messaging,” i.e.,
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`“displaying at least one icon relating to electronic messaging on a graphical user
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`Petition for Inter Partes Review of
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`interface,” “visually modifying at least one displayed icon relating to electronic
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`messaging,” etc., as discussed further below. Ording does not expressly disclose
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`that the icon includes a number representing a count of the plurality of distinct
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`senders who sent new messages – the number in Ording instead represents the
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`number of new messages. But this additional feature is rendered obvious by Ording
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`in combination with Canfield and Schwartz as discussed below.
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`(b) Canfield [Ex. 1004]
`Canfield, entitled “IM Conversation Counter and Indicator,” describes user
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`interface techniques for displaying information relating to instant messaging (IM)
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`sessions. Canfield qualifies as prior art under §102(e) because it was filed on July
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`31, 2002, before the priority date for the ’634 patent.
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`Canfield discloses user interface techniques for displaying statistics relating
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`to instant messaging sessions. (Canfield, 1:40-44, 9:33-36.) For example, Canfield
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`discloses the ability to determine a number of IM-related statistics, including the
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`number of instant messaging (IM) sessions that contain new (unread) messages:
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`In another implementation, the user interface also includes a
`mechanism to determine the statistics. The statistics may include one
`or more of the following: a total number of concurrent instant
`messaging sessions; a number of instant messaging sessions with
`new messages; a number of new instant messaging sessions; and a
`number of new instant messages. The number of instant messaging
`sessions with new messages may further include a number of new
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`Petition for Inter Partes Review of
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`instant messaging sessions with new messages and a number of old
`instant messaging sessions with new messages.
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`(Canfield, 1:53-62.) Canfield thus discloses a value representing the “number of
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`instant messaging sessions with new messages,” which includes new messages from
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`both new and old IM sessions. This embodiment is directly reflected in Canfield’s
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`issued claims, which recite “a status indicator providing a perceivable indication to
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`the user of statistics comprising a first number making perceivable a number of
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`senders from whom at least one unacknowledged instant message has been
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`received.” (Canfield, 17:66-18:3 (Claim 1).)
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`Canfield also states that “[t]he statistics may be rendered in numerous
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`positions on the display.” (Canfield, 1:63-64.) For example, “the statistics may be
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`rendered in a title bar,” in “an operating system tray,” and in “a user interface
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`toolbar,” among other locations. (Canfield, 1:64-2:5.) As shown below, it would
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`have been obvious to render Canfield’s numeric value in userbar 600 of Ording.
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`Considerations under § 325(d)
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`Petitioner notes that another prior art reference naming James Canfield as
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`inventor, U.S. Patent Application Pub No. 2004/0056893 A1 (Ex. 1006), was
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`considered during prosecution. For eas