`U.S. Patent No. 8,209,634 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`
`U.S. Patent No. 8,209,634 B2
`Issue Date: June 26, 2012
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`Title: PREVIEWING A NEW EVENT ON A SMALL SCREEN DEVICE
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,209,634 B2
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`Table of Contents
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`Page
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`Introduction ............................................................................................................... 1
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`I. Mandatory Notices under §42.8(A)(1) ........................................................... 1
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`A.
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`B.
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`C.
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`D.
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`Real Party-In-Interest under §42.8.(b)(1) ............................................. 1
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`Related Matters under §42.8(b)(2) ....................................................... 1
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`Lead and Back-Up Counsel under §42.8(b)(3) .................................... 2
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`Service Information .............................................................................. 3
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`II.
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`Fee Payment .................................................................................................... 3
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`III. Requirements under §§ 42.104 and 42.108 and Considerations under
`§§ 325(d) and 314(a) ...................................................................................... 4
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`A. Grounds for Standing ........................................................................... 4
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`B.
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`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 4
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`C.
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`Considerations Under § 325(d) and § 314(a) ....................................... 4
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`IV. Overview of the ’634 Patent ........................................................................... 5
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`A.
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`B.
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`C.
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`Level of Ordinary Skill in the Art ........................................................ 5
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`Specification Overview ........................................................................ 6
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`The Challenged Claims ........................................................................ 8
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`V.
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`Claim Construction ......................................................................................... 8
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`A.
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`B.
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`C.
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`“wireless communication device” ........................................................ 8
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`“messaging correspondent” ................................................................ 11
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`“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”............ 12
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`VI. The Challenged Claims are Unpatentable .................................................... 12
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`A. Overview of the Grounds of Unpatentability ..................................... 12
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`B.
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`Summary and Date Qualification of the Prior Art ............................. 14
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` 1.
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`Prior Art for Ground 1 ............................................................. 14
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`-i-
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`Table of Contents
`(continued)
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`Page
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`(a) Ording [Ex. 1103] .......................................................... 14
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`(b) Abiko [Ex. 1109] ........................................................... 17
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`(c) Crumlish [Ex. 1110] ...................................................... 22
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`(d) Dvorak [Ex. 1111] ......................................................... 24
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` 2.
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`Additional Prior Art for Ground 2 ........................................... 25
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`(a) McPherson [Ex. 1112] ................................................... 25
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` 3.
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`Additional Prior Art for Grounds 3-4 ...................................... 27
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`(a)
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`Strom [Ex. 1115] ........................................................... 27
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`C. Ground 1: Obviousness of Claims 1, 4-5, 7, 10-11, 13 and 16-
`17 Over Ording in view of Abiko, Crumlish, and Dvorak ................ 28
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`
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` 1.
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`Claim 1 ..................................................................................... 28
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`(a)
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`(b)
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`(c)
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`(d)
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`“A method of providing notifications of unread
`messages on a wireless communication device,
`comprising:” (Preamble) ................................................ 28
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`“displaying at least one icon relating to electronic
`messaging on a graphical user interface of the
`wireless communication device;” (1[a]) ........................ 35
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`“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]) ..................................................................... 37
`
`“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]) .............................. 39
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`-ii-
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`Table of Contents
`(continued)
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`Page
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` 2.
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` 3.
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` 4.
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` 5.
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` 6.
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` 7.
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`Claim 4: “The method of claim 1, the at least one icon
`relating to electronic messaging being selectable to
`invoke an electronic messaging application.”.......................... 53
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`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.” .......................................................... 54
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`Claim 7 ..................................................................................... 57
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`Claims 10-11 ............................................................................ 58
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`Claim 13 ................................................................................... 58
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`Claims 16-17 ............................................................................ 59
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`D. Ground 2: Obviousness of Claims 6, 12 and 18 Over Ording in
`view of Abiko, Crumlish, and Dvorak, in further view of
`McPherson .......................................................................................... 60
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`E.
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`Grounds 3-4: Further Combination with Strom if “Wireless
`Communication Device” Requires a Small Screen Display .............. 65
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` 1.
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` 2.
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`How Small is a “Small-Screen” Device? ................................. 66
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`Strom Discloses a “Small-Screen” Wireless Device ............... 70
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`VII. Conclusion .................................................................................................... 77
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`-iii-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`List of Exhibits
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`
`
`Exhibit
`No.
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`Description of Document
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`1101 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”)
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`1102 Declaration of Sandeep Chatterjee, Ph.D. (“Chatterjee”)
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`1103 U.S. Patent No. 7,434,177 B1 to Bas Ording et al. (filed Dec. 20,
`1999, issued Oct. 7, 2008) (“Ording”)
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`1104 –
`1107
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`Reserved
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`1108 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
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`1109 U.S. Patent Application Pub. No. 2002/0142758 A1 to Hajime Abiko
`et al. (filed Jan. 7, 2002, published Oct. 3, 2002) (“Abiko”)
`
`1110 Excerpts from Christian Crumlish, The ABCs of the Internet (1996)
`(“Crumlish”)
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`1111
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`John C. Dvorak, Scarier than Spam, PC Magazine, Jan. 19, 1999
`(“Dvorak”)
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`1112 Excerpts from Frank McPherson, How to Do Everything with Your
`Pocket PC (2d ed. 2002) (“McPherson”)
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`1113
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`Prosecution history for U.S. Patent Application No. 10/784,781, which
`issued as the ’634 patent
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`1114 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
`
`1115 David Strom, Three New Wireless E-Mail Devices, Computerworld,
`Nov. 8, 1999 (“Strom”)
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`1116 Affidavit of Christopher Butler
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`-i-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`List of Exhibits
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`
`
`Exhibit
`No.
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`Description of Document
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`https://web.archive.org/web/20010806175758/http://www.blackberry.
`net/solutions/enterprise/handhelds/specifications.shtml
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`1117 Excerpts from Random House Webster’s College Dictionary (2000)
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`1118
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`Stephen Manes, A Pocketful of Windows, Forbes, Oct. 29, 2001
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`1119 Certificates of Service from BlackBerry Limited v. Snap, Inc., No.
`2:18-cv-02693-GW (C.D. Cal.), ECF No. 13, showing that service on
`Petitioners was effected on April 6, 2018
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`1120 Reserved
`
`1121 Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis”)
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`1122
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`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
`
`1123 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
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`1124
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`IPR2019-00924 – Petition for Inter Partes Review (’634)
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`1125
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`IPR2019-00925 – Petition for Inter Partes Review (’634)
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`-ii-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`INTRODUCTION
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`The ’634 patent attempts to lay claim over the well-known user interface
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`feature of placing a numeric character (or “badge”) over an icon
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`relating to the number of new (or unread) electronic messages.
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`This technique was known well before the ’634 patent was filed, as
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`demonstrated below. The only material difference here is that the numeric
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`character claimed in the ’634 patent identifies the number of distinct senders who
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`have sent unread messages, rather than the number of unread messages. But this
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`feature was also known in the prior art and obvious based on the prior art cited
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`herein, none of which was considered during prosecution. The Board should
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`therefore institute IPR and find the challenged claims obvious under §103.
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`I. MANDATORY NOTICES UNDER §42.8(A)(1)
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`A. Real Party-In-Interest under §42.8.(b)(1)
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`SNAP INC. (“Snap”) is the real party-in-interest to this IPR petition. For
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`ease of reference, this Petition will refer to Snap as “Petitioner.”).
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`B. Related Matters under §42.8(b)(2)
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`The ’634 patent is the subject of pending litigation involving Petitioner:
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`BlackBerry Limited v. Snap, Inc., No. 2:18-cv-02693-GW (C.D. Cal.). No trial date
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`has been set. Petitioner was first served in the pending litigation on April 6, 2018.
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`(Ex. 1119).
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`-1-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`As of the filing of this Petition, the district court has not issued any final
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`claim construction rulings. On April 1, 2019, the district court issued its written
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`Tentative Ruling on Claim Construction with respect to disputed terms of the ’634
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`patent, which are also addressed in Part V below. (Ex. 1123 at pp.19-25.) The
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`district court did not indicate when it would issue its final order on claim
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`construction. Petitioner is accordingly filing the present Petition at this time, but
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`will provide a copy of the district court’s final claim construction order when it
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`issues.
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`The ’634 patent is also the subject of BlackBerry Ltd. v. Facebook, Inc. et
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`al., Case No. 2:18-cv-01844-GW-KS (C.D. Cal.). Facebook previously filed two
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`IPR petitions challenging the ’634 patent on April 4, 2019. (Exs. 1124, 1125).
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`Snap obtained Facebook’s petitions, after they were filed and publicly available,
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`from the Patent Office. This petition is a substantive copy of one of Facebook’s
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`’634 petitions. (See Ex. 1125)
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`C. Lead and Back-Up Counsel under §42.8(b)(3)
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`Petitioner provides the following designation of counsel.
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`LEAD COUNSEL
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`BACK-UP COUNSEL
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`Yar Chaikovsky (Reg. No. 39,625)
`Snap-Blackberry-PH-
`IPR@paulhastings.com
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`
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`Chad Peterman (pro hac vice admission
`to be requested)
`Snap-Blackberry-PH-
`IPR@paulhastings.com
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`-2-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`LEAD COUNSEL
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`BACK-UP COUNSEL
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`PAUL HASTINGS LLP
`1117 California Avenue
`Palo Alto, CA 94304
`Tel: (650) 320-1800
`Fax: (650) 320-1900
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`
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`PAUL HASTINGS LLP
`1117 California Avenue
`Palo Alto, CA 94304
`Tel: (650) 320-1800
`Fax: (650) 320-1900
`
`David Okano (Reg. No. 66,657)
`Snap-Blackberry-PH-
`IPR@paulhastings.com
`
`PAUL HASTINGS LLP
`1117 California Avenue
`Palo Alto, CA 94304
`Tel: (650) 320-1800
`Fax: (650) 320-1900
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`D.
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`Service Information
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`This Petition is being served by Federal Express to the attorney of record for
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`the ’634 patent, BlackBerry Limited - Direct Practice - (US Team), ATTN:
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`PATENT TEAM, 2200 University Avenue, E. Waterloo ON N2K 0A7 Petitioner
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`consents to electronic service at the addresses provided above for lead and back-up
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`counsel.
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`II.
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`FEE PAYMENT
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`Petitioner requests review of twelve claims, with a $30,500 payment.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`III. REQUIREMENTS UNDER §§ 42.104 AND 42.108 AND CONSIDERATIONS
`UNDER §§ 325(D) AND 314(A)
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`A. Grounds for Standing
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`Petitioner certifies that the ’634 patent is available for IPR and that
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`Petitioner is not barred or otherwise estopped.
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`B.
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`Identification of Challenge and Statement of Precise Relief
`Requested
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`Petitioner requests institution of IPR based on:
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`Ground
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`Claims
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`Basis for Challenge under §103(a)
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`1
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`2
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`3
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`4
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`1, 4-5, 7, 10-
`11, 13, 16-17
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`Ording (Ex. 1103), Abiko (Ex. 1109), Crumlish (Ex.
`1110) and Dvorak (Ex. 1111)
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`6, 12, 18
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`Ording, Abiko, Crumlish, Dvorak, and McPherson
`(Ex. 1112)
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`1, 4-5, 7, 10-
`11, 13, 16-17
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`Ording, Abiko, Crumlish, Dvorak, and Strom (Ex.
`1115)
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`6, 12, 18
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`Ording, Abiko, Crumlish, Dvorak, McPherson, and
`Strom
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`Submitted with this Petition is the Declaration of Sandeep Chatterjee, Ph.D.
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`(Ex. 1102) (“Chatterjee”), a qualified technical expert. (Chatterjee, ¶¶1-8, Ex. A.)
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`C. Considerations Under § 325(d) and § 314(a)
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`This Petition does not present a situation in which “the same or substantially
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`the same prior art or arguments previously were presented to the Office.” 35
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`U.S.C. § 325(d). None of the prior art references cited in Grounds 1-4 above was
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`cited during prosecution of the ’634 patent.
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`Petitioner is also unaware of any basis under § 314(a) for the Board to
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`decline to consider this Petition. Petitioner did file another petition against the
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`’634 patent on the same day as the present Petition. As discussed in section I.B.,
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`Facebook previously filed two IPR petitions challenging the ’634 patent on April
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`4, 2019. (Exs. 1024, 1025). Snap obtained Facebook’s petitions, after they were
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`filed and publicly available, from the Patent Office. Snap’s petitions are both
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`substantively identical copies of Facebook’s ’634 petitions. (See Ex. 1124, 1125)
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`IV. OVERVIEW OF THE ’634 PATENT
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`A. Level of Ordinary Skill in the Art
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`A person of ordinary skill in the art as of December 2003 (the date of the
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`earliest patent application for the ’634 patent) would have possessed at least a
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`bachelor’s degree
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`in software engineering, computer science, computer
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`engineering, or electrical engineering with at least two years of experience in
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`software application development, including development of graphical applications
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`on wireless devices, such as development of associated user interface features and
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`functionality (or equivalent degree or experience). (Chatterjee, ¶¶12-15.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`B.
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`Specification Overview
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`The ’634 patent, entitled “Previewing a New Event on a Small Screen
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`Device,” states that it “relates generally to wireless communication devices, and
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`more particularly to graphical user interfaces for controlling such devices.” (’634,
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`1:12-14.) The patent acknowledges commercially available messaging systems,
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`such as AOL Instant Messenger and Microsoft Network (MSN), including their
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`use on wireless devices. (’634, 1:53-58.) The ’634 patent asserts the operation or
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`use of these systems could be improved. (’634, 1:60-67.)
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`The specification describes a mobile station (also referred to as a “wireless
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`communication device”) that provides a graphical user interface having “a main
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`screen and a plurality of sub-screens navigable from the main screen.” (’634, 7:28-
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`31.) Figure 3 provides an example of a main screen:
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`(’634, Fig. 3 (red box added).) The patent states that main screen 300 may display
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`icons for various software applications, such as icons 304, 306, and 308 for
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`respective IM applications IM 1, IM 2, and IM 3 (see red box). (’634, 7:36-44.)
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`The ’634 patent states that “an icon (e.g. 304) may be visually modified in
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`response to a new event from the application associated with the icon to provide an
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`immediate notification of the event via a change in main screen 300.” (’634, 7:59-
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`63.) For example, Figure 4 below depicts “an illustration of the main screen 300
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`after a new IM event, for example, a new message, has arrived into one of the IM
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`applications, namely IM 2, associated with icon 306.” (’634, 8:1-4.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`(’634, 8:4-8, Fig. 4 (red box and yellow highlighting added).) Main screen 300 in
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`Figure 4 includes a “visual modification 400 comprising a bubble, alluding to new
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`received text, and a numeric indicator ‘1’ representing a count of new events,
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`which in this case are unread messages.” (’634, 8:4-8.) The ’634 patent further
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`states that “a visual modification 400 different from a bubble may be used and the
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`count may represent other information, such as the number of correspondents or
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`‘buddies’ from which one or more messages have been received but remain
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`unread.” (’634, 8:8-13 (underlining added)1.)
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`C. The Challenged Claims
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`This Petition addresses claims 1, 4-7, 10-13, and 16-18 of the ’634 patent.
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`Independent claim 1 and dependent claims 4-6 are representative. The remaining
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`claims are substantially similar to claims 1 and 4-6.
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`V. CLAIM CONSTRUCTION
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`A.
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`“wireless communication device”
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`In the pending litigation, Patent Owner argued that “wireless communication
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`device” refers to a “small-screen wireless mobile device.” (Ex. 1122, at p.5:20-
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`23.) Petitioner disagrees. On April 1, 2019, the district court issued a tentative
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`1 Unless noted otherwise, all emphasis has been added by Petitioner.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`claim construction ruling on this issue, finding that the intrinsic record did not
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`support the Patent Owner’s position. (Ex. 1123, pp.19-21.)2 Petitioner respectfully
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`requests that the Board, to the extent it deems a construction necessary, decline to
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`construe this term as suggested by Patent Owner. But in the event the Board
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`adopts Patent Owner’s narrow proposal, the analysis in Part VI accounts for it and
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`demonstrates why the claims would still be obvious over the prior art.
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`The term “wireless communication device” simply refers to a device that can
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`communicate without wires. (Chatterjee, ¶31.) Nothing in its plain meaning
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`imposes a restriction on form factor or screen size. (Id., ¶¶28, 31.)
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`The specification further confirms that “wireless communication device” is
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`not limited to a small screen device. It explains that the “mobile station” on which
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`the alleged invention is carried out can include any wireless computing device
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`without regard to screen size – including “a computer or other device connected to
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`a wireless modem,” “a laptop computer,” among others. (’634, 4:55-5:9;
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`Chatterjee, ¶¶30-31; Ex. 1123, p.20.)
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`2 As noted in Part I, the district court’s final ruling on claim construction was not
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`available as of the filing of this Petition. Petitioner will provide the Board a copy
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`of that ruling when it becomes available.
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`-9-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`The prosecution history further confirms that a “wireless communication
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`device” is not restricted to a small screen device. On January 28, 2008, the
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`applicants amended claim 21 to recite (with amendments shown in underlining):
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`“A method for providing notifications of new events on a wireless communication
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`device having a small display…” (Ex. 1113 at 0152.) The preamble of claim 1,
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`for example, was amended as follows:
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`(Id. (yellow highlighting added).) The applicants stressed the “small display”
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`
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`limitation in overcoming prior art. (Ex. 1113 at 0157.)
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`But later in the prosecution on July 28, 2010, the applicants canceled all
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`their previous claims (including claim 21 above), and proposed a series of new
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`claims that would ultimately become the issued claims. (Ex. 1113 at 0418.) None
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`of the newly-proposed claims – or any of the issued claims – recited a wireless
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`communication device “having a small display,” or similar limitation. (Id.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`Moreover, as the district court observed, applicants’ subsequent arguments did not
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`effect a disclaimer with respect to the claimed wireless communication device.
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`(Ex. 1123, at p.21; Chatterjee, ¶35.) The prosecution history thus does not support
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`limiting a “wireless communication device” to a small-screen device. (Chatterjee,
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`¶¶32-36.)
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`B.
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` “messaging correspondent”
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`In the pending litigation, Petitioner and Patent Owner have proposed
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`different constructions for this term; Petitioner has proposed that “messaging
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`correspondent” refers to a “distinct sender associated with an electronic messaging
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`account,” while Patent Owner proposed a “distinct sender of an electronic message
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`to the user of the wireless communication device.” (Ex. 1122, at p.5:24-27.) On
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`April 1, 2019, the district court tentatively concluded that the term refers to a
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`“distinct sender of an electronic message.” (Ex. 1123, pp.22-24.)
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`Petitioner identifies the dispute relating to “messaging correspondent” for
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`completeness, but with respect to the specific prior art addressed here, the
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`differences in the constructions are not material. The same disclosures in the prior
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`art upon which this Petition relies disclose the claimed messaging correspondents
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`under any of the articulated constructions (or any other reasonable construction of
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`“messaging correspondent”). (Chatterjee, ¶38.)
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`C.
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`“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”
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`In the pending litigation, Patent Owner proposed that this phrase be given its
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`plain and ordinary meaning. Petitioner has argued that it means “the number of
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`different messaging correspondents for which one or more of the electronic
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`messages have been received and remain unread.” The district court tentatively
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`construed this phrase as “a numeric character representing the number of different
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`messaging correspondents for one or more of the plurality of electronic messages
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`that have been received and remain unread.” (Ex. 1123, pp.24-26.)
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`As with “messaging correspondent,” Petitioner has notified the Board of this
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`issue in the interest of completeness, but respectfully submits that the Board need
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`not construe this phrase at this time. The construction of this phrase has relevance
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`to other issues in the pending litigation but will not affect how the specific prior art
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`references here apply to the challenged claims.
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`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
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`A. Overview of the Grounds of Unpatentability
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`The ’634 patent attempts to lay claim over the well-known user interface
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`technique of placing a numeric character over the 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
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`claimed “numeric character” identifies the number of messaging correspondents
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`(i.e. distinct senders) who have sent unread messages. (Ex. 1113 at 0826.) But
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`counting the number of distinct senders was also known and disclosed by Abiko
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`(Ex. 1109).
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`All four grounds rely on Ording (Ex. 1103), which discloses the familiar
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`user interface technique of displaying an icon for a messaging application with a
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`numeric character reflecting a number of unread messages. Because Ording does
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`not disclose a numeric character representing the number of distinct senders who
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`sent unread messages, Ground 1 cites Abiko (Ex. 1109) which discloses this
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`feature and renders it obvious in view of Crumlish (Ex. 1110) and Dvorak (Ex.
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`1111). 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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`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
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`(Ex. 1112). Grounds 3-4 mirror Grounds 1-2 but add Strom (Ex. 1115) to account
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`for Patent Owner’s narrow construction of “wireless communication device,”
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`which the district court has tentatively rejected as explained in Part V.
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`B.
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`Summary and Date Qualification of the Prior Art
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`1.
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`Prior Art for Ground 1
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`(a) Ording [Ex. 1103]
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`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, Ex. 1103, Abstract.) Ording qualifies as prior art 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
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`Ording (which names Steve Jobs as a co-inventor) as describing the icon dock that
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`has 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, and Figure 6
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`provides an example shown on the bottom of the screen:
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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 the userbar 600 can contain an icon corresponding to an
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`application frequently used by the user:
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`Applications can be presented on the userbar 600 by, for example, one
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`of two methods. First, the application’s icon can be added to the
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`userbar 600 as a permanent fixture, e.g., for most frequently launched
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`applications. Alternatively, the application may not be a permanent
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`fixture of the userbar 600, but may be added thereto because it is
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`currently running.
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`(Ording, 7:47-52.) In fact, Ording specifically suggests permanently adding “e-
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`mail 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
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`present numeric characters based on events occurring in the associated program.
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`With respect to an e-mail application, Ording explains:
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`Applications can also supply additional tile images to be substituted
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`for, or composited on, the running application’s tile in the userbar
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`600. For example, an e-mail application’s tile can present the number
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`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
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`change in the appearance or behavior of its representative tile. For
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`example, a tile representing an e-mail application that is resident on
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`the userbar 600 can be overlaid with a number representing the
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`number of new messages in a user’s inbox. This number can be
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`updated and changed to reflect changes in the status of the in-box, e.g,
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`increasing as new messages are received in the inbox or decreasing
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`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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`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 different
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`messaging correspondents who sent new messages – the number in Ording instead
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`represents the number of new messages. But this additional feature is rendered
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`obvious by Ording in combination with other prior art discussed below.
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`(b) Abiko [Ex. 1109]
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`Abiko, U.S. Patent Application Publication No. 2002/0142758 A1, entitled
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`“Message Communication Device,” discloses techniques for organizing electronic
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`messages for display on a communication device such as a mobile telephone.
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`(Abiko, Abstract.) Abiko qualifies as prior art under §102(b) because it published
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`on October 3, 2002, more than one year before the ’634 patent priority date.
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`Abiko discloses a technique for organizing and presenting incoming
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`messages on a mobile phone based on the senders of those messages. Abiko
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`explains that “[i]n the conventional mobile telephone, all received mail messages
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`are stored in a folder created beforehand (the received message folder).” (Id.)
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`“With the conventional mobile telephone, however, a user who wishes, for
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`example, to create a list of all received mail messages from a particular sender
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`must search through numerous messages one by one by means of a manual input
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`operation.” (Id., ¶0005.) Abiko addresses this issue by grouping and presenting
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`received e-mail messages based on their respective senders. (Id., ¶¶0006-0008,
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`Figs 4, 7 & 10.)
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`Abiko explains that in order to organize received messages by sender, the
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`mobile phone “acquires sender address information from received mail messages
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`and effects processing for entering the addresses in a sender table.” (Id., ¶0044.)
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`Abiko discloses various types of “sender tables,” including a table that simply
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`identifies the sender name and address of each sender (Fig. 2, ¶0045), a second
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`table that orders senders based on the date of the most received-received message
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`from each sender (Fig. 5, ¶0078), and a third table that orders senders based on the
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`volume of messages received from each sender (Fig. 8, ¶0106). Figure 8 provides
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`an example of this third type of sender table:
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`(Abiko, Fig. 8.) Abiko explains that, to create this table, the mobile telephone
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`processes each received message to extract address information. (Id., ¶¶0109-
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`0110.) If the extracted address information is already present in the sender table,
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`the “mail volume” field associated with a particular sender address is incremented
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`by one. (Id., ¶0110.) Otherwise, the extracted address is added to the sender table,
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`and the “mail volume” is incremented by one. (Id., ¶¶