Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`
`
`
`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
`
`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
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Party-In-Interest under §42.8.(b)(1) ............................................. 1
`
`Related Matters under §42.8(b)(2) ....................................................... 1
`
`Lead and Back-Up Counsel under §42.8(b)(3) .................................... 1
`
`Service Information .............................................................................. 2
`
`II.
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`Fee Payment .................................................................................................... 2
`
`III. Requirements under §§ 42.104 and 42.108 and Considerations under
`§ 325(d) and § 314(a) ..................................................................................... 3
`
`A. Grounds for Standing ........................................................................... 3
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 3
`
`C.
`
`Considerations under § 325(d) and § 314(a) ........................................ 3
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`IV. Overview of the ’634 Patent ........................................................................... 4
`
`A.
`
`B.
`
`C.
`
`Level of Ordinary Skill in the Art ........................................................ 4
`
`Specification Overview ........................................................................ 4
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`The Challenged Claims ........................................................................ 7
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`V.
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`Claim Construction ......................................................................................... 7
`
`A.
`
`B.
`
`C.
`
`“wireless communication device” ........................................................ 7
`
`“messaging correspondent” ................................................................ 10
`
`“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.
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`Summary and Date Qualification of the Prior Art ............................. 13
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`
`
` 1.
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`Prior Art for Ground 1 ............................................................. 13
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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. 1003] .......................................................... 13
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`(b) Canfield [Ex. 1004] ....................................................... 16
`
`(c)
`
`Schwartz [Ex. 1005] ...................................................... 23
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`
`
` 2.
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`Additional Prior Art for Ground 2 ........................................... 24
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`(a) McPherson [Ex. 1012] ................................................... 24
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`
`
` 3.
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`Additional Prior Art for Grounds 3-4 ...................................... 25
`
`(a)
`
`Strom [Ex. 1015] ........................................................... 26
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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 Canfield and Schwartz ............................ 27
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`
`
` 1.
`
`Claim 1 ..................................................................................... 27
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`“A method of providing notifications of unread
`messages on a wireless communication device,
`comprising:” (Preamble) ................................................ 27
`
`“displaying at least one icon relating to electronic
`messaging on a graphical user interface of the
`wireless communication device;” (1[a]) ........................ 33
`
`“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]) ..................................................................... 36
`
`“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.”.......................... 51
`
`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.” .......................................................... 52
`
`Claim 7 ..................................................................................... 56
`
`Claims 10-11 ............................................................................ 57
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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 Canfield, Schwartz, and McPherson ..................................... 59
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`E.
`
`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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`
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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
`
`List of Exhibits
`
`
`
`
`Exhibit
`No.
`
`Description of Document
`
`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”)
`
`1010 –
`1011
`
`Reserved
`
`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
`
`1014 Nokia 9210i Communicator, web page from <www.nokia.com>, cited
`by the Examiner during prosecution of the ’634 patent and included
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`List of Exhibits
`
`
`
`Exhibit
`No.
`
`Description of Document
`
`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. 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
`
`1020 Reserved
`
`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
`
`1024
`
`IPR2019-00924 – Petition for Inter Partes Review (’634)
`
`1025
`
`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
`INTRODUCTION
`
`B2
`
`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
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`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
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`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.
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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)
`
`SNAP INC. (“Snap”) is the real party-in-interest to this IPR petition. For ease
`
`of reference, this Petition will refer to Snap as “Petitioner.”
`
`B. Related Matters under §42.8(b)(2)
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`The ’634 patent is the subject of pending litigation involving Petitioner:
`
`BlackBerry Limited v. Snap, Inc., No. 2:18-cv-02693-GW (C.D. Cal.). No trial date
`
`has been set. Petitioner was first served in the pending litigation on April 6, 2018.
`
`(Ex.1019).
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`-
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`1-
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`

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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`
`As of the filing of this Petition, the district court has not issued any final claim
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`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
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`court did not indicate when it would issue its final order on claim construction.
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`Petitioner is accordingly filing the present Petition at this time, but will provide a
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`copy of the district court’s final claim construction order when it issues.
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`The ’634 patent is also the subject of BlackBerry Ltd. v. Facebook, Inc. et
`
`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. 1024, 1025).
`
`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
`
`’634 petitions. (See Ex. 1024)
`
`C. Lead and Back-Up Counsel under §42.8(b)(3)
`
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Yar Chaikovsky (Reg. No. 39,625)
`Snap-Blackberry-PH-
`IPR@paulhastings.com
`
`
`PAUL HASTINGS LLP
`1117 California Avenue
`
`
`Chad Peterman (pro hac vice admission
`to be requested)
`Snap-Blackberry-PH-
`IPR@paulhastings.com
`
`PAUL HASTINGS LLP
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`-1-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Palo Alto, CA 94304
`Tel: (650) 320-1800
`Fax: (650) 320-1900
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`
`
`
`
`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
`
`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
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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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`-2-
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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)
`
`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
`
`Claims
`
`Basis for Challenge under §103(a)
`
`1
`
`2
`
`3
`
`4
`
`1, 4-5, 7, 10-
`11, 13, 16-17
`
`Ording (Ex. 1003), Canfield (Ex. 1004), and Schwartz
`(Ex. 1005)
`
`6, 12, 18
`
`Ording, Canfield, Schwartz, and McPherson (Ex.
`1012)
`
`1, 4-5, 7, 10-
`11, 13, 16-17
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`Ording, Canfield, Schwartz, and Strom (Ex. 1015)
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`6, 12, 18
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`Ording, Canfield, Schwartz, McPherson, and Strom
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`Submitted with this Petition is the Declaration of Sandeep Chatterjee, Ph.D.
`
`(Ex. 1002) (“Chatterjee”), a qualified technical expert. (Chatterjee, ¶¶1-8, Ex. A.)
`
`C. Considerations under § 325(d) and § 314(a)
`
`This Petition does not present a situation in which “the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” 35 U.S.C.
`
`§ 325(d). None of the prior art references cited in Grounds 1-4 above was cited
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`-3-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
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`during prosecution of the ’634 patent.
`
`Petitioner is also unaware of any basis under § 314(a) for the Board to decline
`
`to consider this Petition. Petitioner did file another IPR against the ’634 patent on
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`the same day as the present Petition. As discussed in section I.B., Facebook
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`previously filed two IPR petitions challenging the ’634 patent on April 4, 2019.
`
`(Exs. 1024, 1025). Snap obtained Facebook’s petitions, after they were filed and
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`publicly available, from the Patent Office. Snap’s petitions are both substantively
`
`identical copies of Facebook’s ’634 petitions. (See Ex. 1024, 1025).
`
`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
`
`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
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`functionality (or equivalent degree or experience). (Chatterjee, ¶¶12-15.)
`
`B.
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`Specification Overview
`
`The ’634 patent, entitled “Previewing a New Event on a Small Screen
`
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`-4-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
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`Device,” states that it “relates generally to wireless communication devices, and
`
`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 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-
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`31.) Figure provides an example of main screen 300:
`
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`(’634, Fig. 3 (red box added).) Main screen 300 may display icons for various
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`
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`software applications, such as icons 304, 306, and 308 for respective IM
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`-5-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
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`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
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`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-
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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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`(’634, 8:4-8, Fig. 4 (red box/yellow highlighting added).) Main screen 300 here
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`
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`includes a “visual modification 400 comprising a bubble, alluding to new received
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`-6-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
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`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
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`modification 400 different from a bubble may be used and the count may represent
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`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.)1
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`C. The Challenged Claims
`
`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 4-7.
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`V. CLAIM CONSTRUCTION
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`A.
`
`“wireless communication device”
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`The term “wireless communication device” is recited in the challenged
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`claims.
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` Patent Owner argued
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`in
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`the pending
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`litigation
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`that “wireless
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`communication device” refers to a “small-screen wireless mobile device.” (Ex.
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`1022, at p.5:20-23.) Petitioner disagrees that the term requires a “small-screen”
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`device. On April 1, 2019, the district court issued a tentative claim construction
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`ruling also finding that the intrinsic record does not support such a restriction. (Ex.
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`1 Unless noted otherwise, all emphasis has been added by Petitioner.
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`-7-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
`
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`1023, pp.19-21.)2 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,
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`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
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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
`
`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; Ex. 1023, p.20.) The specification does not support requiring a
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`small screen device. (Chatterjee, ¶31; Ex. 1023, 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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`-8-
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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 supports this view. 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
`
`device having a small display…” (Ex. 1013 at 0152.) The preamble of claim 1,
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`for example, was amended as follows:
`
`(Id. (yellow highlighting added).)
`
`
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`
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`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
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`claims – or any of the issued claims – recited a wireless communication device
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`“having a small display,” or similar limitation. (Id.) As the district court
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`observed, none of the applicants’ subsequent arguments after proposing these new
`
`claims effected a clear disclaimer of claim scope with respect to the claimed
`
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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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`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
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`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,
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`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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`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
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`correspondents under any of the articulated constructions (or any other reasonable
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`construction of “messaging correspondent”). (Chatterjee, ¶38.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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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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`Patent Owner argued that this phrase be given its plain and ordinary
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`meaning. Petitioner argued that it means “the number of different messaging
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`correspondents for which one or more of the electronic messages have been
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`received and remain unread.” Facebook Inc. (a defendant in a co-pending litigation
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`filed by Patent Owner) has proposed that it be construed as “a number that enables
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`the user to track the number of correspondents from whom the user has received
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`unread messages” (Ex. 1022, at p.6:1-11.) The district court tentatively construed
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`this phrase as “a numeric character representing the number of different messaging
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`correspondents for one or more of the plurality of electronic messages that have
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`been received and remain unread.” (Ex. 1023, pp.24-26.)
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`But as with “messaging correspondent,” Petitioner has notified the Board of
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`the dispute in the pending litigation in the interest of completeness, but the Board
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`need not construe this term at this time. The construction of this phrase has
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`relevance to non-infringement issues in the pending litigation, but will not affect
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`how the specific prior art references here apply to the challenged claims.
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`(Chatterjee, ¶40.)
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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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 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
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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. 1013 at 0826.) But
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`counting the number of distinct senders was also known and disclosed by Canfield
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`(Ex. 1004).
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`All four grounds rely on Ording (Ex. 1003), 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.
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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
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`(Ex. 1004) which discloses this feature and renders it obvious in view of Schwartz
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`(Ex. 1005). Ground 1 establishes that it would have been obvious to adapt the
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`numeric character in Ording to display, instead of or in addition to the number of
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`unread 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
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`(Ex. 1012). Grounds 3-4 mirror Grounds 1-2 but add Strom (Ex. 1015) 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 above.
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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. 1003]
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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, Abstract.) Ording qualifies as prior art to the ’634 patent
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`under §102(e) because it issued from a patent application filed on December 20,
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`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 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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`(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
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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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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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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 be
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`visually modified based on events occurring in the associated program. With
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`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,
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`e.g., increasing as new messages are received in the inbox or
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`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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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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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 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
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`Ording in combination with Canfield and Schwartz as discussed below.
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`(b) Canfield [Ex. 1004]
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`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,
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`Canfield discloses the ability to determine a number of IM-related statistics,
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`including the number of instant messaging (IM) sessions that contain new (unread)
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`messages:
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`In another implementation, the user interface also includes a
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,209,634 B2
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`mechanism to determine the statistics. The statistics may include one
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`or more of the following: a total number of concurrent instant
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`messaging sessions; a number of instant messaging sessions with
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`new messages; a number of new instant messaging sessions; and a
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`number of new instant messages. The number of instant messaging
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`sessions with new messages may further include a number of new
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`instant messaging sessions with new messages and a number of old
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`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
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`from both new and old IM sessions. This embodiment is directly reflected in
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`Canfield’s issued claims, which recite “a status indicator providing a perceivable
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`indication to the user of statistics comprising a first number making perceivable a
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`number of senders from whom at least one unacknowledged instant message has
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`been 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