Trials@uspto.gov
`571-272-7822
`
`Paper No. 11
`Entered: October 9, 2019
`
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00939
`Patent 8,209,634 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`571-272-7822
`
`Paper No. 11
`Entered: October 9, 2019
`
`
`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00939
`Patent 8,209,634 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`Denying Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122
`
`
`
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`
`INTRODUCTION
`I.
`Petitioner filed a Petition requesting an inter partes review of claims
`1, 4−7, 10−13, and 16−18 of U.S. Patent No. 8,209,634 B2 (Ex. 1001, “the
`’634 patent”). Paper 1 (“Pet.”). Petitioner filed a Motion for Joinder under
`35 U.S.C. § 315(c), seeking to join IPR2019-00924. Paper 10 (“Mot.”).1
`Patent Owner filed a Preliminary Response and elected not to oppose
`the Motion. Paper 9 (“Prelim. Resp.”).
`Under 35 U.S.C. § 315(c), a party may be joined to an instituted inter
`partes review at the Director’s discretion. Under 35 U.S.C. § 314, inter
`partes review may not be instituted unless “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” Because we did not institute inter partes review
`in IPR2019-00924, there is no inter partes review to which we could join the
`instant proceeding, and, therefore, we deny the Motion for Joinder. And
`further, because the instant Petition is identical to the denied Petition in
`IPR2019-00924, we do not institute inter partes review for the same reasons.
`
`The ’634 Patent (Ex. 1001)
`A.
`The ’634 patent relates to graphical user interfaces (“GUIs”) for
`controlling wireless communication devices. Ex. 1001, 1:12–14. The ’634
`patent discloses the challenge of representing multiple services and functions
`
`
`1 The Board authorized the filing of the Motion for Joinder in an Order to
`Show Cause. See Paper 9.
`
`2
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`to a user on a wireless handheld devices. Id. at 1:32−35. In particular, the
`devices include a GUI with a main or home screen and sub-screens that are
`navigated through the main screen. Id. at 41−43. However, to indicate the
`receipt of a new instant message (“IM”), electronic mail (“e-mail”), or other
`service event, the device uses notification icons “often rendered on a major
`portion of the main screen.” Id. at 1:43−52. To check the new IM or e-mail,
`the user is required to check each application separately, via the activation
`icon, which is inconvenient. Id. at 1:60−65. “[T]here is a demand to have
`information made available to a user quicker than previously available in
`order to optimize the control of the wireless device.” Id. at 1:65−67.
`The ’634 patent, thus, discloses a personal information manager
`(“PIM”) for organizing and managing data items relating to IM, e-mail,
`calendar events, voice mails, appointments, and task items. Id. at 6:10−15.
`To provide a “user-friendly environment” to control the operation of the
`device, the PIM provides a GUI with a main screen displaying icons for
`various software applications. Id. at 7:26−41. In response to a new event
`from an application, the icon associated with that application is visually
`modified to “provide an immediate notification of the event via a change” in
`the main screen. Id. at 7:59−63.
`Figure 3, reproduced below, illustrates the main screen after a new IM
`message has arrived into one of the IM applications. Id. at 8:1−4.
`
`3
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`
`
`FIG. 4 is an illustration of the main screen of FIG. 3 after a new event.
`Ex. 1001, 3:19−20.
`
`In Figure 4 a new received text massage via application “IM 2” is
`indicated with visual modification 400, such as a bubble, and the number
`“1,” which represents the count of the new event. Id. at 8:4−8. The
`’634 patent states that “[p]ersons of ordinary skill in the art will appreciate
`that a visual modification 400 different from a bubble may be used and the
`count may represent other information, such as the number of
`correspondents or ‘buddies’ from which one or more messages have been
`received but remain unread.” Id. at 8:8−13.
`
`4
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`
`Illustrative Claim
`B.
`Of the challenged claims, claims 1, 7, and 13 are independent. Each
`of challenged claims 4−6, 10−12, and 16−18 depends directly or indirectly
`from claims 1, 7, and 13.
`Claim 1 is illustrative:
`1. A method of providing notifications of unread messages
`on a wireless communication device, comprising:
`displaying at least one icon relating to electronic messaging
`on a graphical user
`interface of
`the wireless
`communication device;
`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
`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.
`Ex. 1001, 19:30–46; 20:11–36.
`
`5
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`
`Asserted Prior Art and Grounds of Unpatentability
`C.
`This proceeding relies on the following prior art references:
`
`a) Ording: U.S. Patent No. 7,434,177 B1, issued Oct. 7, 2008, filed
`as Exhibit 1003;
`
`b) Canfield: U.S. Patent No. 7,281,215 B1, issued Oct. 9, 2007, filed
`as Exhibit 1004;
`
`c) Schwartz: “The Complete Idiot’s Guide to Online Dating and
`Relating,” (1999), filed as Exhibit 1005;
`
`d) Strom: David Strom, Three New Wireless E-Mail Devices,
`Computerworld, Nov. 8, 1999, filed as Exhibit 1015; and
`
`e) McPherson: Frank McPherson, How to do Everything With Your
`Pocket PC (2d ed. 2002), filed as Exhibit 1012.
`
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`
`Claims
`Challenged
`1, 4, 5, 7, 10, 11,
`13, 16, and 17
`
`6, 12, and 18
`
`1, 4, 5, 7, 10, 11,
`13, 16, and 17
`
`6, 12, and 18
`
`Statutory Basis
`
`References
`
`§ 103(a)
`
`Ording, Canfield, and Schwartz
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Ording, Canfield, Schwartz, and
`McPherson
`Ording, Canfield, Schwartz, and
`Strom
`Ording, Canfield, Schwartz,
`McPherson, and Strom
`
`Petitioner also relies on a Declaration of Dr. Sandeep Chatterjee,
`6
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`Ph.D., filed as Exhibit 1002 (“Chatterjee Declaration”).
`
`II. ANALYSIS
`A. Petitioner’s Burden
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review). Furthermore, Petitioner cannot satisfy its burden of
`proving obviousness by employing “mere conclusory statements.” In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Further, in its Motion for Joinder, Petitioner, as the moving party, has
`the burden to establish that it is entited to the relief requested. 37 C.F.R.
`§ 42.20(c). A joinder request is viable only if the inter partes review which
`Petitioner seeks to join has been instituted and is pending at the time of
`joinder. See 35 U.S.C. § 315(c) (“If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join [Petitioner] as a party
`to that inter partes review.”).
`
`7
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`
`B. Denial of Motion for Joinder
`In the Motion for Joinder, Petitioner requests that we institute inter
`partes review and that we join Petitioner as a party to the inter partes review
`requested in IPR2019-00924. Mot. 1. The Petition and supportive filings
`are all identical to those filed in IPR2019-00924. Id. at 2. Although
`Petitioner appeals to the exercise of discretion in deciding the Motion for
`Joinder, our determination here hinges on a significant procedural basis.
`The Board has denied institution in IPR2019-00924. Facebook v.
`Blackberry Limited, IPR2019-00924, Paper 15 (PTAB). Accordingly, there
`is no ongoing inter partes review to which the instant Petitioner could be
`joined. Under § 315(c), therefore, we deny the Motion for Joinder.
`
`C. Denial of Institution
`Because the Petition here is identical to the petition in IPR2019-
`00924, having denied that Petition, we also deny the Petition here, and for
`the same reasons. Id. We do not repeat the arguments or analysis except to
`state that denial of the petition is premised on Petitioner’s failure to show a
`reasonable likelihood of prevailing on its assertion that Canfield teaches a
`limitation of the challenged claims.
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Petition is denied and no inter partes review is
`instituted.
`
`
`
`
`8
`
`
`
`IPR2019-00939
`Patent 8,209,634 B2
`
`For PETITIONER:
`
`Yar Chaikovsky
`David Okano
`PAUL HASTINGS LLP
`yarchaickovsky@paulhastings.com
`davidokano@paulhastings.com
`
`For PATENT OWNER:
`
`Michael Hawkins
`Nicholas Stephens
`Kenneth Darby
`Craig Deutsch
`Kim Leung
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`kdarby@fr.com
`deutsch@fr.com
`leung@fr.com
`
`Ognjen Zivojnovic
`Sam Stake
`James Glass
`QUINN EMANUEL URQHART, & SULLIVAN, LLP
`ogizivojnovic@quinnemanuel.com
`samstake@quinnemanuel.com
`jimglass@quinnemanuel.com
`
`
`
`
`9
`
`
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