UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SNAP, INC.
`Petitioner
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`Case IPR2019-00939
`Patent 8,209,634
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`DECLARATION OF RAJEEV SURATI, PH.D.
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`BLACKBERRY 2001
`SNAP INC. V. BLACKBERRY
`IPR2019-00939
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION AND SCOPE OF WORK .........................................1
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`II.
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`SUMMARY OF OPINIONS ...................................................................2
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`III. BACKGROUND AND QUALIFICATIONS ..........................................2
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`IV. BASIS FOR OPINIONS ..........................................................................6
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`V.
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`FIELD OF ART ......................................................................................9
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`VI.
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`PERSON OF ORDINARY SKILL IN THE ART ...................................9
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`VII. THE ’634 PATENT ............................................................................... 10
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`A. Overview of the ’634 patent .................................................................. 10
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`B.
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`Prosecution History of the ’634 patent ................................................... 14
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`VIII. INTERPRETATIONS OF THE ’634 PATENT CLAIMS AT ISSUE .. 18
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`A.
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`B.
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`“wireless communication device” (All challenged claims) ...................... 18
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`“messaging correspondent” (All challenged claims) ............................... 19
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`“a numeric character representing a count of the plurality of different
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`message correspondents for which one or more of the electronic messages have
`been received and remain unread” (All challenged claims).............................. 20
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`IX. ANALYSIS REGARDING THE CLAIMS OF THE ’634 PATENT IN
`LIGHT OF THE PRIOR ART ................................................................. 20
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`A. Ording, Canfield, and Schwartz (Ground 1)............................................ 21
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`The Petition failed to show that the Ording/Canfield/Schwartz discloses the
`B.
`claimed “numeric character representing a count of the plurality of different
`messaging correspondents.”........................................................................... 31
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`C. The Petition fails to show a POSITA would have been motivated to modify
`Ording in view of Canfield and Schwartz to arrive at the claimed invention. (All
`Grounds) ...................................................................................................... 32
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`D. The Petition fails to acknowledge additional problems posed by its
`modification of Canfield to prohibit all sessions except one-on-one sessions. .. 37
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`E. The Petition fails to show that the proposed modification based on Canfield
`alone would have been obvious...................................................................... 38
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`F. The Petition’s alternative theory that proposed modifications to
`Ording/Canfield/Schwartz would have been “obvious to try” is unsupported by
`any sufficient evidence .................................................................................. 38
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`X.
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`LEGAL STANDARDS .......................................................................... 39
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`A. Claim Interpretation .............................................................................. 40
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`B. Obviousness.......................................................................................... 41
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`XI. CONCLUSION ..................................................................................... 44
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`I, Rajeev Surati, Ph.D., of Cambridge, Massachusetts, declare that:
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`I.
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`INTRODUCTION AND SCOPE OF WORK
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`1.
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`I have been retained by Patent Owner Blackberry Limited in the
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`above-captioned Inter Partes Review (IPR) as an independent expert in the
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`relevant field.
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`2.
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`I have been asked to provide my independent analysis regarding the
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`references identified by petitioner Snap, Inc. (“Petitioner”) in this IPR related to
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`U.S. Patent 8,209,634 (“the ’634 patent”), which is assigned to Patent Owner. I
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`have been asked to consider what one of ordinary skill in the art before the priority
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`date of the ’634 patent would have understood from the ’634 patent, including
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`scientific and technical knowledge related to the ’634 patent. I have also been
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`asked to consider whether the references relied on by Petitioner disclose or render
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`obvious the inventions claimed by the ’634 patent.
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`3.
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`I understand that this proceeding is currently in a preliminary stage,
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`and no IPR has yet been instituted. I have been asked to present my independent
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`analysis with respect to certain issues relevant to the question of whether IPR
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`should be instituted. I understand that I may be asked to present my complete
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`analysis at a later date (if IPR is instituted), but the complete analysis is not
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`necessary at this time. Accordingly, my independent analysis for relevant issues is
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`set forth below.
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`4. My analysis is directed by my education, training, and experience as a
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`person of ordinary skill in the art as of the priority date of the ’634 patent, which
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`for purposes of my analysis here is assumed to be the effective filing date of the
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`’634 patent—December 1, 2003.
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`5.
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`I am being compensated for my work in connection with this IPR
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`proceeding at my standard hourly rate. My compensation is not in any way
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`contingent on the substance of my opinions or the outcome of these proceedings.
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`II.
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`SUMMARY OF OPINIONS
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`6.
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`Based on my experience and expertise, discussed below, and my
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`review of the references identified by Petitioner in this IPR for the ’634 patent, it is
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`my opinion that the cited references do not render obvious at least claims 1, 4-7,
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`10-13, and 16-18 of the ’634 patent.
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`III. BACKGROUND AND QUALIFICATIONS
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`7.
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`I have more than twenty (20) years of experience in electrical
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`engineering, computer science, and electronic messaging. The following
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`paragraphs summarize some of my experience that is relevant to the technologies
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`described within the ’634 patent. For further details, please refer to my curriculum
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`vitae which is attached as Appendix A.
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`8.
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`I attended the Massachusetts Institute of Technology (MIT) from
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`1988 to 1999, during which time I earned Bachelor of Science (1992), Master of
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`Science (1995), and Doctor of Philosophy (1999) degrees in electrical engineering
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`and computer science.
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`9.
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`I am the inventor of U.S. Patent No. 5,943,478, entitled “System for
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`Popup Messaging over the Internet,” which describes a two-way messaging system
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`like AOL Instant Messenger and MIT’s Zephyr service built at Internet scale.
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`10.
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`In 1996, I founded a company called Flash Communications, which
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`focused on technology related to U.S. Patent No. 5,943,478 and associated
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`technology that I had developed related to pop-up two-way messaging over the
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`Internet. Flash Communications was sold to Microsoft Corporation in 1998, and
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`Flash Communications’ messaging technology was incorporated into Microsoft’s
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`Messenger service and Microsoft Exchange 2000 Instant Messaging Service.
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`11. Notably, since around 1995, I have been using and working with AOL
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`Instant Messenger (which was part of AOL’s subscription service in 1995 and
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`1996, and in 1997 was released on the internet) until its demise both as a basis for
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`competitive analysis and normal everyday usage.
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`12. While working at Microsoft between 1999 and 2000, I worked in the
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`Microsoft Exchange Server group. The group was responsible for all of
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`Microsoft’s Messaging products including e-mail, instant messaging, and what
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`later became their unified messaging offering that included telephony etc. I worked
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`on many systems, including those that involved multicasting, a form of
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`broadcasting.
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`13. While at Microsoft I was an inventor of US Patent No. 6,260,148:
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`Methods and systems for message forwarding and property notifications using
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`electronic subscriptions; US Patent No. 6,415,318: Inter-enterprise messaging
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`system using bridgehead servers; and US Patent No. 6,604,133: Inter-enterprise
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`messaging system using bridgehead servers. Each of these patents is related to
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`messaging, property subscription and notification, architectures for distributing
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`broadcast messages, etc.
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`14. While at Microsoft I worked on an XML parsing engine for the
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`standard for IMPP, which is now known by the name XMPP, an XML language
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`for Instant Messaging and Presence.
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`15. Between 2000 and 2004, I worked as a consultant and investor at
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`Nexaweb Corporation, where I helped implement several two-way messaging
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`systems.
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`16. Also in 2000, I started a company known as photo.net, which was a
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`large online photography community known as one of the first social networking
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`and photo sharing web sites. Messaging and broadcasting content were a core part
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`of the offering of the site and I managed the implementation and hosting aspect of
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`setting up and running the various SMTP, MTA, WAP, and SMS servers to enable
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`communication with our user base. I built an application infrastructure to a scale
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`that allowed me to be experienced with the issues in broadcasting messages to
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`millions of users.
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`17.
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`In 2004, I founded another company, Scalable Display Technologies
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`(SDT). I have been the Chairman of SDT since its founding and President until
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`2014. SDT operates in the audio-video domain and has licensed software and
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`firmware to various companies including Sony, Hitachi and NEC. I also
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`implemented a distributed multimedia content playback system and spent a great
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`deal of time dealing with multimedia transcoding and rendering systems. At SDT I
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`was also involved building a network architecture where I had to consider and
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`design a system that met our needs for discovery and direct communication using
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`both broadcast and point to point communication mechanisms.
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`18.
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`I am on the advisory boards of several technology companies
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`including: UnifySquare, which is a unified communications/real-time collaboration
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`consultancy that focuses on telephony and instant messaging systems that
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`Microsoft sells (Lync, an outgrowth of the company I sold to Microsoft);
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`Nexaweb, which develops real-time web application frameworks using HTTPS;
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`Permabit, which develops content addressable storage; and Evoque, which is an
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`ecommerce enabling platform publisher.
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`19.
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`I have received several awards for my contributions as an inventor
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`and entrepreneur, including the Global Indus Technovator Award 2009 and
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`Laureate of 2009 Computer World Honors Program.
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`20. Based on my experience and education, I believe that I am qualified to
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`opine as to knowledge and level of skill of one of ordinary skill in the art at the
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`time of the invention of the ’634 patent (which I further describe below) and what
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`such a person would have understood at that time, and the state of the art during
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`that time.
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`IV. BASIS FOR OPINIONS
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`21. My opinions and analysis set forth in this Declaration are based on my
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`education, training, and experience as summarized above and detailed in my C.V.,
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`as well as my review of the ’634 patent, its prosecution history, and the references
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`identified by Petitioner in this IPR proceeding. I have also carefully reviewed the
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`declaration from Dr. Sandeep Chatterjee (EX1002), which Petitioner submitted in
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`support of its Petition in this IPR proceeding. I have also reviewed the Petition and
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`each of the accompanying documents that are cited in the Petition, including those
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`specifically mentioned in Grounds 1-4 of the Petition (noted below). The Petition
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`lists the following references in Grounds 1-4 of the Petition, which I specifically
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`reviewed and address below as part of my analysis for this Declaration:
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` Declaration of Sandeep Chatterjee, Ph.D. (EX1002)
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` U.S. Patent No. 7,434,177 B1 to Bas Ording et al. (“Ording”,
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`EX1003)
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` U.S. Patent No. 7,281,215 B1 to James Andrew Canfield et al. (filed
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`July 31, 2002, issued Oct. 9, 2007) (“Canfield”) (EX1004)
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` Excerpts from Joe Schwartz, The Complete Idiot’s Guide to Online
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`Dating and Relating (1999) (“Schwartz”) (EX1005)
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` U.S. Patent Application Pub. No. 2004/0056893 to James Andrew
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`Canfield et al. (“Considered Canfield”, EX1006)
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` Redline comparison between U.S. Patent No. 7,281,215 B1 (Ex.
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`1004) and U.S. Patent Application Pub. No. 2004/0056893 (Ex. 1006)
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`(EX1007)
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` Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
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`(EX1008)
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` U.S. Patent Application Pub. No. 2002/0142758 A1 to Hajime Abiko
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`et al. (“Abiko”, EX1009)
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` Excerpts from Frank McPherson, How to Do Everything with Your
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`Pocket PC (2d ed. 2002) (“McPherson”, EX1012)
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` Prosecution history for U.S. Patent Application No. 10/784,781,
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`which issued as the ’634 patent (EX1013)
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` Nokia 9210i Communicator, web page from www.nokia.com
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`(EX1014)
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` David Strom, Three New Wireless E-Mail Devices, Computerworld,
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`Nov. 8, 1999 (“Strom”, EX1015)
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` Affidavit of Butler (EX1016)
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` Excerpts from Random House Webster’s College Dictionary (2000)
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`(EX1017)
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` Stephen Manes, A Pocketful of Windows, Forbes, Oct. 29, 2001
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`(EX1018)
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` Certificates of Service from BlackBerry Limited v. Snap, Inc., No.
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`2:18-cv-02693-GW (C.D. Cal.), ECF No. 13 (EX1019)
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` Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis”) (EX1021)
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` Joint Statement Regarding Disputed Claim Terms, BlackBerry
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`Limited v. Facebook, Inc. et al., No. 2:18-cv-01844-GW-KS (C.D.
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`Cal.), ECF No. 135, filed on March 26, 2019 (EX1022)
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` Tentative Ruling on Claim Construction in BlackBerry Limited v.
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`Facebook, Inc. et al., No. 2:18-cv-01844-GW (C.D. Cal.), ECF No.
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`152, filed April 1, 2019 (EX1023)
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` IPR2019-00924 – Petition for Inter Partes Review (’634) (EX1024)
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` IPR2019-00925 – Petition for Inter Partes Review (’634) (EX1025)
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` Some additional materials that I have reviewed in preparing this declaration
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`include the following documents:
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` Corrected Final Ruling on Claim Construction/Markman Hearing,
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`Blackberry Limited v. Snap Inc., Case Nos. CV 18-1844-GW & 18-
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`2693-GW (C.D. Cal. April 5, 2019) (“Markman Order”) (EX2002).
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`V.
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`FIELD OF ART
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`22. The ’634 patent generally relates to computer hardware, networking,
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`and user experience design with electronic messaging. As such, it is my opinion
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`that the ’634 patent is in the fields of computer hardware, networking, and/or user
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`experience design, or an equivalent subject matter, and a complete understanding
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`of the ’634 patent requires experience and appreciation of the challenges in design,
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`development, and commercialization of such systems for consumer use.
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`VI. PERSON OF ORDINARY SKILL IN THE ART
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`23.
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`I understand that the teaching of the prior art is viewed through the
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`eyes of a person of ordinary skill in the art at the time of the invention. To assess
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`the level of ordinary skill in the art, I understand that one can consider the types of
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`problems encountered in the art, the prior solutions to those problems found in
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`prior art references, the speed with which innovations were made at that time, the
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`sophistication of the technology, and the level of education of active workers in the
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`field.
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`24.
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`In my opinion, a person of ordinary skill in the art relevant to the ’634
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`patent at the time of its invention would have had a bachelor of science degree in
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`Computer Engineering/Computer Science or similar subject matter, or at least
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`approximately two years of work or research experience in the fields of computer
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`hardware, networking, and/or user experience design, or an equivalent subject
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`matter, sufficient to understand fundamental computer networking and hardware
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`architecture and user-interface design. My analysis is thus based on the
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`perspective of a POSITA having at least this level of knowledge and skill in the
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`time leading up to the ’634 patent. I have been informed that the earliest claimed
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`priority date of the ’634 patent is the effective filing date of U.S. Provisional
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`Application No. 60/525,958—December 1, 2003, and I have applied this
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`timeframe in my analysis as being the relevant time of the ’634 patent.
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`VII. THE ’634 PATENT
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`A. Overview of the ’634 patent
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`25. The ’634 patent generally relates to “previewing new events in a
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`computing device having a plurality of applications for managing respective
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`events.” EX1001, Abstract; Title (“Previewing a New Event on a Small Screen.”).
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`For example, the ’634 patent describes notifying and previewing a new event on a
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`computing device, such as notifying and previewing receipt of new messages on a
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`mobile device. The claims recite a visual modification of an electronic messaging
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`icon to display information related to a “count of the plurality of different
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`messaging correspondents for which one or more of the electronic messages have
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`been received and remain unread.”
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`26. The ’634 patent identifies various challenges associated with display
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`of information on mobile devices (e.g., having a small screen). “With the
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`proliferation of communications services available on wireless mobile devices, it
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`becomes increasingly complex to create a single device that can excel at many
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`different functions.” EX1001, 1:18-31. “However, many users of wireless
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`handheld devices desire to have multiple services and functionality on a single
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`device.” Id. Mobile uses thus receive messages from many separate applications,
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`which “presents a number of challenges to the designer of a user interface.”
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`EX1001, 1:31-40. These applications include “more than one Instant Message-
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`type service,” or “corporate and personal email.” Id., 1:53-65. Some prior systems
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`responded to each incoming message by showing a notification “on a major
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`portion of the main screen.” Id., 1:38-52. The notification was not application-
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`specific, however, forcing users “to check each of their … applications separately”
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`to determine which application triggered the notification. Id. This process could
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`involve navigating to “a main or home screen and one or more sub-screens that
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`may be navigated from the main screen.” Id., 1:41-43, 60:64. The ’634 patent
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`identified that “[c]hecking each service is inconvenient.” This makes it difficult
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`for a user to check the new event quickly and in a manner to optimize the control
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`of a single wireless mobile device running multiple instant messaging services and
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`email counts. Id., 1:60-68.
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`27. The ’634 patent solved such shortcomings by notifying/previewing a
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`user with information regarding messages received on a mobile device despite
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`being limited in screen size. In particular, the ’634 patent provides a solution that
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`involved visually modifying a messaging icon to provide a count of certain specific
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`events, such as a count of the plurality of different messaging correspondents for
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`which one or more of the electronic messages have been received and remain
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`unread.” Id., cls. 1, 7, and 13 (emphasis added); 8:8-13, 8:19-29.
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`28. The ’634 patent describes a wireless communication device may run
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`multiple applications, and such applications may be represented by application
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`icons on a graphical user interface of the device. Id. EX1001, Abstract, cls. 1, 7,
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`and 13, 3:35-39, 7:32-47, FIG. 3. Figure 3 reproduced below shows an
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`“exemplary main screen 300,” that includes an “application portion 301 for
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`displaying and manipulating icons (e.g. 304-312) for various software applications
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`and functions enabled by a mobile station 202.” EX1001, 7:32-41.
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`EX1001, FIG. 3.
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`29. The wireless communication device receives a plurality of electronic
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`messages, such as messages from a number of different messaging correspondents.
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`Some prior systems were focused only on a number of received messages. The
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`claims of the ’634 patent, in contrast, recite visually modifying the displayed icon
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`to include “a numeric character representing a count of the plurality of different
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`messaging correspondents for which one or more of the electronic messages have
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`been received and remain unread.” Id., cls 1, 7, and 13, 8-13, 8:19-29, FIG. 4.
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`Display of a count directed to “the plurality of different messaging correspondents
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`for which one or more of the electronic messages have been received and remain
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`unread,” presents different information to a user (e.g., as compared to a raw count
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`of new messages). I note that some such advantages were explicitly discussed
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`during original prosecution. “By displaying the number of distinct correspondents
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`from whom messages have been received, Applicant’s claimed invention opens
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`new possibilities for users of such communications.” See, e.g., EX1013, 677; see
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`also id., 678 (“by expending such resources and modifying an icon associated with
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`a corresponding communications application, as claimed, they could allow a user
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`to very efficiently track sometimes crucial information while making very efficient
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`use of display resources, and significantly reducing input, output, display, and
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`other processing tasks that previously were required for the users to obtain and
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`track such information.”).
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`30. The ’634 patent also describes that the wireless communication device
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`can display a preview of content associated with a received electronic message.
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`EX1001, Abstract, cls. 6, 12, and 18; 8:41-42, 8:51-65, FIGS. 6 and 7. This could
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`include a preview of a portion of the received message.
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`B.
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`Prosecution History of the ’634 patent
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`31.
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` The application leading to the ’634 patent was filed on February 24,
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`2004, claiming priority to U.S. Provisional Application No. 60/525,958 filed on
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`December 1, 2003. The ’634 patent was allowed on March 30, 2012 and issued on
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`June 26, 2012.
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`32. The ’634 patent went through several office action/response cycles,
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`with several references and combinations of references applied in the office
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`actions. I note that dozens more references were considered by the Examiner,
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`including those listed in the ’634 patent. In particular, the last two Office Actions
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`dated May 19, 2011, and October 26, 2011 included rejections based on Wagner
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`(U.S. 2004/0155908) and Canfield (U.S. 2004/0056893) (referred to by Petitioner
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`as “Considered Canfield”). EX1013, 607-624; 707-728. I understand that the
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`Examiner relied on Wagner for most elements of claim 1, including visually
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`modifying an icon. Id. The Examiner cited Wagner’s description that “a mail icon
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`may display a counter that changes to indicate the number of unread messages a
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`user has.” Id. The Examiner proposed a modification of Wagner based on
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`Considered Canfield to visually modify Wagner’s icon to include “a numeric
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`character representing a count of the plurality 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,” instead of Wagner’s existing “number of unread
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`messages.” EX1013, 611. As a motivation for this modification, the Examiner
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`concluded that a POSITA would have made this combination “in order to provide
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`the user with comprehensive statistics regarding concurrent messaging sessions.”
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`Id., 612-613 (emphasis added).
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`33. Applicant submitted responses to each of these Office Actions,
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`identifying multiple distinctions and related advantages of the claims over Wagner,
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`Considered Canfield, and the other art of record. Particularly, the responses
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`explained that Considered Canfield is concerned with instant messaging
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`“sessions,” unlike the “different messaging correspondents,” as claimed. EX1013,
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`814. This distinction between tracking a number of “messages or conversations”
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`and “different messaging correspondents is reflected in the record:
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`As discussed during the 6 March interview, counting either a total
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`number of unread messages or a number of conversations does not, for
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`example, enable a user to track the number of correspondents from
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`whom the user has received unread messages. By tracking a number
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`of correspondents, rather than a number of messages or
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`conversations, a device presents different information to a user.
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`For example, a single correspondent might either (a) send a plurality
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`of messages to the user, or (b) start and stop a number of
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`conversations, without affecting the number of distinct correspondents
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`from whom the user has received unread messages.
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`EX1013, 814 (emphasis added). There are a number of advantages that can flow
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`from displaying a number of “different messaging correspondents.” For example,
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`the responses explained that “the advantage of being able to know that a new
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`correspondent has attempted to communicate can be of great importance, and it is
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`lost if simple numbers of current or new IM sessions is tracked.” Id., 678. This is
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`because, for example, “a single correspondent can initiate an unlimited number of
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`new IM sessions, just as he/she can send any number of e-mails or other types of
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`messages.” Id., 678-679 (emphasis added) (“Applicant’s claimed solution of
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`tracking distinct correspondents provides unique and unobvious advantages.”).
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`34. Based on my knowledge and experience in this field and my analysis
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`Case IPR2019-00939
`Attorney Docket No: 21828-0044IP1
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`of the prosecution history of the ’634 patent, it is apparent that the Examiner
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`concluded that the claims of the ’634 patent recited elements absent from the
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`Wagner and Considered Canfield references, and absent from the other cited
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`references. This conclusion is confirmed by these office actions and responses,
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`which were followed by a notice of allowance, and the Examiner’s express
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`statement of reasons for allowance. The Examiner indicated that the “prior art of
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`record fails to disclose a numeric character that represents a count of the plurality
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`of different messaging correspondents for which one or more of the electronic
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`messages have been received and remain unread.” Id., 826.
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`35.
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`I note that the Examiner’s application of Wagner (and proposed
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`modification based on Considered Canfield) is similar to the Petition’s theory
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`based on Ording and Canfield. I see no explanation in the Petition as to
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`differences in the Petition’s application of Ording as compared to the Examiner’s
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`application of Wagner already considered during original prosecution. Likewise,
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`regarding a critical deficiency of Canfield’s number directed to “sessions” rather
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`than the claimed “different messaging correspondents,” as I discuss in further
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`detail below, the Petition does not explain that Canfield remedies this deficiency of
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`Considered Canfield. I understand that the Petition asserts that Canfield “contains
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`unique and different disclosures relating to the number of IM sessions containing
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`new messages.” Petition, 18. Even if true, however, this does not address the
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`deficiency stemming from the fact that Considered Canfield and Canfield both
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`recite numbers directed to “sessions.”
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`VIII. INTERPRETATIONS OF THE ’634 PATENT CLAIMS AT ISSUE
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`36.
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`I have been asked to provide my interpretation of the following terms
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`of the ’634 patent set forth below. In providing the following interpretations, I
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`have carefully considered and applied the claim construction standard referred to in
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`Section X below. Infra, ¶66 ((“interpreted according to their ‘ordinary and
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`customary meaning’ under the Phillips standard”). I understand that the district
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`court in a related proceeding involving the ’634 patent issued a Ruling on Claim
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`Construction (“Markman Order”) on April 5, 2019. See EX2002, 19-27. I have
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`reviewed the sections of the Markman Order that pertain to the ’634 patent. I
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`understand that the claim construction standard under Phillips that applies in this
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`review is the same standard that the court applied in its Markman Order.
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`A.
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`“wireless communication device” (All challenged claims)
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`37.
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` All claims recite a “wireless communication device.” I have been
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`informed that the District Court concluded that “no construction of the term
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`‘wireless communication device’ is necessary” under the Phillips standard.
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`EX2002, 24. I note that the District Court clarified that “wireless communication
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`device” is not limited to “small-screen” devices. EX2002, 20-23 (citing EX1001,
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`1:36-40; 3:9-12; 4:55-5:9). For purposes of my analysis in this IPR proceeding, I
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`adopt and apply this construction, which is consistent with the ’634 patent
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`specification and the understanding of a POSITA. Id.
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`38. Grounds 3-4 of the Petition are duplicative with Grounds 1-2, except
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`that Grounds 3-4 add Strom to purportedly account for an interpretation in which
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`the claim language requires a “small-screen wireless mobile device.” Petition, 25.
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`As noted above, the District Court noted that the term “wireless communication
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`device” is not limited to a “small-screen wireless mobile device.” Grounds 3-4
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`suffer from the same fatal flaws as Ground 1-2.
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`B.
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`“messaging correspondent” (All challenged claims)
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`39.
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` All claims recite a “messaging correspondent.” I have been informed
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`that the District Court concluded that the claim phrase “messaging correspondent”
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`means a “distinct sender of an electronic message.” EX2002, 23-25. Based on my
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`knowledge and experience in the field and my review of the ’634 patent
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`specification, this interpretation is consistent with the understanding of a POSITA
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`and the ’634 patent specification. See, e.g., 8:8-24; 8:51-55; 9:21-27; 1:53-65. For
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`purposes of my analysis in this IPR proceeding, I adopt and apply this
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`construction.
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`40.
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` It also appears that the District Court rejected the construction
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`proposed by the Petition. The District Court explained that “[n]othing in the plain
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`language of the claims limits the term ‘messaging correspondent’ by tying it to a
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`particular messaging account.” EX2002, 24-25; EX1001, 1:59-60 (“a user may
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`have a corporate and personal e-mail account”). I agree with this statement,
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`especially given the ’634 patent specification’s description that a user may have
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`multiple messaging accounts.
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`C.
`“a numeric character representing a count of the plurality
`of different message correspondents for which one or more of the
`electronic messages have been received and remain unread” (All
`challenged claims)
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`41.
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` Each challenged claim recites this phrase. I have been informed that
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`the District Court construed this phrase under the Phillips standard to mean “a
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`numeric character representing the number of different messaging correspondents
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`for one or more of the plurality of electronic messages that have been received and
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`remain unread.” EX2002, 27. Based on my knowledge and experience in the field
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`and my review of the ’634 patent specification, this construction is consistent with
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`the ’634 patent specification and its prosecution history. EX1001, 8:59-62; cl. 1.
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`For purposes of my analysis in this IPR proceeding, I adopt and apply this
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`construction.
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`IX