Trials@uspto.gov
`571-272-7822
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` Paper No. 38
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` Date: October 1, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`IPR2019-00925
`Patent 8,209,634 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
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`
`
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` Paper No. 38
`
`
` Date: October 1, 2020
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioner,
`v.
`BLACKBERRY LIMITED,
`Patent Owner.
`
`____________
`
`IPR2019-00925
`Patent 8,209,634 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
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`IPR2019-00925
`Patent 8,209,634 B2
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`We instituted inter partes review pursuant to 35 U.S.C. § 314 to
`review claims 1, 4−7, 10−13, and 16−18 of U.S. Patent No. 8,209,634 B2
`(Ex. 1101, “the ’634 patent”), owned by Blackberry Limited (“Patent
`Owner”). We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons discussed below, Petitioner has shown by a preponderance
`of the evidence that claims 1, 4−7, 10−13, and 16−18 (“the challenged
`claims”) of the ’634 patent are unpatentable.
`
`I.
`
`BACKGROUND
`A. RELATED MATTERS
`The parties indicate that the ’634 patent was asserted in BlackBerry
`Limited v. Facebook, Inc., No. 2:18-cv-01844-GW-KS (C.D. Cal.). Pet. 1;
`Paper 4.
`
`B. THE ’634 PATENT
`The ’634 patent relates to graphical user interfaces (“GUIs”) for
`controlling wireless communication devices. Ex. 1101, 1:12–14. The
`’634 patent discloses the challenge of representing multiple services and
`functions to a user on a wireless handheld device. Id. at 1:32−35. In
`particular, the wireless handheld device includes a GUI with a main or home
`screen and sub-screens that are navigated through the main screen. Id. at
`1:41−43. However, to indicate the receipt of a new instant message (“IM”),
`electronic mail (“e-mail”), or other service event, the wireless handheld
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`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” and 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 4 reproduced below, illustrates the main screen after a new IM
`has arrived into one of the IM applications. Id. at 8:1−4.
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`FIG. 4 is an illustration of the main screen after a new event. Ex. 1101,
`3:19−20.
`
`In Figure 4 a new received text message 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.
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`C. ILLUSTRATIVE CLAIMS
`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. 1101, 11:13–28.
`
`D. PROCEDURAL HISTORY
`Petitioner filed the Petition on April 4, 2019. Paper 2 (“Pet.”). Patent
`Owner filed a Preliminary Response on July 18, 2019. Paper 10 (“Prelim.
`Resp.”). After considering the parties’ filings, we granted the Petition and
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`instituted inter partes review on all challenged claims and all grounds
`asserted. Paper 15 (“Decision” or “Dec. on Inst.”).
`During trial, Patent Owner filed a Patent Owner Response (Paper 24
`(“PO Resp.”)) and Petitioner filed a Reply (Paper 28 (“Reply”)). Patent
`Owner also filed a Sur-Reply. Paper 31 (“Sur-Reply”). We heard oral
`argument on July 16, 2020, a transcript of which is filed in the record.
`Paper 37 (“Tr.”).
`
`E. EVIDENCE OF RECORD
`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 1103;
`
`b) Abiko: Patent Application No. US 2002/0142758 A1, published
`Oct. 3, 2002, filed as Exhibit 1109;
`
`c) Crumlish: Christian Crumlish, The ABCs of the Internet, (1996),
`filed as Exhibit 1110;
`
`d) Dvorak: John C. Dvorak, Scarier than Spam, PC Magazine, Jan.
`19, 1999, filed as Exhibit 1111;
`
`e) Strom: David Strom, The New Wireless E-Mail Devices,
`Computerworld, Nov. 8, 1999, filed as Exhibit 1115; and
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`f) McPherson: Frank McPherson, How to do Everything With Your
`Pocket PC (2d ed. 2002), filed as Exhibit 1112.
`
`Petitioner also relies on a Declaration of Sandeep Chatterjee, Ph.D.,
`filed as Exhibit 1102 (“Chatterjee Declaration”). With the Reply, Petitioner
`proffered a Reply Declaration of Sendeep Chatterjee, Ph.D. Ex. 1129
`(“Chatterjee 2d Decl.”).
`With its Patent Owner Response, Patent Owner provided a
`Declaration of Rajeev Surati, Ph.D. Ex. 2001 (“Surati Decl.”). During trial,
`Patent Owner proffered a Second Declaration of Rajeev Surati, Ph.D.
`Ex. 2013 (“Surati 2d Decl.”).
`
`F. GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability (Pet. 4):
`
`Claims
`Challenged
`1, 4, 5, 7, 10, 11,
`13, 16, 17
`
`6, 12, 18
`
`1, 4, 5, 7, 10, 11,
`13, 16, 17
`
`6, 12, 18
`
`35 U.S.C. §
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`References
`Ording, Abiko, Crumlish,
`Dvorak
`Ording, Abiko, Crumlish,
`Dvorak, McPherson
`Ording, Abiko, Crumlish,
`Dvorak, Strom
`Ording, Abiko, Crumlish,
`Dvorak, McPherson, Strom
`
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`II. ANALYSIS
`
`A. CLAIM CONSTRUCTION
`In an inter partes review for a petition filed on or after November 13,
`2018, a claim “shall be construed using the same claim construction standard
`that would be used to construe the claim in a civil action under 35 U.S.C.
`282(b).” 37 C.F.R. § 42.100(b) (2019). In applying this claim construction
`standard, we are guided by the principle that the words of a claim “are
`generally given their ordinary and customary meaning,” as understood by a
`person of ordinary skill in the art in question at the time of the invention.
`Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc)
`(citation omitted). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at
`1312–17). There is a “heavy presumption,” however, that a claim term
`carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick
`Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted).
`In our Decision on Institution, we preliminarily adopted the claim
`construction of three claim terms according to the district court’s claim
`construction. Dec. on Inst. 7−9; Ex. 2002. The three claim terms and their
`corresponding constructions are listed below.
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`Claim Term or Phrase
`wireless communication device
`
`messaging correspondent
`
`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
`
`Preliminary Claim Construction
`No construction is necessary,
`clarifying that the term does not
`require a “small-screen” device.
`Ex. 2002, 20−21; Prelim. Resp. 10.
`Distinct sender of an electronic
`message. Ex. 2002, 24−25; Prelim.
`Resp. 10−11.
`A numeric character representing
`the number of different messaging
`correspondents for one or more of
`the plurality of electronic messages
`that have been received and remain
`unread. Ex. 2002, 27; Prelim. Resp.
`11−12.
`
`
`Patent Owner “does not dispute these three interpretations for
`purposes of this” proceeding. PO Resp. 12−13. Petitioner does not raise
`any claim construction disputes. See generally Reply 28. Accordingly, we
`adopt the above-identified claim construction positions as our final
`determination and note that no claim terms are in dispute. Thus, for
`purposes of this decision, we do not expressly construe any other term. See,
`e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868
`F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g,
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`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`
`B. LEVEL OF ORDINARY SKILL IN THE ART
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner proffers
`that a person having ordinary skill in the art “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 functionality (or equivalent degree or experience).”
`Pet. 6 (citing Ex. 1002 ¶¶ 12−15).
`Patent Owner, through the Declaration of Dr. Surati, proffers a similar
`level of education and experience, except for adding that the two years of
`experience may involve either work or research experience in the fields of
`“computer hardware, networking, and/or user experience design, or an
`equivalent subject matter, sufficient to understand fundamental computer
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`networking and hardware architecture and user-interface design.” PO Resp.
`12 (citing Ex. 2013 ¶¶ 7−9).
`Although we are confronted with very similar proposals from both
`parties, neither party argues that the obviousness determination hinges on a
`particular level of ordinary skill. And our decision here is the same
`regardless of which proposal we adopt as the appropriate level of ordinary
`skill. Accordingly, we do not find it necessary to define the level of skill
`with specificity save to note that the level of ordinary skill is evidenced by
`the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (stating that the absence of specific findings on the level of skill
`in the art does not give rise to reversible error where the prior art itself
`reflects an appropriate level and a need for testimony is not shown).
`
`C. OBVIOUSNESS OVER THE COMBINATION OF ORDING, ABIKO, CRUMLISH,
`AND DVORAK
`All the grounds presented in the Petition rely on the combination of
`teachings from Ording, Abiko, Crumlish, and Dvorak. Pet. 4. By way of
`summary of the presented grounds, Petitioner asserts that Ording discloses
`displaying an icon for a messaging application with a numeric character
`reflecting a number of unread messages. Id. at 13. But Ording does not
`disclose a numeric character representing the number of distinct senders who
`sent unread messages, and, therefore, Petitioner relies on Abiko. Id. The
`primary disputed issue for us to decide is whether it would have been
`obvious to combine the teachings of Ording and Abiko in the manner
`alleged by Petitioner. We start with an overview of the references.
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`1. Overview of Ording (Exhibit 1103)
`Ording is entitled “User Interface for Providing Consolidation and
`Access,” and relates to providing flexible customization of graphical user
`interfaces (“GUIs”). Ex. 1103, code (54), 1:6−10. Ording describes that on
`windows of a desktop area are icons, each of which is associated with a
`particular collection of computer information, such as a program or program
`segment. Id. at 1:55−2:1. Ording acknowledges multiple techniques for
`organizing and displaying icons to a user. Id. at 3:39−46, 3:64−4:4,
`4:41−54. Ording further explains a GUI for managing frequently used icons
`(or “objects”) and displaying a large number of them simultaneously. Id. at
`4:62−67. Ording, thus, provides a GUI with a “userbar” that can
`accommodate upwards of fifty or more objects, visibly situated, so that
`while browsing the contents of the “userbar,” certain objects may be
`magnified. Id. at 5:26−43. Figure 6, reproduced below, illustrates the
`userbar and tiles comprising the userbar.
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`Figure 6 illustrates a user interface including a userbar according to an
`exemplary embodiment. Id. at 5:62−63.
`Userbar 600 is implemented as a single horizontal row of items, or
`“tiles,” which represent a particular object or process. Id. at 9:7−9.
`Userbar 600 can change its appearance as it moves from one state, e.g.,
`selected, to another state, e.g., open or offline. Id. at 9:12−14. Ording
`explains that the change of appearance allows the user to “quickly recognize
`the current state of each of the items on the userbar 600.” Id. at 9:14−16.
`Ording describes indicating executing applications via an “LED-like
`indicator graphic” above or below the corresponding icon. Id. at 9:16−19.
`In particular, Ording states that “an email application’s tile can present the
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`number of new messages, superimposed over the application’s icon.” Id. at
`9:21−23.
`
`2. Overview of Abiko (Exhibit 1109)
`Abiko is entitled “Message Communication Device,” and is directed
`to a message communication device “that facilitates user utilization of
`information identifying the senders of received messages.” Ex. 1109, code
`(54), ¶ 2. Abiko describes the challenge, in conventional mobile telephones,
`of creating a list of all received mail messages from a particular sender. Id.
`¶ 5. The search, according to Abiko, is a manual input operation. Id. Thus,
`Abiko creates a menu with menu information that identifies the senders of
`received messages. Id. ¶ 7. For instance, Abiko’s menu information
`identifies senders of received messages, where the received messages
`include all the received messages or only the received messages “that satisfy
`prescribed conditions.” Id. ¶ 11. Abiko also creates menu information
`“when the user[] carries out a prescribed operation or when a new message
`is received.” Id. ¶ 15. The listing of the menu information can be in any
`prescribed order, including, the order of number of messages received from
`the same sender. Id. ¶ 18. Figure 8, reproduced below, illustrates menu
`information listed in the order of e-mail volume per sender.
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`Figure 8 is an example of a sender table sorted by mail volume.
`Ex. 1109 ¶ 30.
`In Figure 8, Abiko depicts a table listing a number of senders, number
`(or “No”) associated with address information listed in the “Sender address”
`column, a registered name information or address information listed in the
`“Sender name” column, and information indicating the number of received
`messages entered in a “Mail volume” column. Id. ¶ 106. For example, the
`first sender in the list (No. 1) has address information entered as
`“09012345678,” is associated with registered name information
`“KAWADA, Hanako,” and has been identified as the sender of 13 messages,
`as shown in the “Mail volume” column. Id.
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`3. Overview of Crumlish (Exhibit 1110)
`Crumlish is entitled “The ABC’s of the Internet,” and is presented in
`this proceeding for its disclosure of “Pegasus Mail.” Ex. 1110, 40−41.1
`Crumlish discloses that Pegasus Mail is a free e-mail program. Id. The
`following explains how Pegasus Mail displays and organizes e-mails: “To
`read new mail, select File > Read New Mail (or press Ctrl+W). This opens
`the New mail folder. (Once you’ve read a message, it will automatically be
`moved to the Main mail folder after you close the New Mail folder or exit
`Pegasus).” Id. at 64.
`
`4. Overview of Dvorak (Exhibit 1111)
`Dvorak is a January 19, 1999 edition of PC Magazine, in which John
`C. Dvorak authored an article entitled “Scarier than Spam.” Ex. 1111, 18.2
`The article reports the overreliance of e-mail, such that “everyone” uses e-
`mail, and its proliferation is made worse by “mediocre e-mail organization
`tools and a lack of verification for standard Internet mail.” Id. Dvorak
`complains that it is “too easy to develop mailing lists that let people
`broadcast e-mail as if it were bulk mail.” Id. With regard to organization,
`Dvorak says that “we have poor tools to sort and organize (or even find) the
`mail we collect.” Id.
`
`
`1 Citations in Crumlish refer to the page number in the original, located on
`the top left of the page.
`2 Citations in Dvorak refer to the page number in the original.
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`Petitioner relies on Dvorak as evidence of a motivation to combine
`with respect to Ording, Abiko, and Crumlish. Pet. 23−24.
`
`5. Independent Claims 1, 7, and 13
`Claim 1 is directed to a method of providing notifications of unread
`messages on a wireless communication device. See Ex. 1101, 11:13−14.
`Claim 7 is directed to “[a] computer-readable memory accessible by a
`processor of a wireless communication device, the memory comprising
`stored electronic data structures representing executable instructions which,
`when executed by the processor, cause the wireless communication device”
`to perform recited steps that parallel the steps recited in claim 1. Id. at
`11:47−51. Claim 13 is the apparatus version of claim 7, i.e., directed to the
`wireless communication device. Id. at 12:27.
`Neither party contends that the preamble of these claims is limiting.
`Petitioner, nevertheless, asserts that Ording in view of Abiko teaches the
`preamble’s notifications of unread messages (claim 1), the wireless
`communication device (claims 1, 7, and 13), and the memory and processor
`configuration (claim 7). Pet. 27−30 (citing Exs. 1103, code (57), Fig. 6,
`6:22−23, 7:47−52 9:19−23, 13:12−21; 1109 ¶¶ 36, 37, Figs. 10(a)-(c);
`Chatterjee Decl. ¶¶ 67, 70), 54 (citing Exs. 1103, 6:23−42; 1109 ¶¶ 36, 37,
`133, 134; Chatterjee Decl. ¶ 121), 55 (citing Exs. 1103, 6:23−42; 1109 ¶ 36;
`Chatterjee Decl. ¶¶ 128, 129). From Petitioner’s assertions and cited
`evidence we understand that Petitioner relies on Ording as teaching the
`notifications of unread messages and on Abiko as teaching the processor,
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`memory, and wireless communication device. For instance, Ording explains
`its userbar as having icons, one of which corresponds to an e-mail
`application, and such an icon is visually modified to notify the user of the
`receipt of new messages. Ex. 1103, 9:19−23. The icon (or a tile, in Ording
`parlance) displays the number of new messages superimposed over the icon,
`where the number is updated to reflect the current status of the user’s inbox.
`Id. at 13:12−21. We agree with Petitioner that Ording teaches “providing
`notifications of unread messages” because the icon corresponding to an e-
`mail application displays the number of messages that remain unread in the
`user’s inbox.
`As for the “wireless communication device,” Petitioner acknowledges
`that Ording’s embodiments show a personal computer but does not expressly
`disclose that the computer is also a “wireless communication device.”
`Pet. 29−30. Petitioner contends that it would have been obvious for
`Ording’s icon teaching to be combined with Abiko’s teaching of a wireless
`communication device. Id. at 29−33 (citing Chatterjee Decl. ¶¶ 70−75).
`Dr. Chatterjee opines that “[a] person of ordinary skill in the art would have
`appreciated that the userbar 600 of Ording could have been adapted to
`devices with smaller screens, such as the mobile telephone of Abiko.”
`Chatterjee Decl. ¶ 71. Ording, for instance, teaches that its icons can be as
`small as 16x16 pixels. Id. (citing Ex. 1103, 15:26−30). Further, Abiko’s
`device, Dr. Chatterjee opines, would have benefited from Ording’s userbar
`because of the functions and applications in Abiko’s device that would have
`been available through the userbar. Id. ¶ 73. Given the convenience of
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`wireless devices and the accessibility of email in a mobile computing
`platform, such as Abiko’s, Dr. Chatterjee testifies that “market and
`competitive forces would have further encouraged a person of ordinary skill
`in the art to support the ability to use wireless computing devices, as
`disclosed in Abiko, with the user interface techniques in Ording.” Id. ¶ 73.
`Dr. Chatterjee also notes that Ording itself provides a motivation to
`implement the userbar in smaller screens of wireless or mobile computing
`devices because Ording states that “userbar 600 also provides a number of
`window management solutions that are intended to allow users to make
`better use of limited screen space.” Id. ¶ 74 (quoting Ex. 1103, 15:1−3)
`(emphasis omitted).
`We agree with Petitioner’s argument that it would have been obvious
`for a person of ordinary skill in the art to combine the teachings of Ording’s
`userbar icon with the wireless mobile device of Abiko. We credit the
`testimony of Dr. Chatterjee, summarized above, in this regard. As stated
`above, Ording touts the usefulness of the userbar, specifically to address a
`limited screen space environment, which undoubtedly includes a mobile
`device display. Further, we agree with and credit Dr. Chatterjee’s testimony
`(Chatterjee Decl. ¶ 74) that as mobile devices were becoming widely
`available by December 2003, with increasing number of features and
`applications, including email messaging, a person of ordinary skill in the art
`would have been motivated to make those features and applications easier to
`access by providing the Ording user interface (read here, the userbar with the
`icon representing the features and applications). Such a motivation
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`comports with KSR’s guidance that “[o]ften, it will be necessary for a court
`to look to . . . the effects of demands known to the design community or
`present in the marketplace, and the background knowledge possessed by a
`person having ordinary skill in the art, all in order to determine whether
`there was an apparent reason to combine the known elements in the fashion
`claimed by the patent at issue.” KSR Int’l Co., v. Teleflex Inc., 550 U.S. 398,
`418−419 (2017).
`Patent Owner argues that the Petition proffers five layers of
`modifications to Ording’s computer. PO Resp. 14; see also Sur-Reply 1−4.
`Patent Owner identifies the combination of Ording’s icon with Abiko’s
`wireless mobile device as the first “modification to Ording’s computer.” PO
`Resp. 14. Patent Owner asserts that each modification must be supported by
`an articulated reasoning, and argues that Petitioner failed to show any. Id. at
`15−16; Sur-Reply 1−4. Patent Owner’s argument is not persuasive for two
`reasons. First, Petitioner is not relying on any modification of Ording. The
`asserted reasoning for the combination is that Abiko’s wireless mobile
`device would benefit from the teaching of Ording’s userbar with icons.
`Second, Petitioner has provided sufficient articulated reasoning with a
`rational underpinning supporting the motivation to combine as stated
`above—focusing on a market demand and the recognized benefit of using
`the userbar with Abiko’s device.
`Patent Owner also argues that Petitioner explained belatedly the
`reasons to combine in the Reply and attempted to bootstrap the preamble’s
`reasons to combine to the rest of its analysis. Sur-Reply 5−7. We do not
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`agree with this characterization of the record. Upon inspection of the
`Petition, and in light of Patent Owner’s arguments, we now understand that
`the Petition’s evidence and arguments related to reasons to combine are first
`set forth with specificity in the section examining the preamble. See Pet.
`27−33; Tr. 20:14−23:13. The preamble section explains in detail the
`teachings and their combination as we have examined above. We do not
`agree with Patent Owner that the Petition is somehow deficient because
`Petitioner presented its case in this manner. To fault Petitioner for
`addressing a combination of teachings in the discussion of the preamble in
`the Petition (when the discussion is related to all claim limitations where the
`combination is relied upon) would be to prefer form over substance. And no
`rule of the Board or consideration of due process warrants our doing so.
`Accordingly, Patent Owner’s arguments in this regard are unpersuasive.
`Consequently, we determine that Petitioner has shown by a
`preponderance of the evidence that the combination of Ording and Abiko
`teaches “providing notifications of unread messages on a wireless
`communication device,” as recited in the preamble of claim 1. Petitioner has
`also shown by a preponderance of the evidence that the combination of
`Ording and Abiko teaches the preamble of claim 7 because, in addition to
`the “wireless communication device,” Abiko teaches a processor and
`computer-readable memory that stores executable instructions. See
`Pet. 53−54 (citing Ex. 1109 ¶¶ 36, 37, 133, 134). As to claim 13, we are
`also persuaded that Petitioner has shown by a preponderance of the evidence
`that the combination of Ording and Abiko teaches the preamble of claim 13
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`because, in addition to the teachings described above with regard to claims 1
`and 7, Abiko describes the display. See Pet. 55 (citing Ex. 1109 ¶¶ 36, 128,
`129).
`
`The Icon Display Limitation
`i.
`Claim 1 recites “displaying at least one icon relating to electronic
`messaging on a graphical user interface of the wireless communication
`device.” Ex. 1101, 11:15−17 (“the icon display” limitation). Claims 7 and
`13 are substantively identical, except they omit the wireless communication
`device. Id. at 11:52−53, 12:34−35.
`Petitioner contends that the combination of Ording and Abiko teaches
`this limitation. Pet. 33−35. For instance, Petitioner argues that Ording’s
`icon that is part of userbar 600 teaches the “icon relating to electronic
`messaging” part of the icon display limitation. Id. at 34 (citing Ex. 1103,
`7:47−52, 8:64−67) (emphasis omitted). Petitioner argues, and we agree, that
`Ording discloses using e-mail applications, as well as other applications,
`which would correspond to a specific icon on the userbar. Id. Ording,
`according to Petitioner, and we agree, also teaches the “graphical user
`interface,” because Ording describes displaying the userbar at the bottom of
`the user display screen, as shown in Figure 6 of Ording. Id.
`As for the “wireless communication device,” Petitioner relies on
`Abiko, as it did in the preamble discussed above. Id. at 34−35. There is
`more to the combination of teachings from Ording and Abiko, however.
`Petitioner states that “[i]t would have been obvious to render the application
`
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`icon for the e-mail program of Abiko in userbar 600 of Ording.” Id. at 34
`(citing Chatterjee Decl. ¶ 80) (emphasis omitted). This is where Patent
`Owner challenges Petitioner’s assertions concerning the “icon display”
`limitation.
`Patent Owner, on the issue of reasons to combine, argues the second
`modification, of the five layers of modifications introduced above in the
`preamble discussion. PO Resp. 17. Specifically, Patent Owner argues that
`Petitioner has failed to show “why a [person of ordinary skill in the art]
`would have been motivated to modify Ording’s Apple Macintosh computer
`to include Abiko’s e-mail program so that Ording’s userbar 600 will display
`the icon for launching Abiko’s e-mail program.” Id. (citing Surati 2d Decl.
`¶ 44). According to Patent Owner, Petitioner needed to show a motivation
`for this modification of “Ording’s original computer.” Id. at 18. And the
`mention of “e-mail applications,” according to Patent Owner, is insufficient
`reasoning for why a person of ordinary skill in the art “would have selected
`Abiko’s particular species of an e-mail application from the mere mention of
`a broad genus.” Id. (citing Knauf Insulation, Inc. v. Rockwool Int’l A/S, 788
`F. App’x. 728 (Fed. Cir. 2019)); see also Sur-Reply 8−12.
`We are not persuaded by Patent Owner’s arguments. First, the alleged
`combination of teachings alleged by Petitioner does not require a
`modification of Ording. If anything, it is Abiko’s device that would
`implement the software addition of the graphical user interface and icon of
`Ording. This combination was explained above with respect to the
`preamble, which introduced the combination of teachings of Ording’s
`
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`userbar and corresponding icon with the teachings of Abiko’s device. As
`already stated, we have found that combination of teachings explained and
`properly supported with a reason to combine having rational underpinning.
`Second, because there is no “modification” of Ording involved, the
`specific embodiment of Ording’s computer being a Macintosh is irrelevant.
`See PO Resp. 19−22 (arguing a person of ordinary skill in the art would not
`have substituted Ording’s Apple Mail (because Ording’s computer is an
`Apple McIntosh) with Abiko’s e-mail program). Again, Ording contributes
`the teaching of the graphical user interface having a userbar that would be
`useful to Abiko’s device as stated above with respect to the preamble. There
`is no aspect of Ording’s computer as a “Macintosh” that would negate the
`evidence and arguments presented by Petitioner that it would have been
`obvious to combine the teachings of Ording and Abiko to result in Ording’s
`userbar being beneficial to Abiko’s mobile phone.
`Third, Patent Owner’s genus/species argument is unpersuasive (see
`PO Resp. 18–19) because the Petition does not rely on Ording’s disclosure
`of a “genus” e-mail applica
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