BlackBerry Limited

Patent Trials and Appeals Board

Oct 1, 2020

IPR2019-00925 (P.T.A.B. Oct. 1, 2020)

Trials@uspto.gov Paper No. 38
571-272-7822 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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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 35 U.S.C. § References
1, 4, 5, 7, 10, 11,
13, 16, 17 § 103(a)
Ording, Abiko, Crumlish,
Dvorak
6, 12, 18 § 103(a) Ording, Abiko, Crumlish, Dvorak, McPherson
1, 4, 5, 7, 10, 11,
13, 16, 17 § 103(a)
Ording, Abiko, Crumlish,
Dvorak, Strom
6, 12, 18 § 103(a) 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 Preliminary Claim Construction
wireless communication device No construction is necessary,
clarifying that the term does not
require a “small-screen” device.
Ex. 2002, 20−21; Prelim. Resp. 10.
messaging correspondent Distinct sender of an electronic
message. Ex. 2002, 24−25; Prelim.
Resp. 10−11.
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
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).
i. The Icon Display Limitation
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 application to argue that a person of ordinary skill in the
art would have implemented Abiko’s “species” e-mail application. The
Petition relies on Abiko’s mobile device, which has implemented therein the
e-mail program that is relevant to the combination. Pet. 33−34 (stating that
Ording’s icon “would correspond to the software control program in Abiko
that processes messages and generates the user interface for [the] e-mail
program.”). Patent Owner makes much of Petitioner’s reference to Ording’s
e-mail program, which we understand Petitioner mentions to show that
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Ording’s icon is known to work with an e-mail program. See Pet. 34. But
the motivation to combine Ording’s teachings of the icon with Abiko’s
device does not hinge upon Ording’s e-mail program. Therefore, arguments
by Patent Owner that Ording’s e-mail program lacks the “genus/species”
pre-requisites to install Abiko’s program in Ording’s computer misses the
mark and is unpersuasive.
In sum, Patent Owner’s arguments rest on an inaccurate representation
of the combination of teachings proffered by Petitioner. There is no
modification of Ording that has been left unexplained, as there is no
modification of Ording alleged. Rather, Ording contributes the teaching of
the userbar which would be displayed in Abiko’s mobile phone, with the
underlying Abiko e-mail program being represented by the icon on the
userbar. We have determined that this combination of teachings was
sufficiently supported above with respect to the preamble. We determine,
therefore, that Petitioner has shown by a preponderance of the evidence that
the teachings of Ording and Abiko meet the “icon display” limitation.
ii. Messaging Correspondents Limitation
Claim 1 recites “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.”
Ex. 1101, 11:18−21 (the “messaging correspondents” limitation). Claims 7
and 13 recite substantively identical limitations. Id. at 11:54−56, 12:36−38.
Petitioner contends that Abiko teaches this limitation. Pet. 35−37.
For example, Petitioner relies on Abiko’s disclosure of organizing e-mail
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messages by sender. See, e.g., id. at 35−36 (citing Ex. 1109 ¶ 44, Fig. 8).
Figure 8 of Abiko, Petitioner contends, shows a table that organizes received
e-mails by sender, and each entry of the table identifies a distinct sender. Id.
We agree that Abiko teaches this limitation. Figure 8 shows four
rows, each row identifying a sender of e-mails. Ex. 1109, Fig. 8. The first
row, for example, identifies a correspondent named “KAWADA, Hanako”
as the sender of 13 e-mails. Id. On the second row, “satoh@def.or.jp” is
identified as the sender of 10 e-mails. Id. The third row identifies
“YAMADA, Taro” as the sender of 9 emails. Id. And the fourth row
includes a number, “09012341234,” as the sender of 5 emails. Id. This
disclosure informs us that Abiko indeed processes received e-mails to
identify the senders (read here “messaging correspondents”) and display the
number of e-mails received from each of those senders. Abiko’s senders are
each uniquely identified and different from each other.
Patent Owner argues the lack of a reason to combine teachings for the
“messaging correspondents” limitation for the same reasons as stated with
the “icon display” limitation. See PO Resp. 19 (referring to the analysis of
claim limitation 1[a] (the “icon display” limitation) and claim limitation 1[b]
(the “messaging correspondents” limitation) together). We stated above in
our analysis of the “icon display” limitation that we are not persuaded by
Patent Owner’s arguments regarding reasons to combine. Based on that
same analysis, we find those arguments unpersuasive for the “messaging
correspondents” limitation, for which, in any event, Petitioner relies only on
Abiko’s teachings.
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Consequently, we determine that Petitioner has shown by a
preponderance of the evidence that Abiko teaches the “messaging
correspondents” limitation.
iii. Visually Modifying Limitation and Numeric Character Limitation
Claim 1 recites “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, 11:22−28. Claims 7 and 13 each recites a substantively identical
limitation. Id. at 11:57−63, 12:39−45. For purposes of our analysis, and to
more particularly address each the corresponding Patent Owner’s arguments,
we break down this limitation into two components. First is the part of the
limitation that focuses on the visual modification of the icon: “visually
modifying at least one displayed icon relating to electronic messaging.” Id.
at 11:23−24 (the “visually modifying” limitation). Second is the part of the
limitation that focuses on the numeric character of the modified icon: “to
include a numeric character representing a count of the plurality of different
messaging correspondents for which one or more of the electronics have
been received and remain unread.” Id. at 11:24−28 (the “numeric character”
limitation). We address each in turn.
Petitioner relies on Ording as teaching the “visually modifying”
limitation. Pet. 38. For instance, Petitioner argues that Ording’s icon is
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visually modified to display a count of the number of new messages
received. Id. (citing Ex. 1103, 9:19−23, 13:12−21). We agree with
Petitioner that Ording teaches visually modifying the icon that relates to
electronic messaging. Under the asserted combination of teachings, we are
persuaded that as Abiko’s device receives new e-mails, Ording’s icon would
visually change to reflect the number of received messages. Indeed, Ording
teaches that the number displayed on the icon is updated and changed to
reflect changes in the status of the inbox. Ex. 1103, 13:12−21.
The claim further requires, however, that the visual modification of
the icon include a specific numeric character. The “numeric character”
limitation focuses, not on new e-mails that remain unread in the inbox, but
rather, on the count of messaging correspondents from which received e-
mails remain unread. Ex. 1101, 11:25−28. For this aspect of the claim,
Petitioner relies on alternative contentions and a combination of teachings
from Ording, Abiko, and Crumlish. First, as to Ording, Petitioner points out
that it is known to include a numeric display, i.e., a count, on the icon.
Pet. 38. Second, as to what that number represents, Petitioner relies on
Abiko alone and a combination of teachings from Abiko and Crumlish.
Abiko, for instance, discloses organizing the received e-mails by sender, as
described above with respect to the “messaging correspondents” limitation.
Id. at 38−42. According to Petitioner, Abiko teaches or suggests creating the
sender table (such as the one in Figures 8 and 10(b) of Abiko) to count the
number of distinct senders, but only for unread messages. Id. And as a
further obviousness contention, Petitioner argues that a person of ordinary
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skill in the art would have combined the teachings of Abiko’s sender table
with Crumlish’s teachings of new messages organized in a distinct “new
mail folder,” to result in a sender table for only unread messages. Id. at
42−49. Whether Abiko alone or in combination with Crumlish teaches a
sender table that counts the number of senders for which messages remain
unread, the Petition asserts that Ording’s icon, displayed on Abiko’s device,
would include that count.
We agree with Petitioner that the combination of Ording and Abiko’s
teachings accounts for the “numeric character” limitation. First, Ording, as
stated above, already teaches that the icon can include a numeric character
that is updated to reflect new messages. Pet. 41; Ex. 1103, 13:12−21. Thus,
the technical feature of displaying and updating a number on a displayed
icon to reflect the status of an e-mail folder is known, as taught by Ording.
The remaining issue is whether it would have been obvious for Ording’s
number to mean something else. That meaning is provided by Abiko’s e-
mail program, which Petitioner contends, and we agree, places a distinct
emphasis on organizing e-mail by senders. Pet. 42 (citing Ex. 1109 ¶ 11).
According to Petitioner, and we agree, Abiko “explains that the menu
information, which includes the number of distinct senders (e.g., Fig. 10(b)),
could be created ‘when a new message is received.’” Id. (citing Ex. 1109
¶ 15) (emphasis omitted). Dr. Chatterjee’s testimony, which we credit in
this regard, is that Abiko’s sender table and menu essentially count the
number of distinct senders, and that this count would have reflected distinct
sender’s unread emails because “new messages generally hold more
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immediate importance to the user because their contents are yet unknown.”
Chatterjee Decl. ¶¶ 95−96. In sum, we find that the combination of
teachings boils down to Abiko’s e-mail program supplying the count of
senders from which unread messages remain in the inbox, and supplies this
count for Ording’s icon to display. The reason to combine is twofold. First,
Abiko teaches sender-focused e-mail organization, which a person of
ordinary skill in the art would have found useful for supplying a count of
senders. Ex. 1109 ¶¶ 11, 15. Second, Dr. Chatterjee testifies on the
importance of focusing on newly received messages, and that based on that
recognition, a person of ordinary skill in the art would have implemented
Abiko’s sender table to report on the unread messages by sender. Chatterjee
Decl. ¶¶ 95−96. See KSR, 550 U.S. at 418 (“it can be important to identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new inventions does.”).
Patent Owner argues that Petitioner fails to show that a person of
ordinary skill in the art “would have modified the type of numeric count
over the icon of Ording’s userbar 600 to instead display the number of
distinct senders of unread messages.” PO Resp. 25. Patent Owner’s first
argument focuses on semantics. Particularly, Patent Owner takes issue with
the Petitioner’s choice of words to explain what “might” have happened, as
opposed to what “would” have happened. Id. at 25−26 (citing Belden Inc. v.
Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)). The argument is not
persuasive. Dr. Chatterjee testifies that “it would have been obvious to adapt
Abiko to identify distinct senders with respect to only received messages
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that were unread (new).” Chatterjee Decl. ¶ 95 (emphasis added). He also
testifies that “[it] would have been obvious to implement Abiko to create the
sender table and menu . . . and thus count the number of distinct senders—
based on received messages that were new (unread).” Id. (emphasis added).
He further testifies that a person of ordinary skill in the art “would have been
motivated” to make the implementation because new messages hold more
immediate importance to users and that a person of ordinary skill in the art
“would have understood that it is important, in any electronic messaging
system, to enable the user to focus on newly received messages as they may
require immediate attention and further action.” Id. ¶ 96 (emphasis added).
None of those statements express a possibility of obviousness (using
“could”), but rather the certainty of it (using “would”). We see no basis by
which to discredit Dr. Chatterjee’s testimony based on arguments that what a
user “might” prefer somehow negates what a person of ordinary skill in the
art “would” be motivated to do.
Patent Owner’s reliance on Belden is also unpersuasive. The Court of
Appeals for the Federal Circuit held that “obviousness concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” Belden, 805 F.3d at 1073 (emphasis omitted). The Belden court
clarified that while a person of ordinary skill in the art is capable and has the
possibility to make the combination, a further step is necessary to show
obviousness—that he would have been motivated to do so. We do not
understand Belden as cautioning against explanations of what a person of
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ordinary skill in the art could be capable of doing. The instant case clearly
presents testimony as to both, what a person of ordinary skill in the art could
have done and would have been motivated to do given the preferences of
users. Thus, Patent Owner’s arguments concerning the Belden case are
unpersuasive.
Patent Owner also argues that Ording’s icon is different from the
displayed icon and that “none of the secondary references bridge this gap by
disclosing any step of visually modifying a displayed icon.” PO Resp. 27
(citing Surati 2d Decl. ¶ 52); see also PO Resp. 51−58 (arguing that neither
Ording nor Abiko teaches the visually modifying and numeric character
limitations and that no single reference of record satisfies the limitation);
Sur-Reply 22−24. Further, according to Patent Owner, Abiko creates a
sender table after launching the e-mail program and displaying the menu on
the screen. Id. at 27−28 (citing Ex. 1109 ¶ 120, Fig. 8). There is no numeric
count displayed over an icon in Abiko, Patent Owner states. Id. We are not
persuaded by these arguments either.
The asserted theory of obviousness is that a combination of teachings
from Ording and Abiko account for the limitation—thus it is not necessary
that a single reference disclose the entire limitation. As stated above, the
technological feature of displaying an icon with a superimposed number that
is visually modified in accordance with an underlying inbox folder is
disclosed by Ording, not Abiko. Abiko contributes the numeric count of the
number of senders with unread messages. Abiko’s menu creation is
evidence that Abiko’s e-mail program has the technical functionality to
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process the received e-mails and organize them by sender. Abiko’s
“number” is merely the tally of the sender table created to focus on the
number of unread e-mails. Specifically, Petitioner proposes Figure 10(b) of
Abiko, highlighted as shown in the reproduced figure below, as showing that
the sender table provides a count of the number of senders.

Figure 10(b) of Abiko, highlighted by Petitioner, illustrates an example of a
user selectable screen showing a “Sender selection by mail volume menu.”
Ex. 1109 ¶ 32; Pet. 39.
Figure 10(b) of Abiko shows that a particular user has received
messages from at least four (4) distinct senders. Id. at 39−40. Abiko further
teaches that the menu may be created to display the number of received
messages that satisfy prescribed conditions. Id. at 42 (citing Ex. 1109 ¶ 11).
And because Abiko discloses that the menu may be created “when a new
message is received,” Abiko’s sender table tallies the new (unread)
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messages, as opposed to all received messages. Id. at 42 (citing Ex. 1109
¶ 15) (emphasis omitted). Thus, Abiko teaches the functionality of tallying
the number of messaging correspondents with unread messages. And
together with Ording’s icon teachings, Abiko’s device would display
Ording’s icon reflecting the numeric count of senders that Abiko tallies.
There is no requirement in the claim that such a display be made without
launching the e-mail program or in any particular sequence. The claim
language is silent as to the underlying e-mail program, how the count is
communicated between the underlying program and the display mechanism
that shows the number on the icon. Ording’s icon is evidence that it was
known to effect a change on the count superimposed on the icon based on
the e-mail inbox status. The additional teaching of which number to display
comes from Abiko. Therefore, Patent Owner’s arguments that Abiko does
not teach visually modifying an icon, or that Abiko’s sender table is
displayed after launch of the e-mail program are not persuasive. What
matters is that Abiko has been shown to have the technical functionality to
process the received e-mails and organize them by sender, and further to
present their unread status. See Pet. 42 (citing Ex. 1109 ¶¶ 11, 15 and
arguing that Abiko’s menu information may present only received messages
that satisfy a prescribed condition, i.e., new messages). Thus the technical
aspects of coming up with the count of senders with unread messages is
taught by Abiko, and Ording teaches that its icon already has the
functionality to change its appearance to display the number. The
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combination of teachings, therefore, accounts for the “visually modifying”
and the “numeric character” limitations.
Patent Owner also argues that Petitioner’s rationale has no factual
support in the record. Recall that Petitioner has proffered Dr. Chatterjee’s
testimony of value in displaying the number of unread messages because of
the immediate importance of unread messages. Chatterjee Decl. ¶¶ 95−96.
Patent Owner argues that there is no documentary evidence that “such a
numeric count might be more valuable when overlaid on a ‘displayed icon.’”
PO Resp. 31. Patent Owner focuses on, as a counterpoint, Abiko’s
disclosure of final row in the sender table of Figure 8, which is not depicted
and does not appear on the small screen display. Id. at 30−31. Figure 8 of
Abiko, annotated by Patent Owner is reproduced below.

Figure 8 is an example of a sender table sorted by mail volume, annotated by
Patent Owner to identify with a red arrow the row of dots. Ex. 1109 ¶ 30;
PO Resp. 31.
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According to Patent Owner, Abiko “actually suggests the final row in
the table . . . is so unimportant compared to the first few rows that it is not
depicted with a number in FIG. 8 and need not initially appear on the small
screen in Abiko’s small phone screen.” PO Resp. 30; see also Sur-Reply
12−14. This argument is not persuasive. As Petitioner argues, and we
agree, the presence of “dots” in the bottom of the column of Figure 8 (and of
Figure 10(b) for that matter) is simply a notation that is understood as
signifying the presence of additional numbered items in the list. Reply 10.
Abiko confirms that the table would contain all the relevant entries sorted
and ranked as indicated, listed sequentially in increasing order. Id. (citing
Ex. 1109 ¶¶ 116, 121; Chatterjee Reply Decl. ¶ 16 (testifying that the
“presence of the ‘dots’ in Figure 8 is thus immaterial; the number (i.e., ‘No’)
associated with the last sender appearing in the list will always correspond to
the total number of distinct senders of messages”)); see also Ex. 1130,
98:6−11, 99:1−19. What is important in Abiko, however, is that the e-mails
are organized in this manner and that the number of senders with unread
emails would have been tallied by such a table, regardless of whether the
table is displayed in full or not.
The importance of Abiko’s count is evidenced by testimony of
Dr. Chatterjee, which we have credited in this regard. That testimony
explains how the combination of teachings would have resulted in
displaying the count using Ording’s icon (Chatterjee Decl. ¶ 93), that the
skill to implement the details of Ording’s icon displaying the count on
Abiko’s device was well within the capability of a person of ordinary skill in
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the art (id. ¶ 94), and that reporting on “new messages” holds more
“immediate importance,” as anyone who has used e-mail knows (id. ¶ 96).
Indeed, Ording already teaches informing the number of unread message(s)
in the inbox as a count on its icon. Abiko’s teaching of sender-focused e-
mail organization merely produces a count that is focused on unread e-mail
from senders, rather than on unread e-mails from the main inbox of Ording.
Patent Owner’s argument that there is no evidentiary support for Abiko’s
numeric count being “valuable” is, therefore, unpersuasive.
Patent Owner proffers another argument (a “third flaw”) concerning
Petitioner’s reliance on Dvorak as “misplaced.” PO Resp. 32−33. Petitioner
relies on Dvorak to “reinforce a motivation to combine.” Pet. 23.
According to Petitioner, Dvorak presents the ordinary user experience of e-
mail as being unwieldy because of “mediocre e-mail organizational tools.”
Id. (citing Ex. 1111, p. 87) (emphasis omitted). We need not rely on Dvorak
as additional evidence of a motivation to combine. Nevertheless, we find
that the evidence does confirm Petitioner’s theory of obviousness and that
Patent Owner’s arguments against it are not persuasive. Dvorak is an article
reporting on the problems of the proliferation of e-mail use at the time (by
January 1999). Ex. 1111, p. 87. Dvorak describes several problems, one of
which is “organization.” Id. In particular, Dvorak explains two pertinent
issues germane to the case at hand: (1) that with Internet mail, there is fear
of nonreceipt and people have multiple e-mail “boxes” to help them sort
through mail by levels of importance; and (2) that “we have poor tools to
sort and organize (or even find) the email we collect.” Id. Dr. Chatterjee
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opines, and we agree, that a person of ordinary skill in the art would have
appreciated these problems and that presenting the total number of new e-
mail messages (as Ording would have done) would not have been
particularly informative. Chatterjee Decl. ¶ 108. For instance, Dr.
Chatterjee poses a scenario in which a user receiving over one hundred e-
mails per day may not find a display of a large number, such as “163,” on
the icon very useful because “it tells the user nothing about whether those
messages came from a few or many different senders.” Id. Considering that
Dvorak teaches the problem of receiving duplicate copies of the same e-
mail, (in an effort to ensure that the recipient actually receives the message)
displaying a count of the number of senders from which e-mails are unread
would provide more manageable information. Id. ¶¶ 108−109. That is,
duplicate e-mails from an incessant sender would not spike the displayed
number, thus conveying different information than if the number of distinct
senders suddenly increased, which may indicate a trend of increased activity
that otherwise would have been unnoticed. Id. In light of this background,
Dr. Chatterjee concludes, and we agree, that a person of ordinary skill in the
art would have appreciated that for certain categories of users, the number of
distinct senders who had sent new messages would have been a valuable
metric to present to the user for notification purposes. Id. ¶ 110.
Patent Owner has argued that testifying that a user “might” prefer
such a sender-centric organization preference is speculative and the product
of hindsight. See PO Resp. 25−27. We do not agree with Patent Owner’s
characterization of the testimony. Nor do we credit Dr. Surati’s testimony in
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this regard. Ex. 2013 ¶¶ 50−51, 56−57. Patent Owner, supported by
testimony from Dr. Surati, argues that Dvorak is merely a list of complaints
with no solution offered and no scenario explained for why a person of
ordinary skill in the art would have been motivated to use a “number of
senders.” PO Resp. 32−33. The arguments, however, fail to address
Dvorak’s teachings in the context of Petitioner’s theory of obviousness.
Dvorak does not provide a solution for the e-mail conundrum of 1999,
but it does reflect the need for e-mail organization tools. See KSR, 550 U.S.
at 418 (stating is will often be necessary to look “the effects of demands
known to the design community or present in the marketplace. . . in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed.”). That provides an additional reason a
person of ordinary skill in the art would have looked for ways to organize e-
mail. One such way is Abiko’s sender-centric approach, which Petitioner
has addressed as filling the needs of certain users. That some users might
not prefer this feature is not relevant. What is relevant is that Petitioner has
proffered a rational explanation, supported by evidence, for why a sender-
centric organization of e-mail for unread messages would have been
advantageous. Not only does Dvorak provide a general motivation to seek
organizational tools for e-mail, but it specifically points out the problem of
missing out on received e-mail and having an avalanche of e-mails in the
inbox as a result of the duplicate-send practice at the time.
It stands reason to conclude that, with Ording already providing user
notification of unread e-mails, Ording’s number would have been further
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refined (as taught in Abiko) to focus on distinct senders rather than all of the
unread inbox e-mails. Furthermore, as Petitioner argues, and we agree, in
any user interface design there are tradeoffs, advantages and disadvantages,
such that a particular design decision might be preferred by some category
of users, but not others. Reply 10. The advantage of organizing received e-
mail by sender is already a recognized benefit in Abiko. See Ex. 1109 ¶ 2
(facilitating user utilization of information identifying the senders of
received messages), ¶ 5 (explaining the manual process to list e-mails from a
particular sender), ¶ 6 (stating the need for a message communication device
that facilitates user utilization of information identifying the senders of
received messages), ¶ 8 (providing for automatic creation of menu
information that identifies received message senders as “easy for the user to
utilize”), ¶ 11 (identifying senders may include all received messages or
only received messages that satisfy prescribed conditions). Ording already
teaches user notification via icon display of the number of unread e-mail
messages. Ex. 1103, 13:12−21. Dvorak is added as evidence for the
undisputable need for better e-mail organization, in addition to noting many
other problems associated with burgeoning e-mail use.
We agree with Petitioner (Reply 10) that weighing tradeoffs is not an
obstacle to a finding of obviousness here, especially in this case where there
is no competing disadvantage to implementing one solution: Abiko’s
number of senders of unread e-mails. But see Sur-Reply 14−16 (Patent
Owner arguing that Petitioner did not show sufficiently what tradeoffs a
person of ordinary skill in the art would have faced). Patent Owner,
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nevertheless, urges us to find Petitioner’s reliance on Dvorak insufficient as
if Dvorak presented only a Hobbesian choice: either resort to discipline to
conquer the inbox or live with the problems as stated. PO Resp. 33. We do
not agree with Patent Owner that Petitioner had to explain why a person of
ordinary skill in the art would not resort to discipline or accept that no tool
can easily fix the problem. Id. The extent to which Dvorak does not
propose a comprehensive solution to the e-mail problems addressed in the
article is not persuasive evidence that a person of ordinary skill in the art
would not have recognized that there were solutions to the stated problems.
In any event, as far as tradeoffs go, even if Abiko’s count was but a partial
solution to the organization failures addressed in Dvorak, we find that such a
contribution would not have any drawbacks that would militate against
implementing the teachings of Abiko’s count as asserted by Petitioner. See
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000)
(holding that the Board must weigh the benefits and drawbacks of the
modification against each other, to determine whether there would be a
motivation to combine). Thus, we conclude that Petitioner’s evidence
concerning Dvorak is not speculative, as Patent Owner argues.
Nor do we find that Petitioner’s theory of obviousness is the product
of hindsight. We recognize the danger of using the disclosed invention as a
roadmap to fill gaps in the prior art. KSR, 550 U.S. at 421. But the evidence
presented here is far from an exercise in hindsight. Petitioner has identified
in Ording, Abiko, and Dvorak, all the teachings necessary to meet the recited
limitations together with evidence of a market need. Dr. Chatterjee’s
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testimony further explains the combination of teachings in detail and
reasonably explains, with support in Ording, Abiko, and Dvorak, how the
teachings fit together like pieces of the puzzle without resorting to
knowledge gleaned only from the ’634 patent. Hindsight presents a problem
when the invention in dispute is the sole source of the knowledge of the
invention or required teachings of claim elements. InTouch Technologies,
Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1351 (Fed. Cir. 2014) (“It
appears that [the expert] relied on the . . . patent itself as her roadmap for
putting what she referred to as pieces of a ‘jigsaw puzzle’ together.”); W.L.
Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir.
1983) (“To imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references of record convey
or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used
against its teacher.”). The knowledge supplied through a reading of Ording,
Abiko, and Dvorak is sufficient to put the teachings together as explained by
Dr. Chatterjee, the testimony of whom we have credited in explaining the
reasoning for the combination of teachings. There is no evidence or even a
hint that the ’634 patent is the sole source of the knowledge for how the
teachings in Ording and Abiko would have been combined to meet the
limitations of the independent claims of the ’634 patent. Accordingly, we
are not persuaded by Patent Owner’s argument about hindsight.
Lastly, Patent Owner argues that Petitioner’s “obvious to try”
reasoning is legally flawed and is unsupported by sufficient evidence. PO
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Resp. 33. We need not discuss the “obvious to try” rationale because we
have not relied on it in our analysis.
iv. Conclusion
Based on the evidence and the arguments presented on the full record
before us, we determine that Petitioner has shown by a preponderance of the
evidence that claims 1, 7, and 13 are unpatentable as obvious over Ording
and Abiko, and Dvorak. We recognize that Petitioner proffers an alternative
contention that a further combination of teachings with those of Crumlish
further renders obvious the independent claims. However, because our
analysis under the teachings of Ording and Abiko (and further with Dvorak)
is dispositive of the challenge to the independent claims, we do not reach
whether the claims would also have been unpatentable under the
combination of Ording, Abiko, and Crumlish.
6. Dependent Claims 4, 10, and 16
Claim 4 depends from claim 1 and further recites “the at least one
icon relating to electronic messaging being selectable to invoke an electronic
messaging application.” Ex. 1101, 11:37−39. Claims 10 and 16, depend
from claims 7 and 13, respectively, and recite substantively identical
limitations. Id. at 12:12−14, 12:59−61.
As teaching this limitation, Petitioner relies on Ording’s disclosure of
the icon that relates to an e-mail program. Pet. 49−50 (citing Ex. 1103,
14:20−26). Ording teaches that its tiles or icons, upon the user single-
clicking, launch the application. Id. We agree that Ording teaches the
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limitation recited in claim 4 by disclosing that its icon is selectable because
the user can click on it to launch the underlying application, which in the
combination of teachings is the e-mail program of Abiko. Patent Owner
does not independently argue this claim limitation.
We determine that Petitioner has shown by a preponderance of the
evidence that claims 4, 10, and 16 are unpatentable as obvious over the
combination of teachings from Ording, Abiko, and Dvorak.
7. Dependent Claims 5, 11, and 17
Claim 5 depends from claim 1 and further recites “displaying on the
graphical user interface an identifier of the correspondent from whom at
least one of the plurality of messages was received.” Ex. 1101, 11:40−43.
Claims 11 and 17 each depends from claims 7 and 13 respectively, and
recite substantively similar limitations. Id. at 12:15−20, 12:62−67 (adding
memory comprising machine-readable instructions which, when executed,
cause the wireless communication device to visually modify the graphical
user interface as recited).
Petitioner relies on Abiko as teaching this limitation. In particular,
Petitioner explains that Abiko’s Figure 10(b) shows the names of each of the
senders and that the user can use a cursor to select the sender name and the
correlated number of emails from that sender. Pet. 51−52 (Ex. 1109 ¶ 122,
Fig. 10(b); Chatterjee Decl. ¶ 115). Patent Owner does not argue these
claims.
Based on the evidence, arguments presented, and on the full record,
we determine that Petitioner has shown by a preponderance of the evidence
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that claims 5, 11, and 17 are unpatentable as obvious over the combination
of Ording, Abiko, and Dvorak.
8. Dependent Claims 6, 12, and 18
Claim 6 depends from claim 1 and further recites “displaying on the
graphical user interface at least one preview of content associated with at
least one of the received electronic messages.” Ex. 1101, 11:44−46. Claims
12 and 18 each depends from claim7 and 13, respectively, and recite
substantively similar subject matter. Id. at 12: 21−26, 13:1−14:2.
Petitioner argues that neither Ording nor Abiko discloses a “preview”
as recited in claims 6, 12, and 18. Pet. 56. As teaching this feature,
Petitioner relies on McPherson. Id. McPherson is a book entitled “How to
do Everything With Your Pocket PC.” Ex. 1112. Chapter 21 of the book is
dedicated to instructions on how to send and receive instant messages. Id.
at 411.3 Petitioner points out that McPherson describes a notification bubble
for new messages in the MSN Messenger platform, which was at the time a
popular instant messaging product. Pet. 56. Such a notification bubble is
shown in the Figure shown below, reproduced from McPherson:

3 Citations to McPherson refer to pagination in the original.
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Figure of “Notification Bubble” Display discussed in Chapter 21 of
McPherson. Ex. 1112, 170.
McPherson says that a message from a person with whom you are not
chatting or for whom you don’t have the chat window open will appear in a
notification bubble, shown in the Figure above. Ex. 1112, 415. The bubble
displays for about 30 seconds. Id. In the example shown, a new message
from “Andy Sjostrom” shows in the notification bubble with the message,
“hi frank!” Id. Petitioner argues that McPherson’s notification bubble is a
message preview. Pet. 57. The preview shows the content of the message.
Id.
Petitioner further argues that it would have been obvious to combine
the notification bubble teaching of McPherson with the already described
teachings of Ording and Abiko. Id. at 59−61. In particular, Petitioner
argues that the notification bubble provides a quick and convenient new
message notification. Id. at 60 (citing Chatterjee Decl. ¶ 142). Such a
notification bubble, according to Petitioner, and testified to by Dr.
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Chatterjee, would have enhanced the icon and numeric value by providing
the user with a preview of the message that allows the user to assess the
content, and thus the importance of, the newly-received message. Id.
Petitioner further argues that a notification bubble is a more efficient use of
space because it does not require the user to open the underlying messaging
application window. Id. (citing Chatterjee Decl. ¶ 143; Ex. 1112, 415).
Patent Owner presents three arguments against the reasons to
combine. First, Patent Owner argues that a person of ordinary skill in the art
would have appreciated the differences between e-mail and instant
messaging to reject the modifications asserted by Petitioner. PO
Resp. 58−60. Patent Owner points out that McPherson includes a chapter
devoted to e-mail interfaces, Chapter 20, which was not included in the
excerpt Petitioner provided. PO Resp. 58−59 (citing Ex. 2016). According
to Patent Owner, there are fundamental differences between e-mail on a
mobile device in 2003, described in Chapter 20 of McPherson, and the
instant messaging application mentioned in Chapter 21 of McPherson. Id. at
59 (citing Surati 2d Decl. ¶ 80). The fundamental differences that Patent
Owner focuses on are the “real-time, two-way conversations” of instant
messaging being faster than e-mail. Id. According to Patent Owner, the
notification bubble of McPherson’s instant messenger is an alert that
facilitates the real-time, two-way conversation option and provides a way to
engage with that sender. Id. at 59−60 (citing Ex. 1112, 145). Patent Owner
characterizes the notification bubble of McPherson as not applicable to a
conventional e-mail program for this reason, and argues that a person of
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ordinary skill in the art would have not been prompted to make
modifications to implement McPherson’s teachings as Petitioner has alleged.
Id. at 60 (citing Surati 2d Decl. ¶ 81).
As for the second argument, Patent Owner contends that Petitioner
failed to meet its “heightened burden” of showing a motivation as to why a
person of ordinary skill in the art would have been prompted to combine the
references. Id. at 60−61. Patent Owner takes issue with Petitioner’s
assertion that the combination with McPherson’s teachings of the
notification bubble would have been “straightforward.” Id. at 61. As for the
third argument, Patent Owner argues that Petitioner’s proposed combination
is a “hindsight modification” that fails to account for McPherson’s
disclosure of e-mail notifications, which are separate and distinct from the
instant messaging notifications. Id. at 61−62.
We are not persuaded by any of Patent Owner’s arguments. As to the
first argument, we are not persuaded by the argument that a person of
ordinary skill in the art would not have turned to the notification bubble
embodiment for use with e-mail. The notification bubble, although
disclosed in connection with instant messaging in Chapter 21 of McPherson,
is also mentioned in connection with e-mail in Chapter 20 of McPherson.
McPherson states that “[i]f a new message arrives while the device is
connected, Inbox will notify you. You will see a notification bubble or hear
a sound, unless notification sounds are turned off.” Ex. 2016, 400. This
disclosure, noted by Petitioner in Reply, directly responds to and contradicts
Petitioner’s assertions that a notification bubble would have been useful only
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in real-time, two-way conversations like that of instant messaging, but not
for e-mail. See Reply 21−22 (citing Chatterjee Reply Decl. ¶¶ 38−39).
McPherson uses the same “notification bubble” for both the instant
messaging and e-mail descriptions, thereby informing us that there is no
reason a person of ordinary skill in the art would have disregarded the
“notification bubble” example in Chapter 21 as not applicable to e-mail.
We are further persuaded by Dr. Chatterjee’s testimony, which we
credit, that a user interface for instant messaging and e-mail are analogous,
as they both involve senders, recipients, message content, notifications, and
effective presentation screens. Chatterjee Reply Decl. ¶ 38. Dr. Chatterjee
opines, and we agree, that the use of a “notification bubble” in McPherson’s
e-mail description confirms that there is a common need to provide a user
interface for notifying the user of the receipt of a new message. Id. ¶ 39.
We are further persuaded that this testimony addresses Patent Owner’s
argument regarding the alleged fundamental differences between e-mail and
instant messaging. The “real-time” manner in which the users communicate
with instant messaging does not negate the technical feasibility or
desirability of a notification bubble for both e-mail and instant messaging. It
may be that the notification bubble may have further uses for instant
messaging, such as by allowing the user to reply right away. However, the
notification bubble, at its most basic, is there to give the user a preview of
the message received, which is applicable to both e-mail and instant
messaging, regardless of whether the communication is in “real-time” or not.
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Patent Owner contends that the testimony of Dr. Chatterjee introduces
“new” arguments and evidence. Sur-Reply 21−25. Although the testimony
may be “new,” it is entirely proper to discuss the applicability of the
“notification bubble” as described in Chapter 20, because Patent Owner
opened the door to that evidence in its Response. PO Resp. 58−61 (arguing
that somehow the omission of Chapter 20 was improper and that it proved
the opposite of what Petitioner was alleging); but see Anacor Pharm., Inc. v.
Iancu, 889 F.3d 1372, 1380-81 (Fed. Cir. 2018) (emphasizing that in an inter
partes review introduction of new evidence “is to be expected” as long as
there is notice of the evidence and an opportunity to respond, and that, after
the petition, it is proper to present new evidence that is “a legitimate reply to
evidence introduced by the patent owner”) (internal citations omitted)
(emphasis added).
We further find Patent Owner’s second argument unpersuasive.
Although Petitioner appears to state briefly that the combination of
McPherson’s notification bubble would have been “straightforward,” such a
statement was not made in isolation. See PO Resp. 61 (arguing that a
rationale of “straightforward” combination is insufficient to meet the
“heightened burden” of Petitioner); Pet. 59. We see that statement in
context of Petitioner’s argument that the references at issue are analogous in
how they focus on effective use, organization, and presentation of e-mail to
users. Id. The “straightforward” conclusion is also presented in connection
with the explanation of how and why the combined elements would result in
the recited “preview.” For instance, Petitioner argues, supported by Dr.
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Chatterjee’s testimony, that the notification bubble is a quick and convenient
new message notification that improves the general notification of the icon
and numeric count by allowing the user to see a preview of the message. Id.
at 60 (citing Chatterjee Decl. ¶ 142). Further advantages and motivations
are provided, such as efficient use of screen space and providing additional
options to interact with the sender. Id. Accordingly, in context, Petitioner
has provided far more than a conclusory “straightforward” explanation as
the sole reason to combine. Patent Owner’s arguments to the contrary are
unpersuasive.
Patent Owner further argues, in connection with its second argument,
that McPherson’s e-mail program was not shown to include a “notification
bubble,” because only instant messages include a “notification bubble.” Id.
(citing Surati 2d Decl. ¶ 82). We reiterate here that Patent Owner’s
argument is inconsistent with McPherson’s disclosure that the e-mail system
of Chapter 20 also included a notification bubble. Such a notification is
further explained in Chapter 21 with regard to instant messaging, but does
not negate the disclosure that e-mail messages, when received, would have
invoked a notification bubble as well.
As for Patent Owner’s third argument, we are unpersuaded that
hindsight has motivated the asserted combination with McPherson. See PO
Resp. 61−62. Patent Owner argues that McPherson describes an e-mail
solution that provides certain alerts of incoming e-mail, which would have
been discarded in favor of the notification bubble, for no reason other than
hindsight. Id. We do not agree because as stated above, the record shows
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that McPherson contemplated using a notification bubble to alert users of
incoming new e-mail. There is an apparent reason to choose a notification
bubble for new e-mail when the record expressly discloses its use and it
would have been beneficial as described above. This is not a case in which
the notification bubble supplants all other alerts that may be possible—and
neither has Petitioner asserted so. We are mindful that in dealing with an
open-ended claim, there may be additional, unrecited features that do not
affect the scope of the claim. For instance, the claim is met by the showing
of a “preview” regardless of whether other alerts or features also alert the
user of a new message. Accordingly, the fact that McPherson provides for
other e-mail alerts does not negate its disclosure of providing the notification
bubble (read here “preview”) for an electronic message that the claim
requires.
Finally, we recognize that Patent Owner alleges hindsight in the
combination with McPherson. We do not agree. As stated above, a
hindsight challenge is viable when the patent-at-issue disclosure is the sole
source of the knowledge alleged to have been known at the time of the
invention. See W.L. Gore, 721 F.2d at 1553. That is not what we have here
as explained above. McPherson clearly teaches using a notification bubble
with both e-mail and instant messages. The benefit of a notification bubble
has been explained sufficiently and supported by the credible expert
testimony of Dr. Chatterjee as stated above. Accordingly, Patent Owner’s
arguments of hindsight reconstruction are not persuasive.
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Based on the foregoing and after review of the evidence and the
parties’ arguments we determine that Petitioner has demonstrated by a
preponderance of the evidence that claims 6, 12, and 18 are unpatentable as
obvious over the combination of Ording, Abiko, Dvorak, and McPherson.
9. Conclusion
We have addressed above each challenged claim (claims 1, 4−7,
10−13, and 16−18) of the ’634 patent. We recognize that Petitioner presents
additional grounds for the challenge claims. Because we have determined
for all challenged claims that Petitioner has demonstrated unpatentability by
a preponderance of the evidence based on Ording, Abiko, and Dvorak
(claims 1, 4, 5, 7, 10, 11, 13, 16, and 17) and over Ording, Abiko, Dvorak,
and McPherson (claims 6, 12, and 18), we need not reach Petitioner’s other
challenges as to these same claims. Consistent with 35 U.S.C. § 318, this
Final Written Decision therefore disposes of all patent claims challenged by
Petitioner in IPR2019-00925. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359
(2018) (holding a petitioner “is entitled to a final written decision addressing
all of the claims it has challenged”); Boston Sci. Scimed, Inc. v. Cook Grp.
Inc., Nos. 2019-1594, -1604, -1605, 2020 WL 2071962, at *4 (Fed. Cir. Apr.
30, 2020) (non-precedential) (recognizing that the “Board need not address
issues that are not necessary to the resolution of the proceeding” and, thus,
agreeing that the Board has “discretion to decline to decide additional
instituted grounds once the petitioner has prevailed on all its challenged
claims”).
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III. CONCLUSION4
In summary:
Claims 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 4, 5, 7,
10, 11,
13, 16,
17
103(a) Ording, Abiko,
Dvorak
1, 4, 5, 7, 10,
11, 13, 16, 17

6, 12, 18 103(a) Ording, Abiko,
Dvorak,
McPherson
6, 12, 18
1, 4, 5, 7,
10, 11,
13, 16,
17
103(a) 5 Ording, Abiko,
Crumlish, Dvorak,
Strom
1, 4, 5, 7, 10,
11, 13, 16, 17

4 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).”

5 As explained above, we do not reach this ground because the challenge
based on the Ording-Abiko-Dvorak ground is dispositive of the same
challenged claims. See SAS, 138 S. Ct. at 1359.

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Claims 35
U.S.C. §
Reference(s)/Basis Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
6, 12, 18 103(a) 6 Ording, Abiko,
Crumlish, Dvorak,
McPherson, Strom
6, 12, 18
Overall
Outcome
1, 4−7, 10−13,
16−18

6 As explained above, we do not reach this ground because the challenge
based on Ording-Abiko-Dvorak-McPherson ground is dispositive of these
same challenged claims. Id.
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IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 4−7, 10−13, and 16−18 of the ’634 patent
have been proven to be unpatentable;
FURTHER ORDERED because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Heidi Keefe
Andrew Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com

For PATENT OWNER:

Michael T. Hawkins
Nicholas Stephens
Kenneth W. Darby
Craig A. Deutsch
Kim Leung
FISH & RICHARDSON P.C.
hawkins@fr.com
nstephens@fr.com
kdarby@fr.com
deutsch@fr.com
leung@fr.com

Ogi Zivojnovic
Sam Stake
James M. Glass
QUINN EMANUEL URQUHART, & SULLIVAN, LLP
ogizivojnovic@quinnemanuel.com
samstake@quinnemanuel.com
jimglass@quinnemanuel.com