BlackBerry Limited

Patent Trials and Appeals Board

Sep 1, 2020

IPR2019-00706 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 35
571-272-7822 Date: September 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.
____________

IPR2019-00706
Patent 9,349,120 B2
____________

Before MICHAEL R. ZECHER, MIRIAM L. QUINN,
and AARON W. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

JUDGMENT
Final Written Decision
All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
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TABLE OF CONTENTS
I. INTRODUCTION ................................................................................ 1
A. Background ................................................................................ 1
B. Related Matters .......................................................................... 1
C. The ’120 Patent .......................................................................... 2
D. The Challenged Claims .............................................................. 3
E. Evidence Relied Upon ................................................................ 5
1. Dallas ............................................................................... 5
2. Kent .................................................................................. 7
3. Brown ............................................................................... 7
4. LeBlanc ............................................................................ 7
5. Bott ................................................................................... 8
6. Mann ................................................................................ 8
F. Grounds of Unpatentability ........................................................ 8
II. ANALYSIS .......................................................................................... 9
A. Level of Ordinary Skill in the Art .............................................. 9
B. Claim Construction––“Notification” ......................................... 9
1. The Claim Language ...................................................... 11
2. The Written Description ................................................ 12
3. The Prosecution History and Other
Intrinsic Evidence .......................................................... 15
4. Extrinsic Evidence ......................................................... 16
5. The District Court Construction .................................... 16
6. Subjectivity .................................................................... 18
7. Conclusion ..................................................................... 20
C. Obviousness ............................................................................. 20
1. The Independent Claims ................................................ 21
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a. Patent Owner Arguments .................................... 23
i. Notifications .............................................. 23
ii. Teaching Away ......................................... 25
iii. Manner of Display ..................................... 27
iv. Silencing in LeBlanc ................................. 28
v. Displaying ................................................. 29
2. The Dependent Claims................................................... 31
III. CONCLUSION .................................................................................. 35
IV. ORDER ............................................................................................... 36

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I. INTRODUCTION
A. Background
Facebook, Inc., Instagram, LLC, and Whatsapp Inc. (collectively,
“Petitioner”) filed a Petition requesting inter partes review of claims 1–3, 5,
7–11, 13–15, 17, 19–22, and 24 of U.S. Patent No. 9,349,120 B2 (Ex. 1001,
“the ’120 patent”). Paper 2 (“Pet.”). Blackberry Limited (“Patent Owner”)
filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
On September 4, 2019, we instituted an inter partes review of claims
1–3, 5, 7–11, 13–15, 17, 19–22, and 24. Paper 9 (“Decision”), 18. Patent
Owner then filed a Patent Owner Response (Paper 16, “PO Resp.”),
Petitioner filed a Reply (Paper 18, “Pet. Reply”), and Patent Owner filed a
Sur-Reply (Paper 21, “PO Sur-Reply”). An oral hearing was held on June
10, 2020, by video only, and a transcript of the hearing is included in the
record (Paper 34, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we determine that Petitioner has shown by
a preponderance of the evidence that claims 1–3, 5, 7–11, 13–15, 17, 19–22,
and 24 of the ’120 patent are unpatentable.
B. Related Matters
The parties identify BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-
01844-GW-KS (C.D. Cal.), as a related matter. See Pet. 2; Patent Owner
Mandatory Notices (Paper 5) 2. The District Court issued a claim
construction ruling in that case on April 5, 2019, a copy of which has been
filed as Exhibit 1020. The case is now stayed. See Ex. 1029.
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C. The ’120 Patent
The ’120 patent is directed to “[m]ethods, systems, and computer
programming products . . . for silencing message threads.” Ex. 1001,
Abstract. The general scheme is illustrated in Figure 6 of the patent, which
is reproduced in part below.

Figure 6 is a “schematic flow diagram of an
example method for receiving a message.” Ex. 1001 2:1–2.
The method “can begin at 602 where a message is received which is
addressed or otherwise identified in such a way as to be associated with an
inbox.” Ex. 1001 14:5–7. “At 604, it may be determined whether or not the
message relates to a new matter, such as a new topic of conversation or a
new activity.” Id. at 14:19–21. “If the message does relate to a new matter,
at 606, a new message thread is started” and “[a]t 608, the user is notified of
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the message according to any currently-enabled notification settings, as
described above.” Id. at 14:32–35.
“If the message does not relate to a new matter, at 610, a thread to
which the message belongs may be determined” and “[a]t 612, it [may be]
determined whether or not the message thread to which the message belongs
has been silenced by the user.” Ex. 1001 at 14:36–38, 44–46. If the thread
has been silenced, “no notification may be activated and at 614 the message
may appear ‘greyed out’ or other diminished fashion when displayed with
the inbox contents.” Id. at 14:49–52. If, on the other hand, the thread has
not been silenced, “then at 616 the user may be notified of the incoming
message according to any currently-enabled notification settings.” Id. at
14:52–55.
The ’120 patent explains that the “[n]otifications could include, for
example, auditory user alerts such as ring tones, visual alerts such as
flashing lights or pop-ups and physical alerts such as vibrations.” Ex. 1001,
1:30–32; see also id. at 9:6–8.
The ’120 patent also explains that “[m]essage threads which have
been silenced may be marked or flagged as silenced in memory 300 by, for
example, setting a flag or other indicator in a data record associated with the
message thread.” Ex. 1001, 9:35–38.
D. The Illustrative Claim
Independent claim 1 is to a system for silencing notifications,
independent claim 13 is to a corresponding method, and independent claim
24 is a corresponding Beauregard claim. Claim 1 thus reflects the subject
matter addressed in this proceeding:
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1. A communication system configured to silence notifications for
incoming electronic messages, the system comprising a data
processor, non-transitory media readable by the data processor and a
communications subsystem:
the communication subsystem adapted for receiving the incoming
electronic messages; and
the non-transitory media readable by the data processor comprising
coded program instructions adapted to cause the processor to:
receive a selected message thread for silencing;
in response to receiving the selected message thread, activate a flag
stored in the non-transitory media in association with the
selected message thread, wherein the flag indicates that the
selected message thread has been silenced;
determine that a new incoming electronic message is associated
with the selected message thread;
determine that the selected message thread has been flagged as
silenced using the flag stored in the nontransitory media;
override a currently-enabled notification setting to prevent a
receipt notification pertaining to new incoming electronic
messages associated with the selected message thread from
being activated; and
display the new incoming electronic message in an inbox together
with any message thread not flagged as silenced, while
silencing any further notifications pertaining to receipt of the
new incoming electronic message, wherein the new incoming
message thread flagged as silenced is displayed in the inbox in
a different manner than any message thread not flagged as
silenced.
Ex. 1001, 16:–17:11.
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E. Evidence Relied Upon
Petitioner relies on the following references:
Reference Exhibit No.
Alastair Dallas, Using Collabra Share 2 (Que
Corporation 1995) (“Dallas”)
1003
Mark R. Brown, Using Netscape Communicator 4 (Que
Corporation 1997) (“Brown”)
1004
Jeff Kent, C++ Demystified: A Self-Teaching Guide
(McGraw-Hill/Osborne 2004) (“Kent”)
1010
Ed Bott, Using Microsoft Windows Millennium Edition
(Que Corporation 2001) (“Bott”)
1007
Bill Mann, How to Do Everything with Microsoft Office
Outlook 2007 (The McGraw-Hill Companies 2007)
(“Mann”)
1011
Dee-Ann LeBlanc, Using Eudora (Que Corporation 2d
ed. 1997) (“LeBlanc”)
1005
Petitioner also relies on a Declaration of Sandeep Chatterjee, Ph.D,
filed as Exhibit 1002. Patent Owner relies on a Declaration of Dr. Hugh M.
Smith, filed as Exhibit 2003.
1. Dallas
Dallas is a user guide for a computer application called Collabra Share
2. See Ex. 1003, 28. Figure 1.9 of the reference is reproduced below.
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Figure 1.9 is a screenshot of
a Collabra Share 2 window.
The Collabra Share 2 window shown in Figure 1.9 includes a box
with categories on the top left, a box with hierarchically arranged items from
the selected category on the top right, and box with the contents of the
current item at the bottom. The items may include messages. See, e.g., Ex.
1003, 53, 192–193.
Dallas explains that red flags applied to the category and thread icons
“lead [the user] directly to [a] new document, which has a sparkle on its icon
and has a different color title to indicate that [the user has not] read it yet.”
Ex. 1003, 55. Dallas also explains that Collabra Share 2 allowed a user to
select the color of the font used for new items. See id. at 169 (“To change
the color of unread documents, click the Browse Colors button on the
Miscellaneous tab of the Properties, General dialog box.”).
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Dallas further describes a Collabra Share 2 option called “Ignore,”
that would allow a user “[t]o stop seeing new documents in a particular
thread or category.” Ex. 1003, 195. According to Dallas, “[t]hreads (but not
categories) are automatically collapsed when you ignore them,” but “you can
expand them again, if you like.” Id. If the user were to expand the collapsed
ignored thread, they “[would] still see the documents [they] ignored, but no
documents in ignored threads or categories [would] appear new.” Id. In
other words, new documents or messages in ignored threads would not have
the user selected color font or the sparkle.
2. Kent
Kent is a self-teaching guide to the programming language C++. It
describes the use of Boolean variables as flags. See, e.g., Ex. 1010, 131.
3. Brown
Brown is a user guide for Netscape Communicator 4 that includes a
description of a related email application called Messenger. See Ex. 1004,
34–36.
4. LeBlanc
LeBlanc is a user guide for an email application called Eudora. See
Ex. 1005, 20. In pertinent part, it describes how Eudora included a dialog
box that allowed the user to select the method(s) by which they would be
notified of new email, the options including alerts, flashing icons, and
sounds. See Ex. 1005, 24–25.
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5. Bott
Bott is a user guide for Windows ME. See Ex. 1007, 1. Petitioner
cites Bott for its disclosures concerning the use of a wireless device. See
Pet. 12, 58–60.
6. Mann
Mann is a book titled How to Do Everything with Microsoft Office
Outlook 2007. See Ex. 1011, 1. Petitioner cites Mann for its disclosure of
displaying messages in a message thread even when the thread is collapsed.
See Pet. 12, 61–64.
F. Grounds of Unpatentability
This trial was instituted on the following grounds:
References/Basis 35 U.S.C. § Claim(s)
Dallas, Brown, Kent 103(a)
1–3, 5, 7, 8, 10,
13–15, 17, 19–21,
24
Dallas, Brown, Kent, Bott 103(a) 9
Dallas, Brown, Kent, Mann 103(a) 11, 22
Dallas, Brown, Kent, LeBlanc 103(a)
1–3, 5, 7, 8, 10,
13–15, 17, 19–21,
24
Dallas, Brown, Kent, LeBlanc, Bott 103(a) 9
Dallas, Brown, Kent, LeBlanc,
Mann 103(a) 11, 22
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II. ANALYSIS
We discuss below the level of skill in the art, claim construction, and
the patentability of claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24.
A. Level of Ordinary Skill in the Art
Petitioner asserts that a person of ordinary skill in the art “would have
possessed at least a bachelor’s degree in software engineering, computer
science, or computer engineering, or electrical engineering with at least two
years of experience in software application development, including
development of applications for messaging (or equivalent
degree/experience).” Pet. 5 (citing Ex. 1002 ¶¶ 12–15).
Because Patent Owner “does not dispute the level of ordinary skill
proposed by Petitioner” (PO Resp. 10), and because we find it generally
consistent with the disclosures of the asserted prior art and the ’120 patent,
we adopt Petitioner’s formulation.
B. Claim Construction––“Notification”
In an inter partes review for a petition filed on or after November 13,
2018, such as this one, 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 would have been 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 [a] disputed claim limitation, we look
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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, however, a
“heavy presumption,” that claim terms have their ordinary and customary
meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
Cir. 2002) (citation omitted).
The only term the parties presently dispute1 is “notification.” At
institution, we adopted the District Court’s construction of that term––“some
form of visual, auditory, or physical cue to draw attention to an incoming
message that would not otherwise have been noticed, at the time of the
incoming message”––but expressed concerns about how one might evaluate
the “that would not otherwise have been noticed” portion of the
construction, and suggested that the parties may wish to address that issue
during the trial. See Decision 8–9.
Patent Owner argues that we should maintain the District Court’s
construction, but, as discussed below, also argues that “notification” (a) does
not include display characteristics of a message, (b) is limited to “attention-
grabbing ‘alerts’ or ‘alarms,’” and (c) must be something that “bothers” a
user. Petitioner agrees that “notification” should be construed to mean
“some form of visual, auditory, or physical cue to draw attention to an
incoming message at the time of its receipt,” but would omit the “that would
not otherwise have been noticed” language from the District Court’s

1 The Petition also proposed that we construe “flag,” but the parties have
resolved any dispute regarding that term (see PO Resp. 11; Decision 8) and
Patent Owner does not dispute that the asserted combinations teach flags.
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construction. Reply 2−4. We address Patent Owner’s arguments (a)–(c) in
the course of our discussion, but focus on the specific dispute presented by
the competing constructions, which is the propriety of including “that would
not otherwise have been noticed” in the construction.
1. The Claim Language
We start with the plain language of claim 1 itself, which is directed to
a “communication system configured to silence notifications for incoming
electronic messages,” which “override[s] a currently-enabled notification
setting to prevent a receipt notification pertaining to new incoming
electronic messages associated with the selected message thread from being
activated” and “silenc[es] any further notifications pertaining to receipt of
the new incoming electronic message.” We see nothing in the claim’s use of
the term “notification” that tends to support either including or not including
the disputed language.
We do, however, observe that claim 1, as a whole, is directed to a
“communication system” with a processor that silences notifications. This
suggests that a “notification” is simply a feature of the software that
indicates the presence of a new message and is not dependent on the user’s
presence or absence, attention, or subjective likes or dislikes. This weighs
against inclusion of the disputed language in the construction.
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Citing claim limitation 1[h]2 and the corresponding description, Patent
Owner argues that the patent “distinguishes between ‘notifications’ and
display characteristics of a message.” PO Resp. 15; see Sur-Reply 4;
Ex. 2003 ¶¶ 57–58. We fail to see how this bears on the question of whether
to include “that would not otherwise have been noticed” in the construction.
We also disagree with Patent Owner’s analysis, because we fail to see how
the fact that messages in a silenced thread will be, for example, “grayed out”
means that no aspect of any message display can be a notification. We see
no reason why, for messages in non-silenced threads, the user could not be
notified of a new message by, for example, bold text, blue text, flashing text,
or the like. Contrary to Patent Owner’s arguments, the ’120 patent does not
draw a line between “notification” and “manner of display.”
2. The Written Description
We next consider the written description, which explains the
“notification module” as follows, with pertinent parts italicized:
Memory 300 can also include notification module(s) 310 for
providing notifications to user(s) of a wireless device 102. Such
notifications could include, for example, auditory user alerts
such as ring tones, visual alerts such as flashing lights or pop-
ups, and/or physical alerts such as vibrations. . . . When a new
message is received by communication subsystem 112,
microprocessor 140 may store the message in memory 300 and
signal notification module 310 to indicate the arrival of the new
message in any one or more of a very wide variety of ways.

2 See Ex. 1001, 18:4–6 (“[h] wherein the new incoming message thread
flagged as silenced is displayed in the inbox in a different manner than any
message thread not flagged as silenced”); 14:49–52 (“If the message thread
has been silenced by the user then no notification may be activated and . . .
the message may appear ‘greyed out’ or other diminished fashion when
displayed with the inbox contents.”).
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Notification module 310 may comprise one or more notification
settings which may indicate how and when notifications should
be activated. For example, a user of wireless device 102 may
enable a notification setting which will cause a sound to be
emitted each time a new communication is received. Other
notification settings may indicate that a user only wishes to
receive auditory notifications for specific types of
communications, such as telephony communications. In other
circumstances, a user may enable a notification setting which
may prevent any auditory notifications from being emitted for
any type of communication while the setting is enabled. Those
of skill in the art will recognize that there may be many different
types of notification settings, including visual alarms (including,
for example, pop-up messages, blinking lights of one or more
colors, frequencies, etc.) and/or physical alarms such as
vibrators or shakers.
Ex. 1001, 9:4–31. This explanation of what things may be notifications is
entirely open-ended––e.g., “to indicate the arrival of the new message in any
one or more of a very wide variety of ways.” Id. at 9:14–15. And we do not
find, in this passage or elsewhere in the ’120 patent, a suggestion that
“notifications” should be limited to cues “that would not otherwise have
been noticed.”
Instead, the “notifications” described in the patent are simply visual,
audible, or physical events generated by the device or computer. The
notifications may be intended (e.g., by the software developer) to capture a
user’s attention, but they occur (as pop-up windows, blinking lights, sounds,
etc.) regardless of whether the user may or may not be in a position to notice
them. There is no description of producing notifications only when they
might be noticed by a user, or that the cues are only called “notifications”
when they can be seen or heard by a user.
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Patent Owner argues that “the specification consistently describes
‘notifications’ as attention-grabbing ‘alerts’ or ‘alarms.’” Sur-Reply 7; see
Ex. 2003 ¶ 56. We find this argument unpersuasive because the auditory,
visual, and physical alerts Patent Owner cites are just examples of
notifications,3 and the ’120 patent more broadly explains that the notification
module may “indicate the arrival of [a] new message in any one or more of a
very wide variety of ways.” Ex. 1001, 9:14–15 (emphasis added). We
conclude that the patent applicant elected to not limit the types of
notifications that could be silenced. This is not surprising, because the core
of the invention, as described in the patent, was the silencing concept (see
Section I.C), not the notifications themselves. The broad language used in
describing the notification module suggests that the applicant intended to
cover the silencing of any type of notification.
Because the Specification does not define “notification,” or show that
the term has a unique meaning in the relevant art, it does not provide a basis
for limiting notifications to cases in which the message “would not
otherwise have been noticed.” See Merck & Co., Inc. v. Teva Pharm. USA,
Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts as his
own lexicographer in redefining the meaning of particular claim terms away
from their ordinary meaning, he must clearly express that intent in the
written description.”).

3 See Ex. 1001, 9:6–7 (“Such notifications could include, for example,
auditory user alerts such as ring tones, visual alerts such as flashing lights or
pop-ups, and/or physical alerts such as vibrations.”) (emphasis added).
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3. The Prosecution History
Citing comments made as part of an amendment, Patent Owner argues
that “prosecution history confirms that ‘notifications’ are ‘distractions’ that
‘bother’ a user.” PO Resp. 15 (citing Ex. 2001, 28); see Ex. 2003 ¶ 59. We
find this argument unpersuasive, for at least two reasons.
First, like Patent Owner’s “alert” or “alarm” argument, it is unclear
how this argument about “bothering” supports inclusion of “that would not
otherwise have been noticed” in the construction. Patent Owner does not
explain how notifications being “bothersome” to a user would require that
the construction include “that would not otherwise have been noticed.”
Second, we do not agree that the cited passage would support Patent
Owner’s position in any event. The applicant explained that the claimed
system would allow a user to silence notifications that would bother them.
See Ex. 2001, 28. It does not follow, however, that all notifications are
bothersome to all users at all times. To the contrary, the system allows a
user to not silence notifications that would not be bothersome, and it follows
that “bothering” is not an inherent characteristic of a “notification,” but,
rather, depends on a particular user’s preferences at a particular time. The
cited prosecution history, thus, does not support Patent Owner’s argument
that all notifications are bothersome and, instead, suggests that Patent
Owner’s construction is improperly subjective, as we discuss further in
Section II.B.6 below.
We do not find in the prosecution history the type of disclaimer or
disavowal that might operate to limit the meaning of “notification.” See
Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378–79 (Fed. Cir. 2005)
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(“Disclaimers based on disavowing actions or statements during prosecution
. . . must be both clear and unmistakable.”).
4. Extrinsic Evidence
Patent Owner also offers testimony of its expert in support of its claim
construction. See Ex. 2003 ¶¶ 49–64. Although Dr. Smith contends that
font color, bold text, and italics cannot be “notifications” because “[a person
of skill in the art] would not have understood any of these display
characteristics as a claimed ‘notification,’” he cites no evidence to support
that bare conclusion and does not explain why font color and the like could
not be notifications. See id. ¶ 52. We thus give this testimony little weight.
Dr. Smith also reiterates Patent Owner’s arguments about “alerts,” the
“manner of display,” and “bothering,” which we find unpersuasive for the
reasons explained above. See id. ¶¶ 56–60.
Dr. Smith further argues that Dallas’ flags, icons, and colors cannot be
“notifications” because the user must be looking at their inbox in order to
notice them. See id. at ¶¶ 53–55, 61–64. We find the question of whether
Dallas’ flags, icons, and colors are “notifications” to be a matter of fact to be
resolved in the patentability analysis, not a claim construction issue.
5. The District Court Construction
Patent Owner argues that “[t]he District Court flatly rejected
Petitioner’s broad reading of ‘notifications’” and “agreed with
[Patent Owner’s] interpretation of ‘notification,’ which [Patent Owner] again
asserts here.” PO Resp. 12. According to Patent Owner, “the district court’s
construction . . . is an explicit rejection of Petitioner’s position that display
characteristics, such as changing icons and font color, are ‘notifications,’ in
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favor of [Patent Owner’s] proper reading that ‘notifications’ must draw a
user’s attention to a new message that would not otherwise be noticed.” Id.
at 13.
This argument is unpersuasive. We do not read the District Court’s
claim construction order as excluding “display characteristics,” because the
portion of the order Patent Owner cites addressed the narrow issue of
whether changing a number on an icon could be a “notification.” See Ex.
2004, 31 (discussing whether the construction “would cover a change to a
numeric character on a phone application icon”). Because Petitioner is not
relying on changing numbers on icons for the “claimed” notification, we
find that discussion to be inapplicable here.
Because the construction adopted by the District Court, and now
advanced Patent Owner, does not exclude “display characteristics, such as
changing icons and font color,” we fail to see how it is an “explicit
rejection” of those things as notifications. Patent Owner again does not
explain why such characteristics may not be a “visual, auditory, or physical
cue to draw attention to an incoming message at the time of its receipt that
would not otherwise have been noticed.”
Moreover, the District Court’s subsequent order denying summary
judgment of infringement confirms that the claim construction did not
exclude visual differences in the display of incoming messages from the
scope of “notifications.” The District Court found that whether bold text and
a blue dot could be notifications was a disputed question of fact:
Now, the parties argue whether new, silenced messages that
arrive in an electronic message inbox with bolded text and a blue
dot next to them satisfy the claim limitation requiring “silencing
any further notifications pertaining to receipt of the new
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incoming electronic message.” . . . Although [Patent Owner]
would characterize this dispute as a renewed claim construction
dispute, from the Court’s perspective, the disagreement is
factual. Whether these visual differences for incoming messages
satisfy the requirements for the term “notification,” including
that it be some “cue to draw attention to an incoming message
that would not otherwise have been noticed,” presents [a] jury
question.
Ex. 1025, 50 (emphasis added). We agree with the District Court that, even
under Patent Owner’s proposed construction, whether a font change or
similar device may be a “notification” is a question of fact to be decided on a
case-by-case basis.
6. Subjectivity
Petitioner argues that the disputed language would render the claim
indefinite because “whether a notification would ‘distract or otherwise
interrupt a user’ depends on the characteristics of that user,” “a particular
cue that distracts one user might go entirely unnoticed by another,” and
“[t]he Federal Circuit has made clear that a claim is indefinite when its
applicability depends on the subjective experience or reaction of a human
operator.” Pet. Reply 5 (citing Interval Licensing v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014); Datamize, LLC v. Plumtree Software, Inc., 417
F.3d 1342, 1349-50 (Fed. Cir. 2005), abrogated on other grounds,
Nautilus,Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).
We agree with Petitioner that “would not otherwise have been
noticed” is improperly subjective, as whether something would be noticed
depends on the personal characteristics of the user who may or may not be
doing the noticing. It also depends on what that user may be doing at the
time a new message is received by the inbox. For example, it appears that if
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the user was watching an empty inbox for new messages, a pop-up window
indicating receipt of a new message would not be a notification under Patent
Owner’s construction because the user would have noticed the new message
anyway, meaning that the pop-up did not “draw attention to an incoming
message that would not otherwise have been noticed.”
Patent Owner argues that Petitioner’s “reliance on Interval Licensing
and Datamize is misplaced, since those cases turned on phrases whose
ordinary meanings were inherently subjective because they rested on the
taste and opinions of a user.” PO Sur-Reply 10. This argument is not
persuasive, particularly to the extent Patent Owner argues that being
“bothered” is an aspect of the construction. Whether a specific individual
would be bothered does depend on the user’s tastes or opinions. Some users
may not want any interruptions, while others may want immediate notice of
every new message. And those preferences may change, depending on the
circumstances, including the substance of the message.
Patent Owner argues that Interval Licensing is distinguishable in that
those claims “turned on whether the claimed user was distracted by content
based on its obtrusiveness, and the intrinsic record did not provide any
objective guidance.” PO Sur–Reply 11. Patent Owner does not, however,
identify a meaningful difference in subjectivity between a user being
“bothered” and a user being “distracted by content based on its
obtrusiveness,” and Patent Owner does not point us to “objective guidance”
in the ’120 patent. Patent Owner’s attempt to distinguish Datamize is
unpersuasive for the same reasons, and Sonix Tech. Co. v. Publications Int’l,
Ltd., 844 F.3d 1370 (Fed. Cir. 2017), which Patent Owner cites, is
distinguishable, because the specification at issue in that case provided
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“requirements” and “specific examples” for determining whether something
was “visually negligible.” See id. at 1379.
The fundamental problem with the disputed language is that it causes
the meaning of “notification” to turn on the interests, personality,
perceptions, or actions of a user, rather than on the operation of the
underlying program. As explained above, however, the notification
described in the ’120 patent is simply a mechanism in the software that
provides some sort of indication that a new message has been received.
Unless it is silenced, that mechanism is triggered when a new message
appears in the inbox, regardless of what the user of the software may or may
not be doing at that time.
7. Conclusion
We find no support for inclusion of the disputed language in the
claims themselves, elsewhere in the ’120 patent, or in prosecution history;
we find no extrinsic support, as Patent Owner’s expert offers only
conclusory testimony; and we find that the disputed language would
unnecessarily and improperly interject ambiguity into the claim. We thus do
not adopt the disputed language and, instead, construe “notification” in the
’120 patent to mean “some form of visual, auditory, or physical cue to draw
attention to an incoming message at the time of its receipt.”
C. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
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pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations, including (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations, if in
evidence.4 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
1. The Independent Claims
We follow the lead of the parties and address the validity of all
independent claims in the context of independent claim 1.
a. The Combination
Petitioner argues that Dallas describes a software application called
Collabra Share 2 that received and silenced notifications for incoming
electronic messages, as in the preamble of claim 1. See Pet. 21–25.
Petitioner argues that Dallas “discloses at least three visual
‘notifications’ for incoming messages: (1) red flags, (2) sparkles, and (3)
text color.” Pet. 24 (citing Ex. 1003, 27, 153 (“Unread documents have
‘sparkles’ on their icons; topics and replies that have unread replies have red
flags on them as well.”), 168 (“Unread documents appear blue, by default,
while documents that you’ve read are black.”); Ex. 1002 ¶¶ 63–66.
According to Petitioner, Dallas describes that Collabra Share 2
received a selected message thread for silencing and silenced the thread
using the “Ignore” option. See id. at 26–28. Petitioner argues that Dallas
shows how Collabra Share 2 performed the following functions: (1)

4 Patent Owner does not present any objective evidence of nonobviousness
(i.e., secondary considerations) as to any of the challenged claims.
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determining that a new incoming electronic message was associated with a
selected message thread, (2) determining that the selected message thread
had been silenced if it was an “Ignored” thread, and (3) overriding a
notification setting to prevent a receipt notification pertaining to the new
incoming message from being activated, displaying the message subject in a
black font instead of the color otherwise used for new messages and without
the “sparkle” that would otherwise have been shown for a new message. See
id. at 34–43.
Petitioner further argues that Dallas describes how Collabra Share 2
displayed the new message in an inbox together with messages not flagged
as silenced, while silencing any further notifications pertaining to receipt of
the new incoming electronic message. See id. at 45–50. Petitioner
additionally argues that, according to Dallas, the message thread flagged as
silenced was displayed in the inbox in a different manner than message
threads not flagged as silenced, at least because it included the “not” icon.
See id. at 50–52.
Petitioner acknowledges that Dallas “does not specifically use the
word ‘flag’ to describe how the Collabra Share 2 software keeps track of
which threads have been ‘ignored,’” but that use of a flag would have been
“a trivial implementation detail that would have been apparent and obvious
based on the disclosures of Dallas,” and also would have been obvious in
view of Kent, which describes the use of flags in C++. See Pet. 31–32.
Petitioner alternatively cites LeBlanc “as further support for
‘notification’ limitations of the challenged claims.” Pet. 65–66.
Specifically, Petitioner argues that the combination of Dallas, Kent, and
LeBlanc would have resulted in a system “in which, in addition to the visual
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new message notifications that Collabra [Share 2] already has (e.g. red flags,
sparkles, text color), the software would further support additional, user-
specified notifications, such as playing a sound, popping up a dialog box, or
flashing an icon in the program menu bar, as disclosed in LeBlanc.” Pet. 68
(citing Ex. 1005, 24–25).5
b. Patent Owner Arguments
i. Notifications
Patent Owner argues that Dallas’ red flags, sparkle icon, and font
color are not “notifications.’” See PO Resp. 19–20. Patent Owner contends
that the “assertion that different icon graphics are ‘notifications’ would
stretch the term to encompass almost any difference in the visual appearance
of a message—a position that the [D]istrict [C]ourt has already rejected.”
Id.
This argument is not persuasive because it is based on Patent Owner’s
interpretation of the District Court’s claim construction for the term
“notification” that we did not adopt. Patent Owner does not explain why
Dallas’ red flags, sparkle icons, and font colors do not qualify a “visual,
auditory, or physical cue to draw attention to an incoming message at the
time of the incoming message,” and we find that they are visual cues that
would draw attention to incoming messages at the time of receipt, as Dallas
describes. See, e.g., Ex. 1003, 55 (explaining that Collabra Share “uses

5 Petitioner additionally relies on Brown “to account for a potential argument
Patent Owner may make,” asserting that Brown discloses “continuing to
receive messages for an ignored thread.” See Pet. 35–36. Patent Owner
does not dispute Petitioner’s reliance on Brown in this regard or otherwise
make an argument that would implicate Brown in the asserted combination.
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visual clues . . . to help you zoom in on ‘what’s new’” and that the sparkle
icon and different color title of a new message “indicate that you haven’t
read it yet”).
Patent Owner’s arguments against Dallas’ flags, icons, and colors also
do not explain why they do not meet Patent Owner’s own construction:
“some form of visual, auditory, or physical cue to draw attention to an
incoming message that would not otherwise have been noticed, at the time of
the incoming message.” The arguments about what the District Court
allegedly “rejected” and what the Specification describes do not address why
flags, icons, and colors would not be covered by the construction, we are
unpersuaded by Patent Owner’s attempts to equate the flags, icons, and
colors with the “numeric character on a phone application icon” discussed
by the District Court and, as explained above (see Section II.B.5), the
District Court’s summary judgment order made clear that changes to fonts
and the like may be “notifications” under Patent Owner’s proposed
construction.
We conclude that Dallas’ red flags, sparkle icon, and different-colored
text would meet Patent Owner’s proposed construction of “notification”
because they are visual cues, they are used to draw attention to incoming
messages at the time of receiving the incoming messages, and a user viewing
the document hierarchy might not otherwise notice the new messages (which
is the reason for the icons and different color text). See Ex. 1002 ¶ 41 (citing
and discussing Ex. 1003, pp. 27, 81, 131–32). We thus find that Dallas
teaches “notifications,” even if we had agreed with Patent Owner’s proposed
construction.
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In the claim construction portion of the Response, Patent Owner
argues that Dallas does not teach “notifications” because “a user will be
unaware of Dallas’ [flag/sparkle icon/font] unless a user already has the new
message thread scrolled into view.” PO Resp. 18 (discussing Dallas’ Figure
7.5). We do not agree that this shows Dallas does not teach notifications,
because Figure 7.5 is just an example of how the system works, and a person
of ordinary skill in the art would have recognized that the notification would
be visible at the time of receipt were the number of messages small enough
to fit into the window. This is sufficient to show that the reference teaches
displaying notifications. See Hewlett-Packard Co. v. Mustek Sys., 340 F.3d
1314, 1326 (Fed. Cir. 2003) (“Just as ‘an accused product that sometimes,
but not always, embodies a claimed method nonetheless infringes,’ . . . a
prior art product that sometimes, but not always, embodies a claimed method
nonetheless teaches that aspect of the invention.”) (quoting Bell
Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d
615, 622–623 (Fed. Cir. 1995).
ii. Teaching Away
Patent Owner also argues that Dallas teaches away from combination
with LeBlanc because “it contrasts its system with a ‘ringing telephone,’
stating that the advantage of its icons and flags is that they will not interrupt
a user doing something else.” PO Resp. 21 (citing Ex. 1003, p. 140).
Because we find that Dallas teaches the claimed “notification” under
either our construction or that proposed by Patent Owner, it is not necessary
to combine LeBlanc’s teachings to those of Dallas to find the claims
unpatentable. But if that were not the case, and LeBlanc was required to
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show the claimed “notification,” we find that Patent Owner’s teaching away
arguments would be unpersuasive.
First, we note that the portion of Dallas cited by Patent Owner for
“teaching away” is describing an indicator placed by Collabra Share 2 on the
toolbar of a different application, Microsoft Mail. See Ex. 1003, 140. It is
not clear that these teachings would also be applicable to the red flags,
sparkle icon, and different-colored text notifications used in Collabra Share
2 itself that would be subject to modification by the teachings of LeBlanc.
We therefore do not agree with Patent Owner that Dallas “distinguish[es] its
‘red flags’ and ‘sparkle’ icon from the type of attention-grabbing
‘notifications’ expressly disclosed in the ’120 Patent” (PO Resp. 22).
Second, we do not agree that the portion of Dallas cited by Patent
Owner, which says “[u]nlike a ringing telephone, when you see the red flag
on the button, indicating that there are new documents, you can choose
whether to interrupt your concentration,” teaches away from using
notifications like those in LeBlanc. The problem with the “ringing
telephone” is that, if it is not answered, the call itself will be missed. Dallas
is simply explaining that although the Microsoft Mail flag lets the user know
a new message has arrived, it does not require immediate action on the
message (i.e., the user does not have to switch from Mail to Collabra Share
2), thus “you can choose whether to interrupt your concentration.” This may
suggest not requiring a user to take immediate action to address a new
message, but it does not teach away from displaying the notification, which
merely alerts the user to the presence of the new message. And it is also the
case that the combined Dallas/LeBlanc system would include the silencing,
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which would allow the user who did not wish to be “bothered” to suppress
the notifications.
Third, even if Patent Owner’s analysis was correct, and Dallas
“teaches that an advantage of its invention is that it does not interrupt a
user’s concentration,” that is, at best, a preference, which would not rise to
the level of teaching away. See Meiresonne v. Google, Inc., 849 F.3d 1379,
1382 (Fed. Cir. 2017) (“A reference that ‘merely expresses a general
preference for an alternative invention but does not criticize, discredit, or
otherwise discourage investigation into’ the claimed invention does not
teach away.”).
iii. Manner of Display
Patent Owner also argues that Dallas’ red flags, sparkle icon, and
different-colored text cannot be notifications because “the ’120 Patent itself
distinguishes between ‘notifications’ and a message’s ‘manner of display,’
i.e., the mere display characteristics of a message.” PO Resp. 23. We do not
agree.
As explained above, the ’120 patent does not draw a line between a
“notification” and the “manner of display,” or suggest that an aspect of a
message display cannot operate as a notification. Although the claim recites
that silenced threads are “displayed in the inbox in a different manner than
any message thread not flagged a silenced,” that simply means the silenced
threads are displayed in specific way (e.g., in a grey font) to indicate to the
user that they have been silenced. Notably, the “different manner” threads
of the claims are those for which notifications have been silenced, meaning
they are not subject to notifications. The “different manner” is a difference
between silenced and non-silenced messages, not between notifications and
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messages, and we fail to see why using grey to denote silenced messages
would preclude use of a different font, font color, font effect, or message
related icon as a new message notification. Just as the grey font would
indicate to a user that a message was in a silenced thread, a bold font, for
example, would indicate to a user that the message was new.
Moreover, if there was support for the notification/manner of display
distinction, Patent Owner should have incorporated that into its proposed
construction of “notification.” See supra Section II.C.1.a.i. This argument
is unpersuasive for the further reason that “notification” has been construed
(largely by agreement) in a way that does not include the alleged difference.
Patent Owner does not explain how the language it sought to include in the
construction––“that would not otherwise have been noticed”––somehow
reflects the distinction between a “notification” and a “manner of display.”
iv. Silencing in LeBlanc
Patent Owner next argues that Dallas “fails to disclose the claimed
‘silencing’ of the notifications” because it fails to disclose the notifications
and teaches away from their use. PO Resp. 25. These arguments are
unpersuasive for the reasons explained above. We find that Dallas’ sparkle
icon and different-colored text are “notifications” as that term is used in the
claim, and, as explained above, we are unpersuaded by the teaching away
argument.
Patent Owner also argues that “the Petition’s reliance upon LeBlanc to
disclose ‘silencing’ of the notifications is misplaced.” PO Resp. 25. Patent
Owner does not identify where the Petition relies on LeBlanc to teach
silencing, however, and we do not understand that it does. Instead, the
Petition “adds LeBlanc as further support for [the] ‘notification’ limitations
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of the challenged claims (i.e. ‘notifications for incoming electronic
messages,’ ‘currently-enabled notification setting,’ ‘receipt notification,’
‘further notifications,’ etc.)” and “for all other limitations, [the LeBlanc
ground] relies on the references and analysis in [the Dallas grounds].” Pet.
65–66. Petitioner thus relies on LeBlanc solely for the substitution of the
different types of notifications shown in LeBlanc’s Figure 12.9 for the
notifications that Dallas uses. We note that Patent Owner does not contend
that LeBlanc does not teach “notifications” or dispute Petitioner’s
motivation to combine the teachings of Dallas with those of LeBlanc.
v. Displaying
Patent Owner argues that Dallas does not disclose “displaying” a new
incoming message because it teaches that the new incoming message is
“hidden.” See PO Resp. 26. Patent Owner contends that, although
“Petitioner cites to an image of one of Dallas’ ‘ignored’ threads that has
been ‘expanded’ by a user to show that its ignored messages are ‘displayed’
. . . Petitioner admits that Dallas automatically hides new ignored messages
by collapsing their threads and showing only the oldest message in an
‘ignored’ thread.” PO Resp. 26–27. Patent Owner argues that “Petitioner
fails to cite anything in the claims or specification to support the assertion
that the ‘display’ limitations may be achieved through the intervening user
action of manually ‘expanding’ the collapsed thread.” PO Resp. 27–28.
We again do not agree with Patent Owner’s arguments. Dallas
specifically describes how a user may “expand” [ignored threads] again, if
you like,” in which case “you can still see the documents that you have
ignored, but no documents in ignored threads or categories will appear new.”
Ex. 1003, p. 170. This is not a situation in which the prior art would need to
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be modified to work in the way claimed. Instead, Dallas explicitly describes
how the Collabra Share 2 user may use a built-in feature of the software to
display new, silenced messages, as claimed. When the user is using this
aspect of the software as intended, the instructions would be causing the
processor to the display the new silenced messages.
Patent Owner’s complaint that there is nothing “in the claims or
specification to support the assertion that the ‘display’ limitations may be
achieved through the intervening user action of manually ‘expanding’ the
collapsed thread” (PO Resp. 27–28) misses the mark, because the question is
whether the open-ended claims would somehow exclude user action, which
they do not. See Solvay S.A. v. Honeywell Intern. Inc., 742 F.3d 998, 1005
(Fed. Cir. 2014) (“The well-established meaning of “‘comprising’ in a
method claim indicates that the claim is open-ended and allows for
additional steps.”) (quoting Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d
1364, 1368 (Fed. Cir. 2003)). Patent Owner has not sought a construction of
the claim that would exclude user action, and we note that any actual use of
the software would, of course, require at least some “user action,” including
booting the computer, opening the software, entering messaging credentials,
and determining which threads to silence.
We also do not agree with Patent Owner that the prosecution history
“confirms” its position. PO Resp. 28. The cited passage simply explains
that “a user is made aware of [silenced] messages,” which would be the case
in Collabra Share 2 with the thread expanded. We see nothing to suggest
that this somehow excludes user action.
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Because we find that Dallas expressly describes displaying ignored
messages, we do not reach Patent Owner’s argument that Dallas and Brown
teach away from doing that. See PO Resp. 30–32.
c. Conclusion on the Independent Claims
We find that Petitioner has shown how the combination of Dallas,
Kent, and/or LeBlanc teaches all the limitations of independent claims 1, 13,
and 24, that the combination is supported with sufficient motivations to
combine, and that Patent Owner’s arguments to the contrary are not
persuasive. We conclude, therefore, that Petitioner has shown by a
preponderance of the evidence that the subject matter of these claims would
have been obvious.
2. The Dependent Claims
We discuss the dependent claims in the context of those that depend
from system claim 1. The same analysis applies to the corresponding
dependent method claims.6
Claim 2 recites that “the new incoming electronic message is part of a
group discussion,” and claim 3 further adds that “a receipt notification for a
new incoming electronic message is prevented only for a user who has
flagged the message thread as silenced.” Ex. 1001, 17:11–15. Petitioner
argues that “Dallas explains that Collabra [Share 2] is a ‘like a mail
program’ and ‘facilitates communication and captures group discussions’”
(Pet. 52 (citing Ex. 1003, 19, 153, Fig. 7.3; Ex. 1002 ¶ 126)), and that

6 Claims 14 and 15 correspond to claims 2 and 3, claim 17 corresponds to
claim 5, claim 19 corresponds to claim 7, claim 20 corresponds to claim 8,
claim 21 corresponds to claim 10, and claim 22 corresponds to claim 11.
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“Dallas makes clear that only the Collabra [Share 2] user who ignored a
message thread will no longer receive notifications related to new messages
in that thread” (Pet. 53 (citing Ex. 1003, 2, 85, 129, Fig. 7.3; Ex. 1002 ¶
128)). We agree with Petitioner’s analysis, which Patent Owner does not
dispute.
Claim 5 adds to claim 1 “at least one display for displaying the
incoming electronic messages.” Ex. 1001, 17:18–19. Petitioner argues that
“Dallas shows displays used in connection with the Collabra [Share 2]
software,” and that “[i]t would have been obvious that the screen displays
shown throughout Dallas . . . required the presence of at least one display for
presenting the incoming electronic messages.” Pet. 54–55 (citing Ex. 1003,
45, 150–151, 289, Figs. 2.11 & 7.1; Ex. 1002 ¶ 130). Patent Owner does not
contend otherwise, and we find that Petitioner has identified the claimed
subject matter in Dallas.
Claim 7 depends from claim 1 and adds that the system is “adapted to
allow the message thread to be unflagged deactivating the flag,” and claim 8
further requires that the system, “after determining that the message thread
has been unflagged, retain the new incoming message associated with the
inbox while allowing notifications pertaining to receipt of any subsequent
new incoming message for the message thread, and associate any subsequent
new incoming message with the inbox.” Ex. 1001, 17:23–30. Regarding
claim 7, Petitioner argues that Dallas “states that an ignored message thread
can be unflagged, thereby deactivating the flag: ‘The Navigate, Ignore
command is a toggle [and] [c]hoosing it again restores the original state’”
and that “[t]his limitation is also obvious over Dallas in view of Kent.” Pet.
55 (citing Ex. 1003, 170; Ex. 1002 ¶ 133). Regarding claim 8, Petitioner
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contends that, “[o]nce the message thread is no longer ignored, the display is
restored to ‘the original state’ . . . , and thus would retain the incoming
electronic message, and present any later-received new messages with
Collabra’s visual notifications (e.g. red flags, sparkles, text color).” Pet. 56
(citing Ex. 1003, 170; Ex. 1002 ¶ 132, 135–36). Patent Owner does not
dispute this analysis, and we agree that it is sufficient to show the claimed
subject matter in Dallas.
Claim 9 recites that the system of claim 1 “comprises a wireless
device.” Ex. 1001, 17:31–32. For this claim, Petitioner adds Bott, arguing
that it discloses “a wireless device,” and that “[i]t would have been obvious
to combine Bott’s teaching regarding wireless functionality with Dallas” in
view of the “compelling advantages that wireless computing provides.” Pet.
59–60 (citing Ex. 1007, 421–22; Ex. 1002 ¶ 142). We agree with the
analysis provided in the Petition, which Patent Owner does not dispute.
Claim 10 requires that, in the system of claim 1, “the notifications
include one or more of an auditory alert, a visual alert or a physical alert.”
Ex. 1001, 17:33–35. We agree with Petitioner that “[e]ach of the visual
notifications in Dallas (e.g., red flags, sparkles, different color text) qualifies
as a ‘visual alert,’ as claimed.” Pet. 56 (citing Ex. 1003 ¶ 145). Patent
Owner does not argue otherwise.
Claim 11 recites that “the new incoming message” of claim 1 “is
displayed in a default view of the inbox.” Ex. 1001, 17:36–37. For this
claim, Petitioner argues that “the ‘inbox’ corresponds in Dallas to a
‘category,’” and that “Dallas discloses that Collabra [Share 2] provides
various ‘views’ of documents in a category, including an ‘ordinary’ (or
‘default’) view and ‘custom’ views.” Pet. 61. Petitioner acknowledges that,
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in Dallas, a “new message received as part of an ignored thread (in the
default/collapsed view) may not be displayed unless the user expanded the
thread again,” but also argues that Mann “discloses displaying the most
recently-received message in a message thread . . . even when the thread is
displayed in a collapsed view,” and that such a feature “would have
improved the system of Dallas by allowing a user to more efficiently check
the status of an ignored thread.” Pet. 62–64 (citing Ex. 1011, 89–90;
Ex. 1002 ¶ 149–157). Patent Owner does not dispute this analysis, with
which we agree.
For these reasons, we find that Petitioner has shown by a
preponderance of the evidence that the subject matter of dependent claims
2–3, 5, 7–11, 14–15, 17, and 19–22 would have been obvious.
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III. CONCLUSION
Claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24 have been shown to be
unpatentable. The results are summarized below.
Claims
35
U.S.C.
§ Reference(s)/Basis
Claims Shown
Unpatentable
Claims Not
Shown
Unpatentable
1–3, 5, 7–8,
10, 13–15,
17, 19–21, 24
103(a) Dallas, Brown, Kent
1–3, 5, 7–8, 10,
13–15, 17, 19–
21, 24

9 103(a) Dallas, Brown, Kent, Bott 9
11, 22 103(a) Dallas, Brown, Kent, Mann 11, 22
1–3, 5, 7–8,
10, 13–15,
17, 19–21, 24
103(a) Dallas, Brown, Kent, LeBlanc
1–3, 5, 7–8, 10,
13–15, 17, 19–
21, 24

9 103(a) Dallas, Brown, Kent, LeBlanc, Bott 9
11, 22 103(a)
Dallas, Brown,
Kent, LeBlanc,
Mann
11, 22
Overall
Outcome
1–3, 5, 7–11,
13–15, 17, 19–
22, 24

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IV. ORDER
For the reasons given, it is:
ORDERED that claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24 of
U.S. Patent No. 9,349,120 B2 have been shown to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.7

7 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.
16654 (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).
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FOR PETITIONER:

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

FOR PATENT OWNER:

James M. Glass
Sam Stake
Ognjen Zivojnovic
John McKee
Sean Gloth
QUINN EMANUEL URQUHART & SULLIVAN LLP
jimglass@quinnemanuel.com
samstake@quinnemanuel.com
ogizivojnovic@quinnemanuel.com
johnmckee@quinnemanual.com