BlackBerry LimitedDownload PDFPatent Trials and Appeals BoardOct 1, 2020IPR2019-00925 (P.T.A.B. Oct. 1, 2020) Copy Citation 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) IPR2019-00925 Patent 8,209,634 B2 2 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 IPR2019-00925 Patent 8,209,634 B2 3 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. IPR2019-00925 Patent 8,209,634 B2 4 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. IPR2019-00925 Patent 8,209,634 B2 5 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 IPR2019-00925 Patent 8,209,634 B2 6 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 IPR2019-00925 Patent 8,209,634 B2 7 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 IPR2019-00925 Patent 8,209,634 B2 8 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. IPR2019-00925 Patent 8,209,634 B2 9 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, IPR2019-00925 Patent 8,209,634 B2 10 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 IPR2019-00925 Patent 8,209,634 B2 11 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. IPR2019-00925 Patent 8,209,634 B2 12 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. IPR2019-00925 Patent 8,209,634 B2 13 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 IPR2019-00925 Patent 8,209,634 B2 14 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. IPR2019-00925 Patent 8,209,634 B2 15 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. IPR2019-00925 Patent 8,209,634 B2 16 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. IPR2019-00925 Patent 8,209,634 B2 17 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, IPR2019-00925 Patent 8,209,634 B2 18 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 IPR2019-00925 Patent 8,209,634 B2 19 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 IPR2019-00925 Patent 8,209,634 B2 20 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 IPR2019-00925 Patent 8,209,634 B2 21 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 IPR2019-00925 Patent 8,209,634 B2 22 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 IPR2019-00925 Patent 8,209,634 B2 23 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 IPR2019-00925 Patent 8,209,634 B2 24 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 IPR2019-00925 Patent 8,209,634 B2 25 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 IPR2019-00925 Patent 8,209,634 B2 26 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. IPR2019-00925 Patent 8,209,634 B2 27 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 IPR2019-00925 Patent 8,209,634 B2 28 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 IPR2019-00925 Patent 8,209,634 B2 29 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 IPR2019-00925 Patent 8,209,634 B2 30 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 IPR2019-00925 Patent 8,209,634 B2 31 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 IPR2019-00925 Patent 8,209,634 B2 32 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 IPR2019-00925 Patent 8,209,634 B2 33 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) IPR2019-00925 Patent 8,209,634 B2 34 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 IPR2019-00925 Patent 8,209,634 B2 35 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. IPR2019-00925 Patent 8,209,634 B2 36 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 IPR2019-00925 Patent 8,209,634 B2 37 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 IPR2019-00925 Patent 8,209,634 B2 38 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 IPR2019-00925 Patent 8,209,634 B2 39 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 IPR2019-00925 Patent 8,209,634 B2 40 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, IPR2019-00925 Patent 8,209,634 B2 41 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 IPR2019-00925 Patent 8,209,634 B2 42 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 IPR2019-00925 Patent 8,209,634 B2 43 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 IPR2019-00925 Patent 8,209,634 B2 44 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 IPR2019-00925 Patent 8,209,634 B2 45 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. IPR2019-00925 Patent 8,209,634 B2 46 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. IPR2019-00925 Patent 8,209,634 B2 47 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 IPR2019-00925 Patent 8,209,634 B2 48 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 IPR2019-00925 Patent 8,209,634 B2 49 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. IPR2019-00925 Patent 8,209,634 B2 50 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. IPR2019-00925 Patent 8,209,634 B2 51 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 IPR2019-00925 Patent 8,209,634 B2 52 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. IPR2019-00925 Patent 8,209,634 B2 53 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”). IPR2019-00925 Patent 8,209,634 B2 54 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. IPR2019-00925 Patent 8,209,634 B2 55 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. IPR2019-00925 Patent 8,209,634 B2 56 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. IPR2019-00925 Patent 8,209,634 B2 57 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 Copy with citationCopy as parenthetical citation