Paper 31
`Trials@uspto.gov
`571-272-7822 Entered: August 29, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00913
`Patent 8,402,384 B2
`____________
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`Trials@uspto.gov
`571-272-7822 Entered: August 29, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00913
`Patent 8,402,384 B2
`____________
`
`
`
`
`
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2017-00913
`Patent 8,402,384 B2
`
`
`I. INTRODUCTION
`Google Inc. (“Petitioner”) filed a Petition for inter partes review of
`claims 1–13 of U.S. Patent No. 8,402,384 B2 (Ex. 1001, “the ’384 patent”).
`Paper 1 (“Pet.”), 2. Blackberry Ltd. (“Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Upon consideration of the Petition
`and Preliminary Response, we instituted an inter partes review pursuant to
`35 U.S.C. § 314, as to claims 1–13 of the ’384 patent. Paper 7 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”), Petitioner filed a Reply to Patent Owner’s
`Response (Paper 20, “Reply”), and Patent Owner filed a Sur-Reply (Paper
`27, “Sur-Reply”).1 On May 30, 2018, we held an oral hearing. Paper 30
`(“Tr.”).2
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, we determine that Petitioner has demonstrated
`by a preponderance of the evidence that claims 1–13 of the ’384 patent are
`unpatentable.
`
`A. Related Matters
`The parties state that the ’384 patent is the subject of a court
`proceeding, BlackBerry Limited v. BLU Products, Inc., Case No. 16-23535
`(S.D. Fla.). Pet. 1; Paper 4, 1. Petitioner filed a Petition for inter partes
`review of claims 1–26 of U.S. Patent No. 8,713,466 B2, which is a
`continuation of the ’384 patent. See id.; IPR2017-00914, Paper 1, 2.
`
`
`1 We granted Patent Owner’s request for authorization to file the Sur-Reply
`in an Order dated April 24, 2018. Paper 22.
`2 The oral hearing included a related proceeding, IPR2017-00914. Paper 26.
`2
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`B. The ’384 Patent
`The ʼ384 patent is directed to a graphical user interface including a
`dynamic bar for displaying preview information on a main screen of the
`graphical user interface. Ex. 1001, Abstract. Each dynamic bar is
`associated with respective one or more interfaces for applications and/or
`functions provided by the apparatus. Id. Each dynamic bar has a pop-up
`interface for providing a preview information determined from information
`managed by applications and/or functions and links to invoke respective
`interfaces. Id. Figures 5 and 6 are reproduced below.
`
`
`Figures 5 and 6 illustrate main screen 300 with dynamic bar 304 and
`
`expansion pop-up interface 602. Id. at 7:43–46, 60. Dynamic bar 304
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`includes counts of new events 502 (e.g., new voice mail messages, email
`messages, SMS messages or contacts online with which to chat). Id. at
`7:46–49. Expansion pop-up 602 lists particular services 604 associated with
`dynamic bar 304, such as voice mail, email, SMS and chat, including an
`iconic representation of service 606 and preview information. Id. at 7:60–
`64. Preview information includes count 608 and a link 610 to invoke the
`associated application user interface for the service. Id. at 7:64–66.
`According to the ’384 patent, “[p]review information may thus comprise
`information maintained by the associated applications and/or functions as
`well as information determined from this managed information[].” Id. at
`7:66–8:2.
`
`C. Illustrative Claim
`Petitioner challenges all 13 claims of the ’384 patent. Claim 1 is the
`only independent claim and appears below.
`1. A method for controlling an apparatus comprising a display,
`the method comprising:
`displaying a dynamic bar on the display;
`displaying dynamic preview information in the dynamic bar, the
`dynamic preview
`information being determined from
`information managed by a software application, the dynamic
`preview information being updated to reflect a change to the
`information managed by the software application;
`expanding the dynamic bar to display an expanded dynamic bar
`in response to a first input from an input device, displaying
`the expanded dynamic bar comprising:
`displaying additional dynamic preview information determined
`from the information managed by the software application,
`the additional dynamic preview information being different
`from the dynamic preview information displayed in the
`dynamic bar, and the additional dynamic preview information
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`being updated to reflect the same or different change to the
`information managed by the software application;
`displaying a selectable link embedded in the additional dynamic
`preview information to invoke the software application; and
`activating the software application in response to a second input
`invoking the link.
`Ex. 1001, 11:31–12:8.
`
`D. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability as
`follows (Dec. 29):
`
`Ground References
`1
`Cadiz3
`2
`Cadiz and Ng5
`3
`Cadiz and Matthews6
`4
`Cadiz and Smith7
`
`
`Basis
`§ 103(a)4
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1, 4–7, and 10–13
`2 and 3
`8
`9
`
`
`3 U.S. Patent App. Pub. No. 2002/0186257 A1, filed June 8, 2001, published
`Dec. 12, 2002 (Ex. 1005) (“Cadiz”).
`4 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’384 patent has an
`effective filing date before the effective date of the applicable AIA
`amendment, we refer to the pre-AIA version of 35 U.S.C. § 103.
`5 U.S. Patent App. Pub. No. 2004/0075701 A1, filed Oct. 16, 2002,
`published Apr. 22, 2004 (Ex. 1006) (“Ng”).
`6 U.S. Patent App. Pub. No. 2005/0198584 A1, filed Jan. 27, 2004,
`published Sept. 8, 2005 (Ex. 1008) (“Matthews”).
`7 U.S. Patent No. 6,333,973 B1, filed Apr. 23, 1997, issued Dec. 25, 2001
`(Ex. 1009) (“Smith”).
`
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`II. ANALYSIS
`A. Principles of Law
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims are
`unpatentable. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). 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 of the invention to a person
`having ordinary skill in the art. 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) objective evidence
`of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill
`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)
`(citation omitted). Petitioner relies on the testimony of Dr. Olsen, who
`testifies that a person with ordinary skill in the art “would have had at least
`an undergraduate degree in computer science, electrical engineering, or
`equivalent thereof, and at least two years of experience in the relevant field,
`e.g., graphical user interfaces.” Pet. 3–4 (citing Ex. 1002 ¶¶ 13–14). Patent
`Owner relies on the testimony of Dr. Ligler, who mainly agrees with Dr.
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`Olsen’s assessment, but disagrees that the relevant field includes graphical
`user interfaces generally, and instead opines that the relevant field is
`“graphical user interfaces for communication devices, such as cellular
`telephones, personal digital assistants (PDAs), and other communication
`devices, particularly those which communicate over a wireless network.”
`PO Resp. 9 (citing Ex. 2007 ¶¶ 37–40).
`While we agree with Dr. Ligler’s assessment that the ’384 patent
`describes its invention in the context of graphical user interfaces on
`communication devices (Ex. 2007 ¶ 41), the ’384 patent also describes that
`the mobile station devices with the user interfaces described “may be
`usefully incorporated into other computing devices which may not be mobile
`such as personal computers, workstations, telephone headsets and the like.”
`Ex. 1001, 11:18–21. Accordingly, we adopt Petitioner’s definition of the
`level of ordinary skill in the art, but note that our analysis would be the same
`under either definition.
`
`C. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear.8 37 C.F.R. § 42.100(b).
`Consistent with the broadest reasonable construction, claim terms are
`presumed to have their ordinary and customary meaning as understood by a
`person of ordinary skill in the art in the context of the entire patent
`
`
`8 We would construe the claim term discussed below the same under Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
`7
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`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`For purposes of this decision, we find it necessary to construe “a
`selectable link embedded in the additional dynamic preview information.”
`Claim 1 recites “displaying a selectable link embedded in the additional
`dynamic preview information to invoke the software application.” In the
`Decision on Institution, based on the parties’ arguments, we preliminarily
`determined “that as long as some of the preview information in a display
`window, for example, contains dynamic preview information not shown in
`the dynamic bar, the entirety of the preview information may be considered
`‘additional dynamic preview information.’” Dec. 12. In addition, we stated
`that the prosecution history supports a construction that covers a link that is
`static but is next to dynamic information, such as the “seemingly static ‘call
`voice mail’ link that appears next to dynamic information ‘5’” in Figure 6 of
`the ’384 patent. Id. at 11.
`Patent Owner disagrees with that determination and argues that “a
`selectable link embedded in the additional dynamic preview information”
`“requires the ‘additional dynamic preview information’ to be preview
`information that is dynamic and requires the ‘selectable link’ to include such
`dynamic preview information.” PO Resp. 11. Figure 6 from the ’384
`patent, shown below as annotated by Patent Owner (PO Resp. 21), illustrates
`Patent Owner’s position.
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`Figure 6 from the ’384 patent, annotated by Patent Owner, illustrates a
`main screen following user action. From the above figure, Patent Owner
`contends that the “‘50 unread’ selectable link is ‘embedded’ in the
`‘additional dynamic preview information’ because the link includes dynamic
`information (e.g., 50).” PO Resp. 22. Patent Owner contends that the other
`links, for example the “5 Call Voice Mail,” would not satisfy the disputed
`phrase requirement because, even though the “5” is dynamic (e.g., because
`the number of Voice Mail changes), it is not part of the link “Call Voice
`Mail.” Id.; Tr. 51–53.
`Petitioner disagrees with Patent Owner’s construction and contends
`that additional dynamic preview information includes dynamic information,
`but it can also include other types of information such that the “selectable
`link” may or may not include dynamic information. Reply 2. For example,
`with respect to annotated Figure 6 from above, Petitioner argues “the only
`selectable link specifically identified in FIG. 6 and described in the
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`specification is selectable link 610 [5 Call Voice Mail], which does not
`include but is next to dynamic information (i.e., count 608).” Reply 4 (citing
`Ex. 1001, 7:60–8:2, Fig. 6). Petitioner argues that selectable link 610
`exemplifies “a selectable link embedded in the additional dynamic preview
`information” because it is the only selectable link from Figure 6 that is
`described in the specification and because the additional dynamic preview
`information in interface 602 includes dynamic count 608. Id. at 3–4.
`It is necessary for us to construe the phrase because there is a dispute
`about whether the prior art (Cadiz) discloses “a selectable link embedded in
`the additional dynamic preview information.” In particular, Patent Owner
`does not dispute that Cadiz describes additional dynamic preview
`information, but argues that Cadiz does not disclose links that include
`dynamic information. PO Resp. 30–34. For the reasons that follow, we
`agree with Petitioner’s construction and determine that additional dynamic
`preview information includes dynamic information, but can also include
`other types of information such that the “selectable link” may or may not
`include dynamic information.9
`1. Claim Language
`We begin with the plain language of claim 1. On its face, the claim
`requires “displaying a selectable link embedded in the additional dynamic
`preview information.” The claim does not state that “the additional dynamic
`preview information” comprises only dynamic information, or that the
`selectable link includes dynamic preview information. Patent Owner argues
`
`
`9 This determination is consistent with our preliminary determination. Dec.
`12.
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`that based on the plain language of the claim, “it logically follows that the
`selectable link must also include information that is dynamic.” PO Resp. 14.
`But Patent Owner does not explain why the phrase requires all parts of the
`additional dynamic preview information, e.g., the static link, to be dynamic.
`The claim language allows for the possibility that the “additional dynamic
`preview information” may include non-dynamic information as well
`dynamic information as Petitioner contends. Reply 2. Accordingly, we are
`not persuaded by Patent Owner’s argument that the plain language requires a
`selectable link that includes additional dynamic preview information.
`2. Specification
`The specification further supports Petitioner’s position. The phrase
`“additional dynamic preview information” was added during prosecution of
`the ’384 patent. Ex. 1004, 108–111. While the specification of the ’384
`patent describes dynamic preview information, the ’384 patent does not
`describe or use the phrase “additional dynamic preview information.” Both
`parties agree, however, that the description of “dynamic preview
`information” would have informed the understanding of a person having
`ordinary skill in the art at the time of the invention regarding the meaning of
`“additional dynamic preview information.” PO Resp. 15, n.1; Reply 1–2.
`The specification of the ’384 patent states that “dynamic preview
`information need not be limited to a count” and that “the [dynamic preview]
`information may include some details of a recent event” such as “Missed
`call from NNN.” Ex. 1001, 7:60–65. Although the ’384 patent does not
`explicitly define “dynamic” information, the ’384 patent does describe what
`is considered static information by explaining that “[a]n application icon or
`information or text (e.g. name or title) describing the application is
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`generally static and as such is not particularly useful for representing
`changing information associated with the application activated by the icon.”
`Ex. 1001, 1:49–53 (emphasis added). To us, information such as “Missed
`call from NNN” falls into the category of including static “information or
`text (e.g., name or title) describing the application” as described in the ’384
`patent, because such information is not limited to changing information
`associated with the application. This type of information, however, is
`described, along with a dynamic count, as exemplary of “dynamic preview
`information.” Id. at 7:52–57. Accordingly, we agree with Petitioner, and
`find that the ’384 patent describes “dynamic preview information” as
`information that can include information that is not dynamic. Reply 1–2.
`Patent Owner does not sufficiently explain why the description of
`“dynamic preview information” in the ’384 patent discussed above supports
`its contentions that the claimed “selectable link” must include dynamic
`preview information. PO Resp. 14–15. It is not enough for Patent Owner to
`merely highlight the passage and conclude that it “describes information that
`is itself dynamic (e.g., counts of new events, information about a missed
`call).” Id. (citing Ex. 1001, 7:46–59). Patent Owner never explains why the
`specification describes information such as “Missed call from NNN” as
`dynamic information despite its inclusion of static information, and why a
`selectable link embedded in such a phrase must contain dynamic information
`
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`as Patent Owner proposes in its construction.10 The link could encompass
`“Missed call,” i.e., static information, and nevertheless be “embedded in”
`what the specification describes as “dynamic preview information,” i.e.,
`“Missed call from NNN.” Patent Owner does not reconcile the portions of
`the specification that appear to undermine its claim construction with those
`that arguably do support its construction. We will not construe terms
`narrowly without a reasoned explanation for doing so.
`3. Prosecution History
`Patent Owner argues that the prosecution history of the ’384 patent
`supports its construction. Id. at 15–22. Patent Owner argues that during
`prosecution of the ’384 patent, it amended the claims to overcome a
`rejection in view of Ögren11 to include “displaying a selectable link
`embedded in the additional dynamic preview information to invoke the
`software application.” PO Resp. 16 (citing Ex. 1004, 109) (emphasis
`omitted). Patent Owner argues that it explained that the selectable link is
`embedded in the additional dynamic preview information, such that the
`selectable link may be selected by selecting a portion of the additional
`dynamic preview information, such as by moving a cursor over a portion of
`the dynamic preview information and actuating an input device. Id. (citing
`
`
`10 During oral argument, counsel for Patent Owner indicated that the entire
`content (e.g., each word or symbol) must be dynamic (e.g., changes) in order
`for such information to qualify as “additional dynamic preview
`information.” See, e.g., Tr. 47:24–48:1. This clarification of Patent
`Owner’s proposed construction goes further than requiring some portion of
`the selectable link to include dynamic information, and finds less support in
`the intrinsic record.
`11 EP 1434411 A1, filed Dec. 23, 2002, pub. June 30, 2004 (“Ögren”).
`13
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`Ex. 1004, 114–115). Patent Owner asserts that because it was explained
`during prosecution that the “selectable link” is a “portion” of the additional
`dynamic preview information, the selectable link must include dynamic
`preview information. Id. at 16. Such reasoning does not follow from the
`representations made to the Office. Rather, during prosecution, Patent
`Owner explained that the selectable link is a portion of the additional
`dynamic preview information, but did not explain in any way what makes up
`the additional dynamic preview information or that the selectable link must
`itself include additional dynamic preview information as Patent Owner now
`asserts. Ex. 1004, 114–115.
`According to Patent Owner, the Examiner subsequently rejected the
`claims as obvious in view of Ögren and Aaltonen12 and relied on Aaltonen’s
`Figure 22E for the limitation “displaying a selectable link embedded in the
`additional dynamic preview information to invoke the software application.”
`PO Resp. 16 (citing Ex. 1004, 84–85) (emphasis omitted). Patent Owner
`argues that it distinguished Aaltonen by explaining that Aaltonen’s Figure
`22E does not disclose a selectable link embedded in the additional dynamic
`preview information, because Aaltonen’s link is not embedded in the
`additional dynamic preview information. Id. at 17–18 (citing Ex. 1004, 70–
`71). Patent Owner argues that it again emphasized that the selectable link
`may be selected by selecting a portion of the additional dynamic preview
`information, such as by moving a cursor over a portion of the dynamic
`preview information and actuating an input device. Id. Patent Owner
`
`
`12 U.S. Patent Application Publication 2006/0020904 A1, filed July 11,
`2005, pub. Jan. 26, 2006 (“Aaltonen”).
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`asserts that because it was explained during prosecution that the “selectable
`link” is a “portion” of the additional dynamic preview information, the
`selectable link must include dynamic preview information. Id. For similar
`reasons articulated above, we are not persuaded that Patent Owner explained
`in any way that the selectable link must include additional dynamic preview
`information. Ex. 1004, 70–71. Moreover, the arguments that Ögren and
`Aaltonen do not disclose a selectable link “embedded in the additional
`dynamic preview information” were “expressly disclaim[ed]” in an
`interview summary noting the argument that Aaltonen is not prior art. Id. at
`63. As we stated in our Decision on Institution, we are reluctant to rely on
`statements expressly disclaimed during prosecution and that the Examiner
`never accepted, and for that reason we find that the disclaimed arguments
`based on Ögren and Aaltonen do not form the basis of claim disavowal or
`disclaimer. Dec. 10.
`According to Patent Owner, the Examiner subsequently rejected the
`claims again as obvious in view of Ögren and Wagner13 and relied on
`Wagner to meet “displaying a selectable link embedded in the additional
`dynamic preview information to invoke the software application.” PO Resp.
`18 (citing Ex. 1004, 48–50). Patent Owner argues that it again emphasized
`that the selectable link may be selected by selecting a portion of the
`additional dynamic preview information, such as by moving a cursor over a
`portion of the dynamic preview information and actuating an input device.
`Id. (citing Ex. 1004, 39). Patent Owner asserts that because it was explained
`
`
`13 U.S. Patent App. Pub. 2004/0155908 A1, filed June 20, 2003, pub. Aug.
`12, 2004 (“Wagner”).
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`during prosecution that the “selectable link” is a “portion” of the additional
`dynamic preview information, the selectable link must include dynamic
`preview information. Id. For similar reasons articulated above, we are not
`persuaded that Patent Owner explained in any way that the selectable link
`must include additional dynamic preview information. Ex. 1004, 39.
`Patent Owner also argues that during an interview with the Examiner,
`the Patent Owner and Examiner agreed that presentation of static icons in,
`for example, a dynamic bar was distinct from presentation of dynamic
`preview information in a dynamic bar. PO Resp. 19 (citing Ex. 1004, 62).
`That “agreement” was with respect to information in a dynamic bar, and not
`in an expanded dynamic bar, and, therefore Patent Owner’s arguments are
`not commensurate in scope with the disputed phrase. Moreover, such
`agreement does not mean, necessarily, that dynamic information cannot
`include a static link or icon, along with dynamic information beside it.
`Patent Owner did not explain in any way that the selectable link must
`include additional dynamic preview information, even if a part of or next to
`dynamic information as Patent Owner now asserts. Ex. 1004, 62.
`In summary, Patent Owner’s arguments based on the prosecution
`history of the ’384 patent do not persuade us that “a selectable link
`embedded in the additional dynamic preview information” must be
`interpreted as narrowly as Patent Owner suggests for the reasons above. As
`explained above, the prosecution history on this point is equivocal, and does
`not persuade us of a clear and unmistakable disavowal or disclaimer of the
`scope of the term to exclude information such as an icon or link next to
`dynamic descriptive information. Omega Eng’g, Inc. v. Raytek Corp., 334
`F.3d 1314, 1325–26 (Fed. Cir. 2003).
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`Other portions of the prosecution history underscore the lack of any
`disavowal or disclaimer of such claim scope during prosecution, and in fact
`support Petitioner’s narrower construction. During prosecution, Patent
`Owner relied on portions of the specification of the ’384 patent to provide
`written description support for the “selectable link embedded in the
`additional dynamic preview information” limitation. According to
`statements made during prosecution, support for “a selectable link embedded
`in the additional dynamic preview information” is found in Figures 4 and 6
`(the same Figures 4 and 6 in the ’384 patent) and paragraphs in the original
`specification that correspond to the same paragraphs in the ’384 patent. See
`Ex. 1001, 7:21–42, 7:60–8:2; see also Ex. 1004, 114–15. In particular, the
`prosecution history includes the following statement:
`Claim 28 describes the expanded dynamic bar including
`additional dynamic preview information and “a selectable link
`embedded in the additional dynamic preview information to
`invoke the software application.” This is shown, for example,
`in FIGS. 4 and 6 of the present application, and described in
`paragraphs [0046] and [0048]. A person skilled in the art
`would understand that a “selectable link” is a portion of the
`display, often text, that a user can select, for example by
`positioning a cursor over the link and actuating an input device,
`such as a mouse button or a clickable trackball switch. This
`selectable link is embedded in the additional dynamic preview
`information of the expanded dynamic bar. That is, the
`selectable link may be selected by selecting a portion of the
`additional dynamic preview information, such as by moving a
`cursor over a portion of the dynamic preview information and
`actuating an input device.
`Ex. 1004, 114–115 (emphasis omitted, italics added).
`We do not discern from the prosecution history a clear disavowal or
`disclaimer of the scope of the term “additional dynamic preview
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`information” to exclude a link, for example, that is next to dynamic
`information, especially in light of the above passage. Based on the above
`passage, referring to the same Figures 4 and 6, a static link that is next to
`dynamic information would all be considered part of “additional dynamic
`preview information.” This is shown in Figure 6 reproduced above, for
`example, where the seemingly static “call voice mail” link is next to
`dynamic information “5.”
`Patent Owner does not address the above statement from the
`prosecution history, but rather argues that Figures 4 and 6 and the
`specification explaining those figures supports its construction. PO Resp.
`20–22. Figure 6 is shown above, and Figure 4, annotated by Patent Owner,
`is reproduced below.
`
`
`Figure 4 from the ’384 patent, annotated by Patent Owner, illustrates a
`main screen following user action. With respect to Figure 4, Patent Owner
`argues that “the displayed unread messages 404 / recent new emails 406
`make up the additional dynamic preview information of expanded drop
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`down 407 and the “selectable link” is “embedded” in the dynamic
`information because the link (e.g., the list) includes dynamic information
`(e.g., unread messages 404 / recent new emails 406).” Id. at 20 (footnote
`omitted). The specification, however, describes the list, what Patent Owner
`argues is the link, as the “recent emails,” which a person having ordinary
`skill in the art would have understood means what is seen in 407. Ex. 1001,
`7:32–40. The list or link includes static information, in that it is not
`changing, even though the list is beside or part of the dynamic preview
`information seen in 404. Accordingly, we are not persuaded by Patent
`Owner’s argument with respect to Figure 4, because it is not consistent with
`the actual written description in the specification. Moreover, Patent
`Owner’s arguments that the highlighted portion seen above in reproduced
`Figure 4 is dynamic (PO Resp. 20, n.3) have not been explained adequately
`with support from the specification, and would appear to be inconsistent
`with Patent Owner’s arguments regarding Figure 6.
`With respect to Figure 6, Patent Owner argues that the “50 unread” is
`the only link that meets the disputed phrase because the link includes
`dynamic information (e.g., 50). Id. at 21–22. The specification, however,
`describes in detail link 610 (“Call Voice Mail”) as exemplary of the type of
`link found in the expansion pop-up 602. Ex. 1001, 7:60–66. There is no
`discussion of the “50 unread” link as representative of the claimed invention.
`Patent Owner’s suggestion that the claims cover the portion of the figure
`disclosing the “50 unread” link, but not link 610, lacks adequate support.
`See PO Resp. 23. We find that the only described link, link 610, along with
`element 608 (the dynamic count of voicemails, “5,” next to link 610),
`provide support for the disputed phrase, because the combination of the two
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`(e.g., “5 Call Voice Mail”) is “additional dynamic information” that includes
`a selectable link (“Call Voice Mail”).
`We also have considered the testimony of Dr. Ligler, to which we are
`directed. See PO Resp. 22 (citing Ex. 2007 ¶¶ 42–45). His brief testimony
`on the matter does not assist us much at all and is based on the same flawed
`premises we have addressed already. See, e.g., Ex. 2007 ¶ 45 (“[I]t would
`seem to logically follow that the ‘selectable link’ must itself contain
`dynamic preview information.”).
`For all of the reasons discussed above, we are not persuaded by Patent
`Owner’s arguments that “a selectable link embedded in the additional
`dynamic preview information” requires the additional dynamic preview
`information to be preview information that is entirely dynamic and requires
`the selectable link to include such dynamic preview information. PO Resp.
`11. Based on the record before us, “a selectable link embedded in the
`additional dynamic preview information” means that additional dynamic
`preview information includes dynamic information, but it can also include
`other types of information such that the “selectable link” may or may not
`include dynamic information.
`
`D. Obviousness Based On Cadiz
`Petitioner alleges that claims 1, 4–7, and 10–13 are unpatentable as
`obvious over Cadiz under 35 U.S.C. § 103(a). Pet. 21–44. In support of its
`showing, Petitioner relies upon the declaration of Dr. Dan R. Olsen, Jr. Id.
`(citing Ex. 1002). Petitioner asserts that the claims would have been
`obvious based on the “person-centric interface” and, alternatively, based on
`the “email-centric interface.” See, e.g., Pet. 15–16.
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`1. Cadiz
`Cadiz describes a system and method of providing peripheral
`awareness of information to a user. Ex. 1005, Abstract. The method
`automatically and dynamically provides current information in an interactive
`peri
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