`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 IPR2017-00914
`Patent 8,713,466 B2
`____________
`
`
`
`
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
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`IPR2017-00914
`Patent 8,713,466 B2
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`I. INTRODUCTION
`Google LLC (“Petitioner”) filed a Petition for inter partes review of
`claims 1–26 of U.S. Patent No. 8,713,466 B2 (Ex. 1001, “the ’466 patent”).
`Paper 1 (“Pet.”). BlackBerry Limited (“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 1–26 of the ’466 patent. Paper 7 (“Dec.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 17, “PO Resp.”) and Petitioner filed a Reply to Patent
`Owner’s Response (Paper 20, “Reply”). On May 30, 2018, we held an oral
`hearing. Paper 28 (“Tr.”).1
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has shown by a preponderance of the
`evidence that claims 1–26 of the ’466 patent are unpatentable.
`
`A. Related Matters
`The parties state that the ’466 patent is the subject of a court
`proceeding styled BlackBerry Limited v. BLU Products, Inc., Case No. 16-
`23535 (S.D. Fla.). Pet. 1; Paper 4, 1. Application 13/770,190 (“the ’190
`application”) was filed February 19, 2013 and issued as the ’466 patent, but
`claims, under 35 U.S.C. § 120, the benefit of application 10/983,606 (“the
`’606 application” or “parent application”), filed November 9, 2004, which
`issued as U.S. Patent No. 8,402,384 B2 (“the ’384 patent” or “parent
`patent”). The ’384 patent is involved in IPR2017-00913.
`
`
`1 The oral hearing included a related proceeding, IPR2017-00913. Paper
`25.
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`B. The ’466 Patent
`The ʼ466 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 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.
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`Figures 5 and 6 illustrate main screen 300 with dynamic bar 304 and
`
`expansion pop-up interface 602. Id. at 7:51–54, 8:1. Dynamic bar 304
`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
`7:54–57. 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 8:1–5.
`Preview information includes count 608 and link 610 to invoke the
`associated application user interface for the service. Id. at 8:5–7. According
`to the ’466 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 8:7–10.
`
`C. Illustrative Claim
`Petitioner challenges claims 1–26 of the ’466 patent. Claims 1, 14,
`and 22 are independent claims. Claim 1, reproduced below, is illustrative of
`the claimed subject matter:
`1. A method for displaying preview information, the method
`comprising:
`displaying on a display dynamic preview information
`in a 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; and
`expanding the dynamic bar to display an expanded
`dynamic bar in response to a first input, 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
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`being different from the dynamic preview information
`displayed in the dynamic bar;
`the additional dynamic preview information
`comprising a selectable link which when activated, invokes
`the software application.
`Id. at 11:40–58.
`
`D. Instituted Grounds of Unpatentability
`We instituted trial based on all asserted grounds of unpatentability as
`follows (Dec. 24):
`Basis
`Reference(s)
`§ 103(a)3
`Cadiz2
`§ 103(a)
`Cadiz and Hawkins4
`Cadiz and Siedlikowski5 § 103(a)
`Cadiz and Yamadera6
`§ 103(a)
`
`Challenged Claim(s)
`1, 4, 6, 12–14, 17, 22, and 24
`2, 3, 15, and 23
`7–9, 18, 19, and 25
`5, 10, 11, 16, 20, 21, and 26
`
`
`2 U.S. Patent Application Publication No. 2002/0186257 A1, filed June 8,
`2001, published Dec. 12, 2002 (Ex. 1006, “Cadiz”).
`3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. §§ 102 and 103. Because the
`’466 patent has an effective filing date before the effective date of the
`applicable AIA amendments, we refer to the pre-AIA versions of 35 U.S.C.
`§§ 102 and 103.
`4 U.S. Patent No. 7,007,239 B1, issued Feb. 28, 2006 (Ex. 1007,
`“Hawkins”).
`5 U.S. Patent No. 6,741,232 B1, issued May 25, 2004 (Ex. 1008,
`“Siedlikowski”).
`6 U.S. Patent Application Publication No. 2002/0123368 A1, filed Aug. 20,
`2001, published Sept. 5, 2002 (Ex. 1009, “Yamadera”).
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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 (citing Ex. 1002 ¶¶ 13–14). Patent
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`Owner relies on the testimony of Dr. Ligler, who mainly agrees with Dr.
`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. 10–11 (citing Ex. 2007 ¶¶ 40–44).
`While we agree with Dr. Ligler’s assessment that the ’466 patent
`describes its invention in the context of graphical user interfaces on
`communication devices (Ex. 2007 ¶ 44), the ’466 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, 11:25–30. 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.7 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
`
`
`7 We would construe the claim term discussed below the same under Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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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
`“additional dynamic preview information comprising a selectable link.”
`Each independent claim recites “the additional dynamic preview
`information comprising a selectable link which when activated, invokes 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.” Such additional dynamic preview information
`may include information, such as a static link as shown in
`Figures 4 and 6 of the ’466 patent.
`Dec. 10.
`Patent Owner disagrees with that determination and argues that
`additional dynamic preview information comprising a selectable link
`“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. 12. Figure 6 from the ’466
`patent, shown below and annotated by Patent Owner, best illustrates Patent
`Owner’s position.
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`Figure 6 from the ’466 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 included in the ‘additional dynamic preview information’
`because the link includes dynamic information (e.g., 50).” PO Resp. 22–23.
`Patent Owner contends that none of the other links, for example the “5 Call
`Voice Mail,” would 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 identified in FIG. 6 and described in the specification is
`selectable link 610 [5 Call Voice Mail], which does not include but is next to
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`dynamic information (i.e., count 608).” Reply 4 (citing Ex. 1001, 8:1–10,
`Fig. 6). Petitioner argues that selectable link 610 exemplifies “additional
`dynamic preview information comprising a selectable link” 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.
`It is necessary for us to construe the phrase because there is a dispute
`about whether the prior art (Cadiz) describes “additional dynamic preview
`information comprising a selectable link.” In particular, Patent Owner
`agrees that Cadiz describes additional dynamic preview information, but
`disagrees that Cadiz describes links that include dynamic information. PO
`Resp. 32–36. 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.8
`We begin with the plain language of the independent claims. Claim 1
`is representative and recites “the additional dynamic preview information
`comprising a selectable link.” Thus, on its face, the claim states that the
`“additional dynamic preview information compris[es],” or includes, a
`selectable link. The claim does not state that the selectable link includes
`additional dynamic preview information. Patent Owner argues 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. 15. But Patent
`
`8 This determination is consistent with our preliminary determination. Dec.
`10.
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`Owner does not explain its position or how a claim that requires one thing to
`include another thing, means the converse. Accordingly, we are not
`persuaded by Patent Owner’s argument that the plain language requires a
`selectable link that includes additional dynamic preview information.
`The phrase “additional dynamic preview information” was added
`during prosecution of the ’466 patent’s parent application, which matured
`into the ’384 patent. Ex. 1005, part 1, 108–111. While the written
`description of the ’466 patent, which is nearly identical to that of the ’384
`patent, describes dynamic preview information, the ’466 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 a person having ordinary skill in the art
`at the time of the invention regarding the understanding of “additional
`dynamic preview information.” PO Resp. 16, n.1; Reply 2.
`The specification of the ’466 patent describes 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 ’466 patent does not
`explicitly define “dynamic” information, the ’466 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
`generally static and as such is not particularly useful for representing
`changing information associated with the application activated by the icon.”
`Ex. 1001, 1:58–62 (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 ’466
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`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 7:60–65. Accordingly, we agree with Petitioner, and
`find that the ’466 patent describes “dynamic preview information” as
`information that can include information that is not dynamic. Reply 2.
`Patent Owner does not sufficiently explain why the description of
`“dynamic preview information” in the ’466 patent discussed above supports
`its contentions that the claimed “selectable link” must include dynamic
`preview information. PO Resp. 15–16. 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).” PO Resp. 15–16 (citing Ex. 1001, 7:54–67). Patent Owner never
`explains its position on why information such as “Missed call from NNN” is
`dynamic information, but information such as “Call Voice Mail” as shown
`in Figure 6 is not.9 We will not construe terms narrowly without a reasoned
`explanation for doing so.
`We next address Patent Owner’s arguments that the prosecution
`history of the parent ’384 patent supports its construction. Id. at 16–24.
`First and foremost, the claim language in the ’384 patent, added by
`amendment and discussed during prosecution of that patent, is not the same
`as the claim language before us in this case. Patent Owner does not
`
`
`9 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.
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`sufficiently explain why remarks made regarding the ’384 patent claim
`phrase “a selectable link embedded in the additional dynamic preview
`information” sheds light on the claim language before us, which is “the
`additional dynamic preview information comprising a selectable link.”
`Indeed, it appears that Patent Owner’s argument that the selectable link
`includes dynamic preview information is premised on the notion that the
`phrase in the ’466 patent is the same as the phrase in the ’384 patent. The
`phrases are not the same, and Patent Owner fails to show why we should
`consider the prosecution history of the ’384 patent when the phrases are
`different. For this reason alone, we are not persuaded that the prosecution
`history of the ’384 patent with respect to a different claim phrase is
`particularly relevant to the meaning of the disputed phrase before us in this
`case. Moreover, we have reviewed Patent Owner’s arguments regarding the
`prosecution history of the ’384 patent, but disagree that the evidence to
`which Patent Owner directs us supports the contention that the claims before
`us should be construed as narrowly as proposed.
`Patent Owner argues that during prosecution of the ’384 patent, it
`amended the claims to overcome a rejection in view of Ögren10 to include
`“displaying a selectable link embedded in the additional dynamic preview
`information to invoke the software application.” PO Resp. 17 (citing Ex.
`1005, 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
`
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`10 EP 1434411 A1, filed Dec. 23, 2002, pub. June 30, 2004 (“Ögren”).
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`cursor over a portion of the dynamic preview information and actuating an
`input device. Id. at 17–18 (citing Ex. 1005, 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 18. Such reasoning
`does not follow from 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. 1005, 114–115.
`According to Patent Owner, the Examiner subsequently rejected the
`claims as obvious in view of Ögren and Aaltonen11 and relied on Aaltonen’s
`Figure 22E for the phrase of “displaying a selectable link embedded in the
`additional dynamic preview information to invoke the software application.”
`PO Resp. 18 (citing Ex. 1005, 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 19 (citing Ex. 1005, 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
`
`11 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. 1005, 70–71. Moreover, the argument that Aaltonen does
`not disclose a selectable link “embedded in the additional dynamic preview
`information” was “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. Dec.
`8.
`
`According to Patent Owner, the Examiner subsequently rejected the
`claims again as obvious in view of Ögren and Wagner12 and relied on
`Wagner to meet “displaying a selectable link embedded in the additional
`dynamic preview information to invoke the software application.” PO Resp.
`19 (citing Ex. 1005, 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. at 19–20 (citing Ex. 1005, 39). 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. For similar reasons articulated above, we
`
`12 U.S. Patent App. Pub. 2004/0155908 A1, filed June 20, 2003, pub. Aug.
`12, 2004 (“Wagner”).
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`are not persuaded that Patent Owner explained in any way that the selectable
`link must include additional dynamic preview information. Ex. 1005, 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. 20 (citing Ex. 1005, 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 the selectable link
`is part of or next to the dynamic information as Patent Owner now asserts.
`Ex. 1005, 62.
`In summary, Patent Owner’s arguments based on the prosecution
`history of the ’384 patent do not persuade us that “additional dynamic
`preview information comprising a selectable link” must be interpreted as
`narrowly as Patent Owner suggests for the reasons above. Patent Owner
`fails to explain sufficiently why the representations made before the Office
`demonstrate that Patent Owner disclaimed or disavowed a link and dynamic
`information next to the link as “additional dynamic preview information.”
`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 “additional dynamic preview information comprising a
`selectable link” to exclude information, such as an icon or link next to
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`dynamic descriptive information. Omega Eng’g, Inc. v. Raytek Corp., 334
`F.3d 1314, 1325–26 (Fed. Cir. 2003).
`We do, however, find the prosecution history sheds light on what
`Patent Owner relied on from the specification of the ’384 patent to provide
`written description support for the “selectable link embedded in the
`additional dynamic preview information.” 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 (same Figures 4
`and 6 in the ’466 patent and the ’384 patent) and paragraphs in the original
`specification of the parent application and involved application that
`correspond to the same paragraphs in the ’466 patent. See Ex. 1001, 7:20–
`28, 7:51–8:10; see also Ex. 1005, 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. 1005, 114–115 (emphases added).
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`We do not discern from the prosecution history a clear disavowal or
`disclaimer of the scope of the term “additional dynamic preview
`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 in this case, 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.
`21–23. Figure 6 is shown above, and Figure 4, annotated by Patent Owner,
`is reproduced below.
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`Figure 4 from the ’466 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 down 407 and that the
`additional dynamic preview information ‘compris[es]’ a ‘selectable link’
`because the link (e.g., the list) includes dynamic information (e.g., unread
`messages 404 / recent new emails 406).” Id. at 22–23 (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, 7:40–48.
`The list or link contains 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
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`the highlighted portion seen above in reproduced Figure 4 (“From: Jack |
`Subject: Help me!”) is dynamic (PO Resp. 22, n.4) have not been explained
`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 23. The specification, however,
`describes in detail link 610 as exemplary of the type of link found in the
`expansion pop-up 602. Ex. 1001, 8:1–7. There is no discussion of the “50
`unread” link as representative of the claimed invention. We find that the
`only described link, link 610, along with element 608, provide support for
`the disputed phrase, because the combination of the two (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 Ex. 2007 ¶¶ 45–49. 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 ¶ 49 (“[I]t would
`seem logically to 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 “additional dynamic preview information
`comprising a selectable link” 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. 12.
`Based on the record before us, “additional dynamic preview information
`comprising a selectable link” means that additional dynamic preview
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`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.
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`D. Obviousness of claims over Cadiz
`Petitioner contends claims 1, 4, 6, 12–14, 17, 22, and 24 are
`unpatentable under 35 U.S.C. § 103 as obvious over Cadiz. Pet. 4–43. In
`support of its showing, Petitioner relies upon the declaration of Dr. Olsen.
`Id. (citing Ex. 1002).
`
`1. Cadiz
`Cadiz describes a system and method of providing peripheral
`awareness of information to a user. Ex. 1006, Abstract. The method
`automatically and dynamically provides current information in an interactive
`peripheral display utilizing a customizable dynamic object, or “ticket,”
`paired with a “viewer.” Id. Each ticket is represented by a data structure
`such as an XML data file and inc