Trials@uspto.gov
`571-272-7822
`
`Paper 7
`Entered: September 11, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`571-272-7822
`
`Paper 7
`Entered: September 11, 2017
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`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.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`IPR2017-00914
`Patent 8,713,466 B2
`
`I. INTRODUCTION
`Google, Inc. (“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 4 (“Prelim. Resp.”). Institution of an inter partes review is
`authorized by statute when “the information presented in the petition . . . and
`any response . . . shows that there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon
`consideration of the Petition and Preliminary Response, we conclude the
`information presented shows there is a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of claims 1–26 of the ’466
`patent.
`
`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.
`
`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
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`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 a 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
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`iconic representation of the service 606 and preview information. Id. at 8:1–
`5. Preview information includes count 608 and a 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 8:7–8:10.
`
`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 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.
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`D. Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–26 are unpatentable based on the
`following grounds (Pet. 2):
`Basis
`Reference(s)
`§ 103(a)
`Cadiz1
`§ 103(a)
`Cadiz and Hawkins2
`Cadiz and Siedlikowski3 § 103(a)
`Cadiz and Yamadera4
`§ 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
`
`II. DISCUSSION
`
`A. 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. 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
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes that the terms of the claims of the ’466 patent be
`interpreted in accordance with their plain and ordinary meaning under the
`
`
`1 U.S. Patent Application Publication No. 2002/0186257 A1, filed Jun. 8,
`2001, published Dec. 12, 2002 (Ex. 1006) (“Cadiz”).
`2 U.S. Patent No. 7,007,239, issued Feb. 28, 2006 (Ex. 1007) (“Hawkins”).
`3 U.S. Patent No. 6,741,232, issued May 25, 2004 (Ex. 1008)
`(“Siedlikowski”).
`4 U.S. Patent Application Publication No. 2002/0123368 A1, filed Aug. 20,
`2001, published Sep. 5, 2002 (Ex. 1009) (“Yamadera”).
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`broadest reasonable interpretation standard. Pet. 4. Patent Owner proposes
`a construction for “additional dynamic preview information comprising a
`selectable link.” Prelim. Resp. 10–15.
`Each of the independent claims recites “the additional dynamic
`preview information comprising a selectable link which when activated,
`invokes the software application.” Patent Owner argues that “the additional
`dynamic preview information comprising a selectable link” requires that the
`selectable link be part of the additional dynamic preview information.
`Prelim. Resp. 10–15. We agree that “additional dynamic preview
`information comprising a selectable link” means that the selectable link be
`part of the additional dynamic preview information based on the plain and
`ordinary meaning of “comprising.”
`Patent Owner does not propose an express construction for “additional
`dynamic preview information,” but implicitly argues it means that all parts
`of the preview information be dynamic, including the selectable link, or that
`the link itself must contain dynamic information. See, e.g., Prelim. Resp.
`35–37. Conversely, Petitioner implicitly argues that all information
`contained in a window of a display is considered “additional dynamic
`preview information” if the display includes at least some dynamic
`information, such that a link found anywhere within that window forms part
`of the additional dynamic preview information. See, e.g., Pet. 24; Ex. 1002
`¶ 80.
`The phrase “additional dynamic preview information” was added
`during prosecution of the parent application, which matured into the ’384
`patent. Ex. 1005, part 1, 108–111. While the specification of the ’466
`patent, which is the same as the ’384 patent, describes dynamic preview
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`information, that description is with respect to information in the dynamic
`bar. Ex. 1001, 7:54–61. Nowhere does the ’466 patent use the phrase
`“additional dynamic preview information.”
`Patent Owner argues that during prosecution of the parent application
`the claims were amended to recite “a selectable link embedded in the
`additional dynamic preview information” to distinguish the Aaltonen5
`reference. Prelim. Resp. 11. Patent Owner argues that the argument made
`regarding the amendment makes clear that a selectable link displayed next to
`dynamic preview information, for example, would not be part of additional
`dynamic preview information. Id. at 12. Patent Owner alleges that the
`amendment and argument “successfully distinguish[ed] the Aaltonen
`reference” and “the Examiner subsequently allowed the patents based on”
`the amendment and argument. Id. at 11–13; see also id. at 7 (“After
`considering this argument, the Examiner withdrew the rejections . . . .”).
`Patent Owner’s arguments based on the prosecution history of the
`’384 and ’466 patents do not persuade us that “additional dynamic preview
`information” must be interpreted as narrowly as Patent Owner suggests.
`First, it does not appear that the Examiner allowed the claims of the ’384
`patent based on Patent Owner’s amendment and argument over Aaltonen as
`Patent Owner alleges. Id. at 11–12. Instead, it appears that the Examiner
`did not rely on Aaltonen after the Examiner determined that Aaltonen was
`not prior art. See Ex. 1005, part 1, 45 (Examiner summarizing interview:
`“As per the prior art to Aaltonen, applicants argued that the provisional date
`that is relied upon does not provide support for the subject matter.
`
`5 U.S. Patent App. Pub. 2006/0020904 A1, filed July 11, 2005, pub. Jan. 26,
`2006 (“Aaltonen”).
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`Therefore, Aaltonen will be withdrawn and further search will be
`considered.”); 62–63 (interview summary including argument that Aaltonen
`“is not prior art”). Moreover, the argument that Aaltonen does not disclose a
`selectable link “embedded in the additional dynamic preview information”
`was “expressly disclaim[ed]” in the same interview summary noting the
`argument that Aaltonen is not prior art. Id. at 63. We are reluctant to rely
`on statements expressly disclaimed during prosecution and that the
`Examiner never accepted as Patent Owner alleges, especially where Patent
`Owner fails to acknowledge the aspects of the prosecution history that
`undermine its arguments.
`In addition, Patent Owner fails to explain why the link and the
`information (next to each other as shown in Aaltonen), cannot all be
`considered “additional dynamic preview information.” The prosecution
`history on this point is equivocal, and does not persuade us of a disavowal or
`disclaimer of the scope of the term “additional dynamic preview
`information” to exclude information, such as an icon or link next to
`descriptive information. Indeed, the prosecution history sheds light on what
`provides 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 (Ex. 1001, 7:20–28,
`7:51–8:10). Ex. 1005, part 1, 114–115. The prosecution history also
`includes the following statement:
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`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.
`Id. (emphasis added).
`We do not discern from the prosecution history a clear disavow or
`disclaimer of the scope of the term “additional dynamic preview
`information” to exclude a link, for example, that is next to information.
`Based on the above passage, a link would 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.”
`We also have considered Patent Owner’s arguments that its annotated
`Figure 4 shows a selectable link as claimed. Prelim. Resp. 15 (showing
`highlighted yellow on a selectable link for an email). But Patent Owner has
`not explained how the highlighted yellow example meets Patent Owner’s
`own narrow construction of “additional dynamic preview information.”
`Rather, the highlighted yellow portion could be considered static, because
`the link which contains a description of the email (e.g., “From: Jack” and
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`“Subject: Help me!”) does not apparently change,6 as opposed to other
`preview information, such as the count of unread messages. At a minimum,
`the “From” and “Subject” portions of the lines in Figure 4 appear static
`rather than dynamic. Patent Owner’s use of Figure 4 also fails to address
`Figure 6. Figure 6 also includes links which appear static (“Call Voice
`Mail,” “View SMS”), yet during prosecution, such links were relied on as
`selectable links in the “additional dynamic preview information.”
`Based on the record before us, we agree with Petitioner 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.
`
`B. 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. Dan R.
`Olsen, Jr. Id. (citing Ex. 1002).
`
`
`6 The ’466 patent describes 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).
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`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.
`Figure 2 of Cadiz is reproduced below.
`
`
`Figure 2 depicts a “high level general architectural diagram illustrating
`exemplary system components.” Id. at ¶57. Figure 2 shows the paired
`tickets and viewers forming items 200 that may make use of services 230
`that “dynamically track, interact with, and/or watch one or more particular
`information sources 240.” Id. at ¶ 76. “[S]ervices 230 are not limited to
`merely providing communications” to sources of information, and “represent
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`shared code or functions that provide functionality for accessing, receiving,
`retrieving, and/or otherwise interacting with any conventional information,
`source of information, or communications contact.” Id. at ¶¶ 84–85.
`Examples of services 230 include “the functionality necessary for
`monitoring an email folder . . . for sending or receiving email messages[,
`and] . . . for communication with contacts or transferring information via any
`number of conventional methods, such as, for example instant messaging.”
`Id. at ¶ 86. Container 250 containing hosting items 200 may, in one
`embodiment, take the form of a sidebar along either a portion of display
`device 260 or the entire display device 260. Id. at ¶ 95.
`Interaction with items 200 in containers 250 “call[s] up actionable
`expanded information or contact windows” that Cadiz refers to as “enhanced
`tooltip windows.” Id. at ¶ 105. These “tooltips are actionable in the sense
`that . . . if a user clicks on or otherwise selects particular information or
`elements with the tooltip, the tooltip will automatically link to more detailed
`information for the particular information or contact represented by the item
`200.” Id. at ¶ 106.
`
`Cadiz discloses several examples of these tooltip windows. Figure 8B
`of Cadiz is reproduced below.
`
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`Figure 8B depicts enhanced tooltip window 825 activated by clicking on
`person item 815 in a sidebar. Id. at ¶ 21. Window 825 provides a “short
`summary of new messages 825 and 830” and “availability via any of five
`individual communications channels 840.” Id. Window 825 also provides a
`time indicating when the person was last available. Id.
`
`Figure 10 of Cadiz is reproduced below.
`
`
`Figure 10 depicts enhanced tooltip email window 1020 created by clicking
`on email type ticket/item 1010 in container/sidebar 1000. Id. at ¶ 203.
`Window 1020 “allows user interaction with received email as from within a
`typical email application.” Id.
`
`2. Discussion
`Petitioner asserts that Cadiz renders obvious claims 1, 4, 6, 12–14,
`17, 22, and 24. Pet. 4–43. We begin our analysis with claim 1. Claim 1
`recites “[a] method for displaying preview information.” The present record
`supports the contention that Cadiz describes a computing device, a display
`including a graphical user interface (GUI), and displaying preview
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`information, such as displaying information about the availability of a
`person and about received emails. Pet. 4–5 (citing Ex. 1006 ¶¶ 40, 41, 50,
`54, 74, Figs. 2, 8A–8C, 10; Ex. 1002 ¶¶ 25–31, 38–41).
`Claim 1 recites “displaying on a display dynamic preview information
`in a dynamic bar.” The present record supports the contention that Cadiz
`describes displaying dynamic preview information in a dynamic bar. For
`instance, Cadiz describes a sidebar on a display which “host[s] one or more
`columns of items in a persistent interactive display strip along one edge of a
`conventional display device” and that provides “dynamic communication
`access and information awareness.” Ex. 1006 ¶¶ 16, 70. Petitioner points to
`several passages in Cadiz that describe displaying dynamic preview
`information in a dynamic bar as claimed (e.g., the “person-centric interface”
`and the “email-centric interface”). Pet. 5–8, 12–13 (citing multiple
`paragraphs and figures from Ex. 1006; Ex. 1002 ¶¶ 43, 44, 46–49, 56–59).
`The present record further supports the contention that Cadiz
`describes “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.” The Petition relies on the description in Cadiz, for
`example, that describes management of dynamic preview information
`through services 230 that include software applications. Pet. 9–12, 14–15
`(citing multiple paragraphs and figures from Ex. 1006; Ex. 1002 ¶¶ 50–55,
`60–62).
`Claim 1 further recites “expanding the dynamic bar to display an
`expanded dynamic bar in response to a first input.” The present record
`supports the contention that Cadiz describes expanding the dynamic bar to
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`display an expanded dynamic bar in response to a first input. Pet. 15–18,
`(citing multiple paragraphs and figures from Ex. 1006; Ex. 1002 ¶¶ 63–69).
`For example, Cadiz describes that interaction with items in a sidebar “call[s]
`up actionable information or contact windows, namely ‘enhanced tooltip
`windows,’ that provide further levels of detail beyond that provided by the
`iconized ticket thumbnail.” Ex. 1006 ¶ 105.
`Claim 1 further recites “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.” The
`present record supports the contention that Cadiz describes that the
`expanded dynamic bar displays additional dynamic preview information that
`is different from the dynamic preview information displayed in the dynamic
`bar. Pet. 18–23, (citing multiple paragraphs and figures from Ex. 1006; Ex.
`1002 ¶¶ 70–78). For instance, Cadiz describes for the “person-centric
`interface” that person window 825 of Fig. 8B (expanded dynamic bar)
`includes “further information about the person or entity, as well as action
`buttons for initiating communication via any of a number of conventional
`communications channels.” Ex. 1006 ¶ 183. As another example, Cadiz
`describes, with respect to the “email-centric interface,” that “[u]ser selection
`of the email ticket/item 1010 serves to expand/open an enhanced tooltip
`email window 1020 which allows user interaction with received email as
`from within a typical email application.” Id. ¶ 203. The present record also
`supports the contention that the additional dynamic preview information is
`determined from the information managed by the software application. See
`e.g., Pet. 23.
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`Claim 1 recites “the additional dynamic preview information
`comprising a selectable link which when activated, invokes the software
`application.” The present record supports the contention that the limitation
`would have been obvious based on Cadiz for both the “person-centric
`interface” and the “email-centric interface.” Pet. 24–31 (citing multiple
`paragraphs and figures from Ex. 1006; Ex. 1002 ¶¶ 79–97). For example,
`Petitioner contends that because action buttons are included in the person
`window 825 of Figure 8B which displays further information about the
`person or entity of interest (“additional dynamic preview information”), the
`action buttons are in the additional dynamic preview information. Pet. 24.
`Petitioner further contends that it would have been obvious to replace the
`buttons with links as claimed to provide the same functionalities of the
`action button, since doing so would have allowed for displayed information
`itself to be selected to invoke communications software application, rather
`than a separate actionable element. Pet. 26–27 (citing Ex. 1002 ¶¶ 85–88).
`Patent Owner responds that Petitioner improperly mixes and matches
`between numerous embodiments from Cadiz without sufficient explanation.
`Prelim. Resp. 16–20. According to Patent Owner, the Petition fails to
`explain how the figures corresponding to the respective person-centric and
`email-centric interfaces correspond to other figures to form single
`embodiments. Id. at 20. Based on our current review of the record,
`including the Petition, the cited portions of Cadiz, and the Declaration of Dr.
`Olsen, we are not persuaded that the Petition improperly mixes distinct
`embodiments from Cadiz without adequate explanation. The Petition relies
`on broad aspects of Cadiz that disclose the general system and Cadiz’s
`sidebar, and then focuses on two types of items (person-centric and email-
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`centric) that lead to two different pop-up windows with different
`functionality to allegedly meet various limitations of claim 1. We interpret
`Petitioner’s contentions as relying on two separate embodiments and
`alternative theories supporting Petitioner’s challenge to claim 1—one based
`on Cadiz’s system employing the person-centric interface, and one based on
`Cadiz’s system employing the email-centric interface. On the current
`record, we do not view Petitioner’s reliance on these aspects of Cadiz’s
`disclosure as improper or unclear.
`Patent Owner also argues that Petitioner fails to correctly and
`consistently identify the claimed “software application.” Prelim. Resp. 20–
`34. With respect to the person-centric interface, Patent Owner alleges that
`Petitioner inconsistently relies on “services 230” and MSN Messenger as the
`software application, which is impermissible because Cadiz describes MSN
`Messenger as an information source 240 rather than a service 230. Id. at 21–
`27. With respect to the email-centric interface, Patent Owner alleges that
`Cadiz “makes clear that the user’s email program is distinct from services
`230” and “does not adequately explain why or how Cadiz’s user’s email
`application could be part of services 230.” Id. at 28–29. Patent Owner also
`contends that Petitioner undermines its argument by drawing a distinction
`between services 230 and the email application in its obviousness analysis.
`Id. at 32–34.
`On the current record, we are not persuaded by Patent Owner’s
`attorney arguments. Cadiz discloses services that can include instant
`messaging software and software capable of monitoring and interacting with
`email. See Ex. 1006 ¶¶ 66–67, 86. With respect to the person-centric
`interface, Petitioner refers to MSN Messenger as one example of an instant
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`messaging software application, and therefore a service. Pet. 10–11. Given
`Cadiz’s disclosure, we are persuaded, on the current record, Petitioner
`demonstrates sufficiently that Cadiz’s services, which include instant
`messaging software, disclose the claimed software application, and that
`MSN Messenger is one type of instant messaging software. The fact that
`MSN Messenger can also supply information for use in other services as
`Patent Owner alleges does not undermine Petitioner’s position that MSN
`Messenger is one example of instant messaging software, and that Cadiz’s
`services 230 include instant messaging software. See also Ex. 1002, ¶¶ 52–
`53 (Dr. Olsen opining that “services” include instant messaging software
`applications, including MSN Messenger and other commercially available
`applications).
`With respect to the email-centric interface, we are not persuaded,
`given Cadiz’s broad definition of services as including email functionality,
`that Cadiz draws a clear distinction between services and email applications
`as Patent Owner argues. See Cadiz ¶¶ 66–67, 86; Prelim. Resp. 28–29.
`Instead, based on the current record, we are persuaded Petitioner
`demonstrates sufficiently that Cadiz discloses the claimed “software
`application” in the form of email software applications, which were well
`known at the time of invention. See id.; see also Ex. 1002 ¶ 60 (Dr. Olsen
`identifying Microsoft Outlook as an example of known email applications).
`We also are not persuaded that the Petition contains a fatal inconsistency by
`suggesting that the same email application manages the information shown
`in email pop-up window 1020 and provides more complete email application
`functionality after a user clicks on one of the emails shown in that pop-up
`window. Prelim. Resp. 33. As Petitioner’s explains, it would have been
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`beneficial to have the same software application perform both tasks, and we
`credit Dr. Olsen’s testimony on these points at this time. See Pet. 30–31
`(citing Ex. 1002, ¶ 95).
`Patent Owner also argues that Petitioner has not adequately
`established that Cadiz discloses the limitation requiring additional dynamic
`preview information comprising a selectable link, or that it would have been
`obvious to do so. With respect to the person-centric interface, Patent Owner
`alleges that Cadiz merely discloses alleged selectable links—Cadiz’s action
`buttons—next to rather than part of the additional dynamic preview
`information. Prelim. Resp. 34–36. Patent Owner again relies on the alleged
`distinction it made during prosecution to “overcome” the rejection based on
`Aaltonen. Id. at 36–37. With respect to the email-centric interface, Patent
`Owner alleges that Petitioner fails to provide adequate motivation to modify
`Cadiz’s system to include a link that activates an email application. Id. at
`39–41. According to Patent Owner, there would have been no need to
`invoke an email software application when email window 1020 already
`provides email functionality to a user. Id. at 41–42.
`On this record, Patent Owner’s attorney argument is not persuasive.
`As discussed above in the claim construction section, we reject Patent
`Owner’s implicit argument that claim 1 requires all parts of the preview
`information in the pop-up window to be dynamic, including the selectable
`link, or that the link itself must contain dynamic information. Instead,
`consistent with the ’466 patent specification, the selectable link itself may be
`static and part of a pop-up window that includes additional, static
`information, as long as the window contains some additional dynamic
`preview information. In light of this construction, and based on the current
`
`19
`
`
`
`IPR2017-00914
`Patent 8,713,466 B2
`
`record, Petitioner demonstrates sufficiently that Cadiz’s person window
`discloses action buttons in additional dynamic preview information. See Pet.
`24–26. Petitioner also demonstrates sufficiently that even if the action
`buttons are not considered a selectable link, it would have been obvious to
`include such a link to reduce clutter within the window by avoiding the need
`for a separate icon. See id. at 26–28 (citing Ex. 1002 ¶¶ 85–88).
`We also are not persuaded, based on the current record, by Patent
`Owner’s attorney argument that one of skill in the art would not have been
`motivated to add a selectable link to invoke an email application because the
`email window 1020 provides the same functionality as the email application.
`Prelim. Resp. 39–42. Petitioner demonstrates sufficiently, with support from
`Dr. Olsen, that providing such a link would have provided a better user
`experience and that the email software application may provide features
`desired but not available within email window 1020. Pet. 28–31 (citing Ex.
`1002 ¶¶ 94–97). In addition, Petitioner demonstrates sufficiently, based on
`the current record, that adding a selectable link to the same software
`application that manages the information in email window 1020 would have
`been well within the capabilities of one of ordinary skill in the art, and
`yielded a predictable result. See id.
`Lastly, we address Patent Owner’s argument that Cadiz’s operative
`disclosure was considered during prosecution of the ’466 patent because
`Cadiz includes “effectively the same content as Cadiz-EP (EP-1265157 A2)
`(Ex. 1011).” Prelim. Resp. 42. Patent Owner argues that we should exercise
`discretion under 35 U.S.C. § 325(d) to not institute review based on Cadiz.
`Id. at 42–44. The statutory language of 35 U.S.C. § 325(d) does not require
`rejection of a petition simply because certain art was considered previously
`
`20
`
`
`
`IPR2017-00914
`Patent 8,713,466 B2
`
`by the Office. See 35 U.S.C. § 325(d). Here, Petitioner presents different
`arguments and evidence that were not before the Examiner during ex parte
`prosecution of the application that issued as the ’466 patent. Where new
`arguments and evidence are presented, shedding a different light on the
`Cadiz reference, we decline to deny the petition under 35 U.S.C. § 325(d).
`Independent claims 14 and 22 are similar to claim 1. The contentions
`made with respect to those claims are similar to the contentions made with
`respect to claim 1. Pet. 37–43. Patent Owner does not raise any specific
`arguments relating t
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