Exhibit 2003
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`________________
`
`IPR2019-00706
`U.S. Patent No. 9,349,120
`________________
`
`DECLARATION OF DR. HUGH M. SMITH
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`
`
`
`
`
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`

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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`TABLE OF CONTENTS
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`Page
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`TABLE OF CONTENTS ........................................................................................... I
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`BASIS FOR OPINION .................................................................................... 2
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`A. Qualifications ........................................................................................ 2
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`B. Materials Considered ............................................................................. 3
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`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 5
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`IV. LEGAL STANDARDS FOR PATENTABILITY .......................................... 6
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`V. OVERVIEW OF THE ’120 PATENT ............................................................ 7
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`A.
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`The ’120 Patent Specification ............................................................... 7
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`B.
`
`The ’120 Patent Claims ......................................................................... 8
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`VI. OVERVIEW OF THE CITED ART ............................................................... 9
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`A. Dallas (Ex. 1003) ................................................................................... 9
`
`B.
`
`C.
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`Brown (Ex. 1004) ................................................................................ 11
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`LeBlanc (Ex. 1005) ............................................................................. 11
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`D.
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`Bott (Ex. 1007) .................................................................................... 12
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`E.
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`Kent (Ex. 1010) ................................................................................... 13
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`F. Mann (Ex. 1011) .................................................................................. 13
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`VII. THE BOARD’S CONSTRUCTION OF “NOTIFICATION(S)” ................. 13
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`VIII. DALLAS’S “RED FLAGS,” “SPARKLE” ICON AND FONT
`VARIATIONS ARE NOT “NOTIFICATIONS” ......................................... 21
`
`A. Dallas’s “Red Flags,” “Sparkle” Icon and Font Variations Are
`Not “Notifications”.............................................................................. 21
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`BlackBerry Exhibit 2003, Page i
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`B.
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`C.
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`Dallas Teaches Away From Using the Claimed “Notifications” ........ 21
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`Dallas’s Red Flags and Sparkle Icon Are a Message’s “Manner
`of Display,” Not “Notifications” ......................................................... 23
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`IX. DALLAS AND LEBLANC DO NOT TEACH “SILENCING”
`NOTIFICATIONS ......................................................................................... 25
`
`X.
`
`THE PROPOSED COMBINATIONS FAIL TO DISCLOSE
`“DISPLAYING” IGNORED MESSAGES ................................................... 26
`
`A. Dallas Teaches Automatically “Hiding” Ignored Threads ................. 26
`
`B.
`
`C.
`
`Dallas Teaches Away From Automatically “Expanding”
`Ignored Threads ................................................................................... 29
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`Brown Teaches Away From Automatically “Expanding”
`Ignored Threads ................................................................................... 31
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`BlackBerry Exhibit 2003, Page ii
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`I, Hugh M. Smith, declare as follows:
`
`I.
`
`INTRODUCTION
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`1. My name is Hugh M. Smith. I am a Professor of Computer Science at
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`California Polytechnic State University, with significant experience in
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`communications hardware and software both at the application and system level. I
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`have been retained to serve as an expert on behalf of Patent Owner BlackBerry
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`Limited (“BlackBerry” or “Patent Owner”) in connection with the above-captioned
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`inter partes review (“IPR”) proceeding, to provide my analyses and opinions in
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`certain technical aspects of this proceeding. I understand that this Declaration is
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`used to support BlackBerry’s Patent Owner Response regarding challenged claims
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`of U.S. Patent No. 9,349,120 (“the ’120 Patent”) (Ex. 1001).
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`2.
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`I am being compensated for my work on this case at my standard
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`consulting rate of $600 per hour. I am also being reimbursed for all incurred
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`expenses. No part of my compensation is contingent upon the outcome of this
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`proceeding. I have no other interests in this proceeding or with any of the parties.
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`3.
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`I am competent to testify to the matters stated in this Declaration,
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`have personal knowledge of the facts and statements herein, and each of the
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`statements is true and correct.
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`DECLARATION OF DR. HUGH M. SMITH
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`U.S. Patent No. 9,349,120
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`II. BASIS FOR OPINION
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`A. Qualifications
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`4.
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`I have more than 30 years of experience in the field of computer
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`science.
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`5.
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`I received a bachelor’s degree in Computer Science from Xavier
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`University in 1985. Additionally, I received a master’s degree (1994) and a Ph.D.
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`(1999) in Computer Science from Michigan State University.
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`6.
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`In 2000, I joined the faculty of the Department of Computer Science
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`at California Polytechnic State University (“Cal Poly”). I am currently a tenured
`
`full professor in that department. I served as Director of the Cal Poly Computer
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`Engineering Program from 2009-2013 and again from 2016-2017.
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`7.
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`Among other topics, my research focuses on mobile devices and
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`mobile device software, including application development and computer
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`networks. I also study distributed systems, embedded systems, programming, and
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`robotics. I have published papers, taught courses, and delivered lectures relating to
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`these fields.
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`8.
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`I have been involved in the study and development of smartphone
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`applications since 2010. Between 2010 and 2013, I developed and released
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`Lockmenu, an application for the Android mobile operating system that enables
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`users to launch applications directly from their mobile devices’ lock screens. The
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`BlackBerry Exhibit 2003, Page 2
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`DECLARATION OF DR. HUGH M. SMITH
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`U.S. Patent No. 9,349,120
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`application is aimed at enhancing user efficiency. I have since been involved in
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`numerous other software projects for both Android and iOS devices.
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`9.
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`Additionally, I have extensive professional experience in computer
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`system design. From 1985-1992, prior to beginning my doctoral studies, I worked
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`as a Group Manager, a Senior Systems Analyst and Project Manager, and a System
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`Analyst for Procter and Gamble Co. Before that, from 1983-1985, I was a
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`Programmer Analyst at the Merrell Dow Research Institute.
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`10.
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`I have served as a technical consultant in connection with intellectual
`
`property relating to various computer engineering technologies since 2005. In just
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`the past five years, I have been engaged as a consultant on more than two-dozen
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`projects many of which involved network communication mobile devices. I have
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`investigated source code including application code, Android system code and
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`Linux operating system code as part of this work.
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`11.
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`I have provided a copy of my curriculum vitae as an attachment to this
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`report. See Appendix A.
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`12. A list of cases in which I have testified as an expert over the past four
`
`years is attached to this report as Appendix B.
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`B. Materials Considered
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`13. As part of my preparation for writing this Declaration, I reviewed the
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`following materials: the ’120 Patent and its prosecution history; Alastair Dallas,
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`BlackBerry Exhibit 2003, Page 3
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`DECLARATION OF DR. HUGH M. SMITH
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`U.S. Patent No. 9,349,120
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`Using Collabra Share 2 (“Dallas”); Mark R. Brown, Using Netscape
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`Communicator 4 (“Brown”); Dee-Ann LeBlanc, Using Eudora (“LeBlanc”); Ed
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`Bott, Using Microsoft Windows Me Millennium Edition (“Bott”); Jeff Kent, C++
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`Demystified (“Kent”); Bill Mann, How to Do Everything with Microsoft Office
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`Outlook 2007 (“Mann”); and Petitioner’s Petition for inter partes review and all
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`cited exhibits, including the Declaration of Dr. Sandeep Chatterjee and any
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`exhibits cited therein.
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`14. Additionally, I reviewed the transcript of Dr. Chatterjee’s deposition.
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`15.
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`I also reviewed Patent Owner’s Response and all exhibits thereto.
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`16. My opinions are based on my years of education, research, and
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`industry experience, as well as my investigation and study of relevant materials.
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`17.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by Petitioner. I may also consider additional documents and
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`information informing any necessary opinions, including documents that may not
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`yet have been provided to me.
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`18. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
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`BlackBerry Exhibit 2003, Page 4
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`19. The ’120 Patent is directed to methods, systems, and computer
`
`programming products for silencing message threads. Ex. 1001 at Abstract. In
`
`particular, the technology allows the user to flag a message thread as silenced,
`
`causing the system to “override a currently-enabled notification setting to prevent a
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`receipt notification” from activating while still displaying the message in a
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`different manner alongside other new messages. Ex. 1001 at 2:29-35.
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`20. Petitioner suggests that a person of ordinary skill in the art
`
`(“POSITA”) would have possessed at least a bachelor’s degree in software
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`engineering, computer science, or computer engineering, or electrical engineering
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`with at least two years of experience in software application development,
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`including development of applications for messaging (or equivalent
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`degree/experience). I understand that BlackBerry does not dispute this standard
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`for the purpose of this Response. Accordingly, I have relied-upon this level of
`
`ordinary skill in my analysis.
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`21. At the time of filing of the ’120 Patent invention, I had my Ph.D. and
`
`extensive software development experience and was a Professor of Computer
`
`Science at California Polytechnic State University. I meet these criteria and
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`consider myself a person with at least ordinary skill in the art pertaining to the ’120
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`BlackBerry Exhibit 2003, Page 5
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`DECLARATION OF DR. HUGH M. SMITH
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`Patent. I was such a person at the time of the filing of the application for the ’120
`
`Patent.
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`IV. LEGAL STANDARDS FOR PATENTABILITY
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`22.
`
`I understand that “prior art” includes patents and printed publications
`
`that existed before the earliest applicable filing date of the ’120 Patent.
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`23.
`
`I understand that in order for a claim to be anticipated, each and every
`
`requirement of the claim must be found, expressly or inherently, in a single prior
`
`art reference as recited in the claim.
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`24.
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`I understand that a claimed invention is not patentable if the claimed
`
`invention would have been obvious to a person of ordinary skill in the field of the
`
`invention at the time the invention was made.
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`25.
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`I understand that in order to show obviousness based on a
`
`combination of references, a particular motivation to combine the teachings in the
`
`references must be shown.
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`26.
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`I understand that claim terms are generally given their ordinary and
`
`customary meaning, which is the meaning that the term would have to a person of
`
`ordinary skill in the art at the time of the invention. I further understand that a
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`person of ordinary skill in the art must read the claim term not only in the context
`
`of the particular claim in which the term appears but in the context of the entire
`
`patent, including the specification.
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`BlackBerry Exhibit 2003, Page 6
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`27.
`
`I understand that the obviousness inquiry should not be done in
`
`hindsight, and depends on the scope and content of the prior art, the differences
`
`between the prior art and the claims at issue, the knowledge of a person of ordinary
`
`skill in the pertinent art at the time of invention, and any other objective factors
`
`indicating obviousness or non-obviousness.
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`28.
`
`I understand that in order to rely on a reference for obviousness, the
`
`reference must be analogous art. I also understand that to be analogous art, the
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`reference must be either (1) from the same field of endeavor as the claimed subject
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`matter, regardless of the problem addressed, or (2) if not in the same field of
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`endeavor, reasonably pertinent to the particular problem with which the inventor is
`
`involved. I am also familiar with the premise that for a reference to be reasonably
`
`pertinent, it must have logically commended itself to an inventor’s attention at the
`
`time of invention.
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`V. OVERVIEW OF THE ’120 PATENT
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`A. The ’120 Patent Specification
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`29. At the time of the claimed invention, users could receive notifications
`
`of the receipt of an electronic message on their mobile devices in the form of
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`auditory user alerts such as ringtones, visual alerts such as flashing lights or pop-
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`ups, and physical alerts such as vibrations. Ex. 1001 at 1:28-32. Electronic
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`BlackBerry Exhibit 2003, Page 7
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`DECLARATION OF DR. HUGH M. SMITH
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`messages could also be grouped into message threads based on various categories,
`
`such as conversation topics. Ex. 1001 at 1:33-43.
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`30.
`
`In the past, the user would receive a notification each time a new
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`message was received in any thread, regardless of whether the user was actually
`
`engaging with that thread. See Ex. 1001 at 1:43-46.
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`31. The ’120 Patent addresses this and other issues by allowing the user to
`
`“silence” individual message threads, thereby permitting the user to continue to
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`receive messages in those threads without receiving associated receipt
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`notifications. Ex. 1001 at 13:28-33.
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`32. The claimed invention of the ’120 Patent accomplishes this using a
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`“flag” that “override[s] a currently-enabled notification setting,” thereby
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`“prevent[ing] . . . receipt notification[s]” for new messages “associated with the
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`selected message thread[.]” Ex. 1001 at 16:66-17:2. These new messages are still
`
`displayed in the inbox, but in a different manner than messages in any thread not
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`flagged as silenced. Ex. 1001 at 17:8-10.
`
`B.
`
`The ’120 Patent Claims
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`33. The ’120 Patent has three independent claims: 1, 13 and 24. All of
`
`the claims relate to silencing notifications for incoming electronic messages.
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`BlackBerry Exhibit 2003, Page 8
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`VI. OVERVIEW OF THE CITED ART
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`A. Dallas (Ex. 1003)
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`34. Dallas is a user manual describing the functionality and use of a
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`“groupware” software application that allows “empowered workers to organize and
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`categorize documents and discussion threads[.]” Ex. 1003 at 28.1 Dallas’s
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`“Collabra Share” software is based on a hierarchal document management system
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`comprising “librar[ies]” at the highest level, which contain within them “forums,”
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`“categories,” “threads” and finally “document[s]” as the lowest tier. Ex. 1003 at
`
`53.
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`35. Dallas’s “libraries,” for example, are shown in the Library viewing
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`pane in Figure 4.4:
`
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`1 Unless otherwise specified, the page numbers cited refer to Facebook’s
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`bates stamped pagination.
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`BlackBerry Exhibit 2003, Page 9
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`
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`Ex. 1003 at 109, Fig. 4.4 (annotated).
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`36. Dallas shows using “red flags” and a document counter to indicate
`
`that new documents have been added to a library. Dallas also describes “threads”
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`and “categories” as using the “red flag” and “sparkle” icons. See, e.g., Ex. 1003 at
`
`55, Fig. 1.9.
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`37. Dallas explains that, these flags and sparkle icons do not interrupt a
`
`user’s concentration, unlike an alert such as a telephone ringing. Ex. 1003 at 140
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`(chapter page 115) (“Unlike a ringing telephone, when you see the red flag on the
`
`button, indicating that there are new documents, you can choose whether to
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`interrupt your concentration.”).
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`38. A user can also choose to turn off the red flags and sparkle icons for
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`“threads” and “categories,” by using the “ignore” feature. Ex. 1003 at 111-12.
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`BlackBerry Exhibit 2003, Page 10
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`DECLARATION OF DR. HUGH M. SMITH
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`Dallas does not disclose an “ignore” feature for turning off red flags and sparkle
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`icons for libraries.
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`B.
`
`Brown (Ex. 1004)
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`39. Brown is a user manual for the Netscape Communicator software
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`which allows users to browse the web, read email and the like. Ex. 1004 at 34.
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`Brown includes an “ignore” feature that hides the selected thread entirely from
`
`view:
`
`To ignore a thread, select the first message in the thread (or the
`collapsed thread's only message) and choose Message, Ignore from the
`Messenger menu; then choose Thread. The newly ignored thread
`disappears from view in the Message List. The best part is that
`messages in this thread continue to be downloaded and sorted by
`Messenger. They're just not shown. Of course, there's a way to show
`the ignored threads again, if you want or need to.
`
`Ex. 1004 at 50 (chapter page 209) (emphasis added).
`
`C. LeBlanc (Ex. 1005)
`
`40. LeBlanc is a user manual describing the Eudora program, which
`
`assists individuals using email. Ex. 1005 at 20.
`
`41. Petitioners have submitted only select excerpts from LeBlanc
`
`amounting to 26 pages (only four are actual pages from its chapters), although the
`
`manual is over 290 pages long. The provided four pages from LeBlanc’s text
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`address the “Checking Mail Manually” feature and include a partial disclosure of
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`the “reading mail” function. Ex. 1005 at 23-26. The checking mail manually
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`BlackBerry Exhibit 2003, Page 11
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`DECLARATION OF DR. HUGH M. SMITH
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`feature discloses popups which are displayed both when there is new mail and
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`when no new mail has arrived:
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`Ex. 1005 at 23 (annotated).
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`42. The limited excerpts of LeBlanc also indicate that a user may choose
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`what type of user alerts to receive (pop-up windows, flashing etc.). Ex. 1005 at 24-
`
`25 (“You can choose what Eudora does to point out to you that you have new
`
`
`
`mail.”).
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`D. Bott (Ex. 1007)
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`43. Bott describes the features of Microsoft’s Windows Millennium
`
`Edition operating system. Ex. 1007 at 1. Bott discusses wireless networks for
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`connecting to the Internet, including the use of wireless adapters that can be
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`attached to a user’s computer. Ex. 1007 at 421-22.
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`BlackBerry Exhibit 2003, Page 12
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`DECLARATION OF DR. HUGH M. SMITH
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`E. Kent (Ex. 1010)
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`44. Kent is a basic reference on coding. It does not disclose management
`
`of incoming messages.
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`45. Kent explains the C++ programming language, including the use of
`
`C++ to implement Boolean variables called “flags.” Ex 1010 at 148-51. Kent
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`defines a “flag” as a “variable whose value indicates whether a condition exists.”
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`Ex 1010 at 150. Kent describes a flag titled “quit,” which is given the value “true”
`
`if the user enters “Y” and “false” if the user enters “N.” Ex 1010 at 150-51.
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`F. Mann (Ex. 1011)
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`46. Mann describes Microsoft Office Outlook 2007 (“Outlook”). Mann
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`discusses allowing the user to group messages by conversation, which “creates
`
`groups in the Inbox pane that consist of all the messages in a particular thread.”
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`In this configuration, Mann’s Inbox pane shows only the most recent message in
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`each conversation; the user must click a “down arrow” appearing adjacent to the
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`subject line to display older messages. Ex. 1011 at 89.
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`VII. THE BOARD’S CONSTRUCTION OF “NOTIFICATION(S)”
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`47.
`
`I am informed that for inter partes reviews filed on or after November
`
`13, 2018, such as this one, claim terms are construed using the same claim
`
`construction standard that is used in a civil action under 35 U.S.C. Section 282(b),
`
`as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc),
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`and its progeny. See 37 C.F.R. § 42.100(b).
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`BlackBerry Exhibit 2003, Page 13
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`48.
`
`I understand that while the Petition proffered two claim terms for
`
`construction, “flag” and “notification(s),” as recognized by the Board in its
`
`Institution Decision, that the parties have resolved their dispute regarding the claim
`
`term “flag”. See ID at 8 (“Given the parties’ positions, we will not construe ‘flag’
`
`in this decision.”). Accordingly, I understand that the sole claim term for
`
`construction is “notification(s).”
`
`49.
`
`In the ID, the Board adopted the district court’s construction of
`
`“notification” to require “some form of visual, auditory, or physical cue to draw
`
`attention to an incoming message that would not otherwise have been noticed, at
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`the time of the incoming message.” ID (Paper 9) at 9. I have relied-upon the
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`Board’s construction of “notifications” in analyzing the ’120 patent, the prior art
`
`and Dr. Chatterjee’s expert declaration.
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`50.
`
`In my opinion, no additional claim constructions are necessary, and I
`
`have analyzed the remaining claim terms according to their plain and ordinary
`
`meaning in light of the ’120 patent’s claims as a whole and its specification, as
`
`understood by a POSITA.
`
`51.
`
`In my opinion, Dr. Chatterjee’s analysis regarding the “notification”
`
`claim term is incorrect. Dr. Chatterjee’s interpretation of “notifications” is
`
`extremely broad—it goes far beyond what a POSITA would have understood this
`
`term to mean in light of the ’120 patent’ disclosures. Dr. Chatterjee’s
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`BlackBerry Exhibit 2003, Page 14
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`DECLARATION OF DR. HUGH M. SMITH
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`understanding of “notification” encompasses nearly every kind of display
`
`characteristic of a new message, from font styles to graphic icons. Such an
`
`interpretation is not consistent with the disclosures of the ’120 patent.
`
`52. Further, Dr. Chatterjee’s interpretation of the claimed “notifications”
`
`far exceeds the scope allowed for that term by Board’s construction. For example,
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`I understand that Dr. Chatterjee testified that a new message’s font color is a
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`“notification” (Ex. 2002 (Chatterjee Tr.) at 53:16-25), and likewise that bolded text
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`(Ex. 2002 at 54:24-55:4) or italicized text (Ex. 2002 at 55:22-56:4) alone are also
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`“notifications.” A POSITA would not have understood any of these display
`
`characteristics as a claimed “notification.”
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`53. Likewise, Dr. Chatterjee states throughout his declaration that
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`Dallas’s “red flags” and “sparkle” icon teach the claimed “notifications.” But in
`
`my opinion a POSITA would not have viewed these icons as “notifications” either.
`
`These icons, like font styles, are display characteristics of a new message. They do
`
`not teach the claimed “notifications” which the Board correctly construed as cues
`
`that draw a user’s attention to a new message that would otherwise not have been
`
`noticed.
`
`54.
`
`I note that Dr. Chatterjee points to the international “not” symbol as
`
`one method of display, and omitting that sign as a different manner of display. Ex.
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`1002 at ¶ 123. As mentioned above, he also points to the displaying of Dallas’s
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`BlackBerry Exhibit 2003, Page 15
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`“red flags,” “sparkle” icons and font color as the notifications to be silenced.
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`Showing or not showing the “not” sign, “red flags,” “sparkle” icon, and font colors
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`are all changes in how the message is displayed within the Collabra Share inbox
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`and requires the user to be looking at their inbox in order to notice any changes.
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`They are only noticeable when the user is already looking at them. Dr. Chatterjee
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`appears to be ignoring the “would not otherwise have been noticed” part of the
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`construction of “notification.”
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`55. For example, in the system disclosed in Dallas (Collabra Share), for
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`the user to notice any of these changes to how the messages are displayed, requires
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`the user to be looking at their inbox. In fact when asked in his deposition, Dr.
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`Chatterjee stated that if a different application (e.g. Microsoft Word) was in front
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`of the Collabra Share application, that these changes to how the messages are
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`displayed could not be seen. Ex. 2002 at 50:13-51:17. As disclosed in Dallas, if
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`the user is not in their Collabra Share application and specifically looking at their
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`inbox, there is no way for them to see any of the relied-upon icon and font changes
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`to the messages. After studying the patent specification and file history, the
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`construction of notification and the claims themselves, requiring someone to be in
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`their messaging application and specifically looking at their inbox to notice any
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`changes does not meet the Board’s construction that requires drawing attention to
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`an incoming message that “would not otherwise have been noticed.”
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`BlackBerry Exhibit 2003, Page 16
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`56. To the contrary, in my opinion, which is confirmed by the Board’s
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`construction, a POSITA would have readily understood the claimed “notifications”
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`as something that must draw a user’s attention away from something else, i.e., it
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`must distract or otherwise interrupt a user from another activity. A POSITA would
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`not have understood the term “notifications” to include display characteristics only
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`noticed by a user that is already attentive to a thread with a new message. My
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`opinion is supported by the disclosures in the ’120 Patent’s specification, which
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`consistently refers to “notifications” as alerts such as “ring tones, visual alerts such
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`as flashing lights or popups and physical alerts such as vibrations.” See Ex. 1001
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`at 1:30-32, 9:4-8, 9:17-20, 9:26-31, 13:19-21.
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`57. This is also supported in the claims. For example, claim 1
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`differentiates between silencing notifications and changes in how messages are
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`displayed alongside other new messages. Claim 1 states “wherein the new
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`incoming message thread flagged as silenced is displayed in the inbox in a
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`different manner than any message thread not flagged as silenced.” See Ex. 1001
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`at 17:7-10; see also claims 13 and 24.
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`58. As discussed, the ’120 Patent itself distinguishes its “notifications”
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`from the display characteristics of a new message by including a separate
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`limitation covering a “manner of display” of a message. See Ex. 1001 at claim
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`1[h]; see also claims 13, 24. The specification describes an adjustment of the
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`BlackBerry Exhibit 2003, Page 17
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`display characteristics of an incoming message, such as font color, weight etc. as a
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`change to a message’s “manner of display.” See, e.g., Ex. 1001 at 14:49-52 (“If
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`the message thread has been silenced by the user then no notification may be
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`activated and at 614 the message may appear ‘greyed out’ or other diminished
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`fashion when displayed with the inbox contents.”). Thus, a POSITA would have
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`recognized that the ’120 patent itself distinguishes between “notifications” and
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`display characteristics of a message.
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`59. Likewise, I have reviewed the prosecution history for the ’120 patent,
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`in which the applicant confirmed that “notifications” are “distractions” that
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`“bother” a user:
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`[Displaying silenced messages together with unsilenced messages]
`allows a user to conveniently see messages at one glance in his/her
`inbox, while not being bothered by notifications related to message
`threads which have been marked as silenced. Accordingly, while a user
`is made aware of such messages and can track them in the inbox, the
`user can avoid being distracted by unnecessary notifications.
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`60. Ex. 2001 at 28 (12/19/2014 Amendment page 17 of 18). This
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`discussion provides yet another confirmation that “notifications” should be
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`understood as cues used to draw a user’s attention to an otherwise unnoticed
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`message. In my opinion a mere change in font color or an icon change would not
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`“bother” or “distract” a user, nor would it serve as a cue to draw a user’s attention
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`to a message that would not have otherwise been noticed.
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`BlackBerry Exhibit 2003, Page 18
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`DECLARATION OF DR. HUGH M. SMITH
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`
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`61. Therefore, in my opinion, Dr. Chatterjee’s statements that Dallas’s
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`“red flags” and “sparkle” icons are “notifications” are incorrect, because they do
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`not meet the Board’s requirement that the claimed “notifications” serve as a cue to
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`draw a user’s attention to a message that would not have otherwise been noticed.
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`For example, a user would not see Dallas’s icon or font change if the user was
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`working in a different document, if the message thread were scrolled out of view,
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`or if the message thread were collapsed.
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`62. Dallas itself provides a prime example of this deficiency in one of its
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`disclosures relied-upon by Dr. Chatterjee in his declaration, Figure 7.5 (Ex. 1003 at
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`179) (annotated):
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`BlackBerry Exhibit 2003, Page 19
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`63. As seen in Dallas’s Figure 7.5, even if a user is already attentive to the
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`Collabra Share screen, and further still, even if that user is already attentive to a
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`particular category with a new message in it, the new message’s “red flag” and
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`“sparkle” icons will only be noticed if they are scrolled into view. For example,
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`the image above shows that the selected category “Business Planning” has a “red
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`flag” on its icon, indicating that this selected category contains a new message.
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`But no “red flags” or “sparkle” icons are visible in the thread/message viewing
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`pane shown in Figure 7.5—they are scrolled out of view.
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`64. As demonstrated by this example, a user will be unaware of Dallas’s
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`“red flags” and “sparkle” icon unless a user already has the new message thread
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`scrolled into view. Thus, Dr. Chatterjee’s opinion that Dallas’s colored icons will
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`“notify” a user of a new message would, as a practical matter, require a user to
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`anticipate where the new message will arrive, to select the particular category
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`containing that new message, and to scroll the new message thread into view.
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`Otherwise, Dallas’s “red flags” and “sparkle” icon will not be noticed. This is not
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`consistent with the understanding of a POSITA and the Board’s construction of
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`this term.
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`BlackBerry Exhibit 2003, Page 20
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`DECLARATION OF DR. HUGH M. SMITH
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` Case No. IPR2019-00706
`U.S. Patent No. 9,349,120
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`VIII. DALLAS’S “RED FLAGS,” “SPARKLE” ICON AND FONT
`VARIATIONS ARE NOT “NOTIFICATIONS”
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`A. Dallas’s “Red Flags,” “Sparkle” Icon and Font Variations Are
`Not “Notifications”
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`65. Dallas’s “red flags” and “sparkle” icon are not “notificat