Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`
`
`
`
`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
`
`
`
`
`U.S. Patent No. 9,349,120 B2
`Issue Date: May 24, 2016
`
`Title: System and Method for Silencing Notifications for a Message Thread
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,349,120 B2
`
`
`
`
`

`

`Table of Contents
`
`
`Page
`
`
`
`I. Mandatory Notices under §42.8(A)(1) ........................................................... 1 
`A.
`Real Party-In-Interest under §42.8.(b)(1) ............................................. 1 
`B.
`Related Matters under §42.8(b)(2) ....................................................... 2 
`C.
`Lead and Back-Up Counsel under §42.8(b)(3) .................................... 2 
`D.
`Service Information .............................................................................. 3 
`Fee Payment .................................................................................................... 4 
`II.
`III. Requirements under §§ 42.104 and 42.108 and Considerations under
`§§ 325(d) and 314(a) ...................................................................................... 4 
`A. Grounds for Standing ........................................................................... 4 
`B.
`Identification of Challenge and Statement of Precise Relief
`Requested ............................................................................................. 4 
`Considerations under §§ 325(d) and 314(a) ......................................... 5 
`C.
`IV. Overview of the ’120 Patent ........................................................................... 5 
`A.
`Level of Ordinary Skill in the Art ........................................................ 5 
`B.
`Specification Overview ........................................................................ 5 
`Claim Construction ......................................................................................... 7 
`A.
`“flag” .................................................................................................... 8 
`B.
`“notification” ........................................................................................ 8 
`VI. The Challenged Claims are Unpatentable .................................................... 12 
`A. Overview of Grounds ......................................................................... 12 
`B.
`Summary and Date Qualification of the Prior Art ............................. 13 
`
`Dallas [Ex. 1003] ..................................................................... 13 
`
`Brown [Ex. 1004] ..................................................................... 18 
`
`Kent [Ex. 1010] ........................................................................ 19 
`
`Bott [Ex. 1007] ......................................................................... 19 
` Mann [Ex. 1011] ...................................................................... 20 
`
`V.
`
` 
`
`
`
`-i-
`
` 
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`LeBlanc [Ex. 1005] .................................................................. 20 
`
`C. Ground 1: Obviousness of Claims 1-3, 5, 7-8, 10, 13-15, 17,
`19-21, 24 Based on Dallas, Brown and Kent ..................................... 21 
`
`Claim 1 ..................................................................................... 21 
`(a)
`“A communication system configured to silence
`notifications for incoming electronic messages, the
`system comprising a data processor, non-transitory
`media readable by the data processor and a
`communications subsystem:” (Claim 1, Preamble.) ..... 21 
`“the communication subsystem adapted for
`receiving the incoming electronic messages;”
`(Claim 1[a]) ................................................................... 25 
`“and the non-transitory media readable by the data
`processor comprising coded program instructions
`adapted to cause the processor to:” (Claim 1[b]) .......... 26 
`“receive a selected message thread for silencing;”
`(Claim 1[c]) ................................................................... 26 
`“in response to receiving the selected message
`thread, activate a flag stored in the non-transitory
`media in association with the selected message
`thread, wherein the flag indicates that the selected
`message thread has been silenced;” (Claim 1[d]) ......... 27 
`“determine that a new incoming electronic
`message is associated with the selected message
`thread;” (Claim 1[e]) ..................................................... 34 
`“determine that the selected message thread has
`been flagged as silenced using the flag stored in
`the non-transitory media;” (Claim 1[f]) ........................ 38 
`“override a currently-enabled notification setting
`to prevent a receipt notification pertaining to new
`incoming electronic messages associated with the
`selected message thread from being activated; and”
`(Claim 1[g]) ................................................................... 38 
`-ii-
` 
`
`(f)
`
`(g)
`
`(h)
`
`
`
`  
`
`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`(i)
`
`
`
`
`
`
`
`
`
`“display the new incoming electronic message…”
`(Claim 1[h]) ................................................................... 45 
`Claim 2: “The system of claim 1, wherein the new
`incoming electronic message is part of a group
`discussion.” .............................................................................. 52 
`Claim 3: “The system of claim 2, wherein a receipt
`notification for a new incoming electronic message is
`prevented only for a user who has flagged the message
`thread as silenced.” .................................................................. 53 
`Claim 5: “The system of claim 1, further comprising at
`least one display for displaying the incoming electronic
`messages.” ................................................................................ 54 
`Claim 7: “The system of claim 1, further adapted to allow
`the message thread to be unflagged deactivating the
`flag.” ......................................................................................... 55 
`Claim 8: “The system of claim 7, further adapted to, after
`determining that the message thread has been unflagged,
`retain the new incoming message associated with the
`inbox while allowing notifications pertaining to receipt of
`any subsequent new incoming message for the message
`thread, and associate any subsequent new incoming
`message with the inbox.” ......................................................... 56 
`Claim 10: “The system of claim 1, wherein the
`notifications include one or more of an auditory alert, a
`visual alert or a physical alert.” ................................................ 56 
`Claims 13-15, 17, 19-22 ........................................................... 57 
`
`Claim 24 (Independent) ........................................................... 57 
`
`D. Ground 2: Obviousness of Claim 9 Over Dallas, Brown, and
`Kent, in Further View of Bott ............................................................ 58 
`Ground 3: Obviousness of Claims 11 and 22 Over Dallas,
`Brown, and Kent, in Further View of Mann ...................................... 61 
`
`
`
`
`
`E.
`
`-iii-
`
` 
`
`
`
`  
`
`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`
`
`F.
`
`Ground 4: Obviousness of Claims 1-3, 5, 7-8, 10, 13-15, 17,
`19-21, 24 Based on Dallas, and Brown and Kent, in Further
`View of LeBlanc ................................................................................ 65 
`G. Ground 5: Obviousness of Claim 9 Over Dallas, Brown, and
`Kent, in Further View of Bott and LeBlanc ....................................... 70 
`H. Ground 6: Obviousness of Claims 11 and 22 Over Dallas,
`Brown, and Kent, in Further View of Mann and LeBlanc ................. 70 
`VII. Conclusion .................................................................................................... 70 
`
`
`  
`
`
`
`-iv-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`List of Exhibits
`
`
`
`
` 
`
`
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 9,349,120 B2 to Kalu Onuka Kalu (filed February 26,
`2010, issued May 24, 2016) (“’120” or “’120 patent”)
`1002 Declaration of Sandeep Chatterjee, Ph.D. (“Chatterjee”)
`1003 Excerpts from Alastair Dallas, Special Edition Using Collabra Share 2
`(1995) (“Dallas”)
`1004 Excerpts from Mark R. Brown, Special Edition Using Netscape
`Communicator 4 (1997) (“Brown”)
`1005 Excerpts from Dee-Ann LeBlanc, Using Eudora (2d ed. 1997)
`(“LeBlanc”)
`1006 U.S. Patent App. Pub. No. 2006/0161849 A1 to Jeffrey Randolph
`Miller et al. (filed Jan. 18, 2005, published July 20, 2006) (“Miller”)
`1007 Excerpts from Ed Bott, Special Edition Using Microsoft Windows
`Millennium Edition (2001) (“Bott”)
`1008 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`1009 Excerpts from Dan Goodkin & Wallace Wang, Illustrated Computer
`Dictionary for Dummies (2d ed. 1995) (“Goodkin”)
`1010 Excerpts from Jeff Kent, C++ Demystified: A Self-Teaching Guide
`(2004) (“Kent”)
`1011 Excerpts from Bill Mann, How to Do Everything with Microsoft Office
`Outlook 2007 (2007) (“Mann”)
`1012 Certificates of Service from BlackBerry Limited v. Facebook, Inc. et
`al., No. 2:18-cv-01844-GW (C.D. Cal.), ECF Nos. 20-23, showing
`that service on Petitioners was effected on April 6, 2018
`
`‐i‐ 
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`List of Exhibits
`
`
`
`
`
`
` 
`
`
`
`Exhibit
`No.
`1013
`
`Description of Document
`First Amended Complaint for Patent Infringement from BlackBerry
`Limited v. Facebook, Inc. et al., No. 2:18-cv-01844-GW (C.D. Cal.),
`ECF No. 15, filed on April 4, 2018
`1014 Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis”)
`1015 U.S. Patent Application Pub. No. 2008/0301250 A1 to Michael
`Thomas Hardy et al., filed on May 29, 2007 and published on
`December 4, 2008
`1016 U.S. Patent Application Pub. No. 2013/0095823 A1 to Gerhard
`Klassen, filed on December 3, 2012 and published on April 18, 2013
`1017 Excerpts from Declaration of Craig Rosenberg, Ph.D. Regarding
`Claim Construction, served in Blackberry Limited v. Facebook Inc. et
`al.,, Case No. 18-cv-01844 GW (C.D. Cal.), dated January 19, 2019
`1018 Excerpts from Merriam Webster’s Collegiate Dictionary (10th ed.
`1996)
`1019 Excerpts from The American Heritage College Dictionary (4th ed.
`2004)
`
`
`
`‐ii‐ 
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`
`INTRODUCTION
`
`U.S. Patent No. 9,349,120 B2 (“’120 patent”) relates to notifying a user when
`
`a new electronic message has been received, a longstanding and well-established
`
`feature of electronic messaging. From the iconic “You’ve Got Mail!” voice greeting
`
`presented to millions of America Online (AOL) members in the 1990s, to the
`
`familiar “ding” that accompanies billions of text messages received each day, to the
`
`way popular email programs list new and unread messages in bolded text, new
`
`message notifications have long been a universal staple of messaging systems.
`
`The ’120 patent purports to improve new message notifications by allowing
`
`the user to silence notifications with respect to a particular message thread. But this
`
`technique was also known at least since 1995 and a well-documented feature of the
`
`Collabra Share commercial software product, as shown by Dallas (Ex. 1003).
`
`Petitioner accordingly requests institution of IPR and a finding that all challenged
`
`claims are unpatentable.
`
`I. MANDATORY NOTICES UNDER §42.8(A)(1)
`A. Real Party-In-Interest under §42.8.(b)(1)
`Facebook, Inc. and subsidiaries Instagram, LLC and WhatsApp Inc., are the
`
`real parties-in-interest to this IPR petition. For ease of reference, this Petition will
`
`refer to Facebook, Instagram and WhatsApp collectively as “Petitioner” (singular).
`
` 
`
`
`
`-1-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`B. Related Matters under §42.8(b)(2)
`The ’120 patent is the subject of pending litigation involving Petitioner:
`
`BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844-GW-KS (C.D.
`
`Cal.). Petitioner was first served on April 6, 2018. (Ex. 1012.)1 The First Amended
`
`Complaint in that action alleges that Facebook, Instagram and WhatsApp infringe
`
`the ’120 patent. (Ex. 1013, ¶¶286-288.)
`
`As of the filing of this Petition, the district court has not issued any claim
`
`construction rulings. A claim construction hearing is currently scheduled for April
`
`1, 2019. The parties have exchanged claim constructions for certain terms of the
`
`’120 patent, as described in Part V below. No trial date has been set. Petitioner is
`
`aware of no other IPR petitions with respect to the ’120 patent.
`
`C. Lead and Back-Up Counsel under §42.8(b)(3)
`Petitioner provides the following designation of counsel.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`
`COOLEY LLP
`
`1 The initial Complaint in that action was filed on March 6, 2018, and a First
`
`Andrew C. Mace (Reg. No. 63,342)
`amace@cooley.com
`
`COOLEY LLP
`
`Amended Complaint on April 4, 2018. Service on Petitioner first took place on April
`
`6, 2018, after the filing of the First Amended Complaint. (Ex. 1011.)
`
` 
`
`
`
`-2-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington, DC
`20004zzmpShiftReturnTel: (650) 843-
`5001
`Fax: (650) 849-7400
`
`
`ATTN: Patent Group
`1299 Pennsylvania Ave. NW, Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5287
`Fax: (650) 849-7400
`
`Mark R. Weinstein (Admission pro hac
`vice to be requested)
`mweinstein@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (650) 843-5007
`Fax: (650) 849-7400
`Yuan Liang (Admission pro hac vice to
`be requested)
`yliang@cooley.com
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (202) 728-7132
`Fax: (202) 842-7899
`
`
`
`
`
`D.
`Service Information
`This Petition is being served by Federal Express to the attorney of record for
`
`the ’120 patent, RIDOUT & MAYBEE LLP (BLACKBERRY), 250 University Avenue,
`
`5th Floor, Toronto ON M5H 3E5. Petitioner consents to electronic service at the
`
`addresses provided above for lead and back-up counsel.
` 
`-3-
` 
`
`
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`II.
`FEE PAYMENT
`Petitioner requests review of 18 claims, with a $32,300 payment.
`
`III. REQUIREMENTS UNDER §§ 42.104 AND 42.108 AND CONSIDERATIONS UNDER
`§§ 325(D) AND 314(A)
`A. Grounds for Standing
`Petitioner certifies that the ’120 patent is available for IPR and that Petitioner
`
`is not barred or otherwise estopped.
`
`B.
`
`Identification of Challenge and Statement of Precise Relief
`Requested
`Petitioner requests institution of IPR based on:
`
`Ground
`1
`
`Claims
`1-3, 5, 7-8, 10,
`13-15, 17, 19-
`21, 24
`
`Basis for Challenge under §103(a)
`
`Dallas (Ex. 1003) in view of Brown (Ex. 1004) and
`Kent (Ex. 1010)
`
`2
`
`3
`
`
`
`4
`
`5
`
`6
`
` 
`
`
`
`9
`
`11, 22
`
`Dallas in view of Brown and Kent, in further view of
`Bott (Ex. 1007)
`
`Dallas in view of Brown and Kent, in further view of
`Mann (Ex. 1011)
`
`
`
`
`
`1-3, 5, 7-8, 10,
`13-15, 17, 19-
`21, 24
`
`Dallas in view of Brown and Kent, in further view of
`LeBlanc (Ex. 1005)
`
`9
`
`11, 22
`
`Dallas in view of Brown, Kent, and LeBlanc, in
`further view of Bott
`
`Dallas in view of Brown, Kent, and LeBlanc, in
`further view of Mann
`
`-4-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`Submitted with this Petition is a Declaration of Sandeep Chatterjee, Ph.D. (Ex.
`
`1002) (“Chatterjee”), a qualified technical expert. (Chatterjee, ¶¶1-8, Ex. A.)
`
`C. Considerations under §§ 325(d) and 314(a)
`This Petition does not present a scenario in which “the same or substantially
`
`the same prior art or arguments previously were presented to the Office.” §325(d).
`
`None of the prior art cited in this Petition was cited during prosecution of the ’120
`
`patent and is thus new art.
`
`Petitioner is also unaware of any basis for the Board to exercise discretionary
`
`authority to decline to consider this Petition under §314(a). This Petition was timely
`
`filed well before the statutory deadline of April 5, 2019. Petitioner is aware of no
`
`previous IPR petition with respect to the ’120 patent filed by any party.
`
`IV. OVERVIEW OF THE ’120 PATENT
`A. Level of Ordinary Skill in the Art
`A person of ordinary skill in the art would have possessed at least a bachelor’s
`
`degree in software engineering, computer science, or computer engineering, or
`
`electrical engineering with at least two years of experience in software application
`
`development, including development of applications for messaging (or equivalent
`
`degree/experience). (Chatterjee, ¶¶12-15.)
`
`B.
`Specification Overview
`The ’120 patent “relates generally to electronic messages, and more
`
` 
`
`
`
`-5-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`particularly to systems and methods for silencing notifications for electronic
`
`messages.” (’120, 1:16-18.) The Background acknowledges that “[e]lectronic
`
`messages, such as electronic mail messages and messages posted to group sites, can
`
`be grouped into message threads” and that “[e]ach message thread can relate to a
`
`particular matter such as a particular topic of conversation or an activity.” (’120,
`
`1:22-25.) The Background further states that “[a] user may receive a notification
`
`each time an electronic message is received,” examples of which are “auditory user
`
`alerts such as ring tones, visual alerts such as flashing lights or pop-ups and physical
`
`alerts such as vibrations.” (’120, 1:28-32.)
`
`The ’120 patent discloses a system for “silencing” notifications for new
`
`messages received in a message thread. (’120, 2:22-35.) When a message thread
`
`has been “silenced,” the user no longer receives notifications of new messages added
`
`to that thread. (’120, e.g., 9:37-43, 13:19-22.)
`
` 
`
`
`
`-6-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`The basic steps involved in selecting a message thread for silencing are
`
`outlined in Figure 5 (excerpted at right). “A method 500 can begin at 502 where a
`
`user can, using suitably-configured GUI(s) and
`
`input device, select a message inbox.” (’120,
`
`11:11-13.) An “inbox” is not limited to a mailbox
`
`for receiving incoming email messages. (’120,
`
`11:13-18; Chatterjee, ¶¶116, 117.)
`
`Step 504 in Figure 5 shows “the user
`
`select[ing] a message thread using, for example, a
`
`user interface such as a GUI 304, displaying one
`
`or more selectable options such as a list of one or more message threads.” (’120,
`
`12:59-62.) The user can silence a thread by selecting an option from a drop-down
`
`menu. (’120, 15:48-53, Fig. 10.) Finally, “[a]t 506, a user can silence a message
`
`thread or reactivate a message thread that had previously been silenced with respect
`
`to a device the user is using.” (’120, 12:66-13:1.)
`
`V. CLAIM CONSTRUCTION
`The parties to the pending litigation have identified competing constructions
`
`for two claim terms: “flag” and “notification.” Although these claim terms are
`
`relevant to issues in the pending litigation, an express construction is not required at
`
`this time for purposes of evaluating the prior art in this IPR proceeding. As shown
`
` 
`
`
`
`-7-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`in Part VI below, the prior art discloses these limitations under all constructions
`
`proposed in the pending litigation.
`
`A.
`“flag”
`Claim 1 recites the step of “activating a flag… wherein the flag indicates that
`
`the selected message thread has been silenced.” The ’120 patent uses “flag” to refer
`
`to an indicator of whether or not a message thread has been silenced. (’120, 9:35-
`
`38, 13:9-12, 13:51-55.) Patent Owner argues that “flag” means a “mark or code
`
`indicating a status or condition,” while Petition argues that a “flag” is a “status
`
`indicator.” But there is no material difference for purposes of this IPR petition and
`
`the prior art discloses the claimed “flag” under either construction (and any other
`
`construction consistent with the specification of the ’120 patent).
`
`B.
`“notification”
`The patent does not define “notification,” but rather, provides a non-
`
`exhaustive list of examples. (’120, 1:30-32 (“Notifications could include, for
`
`example, auditory user alerts such as ring tones, visual alerts such as flashing lights
`
`or pop-ups and physical alerts such as vibrations.”), 9:6-8, 13:19-22, 13:42-45.) The
`
`term “notification” should be given its plain and ordinary meaning of “an indication
`
`providing notice that an event has occurred.”
`
`The term “notification” is an ordinary English word not restricted to
`
`computers. Dictionaries define “notification” as an “act or instance of notifying,”
`
` 
`
`
`
`-8-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`and the word “notify” in turn is defined as “to give notice of or report the occurrence
`
`of.” (Ex. 1018, p.795; see also Ex. 1019, p.951 (similar definitions).) This is also
`
`consistent with the specific examples of auditory, visual and physical alerts in the
`
`’120 patent specification, all of which provide notice to a user that a new message
`
`has been received. (’120, 1:30-32, 9:6-8.)
`
`Petitioner’s construction is also consistent with the references cited during
`
`prosecution of the ’120 patent, which provide intrinsic evidence for claim
`
`construction. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005)
`
`(en banc). For example, U.S. Patent Appl. 2013/0095823 (Ex. 1016), having the
`
`same assignee as the ’120 patent, explains that a visual notification can take the form
`
`of check boxes, an icon, a distinctive color, or a distinctive font. (Ex. 1016, ¶¶0015,
`
`0025, 0045.) Additionally, U.S. Patent Appl. 2008/0301250 (Ex. 1015) explains in
`
`its Background that “notification behavior” for an email message can include “the
`
`appearance of the received message in a message list [being] changed, e.g. by using
`
`bold, differently colored, or differently sized text than is ordinarily used to represent
`
`the message, or by applying different audio or vibration notifications depending
`
`upon message priority.” (Ex. 1015, ¶¶0002.)
`
`Patent Owner has argued that “notification” should be construed as “user
`
`alert,” based on the fact that the written description lists “auditory user alerts,”
`
`“visual alerts,” and “physical alerts” as exemplary notifications. (’120, e.g., 1:30-
`
` 
`
`
`
`-9-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`32; Ex. 1017, ¶¶75-85.) Patent Owner has pointed to no dictionary (technical or not)
`
`that defines a notification as an alert. Patent Owner’s proposed construction is too
`
`narrow for several reasons.
`
`First, the specification describes “user alerts” as mere examples of
`
`notifications. (’120, 1:30-32 (“Notifications could include, for example, auditory
`
`user alerts…”), 9:6-8.) Federal Circuit law is clear that specific examples in the
`
`written description should not ordinarily be regarded as limiting claim scope. See,
`
`e.g., In re Omeprazole Patent Litig., 483 F.3d 1364, 1372 (Fed. Cir. 2007) (“Absent
`
`some clear intent to the contrary, this court does not import examples from the
`
`specification into the claims.”) (citing Constant v. Advanced Micro–Devices, Inc.,
`
`848 F.2d 1560, 1571 (Fed. Cir. 1988) (“[E]mbodiments and examples appearing in
`
`the specification will not generally be read into the claims.”)).
`
`Second, Patent Owner’s proposal violates the principle that “[a] claim term
`
`should be given its ordinary meaning in the pertinent context, unless the patentee
`
`has made clear its adoption of a different definition or otherwise disclaimed that
`
`meaning.” Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 734 (Fed. Cir. 2014).
`
`Petitioner is aware of nothing in the specification or prosecution history that
`
`disclaims or disavows the plain and ordinary meaning of “notification,” or attempts
`
`to redefine it as a “user alert.” Id. at 738 (“Under our claim-construction law, a clear
`
`ordinary meaning is not properly overcome… by a few passing references that do
`
` 
`
`
`
`-10-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`not amount to a redefinition or disclaimer.”). The word “notification” is an ordinary
`
`English word that has an everyday meaning – it is not a coined term or phrase that
`
`has no generally understood definition outside the patent.
`
`Third, Patent Owner’s construction runs afoul of the principle of claim
`
`differentiation. “The concept of claim differentiation ‘normally means that
`
`limitations stated in dependent claims are not to be read into the independent claim
`
`from which they depend.’” Nazomi Comms., Inc. v. Arm Holdings, PLC, 403 F.3d
`
`1364, 1370 (Fed. Cir. 2005) (citation omitted). Dependent claims 10 and 21, which
`
`depend from independent claims 1 and 13, respectively, add that the “notifications”
`
`“include one or more of an auditory alert, a visual alert or a physical alert.”
`
`These claims would be rendered superfluous by importing user “alert” into the
`
`definition of “notification” as recited in the independent claims.
`
`The fact that claims 10 and 21 refer to disjunctively to “auditory,” “visual,”
`
`or “physical” alerts does not diminish the application of claim differentiation. Any
`
`alert provided by a computing device would fall into one or more of the auditory,
`
`visual, or physical categories, in order to utilize the receiving user’s sense of sound,
`
`vision and touch. (Chatterjee, ¶144.) These modifiers thus do not meaningfully
`
`narrow the claim under Patent Owner’s proposal. By importing “alert” into
`
`“notification,” claims 10 and 21 would have the same scope as claims 1 and 13.
`
` 
`
`
`
`-11-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Overview of Grounds
`As listed in Part II.B above, this Petition presents six grounds of obviousness,
`
`each revolving around the Dallas reference. Dallas is a strong reference that could
`
`arguably have been mapped as anticipatory with respect to many challenged claims.
`
`Nevertheless, Petitioner is mindful of the Board’s desire that IPR petitioners avoid
`
`presentation of alternative and potentially redundant grounds of anticipation and
`
`obviousness. Accordingly, the six grounds provide a more streamlined obviousness
`
`challenge relying on Dallas in combination with other references. For example,
`
`Ground 1 cites Dallas in conjunction with Kent (Ex. 1010) for the “flag” recited in
`
`the independent claims. Kent explains that a “flag” is a well-known concept in
`
`computer science for keeping track of a status or condition, and it would have been
`
`obvious to implement Dallas using a “flag” as claimed. Ground 2 adds Bott (Ex.
`
`1007) for the limitation of dependent claim 9 reciting a “wireless device,” as Bott
`
`confirms that such devices were well-known. Ground 3 adds Mann (Ex. 1011) for
`
`claims 11 and 22, which discloses the well-known ability to display newer messages
`
`before older messages in a thread.
`
`Grounds 4-6 are substantially similar to Grounds 1-3, but add LeBlanc (Ex.
`
`1005) in the event of a narrow claim construction of “notification.” Petitioner
`
`believes that Dallas discloses the claimed “notifications” under Petitioner’s and
`
` 
`
`
`
`-12-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`Patent Owner’s constructions, but in an abundance of caution, this Petition cites to
`
`LeBlanc for its notifications and notification settings, which mirror the exemplary
`
`notifications disclosed in the ’120 patent.
`
`Finally, Petitioner has taken considerable effort to explain how the prior art
`
`references can be properly combined, as set forth below. In some cases, Petitioner
`
`and its expert have explained in detail how the techniques in one reference could
`
`technologically work with and complement the Dallas primary reference. In making
`
`this showing, Petitioner is not suggesting that invalidity of the challenged claims
`
`depends on physically combining the systems disclosed by the prior art – as no such
`
`showing is required under the law. See, e.g., In re Mouttet, 686 F.3d 1322, 1332
`
`(Fed. Cir. 2012). These explanations are instead intended to illustrate how
`
`technologically straightforward the proposed combinations would have been, which
`
`provides a further motivation to combine.
`
`B.
`
`Summary and Date Qualification of the Prior Art
`
`Dallas [Ex. 1003]
`Dallas is a 1995 book describing the Collabra Share 2 (“Collabra”) software
`
`product. (Dallas, p.xxix.) Dallas explains that Collabra is a “like a mail program”
`
`and “facilitates communication and captures group discussions.” (Dallas, p.19.)
`
`Dallas qualifies as prior art under §102(b). (Hall-Ellis Decl., Ex. 1014, ¶¶39-48.)
`
` 
`
`
`
`-13-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`Figure 5.6 below shows an example of Collabra’s user interface including a
`
`familiar multi-pane window interface similar to popular e-mail programs:
`
`
`(Dallas, p.108, Fig. 5.6.) Figure 5.6 shows a window for a “Competitive Analysis
`
`
`
`Forum” that includes several “categories” (listed in the upper-left “Category pane”)
`
`including “Swift Aeronautics,” which is shown as selected in Figure 5.6. The “Swift
`
`Aeronautics” category, in turn, includes several “documents” (listed in the upper-
`
`right “Thread pane”), including one at the top titled “Marketing Plan.”
`
`This figure thus provides a helpful illustration of how Collabra organizes
`
`information for display—a “forum” includes “categories,” and a category includes
`
`“documents.” (Chatterjee, ¶¶35-39; Dallas, e.g., pp.19-20, 25.) And as explained
`
`below, “documents” can further be organized into “threads.”
`
` 
`
`
`
`-14-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`A document in Collabra “contains words, file attachments, pictures (perhaps)
`
`and maybe a chart or a video.” (Dallas, p.25.) A user can compose a document and
`
`post it to a forum for other users to see. (Dallas, pp.192-193, 198-199.) For purposes
`
`of this Petition, therefore, a “document” in Dallas qualifies as an “electronic
`
`message.” (Chatterjee, ¶¶38, 61.) In fact, Dallas repeatedly uses “document”
`
`interchangeably with “message.” (Dallas, e.g., p.2 (“You can scan new messages
`
`quickly—automatically ignore new messages on topics you’re not interested in, and
`
`search all documents for certain words.”), p.15 (“Average message size varies
`
`depending on the use of the forum; discussion forums have many small messages,
`
`while document repository forums tend to contain very large documents.”).) Dallas
`
`confirms that “documents” posted using Collabra have the same hallmarks as
`
`electronic messages in other contexts including having senders, titles, dates,
`
`attachments, and being made available to multiple other users. (Chatterjee, ¶38
`
`(citing Dallas, p.154 (Fig. 7.5), pp.195-196).)
`
`The fact that “documents” qualify as “electronic messages” is also confirmed
`
`by the fact that documents may be organized into threads. (Chatterjee ¶¶38-39.)
`
`Dallas explains that “[a] thread contains a topic document and zero or more reply
`
`documents.” (Dallas, p.25.) A thread is illustrated in the figure below, which shows
`
`a topic document, two replies to that document, and a reply to a reply:
`
` 
`
`
`
`-15-
`
` 
`
`

`

`Petition for Inter Partes Review of
`U.S. Patent No. 9,349,120 B2
`
`
`
`(Dallas, p.25 (red box added).)2
`
`
`
`With respect to message notifications, Dallas discloses various ways of
`
`alerting the user to the receipt of new messages (documents). Dallas discloses visual
`
`notifications including “red flags,” “sparkles” and different-colored text:
`
`When you open the forum, you see that a category has a red flag on its
`icon, and so does one of the categories indented under the first category
`(see Fig. 1.9 [reproduced below and excerpted at right to show red flag
`and “sparkle”]). Because the first category contains the in