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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`Case IPR2019-00706
`U.S. Patent No. 9,349,120
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`PETITIONERS’ REPLY
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`Table of Contents
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`Page
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`I.
`II.
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`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION OF “NOTIFICATION” .................................... 1
`A.
`“Notification” Should Be Given its Ordinary Meaning ....................... 2
`B.
`Patent Owner’s Interpretation of “Would Not Otherwise Have
`Been Noticed” Should Not Be Adopted. .............................................. 4
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`Patent Owner’s Gloss On “Would Not Otherwise Have
`Been Noticed” Renders the District Court’s Claim
`Construction Unworkable, and the Claims Indefinite
`Under § 112. ............................................................................... 4
`The Board Should Adopt a More Sensible Interpretation
`of “Would Not Otherwise Have Been Noticed” to the
`Extent it Chooses to Retain that Language. ............................... 9
`Patent Owner’s Recounting of the District Court Claim
`Construction Process Is Irrelevant and Incomplete. ........................... 10
`III. THE VISUAL CUES IN DALLAS ARE “NOTIFICATIONS” ................. 12
`IV. DALLAS DOES NOT TEACH AWAY FROM “NOTIFICATIONS” ...... 17
`V.
`THE COMBINATION OF DALLAS AND LEBLANC DISCLOSES
`“SILENCING” NOTIFICATIONS .............................................................. 19
`VI. THE PRIOR ART TEACHES “DISPLAYING” NEW SILENCED
`MESSAGES ................................................................................................. 21
`VII. CONCLUSION ............................................................................................. 24
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`C.
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`U.S. Patent No. 9,349,120
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`INTRODUCTION
`Patent Owner’s response rests primarily on a narrow construction of
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`“notification” that goes far beyond and finds no support in the district court’s claim
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`construction, which the Board adopted in the Institution Decision. The prior art
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`Dallas reference discloses the claimed “notifications” under the construction
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`adopted by the Board, and under any proper construction of the term.
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`Patent Owner’s arguments about “notifications” also have no relevance to
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`instituted Grounds 4-6, which add LeBlanc (Ex. 1005). Patent Owner does not
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`dispute that the combination of Dallas and LeBlanc discloses “notifications,” even
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`under Patent Owner’s proposed interpretation. For the reasons stated below and in
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`the Petition, the Board should find the challenged claims unpatentable.
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`II. CLAIM CONSTRUCTION OF “NOTIFICATION”
`The Board has adopted, for purposes of its Institution Decision, the district
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`court’s construction of notification, i.e., “some form of visual, auditory, or physical
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`cue to draw attention to an incoming message that would not otherwise have been
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`noticed, at the time of the incoming message.” (Paper 9 at 9.) Petitioner has not yet
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`had an opportunity to address this construction because the district court adopted it
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`after the Petition was filed.
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`The Board also showed prescience in inviting the parties to “brief further how
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`one might evaluate the ‘that would not otherwise have been noticed’ portion of the
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`U.S. Patent No. 9,349,120
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`construction with regard to what a user might or might not be doing for the user to
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`not otherwise have noticed the message.” (Id. (emphasis added).) The language the
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`Board highlighted has been a source of mischief in the district court and here, as
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`Patent Owner has used it as a hook to import a number of unwarranted limitations.
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`But as explained below, to the extent the Board chooses to adhere to the
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`district court’s construction, the language in question (i.e. “that would not otherwise
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`have been noticed”) should be understood as merely requiring a visual, auditory, or
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`physical cue that increases the likelihood of a user noticing a new message. Patent
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`Owner’s argument that a notification “must distract or otherwise interrupt a user
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`from another activity” (Response, 14 (citing Ex. 2003, ¶56)), is unsupported.
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`A.
`“Notification” Should Be Given its Ordinary Meaning
`The Board should not adopt the “would not otherwise have been noticed”
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`language because it is not part of the ordinary meaning of “notification,” and lacks
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`support in the intrinsic record or contemporaneous sources such as dictionaries.
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`“Notification” should thus be construed as “some form of visual, auditory, or
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`physical cue to draw attention to an incoming message at the time of its receipt.”
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`This construction is faithful to the intrinsic record, and Petitioner does not believe
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`the “would not otherwise have been noticed” language is necessary to capture the
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`essence and intent of the district court’s construction.
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`Federal Circuit law is clear that claim terms are generally given their ordinary
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`and customary meaning to a person of ordinary skill in the art. See Phillips v. AWH
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`Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). The specification
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`supports Petitioner’s more streamlined construction by describing a notification as
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`an indication drawing the user’s attention to the happening of an event, i.e. an
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`incoming message. (’120, 9:8-11 (“Notifications may be initiated upon the
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`happening of certain events…”), 9:13-15 (“…signal notification module 310 to
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`indicate the arrival of the new message…”) (emphasis added).) This view is further
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`supported by contemporaneous dictionary definitions and the prior art cited during
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`the prosecution of the ’120 patent, as described in the Petition. (Petition, 8-9.)
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`Nothing in the intrinsic record supports a requirement that a notification must
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`draw the attention of a user to a new message that “would not otherwise have been
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`noticed” in the absence of a notification. Patent Owner identifies nothing in the
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`patent specification or file history that compels this language.
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`Patent Owner’s gloss on the district court’s claim construction, i.e. that a
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`notification “must distract or otherwise interrupt a user from another activity,”
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`is similarly unsupported. (Response, 14.) Patent Owner suggests that this further
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`requirement is based on the district court’s construction but it is not. The district
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`court never addressed whether a notification has to distract or interrupt a user. Patent
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`Owner’s own technical expert in the litigation was specifically presented with the
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`further requirement Patent Owner urges here, and he testified that the district court’s
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`construction does not impose that requirement. (Ex. 1028, 193:23-195:10.)
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`Patent Owner cites general statements in the prosecution history relating to
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`the avoidance of distracting or bothersome notifications (Response, 15), but those
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`statements do not provide any disclaimer or disavowal that could justify a definition
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`of “notifications” that varies from its plain and ordinary meaning. See, e.g., Chimie
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`v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of
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`consulting the prosecution history in construing a claim is to ‘exclude any
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`interpretation that was disclaimed during prosecution.’”) (citation omitted). Nothing
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`in the specification or file history requires that notifications be jarring, severe, or
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`otherwise have sensory characteristics that would distract or interrupt the user.
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`B.
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`Patent Owner’s Interpretation of “Would Not Otherwise Have
`Been Noticed” Should Not Be Adopted.
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`Patent Owner’s Gloss On “Would Not Otherwise Have Been
`Noticed” Renders the District Court’s Claim Construction
`Unworkable, and the Claims Indefinite Under § 112.
`The additional language in question (“would not otherwise have been
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`noticed”) has caused needless confusion in the district court and here. Patent Owner
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`has seized on this language here to engraft a subjective inquiry that, as its expert
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`conceded, may vary from user to user. (Response, 14; Ex. 1023, 44:16-45:8.) As
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`noted, Patent Owner argues that a notification “must distract or otherwise
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`interrupt a user from another activity.” (Response, 14 (emphasis added).) But
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`U.S. Patent No. 9,349,120
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`whether a notification would “distract or otherwise interrupt a user” depends on the
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`characteristics of that user. Users vary in their attention spans, reaction times, and
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`have different abilities to sense visual changes on a device’s display. These
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`differences rest on a multitude of factors including the age and experience of the
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`user, the familiarity of the user with the messaging application, and of course, what
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`the user happens to be doing when the notification is provided. As a result, a
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`particular cue that distracts one user might go entirely unnoticed by another.
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`Patent Owner’s interpretation should also not be adopted because it would
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`render the claims indefinite under § 112. See Cardiac Pacemakers, Inc. v. St. Jude
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`Med., Inc., 296 F.3d 1106, 1114 (Fed. Cir. 2002) (explaining that claims should be
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`construed in a way to avoid indefiniteness, if possible). The Federal Circuit has
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`made clear that a claim is indefinite when its applicability depends on the subjective
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`experience or reaction of a human operator. See, e.g., Interval Licensing v. AOL,
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`Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014); Datamize, LLC v. Plumtree Software,
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`Inc., 417 F.3d 1342, 1349-50 (Fed. Cir. 2005), abrogated on other grounds Nautilus,
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`Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). For example, the Federal
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`Circuit in Interval Licensing held that the claim phrase, “unobtrusive manner that
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`does not distract a user,” was indefinite in a claim directed at presenting
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`information to a user through a display. The Federal Circuit found this phrase—
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`which is remarkably similar to Patent Owner’s interpretation—“highly subjective.”
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`766 F.3d at 1371. The court cited with approval the district court’s observation that
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`“whether something distracts a user from his primary interaction depends on the
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`preferences of the particular user and the circumstances under which any single user
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`interacts with the display.” Id.
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`The same observations apply to Patent Owner’s argument that a notification
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`“must distract or otherwise interrupt a user from another activity.” (Response,
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`14 (emphasis added).) As in Interval Licensing, whether a notification “distract[s]
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`or otherwise interrupt[s] a user from another activity” depends on the circumstances
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`of the user’s interaction with the device, as well as the individual differences and
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`sensory capabilities of the user himself or herself as noted.
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`But the Board need not resort to the principle of “constru[ing] claims to
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`preserve validity,” Cardiac Pacemakers, 296 F.3d at 1114, to reject Patent Owner’s
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`proposed gloss on the district court’s construction. There is nothing in the intrinsic
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`record
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`to support Patent Owner’s complex and variable formulation of
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`“notification,” as discussed extensively above.
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`And the problems here are arguably even more severe than Interval Licensing
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`because whether or not a new message “would not otherwise be noticed” may also
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`depend on how the messaging application was configured. For example, suppose a
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`user cleaned out her mailbox such that her inbox shows zero messages, and then, she
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`receives a new message. The user might notice that new message—even if it is
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`U.S. Patent No. 9,349,120
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`displayed without any accompanying visual, auditory or physical notification—
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`simply because it stands out by virtue of being the first or only message in that user’s
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`inbox. No cue in this instance could ever satisfy the district court’s definition of
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`“notification,” no matter how distracting or jarring it might be. A Fourth of July
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`fireworks presentation played upon receipt of that message would not qualify as a
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`“notification” because it would not draw attention to an incoming message “that
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`would not otherwise have been noticed,” because the user would have noticed the
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`new message even without the fireworks.1
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`There are numerous other scenarios where a message could still be noticed by
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`a user even in the absence of any accompanying new message notification. A new
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`message might be received at a particularly meaningful time to the user, from a
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`particularly important person, or have a subject line or content significant to the user.
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`1 Patent Owner and its expert both conceded that a cue provided while the inbox is
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`displayed (and thus at a time when the user’s focus is on the inbox and not elsewhere)
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`may nevertheless qualify as a “notification.” (Ex. 1023, 24:3-17; Ex. 1024 at 019
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`(“Defendants are wrong that the claim requirement for silencing ‘further
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`notifications’ somehow turns on whether the user inbox is displayed at a given
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`time.”).) Patent Owner has not provided a consistent explanation as to what
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`requirement, if any, the “would not otherwise have been noticed” language imposes.
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`In other words, a “notification” would lack any objective criteria if its presence
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`depended on whether the new message “would not otherwise have been noticed” by
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`the user if the notification were not provided.
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`Patent Owner also argues that the icons and font changes in Dallas are not
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`notifications because a user might not notice them “if the user was working in a
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`different document,” “if the message thread were scrolled out of view,” or “if the
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`viewing window were minimized.” (Response, 16.) These hypotheticals are
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`inapposite because, as explained in the Petition, Collabra as described in Dallas is
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`certainly capable of presenting an inbox in which its visual notifications are clearly
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`displayed. (Petition, 16-18, 38-41; see Part III, infra.)
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`But the flaws in Patent Owner’s argument are readily exposed by showing
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`how they could apply equally to the exemplary notifications in the ’120 patent. For
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`example, the patent says that notifications could include “flashing lights or pop-ups”
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`(’120, 1:31-32), but the user would not notice them unless she was looking at the
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`device when a message arrived. A notification may also include “physical alerts
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`such as vibrations” (id., 1:32), but these would also go unnoticed if the user is not
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`physically holding the device, the device is in the user’s pocket, or perceptual
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`limitations prevent the user from sensing the vibration. The same applies to the
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`exemplary “auditory user alerts such as ring tones” (id., 1:30-31), as these might go
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`unnoticed if the user is not close to the device, has impaired hearing, or if the
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`device’s speaker is facing away from the user. Under Patent Owner’s approach,
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`therefore, even the exemplary “notifications” in the patent specification could cease
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`to be “notifications” based on a number of extraneous factors. And with any
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`notification, regardless of its form and severity, a user could choose to ignore and
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`not be distracted or interrupted by it.
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`The Board Should Adopt a More Sensible Interpretation of
`“Would Not Otherwise Have Been Noticed” to the Extent it
`Chooses to Retain that Language.
`The issues with the district court’s claim construction stem from the word
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`“would.” By defining a notification as a cue that draws attention to an incoming
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`message “that would not otherwise have been noticed, at the time of the incoming
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`message,” as the Board recognized, the construction invites a subjective inquiry into
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`“what a user might or might not be doing for the user to not otherwise have noticed
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`the message.” (Paper 9 at 9 (emphasis added).) From the standpoint of the claims,
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`what the user happens to be doing at the time of receipt is unknowable, and
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`irrelevant, and not a proper basis to judge the presence of a “notification.”
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`Petitioner respectfully submits that the ambiguity of the district court’s
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`construction could be addressed by simply removing the “would not otherwise have
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`been noticed” language, which moves the focus to where it belongs—on an objective
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`assessment that does not depend on the subjective experiences or reactions of users.
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`One is reminded of the thought experiment that posits: “if a tree falls in a
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`forest and no one is around to hear it, does it make a sound?” Of course it does.
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`Using this same thought experiment, Patent Owner’s expert admitted that a new
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`message notification can be provided regardless of whether or not the user is
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`physically there to perceive it. (Ex. 1023, 16:1-22, 46:5-15, 47:23-49:2.)
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`The district court has not had an opportunity to address the issues surrounding
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`the “would not otherwise have been noticed” portion of its construction. Petitioner
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`has alerted the district court to these issues in briefing in a pending motion. (Ex.
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`1026 at 013-014.) But the district court has stayed proceedings as to the ’120 patent
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`until the completion of this IPR. (Ex. 1029.) Petitioner accordingly does not expect
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`further guidance from the district court before the Final Written Decision. But, for
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`the reasons explained above, to the extent the Board chooses to retain the language
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`in question (i.e. “that would not otherwise have been noticed”), the Board should
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`adopt an interpretation that merely requires a visual, auditory, or physical cue that
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`increases the likelihood of a user noticing a new message.
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`C.
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`Patent Owner’s Recounting of the District Court Claim
`Construction Process Is Irrelevant and Incomplete.
`Patent Owner spends several pages recounting the district court’s claim
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`construction briefing and the underlying order. The crux of Patent Owner’s
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`argument is the suggestion that the district court found that the visual cues in
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`Dallas—i.e., red flags, sparkle
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`icons and different-colored
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`text—are not
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`“notifications.” (Response, 11-14.) But the district court made no such finding, and
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`Patent Owner’s version of the district court proceedings is incomplete.
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`The passages of the district court’s claim construction order did not address
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`the types of visual cues provided in Dallas. They instead address user interface
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`elements such as “a change to a numeric character on a phone
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`application icon, without any other cue to draw attention to it,”
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`“a change in the listed number of unread messages in an email
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`inbox, without any other cue to draw attention to it,” and “a changing numeric icon
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`or a changing number of unread messages in an email inbox.” (Ex. 2004 (Dkt. 157),
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`at 31 & 31 n.13.) The district court commented that a construction of “notification”
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`that would include those types of visual changes could be too broad. (Id.)
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`But the visual cues provided by Dallas do not resemble the numerical counter
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`hypotheticals described in the district court’s order. Dallas presents specific visual
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`cues that show up directly in the inbox and apply specifically to the new message
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`and message thread. (Petition, e.g., 16-17, 24, 39-42.) They are not analogous to
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`generic application icons or numeric counters which, unlike Dallas, do not draw the
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`user’s attention to any specific message or message thread.
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`The Court made this clear in its subsequent order denying Patent Owner’s
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`motion for summary judgment of infringement, which issued months after the claim
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`construction order. In the underlying litigation, the accused Facebook products
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`include visual notifications similar to Dallas, such as bolded text and a blue dot next
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`to a new message. (Ex. 1025 at 051; Ex. 1027 at 019-021.) Patent Owner relied on
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`the hypotheticals in the claim construction order to argue that the term “notification”
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`did not include those visual cues. The district court disagreed, noting that whether
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`Facebook’s visual cues qualified as “notifications” presented a factual question not
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`resolved by its claim construction. (Ex. 1025 at 050-051.) The Court further
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`observed that “BlackBerry’s reliance on portions of the intrinsic record in crafting
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`its arguments appears somewhat irrelevant, given that the bolding and blue dot in
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`Facebook Defendants’ example from the accused instrumentalities is different than
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`simply adding a numeric counter.” (Ex. 1025 at 051 (emphasis added).)
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`The district court thus made clear that its construction of “notification” does
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`not by its terms exclude Facebook’s visual cues, which it found to be “different than”
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`the hypotheticals discussed in the claim construction order. Given the similarity
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`between the Facebook visual cues and those disclosed in Dallas, there is no basis for
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`Patent Owner’s suggestion that the district court somehow resolved this issue in its
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`favor. And despite this subsequent order issuing months before Patent Owner’s
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`Response, Patent Owner conspicuously fails to mention it.
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`III. THE VISUAL CUES IN DALLAS ARE “NOTIFICATIONS”
`The Petition explained that Collabra, the software program described in
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`Dallas, “discloses at least three visual ‘notifications’ for incoming messages: (1) red
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`flags, (2) sparkles, and (3) text color.” (Petition, 24 (boldface in original); Ex.
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`1002, ¶¶63-66.) These visual cues—which are silenced for new messages in an
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`ignored thread—clearly qualify as “notifications.”
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`Patent Owner does not (and cannot) dispute that these visual cues draw the
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`user’s attention to a new message at the time of its receipt. This is apparent from the
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`annotated version of Figure 1.9 which was reproduced in the Petition:
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`(Petition, 17 & 41 (quoting Dallas, Ex. 1003, Fig. 1.9, p.55) (red annotations in
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`Petition).)2 The red flags and sparkles shown in Figure 1.9 provide a clear visual
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`distinction between (a) new/unread messages and (b) other messages. And although
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`Figure 1.9 is a black and white figure, Dallas makes clear that new items would be
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`further visually distinguished through different colored text. (Petition, 16-17 & 24;
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`see also Ex. 1003, p.193; Ex. 1002, ¶63.)
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`The obvious purpose of these visual cues is to draw the user’s attention to the
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`new message. (Ex. 1003, p.55 (“The red flags lead you directly to the new
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`document, which has a sparkle on its icon and has a different color title to indicate
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`that you haven’t read it yet.”) (emphasis added).) These visual cues also satisfy
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`the full district court construction because they provide “some form of visual,
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`auditory, or physical cue to draw attention to an incoming message that would not
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`otherwise have been noticed, at the time of the incoming message.” This is because,
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`without those visual cues, new/unread messages would be visually indistinguishable
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`from other older messages in the inbox, and thus, might go unnoticed. Patent
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`2 Pursuant to the Board’s suggestion in the Institution Decision, all page citations
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`to Dallas (Ex. 1003) and any other reference cited in this Reply refer to the page
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`numbers affixed by Petitioner, not the original page numbers in the publications.
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`Owner’s expert conceded that the visual cues in Dallas allow a user to notice a new
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`message that the user would not have otherwise known about. (Ex. 1023, 26:13-22.)
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`Patent Owner points to the claim limitation that “the new incoming message
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`thread flagged as silenced is displayed in the inbox in a different manner than any
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`message thread not flagged as silenced” to argue that Dallas’s visual cues do not
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`provide notifications. (Response, 15, 22-25.) But this limitation has nothing to do
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`with the presence or absence of the claimed “notifications.” Nothing in the claim
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`suggests that a visual notification cannot be manifested to the user by making a
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`message or thread appear more prominent or conspicuous in the inbox.
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`The “displayed in the inbox in a different manner” limitation serves a
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`fundamentally different purpose—to visually distinguish silenced from non-silenced
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`message threads in the inbox, regardless of whether or not the threads include new
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`messages. The ’120 patent specification describes this limitation in terms of
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`displaying silenced threads as “greyed out or otherwise diminished in appearance.”
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`(’120, 13:30-33; id., 13:45-51, 14:49-52.) A visual “notification” has the opposite
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`purpose of making the new message more visually prominent.
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`The fundamental lack of connection between these two features is further
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`illustrated by the fact that notifications are not provided when the message thread is
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`“displayed… in a different manner.” (’120, 14:49-52 (“If the message thread has
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`been silenced by the user then no notification may be activated and at 614 the
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`message may appear ‘greyed out’ or other diminished fashion when displayed with
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`the inbox contents.”), claim 1 (“silencing any further notifications… wherein the
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`new incoming message thread… is displayed in the inbox in a different manner…”)
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`(underlining added).) For this reason, Petitioner has identified different functionality
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`in Collabra for the “displayed… in a different manner” limitation, i.e., the display of
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`an international “not” symbol to indicate ignored message threads. (Petition, 18, 29-
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`30, 50-52.) Patent Owner does not contend that Dallas fails to disclose the
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`“displayed… in a different manner” limitation.
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`Patent Owner also argues that, in some circumstances, the red flags, sparkle
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`icons and different-colored text for a new message may not be displayed to a user—
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`for example, a new message might be scrolled out of view. (Response, 16-18.) But
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`Federal Circuit law is also clear that a prior art reference discloses a claim limitation
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`“if the reference discloses an apparatus that is reasonably capable of operating so as
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`to meet the claim limitations, even if it does not meet the claim limitations in all
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`modes of operation.” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361
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`(Fed. Cir. 2018); see also Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002
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`(Fed. Cir. 2016) (“[C]ombinations of prior art that sometimes meet the claim
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`elements are sufficient to show obviousness.”); Hewlett-Packard Co. v. Mustek Sys.,
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`Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003) (“[A] prior art product that sometimes,
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`but not always, embodies a claimed method nonetheless teaches that aspect of the
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`invention.”). The Petition identified multiple screenshots from Dallas displaying
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`new messages in a non-ignored thread, and showing the lack of such notifications
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`for a thread that was ignored. (Petition, 45-48.) Accordingly, even if a user could
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`scroll the inbox, minimize the inbox window, or perform other action removing
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`Collabra’s visual cues from the display, this does not diminish the fact that Collabra
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`as described in Dallas is clearly capable of displaying them.3
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`Furthermore as explained in Part II.B.2, supra, in any type of notification
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`(e.g., visual, auditory, physical), scenarios could always exist in which the
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`notification would not be perceived by a user upon receipt (e.g. if the user was not
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`near the device). These extraneous factors, like the current view of the inbox
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`window in Dallas, do not dictate whether a “notification” has been provided.
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`IV. DALLAS DOES NOT TEACH AWAY FROM “NOTIFICATIONS”
`Patent Owner points to the following passage in Dallas to argue that Dallas
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`somehow “teaches away” from “notifications” as claimed in the ’120 patent:
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`3 Another problem with Patent Owner’s argument is that the claims do not contain
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`limitations affirmatively requiring display of “notifications.” They instead require
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`the silencing of receipt notifications, so the details of how Dallas shows its visual
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`cues in the non-silenced state is not relevant to the claims. It is undisputed that those
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`visual cues do not appear for new messages in ignored (silenced) threads.
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`Collabra adds a button to the Microsoft Mail toolbar, as
`shown in Figure 5.15, which lets you know that there are
`new postings. Unlike a ringing telephone, when you see
`the red flag on the button, indicating that there are new
`documents, you can choose whether to interrupt your
`concentration.
`(Response, 21 (quoting Ex. 1003, p.140) (emphasis added in Response).) Patent
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`Owner’s “teaching away” argument should be rejected for a number of reasons.
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`First, the passage of Dallas cited by Patent Owner does not even pertain to the
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`notification functionality of Collabra cited in the Petition. It describes the ability to
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`add a button (“Share”) to the toolbar interface in an entirely different messaging
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`application—Microsoft Mail. (Ex. 1003, Fig. 5-15, pp.140-141.) The button
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`provides a way to exchange data from Microsoft Mail to Collabra, and as such, does
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`not appear in the Collabra user interface itself or within the screen containing the
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`Collabra inbox. (Id.) The visual cues identified in the Petition as “notifications”
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`(i.e. red flags, sparkles and different colored text) are directly applied to the
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`new/unread messages and message threads displayed in the Collabra inbox, not to a
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`“Share” button in another window in an entirely different messaging application.
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`Second, Patent Owner has not come close to meeting the standard for a
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`“teaching away.” A prior art reference teaches away only “‘when a person of
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`ordinary skill, upon reading the reference, would be discouraged from following the
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`path set out in the reference, or would be led in a direction divergent from the path
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`that was taken’ in the claim.” Meiresonne v. Google, Inc., 849 F. 3d 1379, 1382
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`(Fed. Cir. 2017) (citation omitted). “A reference that ‘merely expresses a general
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`preference for an alternative invention but does not criticize, discredit, or otherwise
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`discourage investigation into’ the claimed invention does not teach away.” Id.
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`The passage from Dallas cited by Patent Owner does not teach away. It
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`simply compares displaying a red flag on a “Share” button to a ringing telephone. It
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`does not express any preference for one or the other—it simply notes the difference.
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`The passage also does not criticize, discredit, or otherwise discourage use of any
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`particular type of “notification.”
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`Patent Owner’s expert also conceded that a “notification” need not actually
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`interrupt a user from a current activity. (Ex. 1023, 18:4-12, 46:5-15, 47:23-49:2.)
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`This is consistent with the passage of Dallas cited by Patent Owner that makes clear
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`that the user can always choose whether to be interrupted. (Ex. 1003, p.140
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`(“[W]hen you see the red flag on the button, indicating that there are new documents,
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`you can choose whether to interrupt your concentration.”) (emphasis added).)
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`V. THE COMBINATION OF DALLAS AND LEBLANC DISCLOSES
`“SILENCING” NOTIFICATIONS
`Patent Owner does not dispute that LeBlanc discloses “notifications” even
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`under its narrow construction. Patent Owner instead attacks LeBlanc as allegedly
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`failing to disclose silencing notifications. (Response, 25-26.) But this is an example
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`of improperly attacking LeBlanc individually, ignoring the instituted combination
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`of Dallas and LeBlanc. See In re Merck & Co., Inc., 800 F.2d
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