Paper 21
`
`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
`________________
`
`PATENT OWNER’S SUR-REPLY
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`
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`

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`TABLE OF CONTENTS
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`Page
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`I. 
`II. 
`
`B. 
`C. 
`D. 
`E. 
`
`F. 
`
`G. 
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`B. 
`C. 
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`INTRODUCTION ........................................................................................... 1 
`THE BOARD’S CONSTRUCTION OF “NOTIFICATION” IS
`WELL-REASONED AND DOES NOT RELY ON A “SUBJECTIVE
`INQUIRY” ....................................................................................................... 2 
`A. 
`The Board’s construction does not require a “subjective
`inquiry” .................................................................................................. 2 
`The claims support the Board’s construction ........................................ 4 
`The specification supports the Board’s construction ............................ 6 
`The prosecution history supports the Board’s construction .................. 8 
`Petitioners’ reliance on Interval Licensing and Datamize is
`misplaced ............................................................................................. 10 
`The District Court’s orders do not support petitioners’ reading
`of “notification” ................................................................................... 12 
`Petitioners’ construction is overly broad as it would make any
`display a “notification” ........................................................................ 14 
`III.  DALLAS DOES NOT DISCLOSE AND IS INCOMPATIBLE WITH
`“NOTIFICATIONS” ..................................................................................... 15 
`A.  Notifications have no place in Dallas’ system, which uses
`message icons to fight information overload ...................................... 15 
`Dallas teaches away from LeBlanc’s “notifications” ......................... 17 
`Petitioners’ attempt to distance their grounds from Dallas’
`teaching away is without merit ............................................................ 19 
`IV.  NEITHER DALLAS NOR LEBLANC TEACHES “SILENCING” ........... 21 
`V.  NONE OF THE PRIOR ART TEACHES “DISPLAYING”
`SILENCED MESSAGES .............................................................................. 22 
`VI.  CONCLUSION .............................................................................................. 27 
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`IPR2019-00706
`U.S. Patent No. 9,349,120
`TABLE OF AUTHORITIES
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`Page
`
`Cases
`Aptalis Pharmatech, Inc. v. Apotex Inc.,
` 718 F. App’x 965 (Fed. Cir. 2018) ................................................................. 9
`BASF Corp. v. Johnson Matthey Inc.,
` 875 F.3d 1360 (Fed. Cir. 2017) .................................................................... 11
`CollegeNet, Inc. v. ApplyYourself, Inc.,
` 418 F.3d 1225 (Fed. Cir. 2005) ....................................................... 24, 25, 26
`Datamize, LLC v. Plumtree Software, Inc.,
` 417 F.3d 1342 (Fed. Cir. 2005) .................................................................... 11
`Dippin' Dots, Inc. v. Mosey,
` 476 F.3d 1337 (Fed. Cir. 2007) .................................................................... 24
`Interval Licensing v. AOL, Inc.,
` 766 F.3d 1364 (Fed. Cir. 2014) .................................................................... 11
`K/S Himpp v. Hear-Wear Techs., LLC,
` 751 F.3d 1362 (Fed. Cir. 2014) .................................................................... 21
`Meiresonne v. Google, Inc.,
` 849 F. 3d 1379 (Fed. Cir. 2017) ................................................................... 17
`Polaris Indus., Inc. v. Arctic Cat, Inc.,
` 882 F.3d 1056 (Fed. Cir. 2018) .................................................................... 18
`Sonix Tech. Co. v. Publications Int’l, Ltd.,
` 844 F.3d 1370 (Fed. Cir. 2017) .................................................................... 11
`Vivid Techs. v. Am. Science & Eng’g, Inc.,
` 200 F.3d 795 (Fed. Cir. 1999) ...................................................................... 24
`Rules and Regulations
`37 C.F.R. §§ 42.24(D) ............................................................................................. 28
`37 C.F.R. §§ 42.6(E), 42.105(A)) ............................................................................ 29
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`ii
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`Exhibit #
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
`
`Ex. 2005
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`PATENT OWNER’S LIST OF EXHIBITS
`
`
`Description
`Excerpts from the Prosecution History of the ’120 Patent
`Deposition Transcript of Dr. S. Chatterjee
`Expert Declaration of Dr. Hugh Smith
`BlackBerry v. Facebook, Inc., et al., 2:18-cv-01844-GW-(KSx),
`Dkt. 157, Corrected Final Ruling on Claim
`Construction/Markman Hearing (“Markman Order”)
`BlackBerry v. Facebook, Inc., et al., 2:18-cv-01844-GW-(KSx),
`Dkt. 117, Facebook Defendants’ Opening Claim Construction
`Brief
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`iii
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`
`I.
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`
`
`INTRODUCTION
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`The Board correctly adopted the district court’s conclusion that a
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`“notification” is “some form of visual, auditory, or physical cue to draw attention
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`to an incoming message that would not otherwise have been noticed, at the time
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`of the incoming message.” The Board’s construction recognizes the express
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`distinction made by the ’120 patent between a “notification” and a message’s
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`“manner of display.” Indeed, “notifications” are ordinarily understood to be the
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`kinds of “alarms” or “alerts” discussed in the claims and specification—such as
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`vibrations, ring tones, and pop-ups—that are used to “draw attention to an
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`incoming message.” These notifications prevent incoming messages from
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`blending in with other unread messages in the inbox, where the new message
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`“would not otherwise have been noticed.” This is in contrast to a message’s
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`manner of display for read versus unread messages, which is employed to
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`distinguish one message’s status from the other.
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`Petitioners respond by encouraging the Board to abandon its construction in
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`favor of encompassing any display characteristic “that increases the likelihood of
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`a user noticing a new message.” But this construction is so broad that it is unclear
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`what, if anything, is not encompassed by Petitioners’ definition—a time stamp, file
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`1
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`size indicator, attachment icon, or the presence of a new message itself all increase
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`the “likelihood” of a user noticing a message.
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`Under the Board’s correct construction, there can be no dispute Dallas fails
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`to disclose “notifications” or silencing the same. Petitioners’ reliance on Leblanc
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`cannot cure these defects in Dallas, since Dallas teaches away from the proposed
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`combination and the same gaps also exist in Leblanc. Thus, Petitioners fail to
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`show why a POSITA starting with Dallas—which criticizes and is incompatible
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`with “notifications”—would be motivated to first add notifications and then to
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`silence them and, further, to rely on human intervention to display the silenced
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`messages. Moreover, Petitioners fail to show that any of their references teach
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`displaying silenced messages, and they admit any allegedly “silenced” messages
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`are hidden altogether and only displayed in response to manual user intervention.
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`II. THE BOARD’S CONSTRUCTION OF “NOTIFICATION” IS WELL-
`REASONED AND DOES NOT RELY ON A “SUBJECTIVE INQUIRY”
`
`In advocating that the Board abandon its construction in lieu of Petitioners’
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`allegedly “more sensible” construction (Reply at 9), Petitioners misrepresent the
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`Board’s construction and Patent Owner’s positions.
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`A. The Board’s construction does not require a “subjective inquiry”
`The Board’s construction tracks the ’120 patent’s claims and specification
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`which distinguish “notifications” from “manners of display.” The Board correctly
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`recognizes that a “notification” is, as the intrinsic record confirms, the kind of
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`“alert” or “alarm” used to draw attention to a newly-received message, such as a
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`ring tone, a pop-up or a vibration, that “would not otherwise have been noticed”
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`apart from the other new messages in the inbox. In contrast, the uniform “manners
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`of display” of new and silenced messages are aimed at distinguishing one from the
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`other.
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`Petitioners respond by arguing that the Board’s construction is “subjective”
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`and presenting hypotheticals where no user is present or where the user’s physical
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`characteristics, such as hearing impairment, prevent the user from perceiving a
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`“notification.” Petitioners’ arguments and hypotheticals are divorced from the
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`intrinsic record and the district court’s findings, both of which support the Board’s
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`construction.
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`Indeed, nothing in the Board’s construction depends on a user’s experience
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`of a “notification.” The Board’s construction requires that a “notification” be
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`“some form of visual, auditory, or physical cue to draw attention to an incoming
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`message that would not otherwise have been noticed.” That is, a “notification”
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`must be of the same “form” of cue to draw attention that the patent describes – the
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`patent does not require that each individual notification actually notifies a user.
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`Rather, as discussed further below, the ’120 patent provides objective guidance to
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`a POSITA for the types of cues that are “notifications,” such as ring tones, alerts,
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`U.S. Patent No. 9,349,120
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`vibrations, and pop-ups—it separately discusses a message’s appearance and font
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`style as a “manner of display.” Ex. 2003 at ¶¶ 47-64. There is nothing confusing
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`or subjective about this distinction.
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`The claims support the Board’s construction
`
`B.
`The claims themselves distinguish between a message’s “manner of display”
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`and “notifications”:
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`
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`Ex. 1001 at claim 1. As the claims recite, new unsilenced messages are displayed
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`in one manner and are subsequently displayed in a “different manner” when
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`silenced. Thus, the manner of display of a message is a distinct requirement from
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`the claimed “notifications.” The claim language thus refutes Petitioners’ assertion
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`that “notifications” can include any manner of display, such as message icons and
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`font style.
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`Petitioners ignore the claims’ distinction between a “manner of display” for
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`
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`a non-silenced message and “notifications.” Notwithstanding the claim language,
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`Petitioners argue that a non-silenced message’s display characteristics are “not
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`relevant to the claims.” Reply at n. 3 (“[T]he details of how Dallas shows its
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`visual cues in the non-silenced state is not relevant to the claims.”). This is
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`incorrect—as shown above, the claims recite a system with at least two manners of
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`display: one for non-silenced messages and a “different manner” for silenced
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`messages.
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`Petitioners take this incorrect position because they assert that Dallas’
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`manner of display for non-silenced messages (message icons and font style) are
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`notifications. In fact, Dallas’s message icons and font style are the manner of
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`display for non-silenced messages, they are not “notifications.” Petitioners
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`assertion that the Board’s construction “renders the claims indefinite” is an attempt
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`to distract from this deficiency in Petitioners’ grounds by erasing the line between
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`“manners of display” and “notifications” recited in the claims.
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`Most troublingly, Petitioners’ effort to extend “notifications” to include all
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`manner of message displays has forced them to take the extreme position that the
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`claims do not require visual notifications to be displayed at all:
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`Another problem with Patent Owner’s argument is that the claims do
`not
`contain
`limitations
`affirmatively
`requiring display of
`“notifications.”
`
`Reply at n. 3 (emphasis in original). In other words, under Petitioners’
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`understanding of the claims, a visual characteristic of a message is still a
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`notification even if it is never displayed. This defies common sense—while each
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`individual visual notification need not distract a user, it must at least be a “form of”
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`a visual cue. A visual notification that is not displayed at all is not a “cue.”
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`C. The specification supports the Board’s construction
`The specification likewise distinguishes between “notifications” and a
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`message’s manner of display. For example, the specification describes “visual
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`alarms” and “physicals alarms” as types of notifications:
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`Those of skill in the art will recognize that there may be many
`different types of notification settings, including visual alarms
`(including, for example, pop-up messages, blinking lights of one or
`more colors, frequencies, etc.) and/or physical alarms such as
`vibrators or shakers.
`
`Ex. 1001 at 9:26-31 (emphasis added). The specification also describes auditory,
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`visual, and physical alerts as other types of notifications:
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`Such notifications could include, for example, auditory user alerts
`such as ring tones, visual alerts such as flashing lights or pop-ups,
`and/or physical alerts such as vibrations.
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`6
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`Id. at 9:6-8. In each case, the specification consistently describes “notifications” as
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`attention-grabbing “alerts” or “alarms.” This is consistent with how the term
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`would be understood by a POSITA. See, e.g., Ex. 2003 at ¶ 56.
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`Separately, the specification addresses a message’s display characteristics,
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`such as font color and style, and the overall appearance of a message:
`
`In some embodiments, new messages received for a silenced message
`thread may appear to be greyed out or otherwise diminished in
`appearance when displayed with an inbox contents. That is, when the
`messages in an inbox are displayed, for example on display 142, new
`messages in a silenced message thread may be displayed in a
`different manner, such as, for example, using a differently-colored or
`styled font.
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`Id. at 13:30-37 (emphasis added). The specification thus makes a distinction
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`between “notifications” which are a kind of alarm or alert and “manners of
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`display” which cover the overall display of a message, e.g., its font color. No
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`“subjective inquiry” is required to understand this distinction. Ex. 1023 at 16:1-22.
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`Notably, despite the specification’s express placement of “differently-
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`colored or styled font” in the “manner of display” category in its embodiments,
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`Petitioners and their expert argue on reply that Dallas’ text color is a “notification.”
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`See, e.g., Reply at 12-13 (“Dallas, “discloses at least three visual ‘notifications’
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`[including]. . .(3) text color.”) (emphasis added), citing Paper 2 (Pet.) at 24, Ex.
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`1002 (Chowdhary Decl.), ¶¶63-66. Petitioners’ understanding of the claims would
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`render the above-quoted embodiment in the specification nonsensical, since the
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`text color described by the patent as a “manner of display” would itself be a
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`“notification.” Petitioners’ invitation to ignore the specification should be
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`declined.
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`D. The prosecution history supports the Board’s construction
`The prosecution history of the ’120 patent also supports the Board’s
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`construction. Petitioners allege that “Patent Owner identifies nothing in the patent
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`specification or file history that compels this language” requiring a notification to
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`be a cue that draws attention to a message that “would not otherwise have been
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`noticed.” Reply at 3. This is incorrect. Petitioners admit just a page later that
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`“Patent Owner cites general statements in the prosecution history relating to the
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`avoidance of distracting or bothersome notifications (Response, 15)[.]” Id. at 4.
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`Further, these excerpts cited by BlackBerry are not “general statements” as
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`Petitioners argue. Just like the specification, the cited passages distinguish
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`between notifications and manners of display, including, for example, the passage
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`criticized by Petitioners on reply (below):
`
`[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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`8
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`PO Resp. at 15, citing Ex. 2001 at 28 (12/19/2014 Amendment page 17 of 18)
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`(emphasis added). This exemplary passage on its own rebuts Petitioners position
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`that “[n]othing in the specification or file history requires that notifications be
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`jarring, severe, or otherwise have sensory characteristics that would distract or
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`interrupt the user.” Reply at 4 (emphasis added). The prosecution history says just
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`that—that “notifications” are “bothersome” and would “distract” the user.
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`Statements from prosecution history should be given effect and reflected in the
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`Board’s interpretation of the claims. See Aptalis Pharmatech, Inc. v. Apotex Inc.,
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`718 F. App’x 965, 971 (Fed. Cir. 2018) (relying on the prosecution history “even
`
`in the absence of a clear and unmistakable disavowal” because “‘[a]ny explanation,
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`elaboration, or qualification presented by the inventor during patent examination is
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`relevant, for the role of claim construction is to ‘capture the scope of the actual
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`invention’ that is disclosed, described, and patented’”). Petitioners fail to address
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`this and the other passages cited in Patent Owner’s Response.
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`As discussed above, the fact that “notifications” are described as being
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`“bothersome” and “distracting” does not require a “subjective inquiry.” Indeed, it
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`does not require that an auditory notification must actually distract a hearing-
`
`impaired individual, or that a visual notification must actually distract a user
`
`standing in a different room, as Petitioners suggest. Instead, the concrete examples
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`9
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`of “notifications” in the specification—“ring tones,” “flashing lights or pop-ups,”
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`U.S. Patent No. 9,349,120
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`and “vibrations” (Ex. 1001 at 9:6-8)—demonstrate that the appropriate focus is on
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`“cues” of the “form” to draw a user’s attention, congruent with the Board’s
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`construction and the understanding of a POSITA. Ex. 2003 at ¶ 56. While one
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`may construct a hypothetical where a user would not be distracted by any one of
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`these examples, the prosecution history nonetheless demonstrates that these
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`“notifications” are the type of cues that are “distract[ing].”
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`Accordingly, Petitioners’ arguments with respect to “notification” should be
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`rejected.
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`E.
`
`Petitioners’ reliance on Interval Licensing and Datamize is
`misplaced
`Petitioners reliance on Interval Licensing and Datamize is misplaced, since
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`those cases turned on phrases whose ordinary meanings were inherently subjective
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`because they rested on the taste and opinions of a user. See Sonix, infra, at 1378
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`(“Datamize and Interval Licensing involved terms that were subjective in the sense
`
`that they turned on a person's tastes or opinion.”) This is not the case here, where
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`the Board’s construction captures the ordinary meaning of the term “notifications,”
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`as confirmed by the examples in the specification and further supported by the
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`prosecution history.
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`10
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`In Interval Licensing v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014), the
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`
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`claims expressly required that content be presented “in an unobtrusive manner that
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`does not distract a user[.]” Further, the panel in that case found that the claim
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`language ahad a “muddled” and “hazy” relationship with the specification and
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`prosecution history. Id. 1372-73. Thus, the claims were subjective because they
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`turned on whether the claimed user was distracted by content based on its
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`obtrusiveness, and the intrinsic record did not provide any objective guidance.
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`Likewise, in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1349-50
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`(Fed. Cir. 2005), the Court held that the term “aesthetically pleasing” was
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`inherently subjective as it was based purely on a user’s taste. Id.at 1350
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`(“‘aesthetically pleasing’ does not just include a subjective element, it is
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`completely dependent on a person’s subjective opinion.”).
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`In contrast, the present case is comparable to Sonix Tech. Co. v. Publications
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`Int’l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017), where the Federal Circuit found
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`that the term “visually negligible” was not indefinite, because it turns on what can
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`be seen by the human eye. The Court held that the “general exemplary design for a
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`visually-negligent indicator,” “requirements,” and “specific examples” provided in
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`the specification served to confirm the objective nature of this term. 844 F.3d
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`1370, 1377-78 (Fed. Cir. 2017); see also BASF Corp. v. Johnson Matthey Inc., 875
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`11
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`F.3d 1360, 1366 (Fed. Cir. 2017) (“an inventor need not explain every detail
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`U.S. Patent No. 9,349,120
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`because a patent is read by those of skill in the art.”). Here, too, the Board’s
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`construction of a “notification” captures its well-understood ordinary meaning—a
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`cue to draw a user’s attention to something that otherwise would not have been
`
`noticed—and the examples and discussion in the intrinsic record confirms the
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`Board’s understanding. The term “notification” is not contingent on a user’s
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`experience, opinion, or taste, and therefore Petitioners’ cited case law is inapposite.
`
`F.
`
`The District Court’s orders do not support petitioners’ reading of
`“notification”
`Petitioners’ incorrectly argue that Patent Owner’s account of the Markman
`
`proceedings in the district court is incomplete and suggest that the district court’s
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`summary judgment order supports their reading of “notifications.” The Reply fails
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`to acknowledge, however, that Petitioners made the same failed arguments
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`regarding “notification” in district court that they do in this IPR—namely, that the
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`term should be construed to encompass display characteristics of a new message.
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`See, e.g., Ex. 2005 at 7-8 (Dkt. 117, Facebook’s Opening Markman Brief)
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`(arguing that icons and text characteristics are “notifications”) with, e.g., Ex. 2002
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`(Chatterjee Dep.) at 53:16-25 (testifying that font color is a “notification”), 55:22-
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`56:4 (testifying that bolded text and italicized text are “notifications”). Petitioners
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`Reply also fails to acknowledge that the District Court rejected its broad reading of
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`12
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`“notifications” and lifted its construction—adopted by the Board—from
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`BlackBerry’s briefing. Ex. 2004 (Markman Order) at 30-31, citing Ex. 1001 at
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`1:30-33, 9:26-31, 13:19-22 and BlackBerry’s expert declaration.
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`Instead, Petitioners pivot to the district court’s summary judgment ruling in
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`order to find support. Reply at 12. In district court, Facebook argued that certain
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`of its displays are “notifications,” including a “blue dot.” In denying summary
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`judgment on the issue of infringement, the Court held that a dispute of fact existed
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`as to whether Facebook’s features are “notifications,” and whether “any further”
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`notifications are thereby silenced by its products. Petitioners attempt to leverage
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`this ruling by drawing a comparison between Facebook’s accused products and
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`Dallas’s icons.
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`This attempt is unavailing. The Court’s order addressed specific features of
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`Facebook’s accused instrumentalities—this discussion is not relevant to Dallas.
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`Moreover, the functionality of Facebook’s products is not complete on this public
`
`record, so Petitioners’ attempt to draw this comparison is improper. See, e.g., Ex.
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`1027 (Facebook’s brief) at 21-22 (redacting a discussion explaining how
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`Facebook’s displays including “blue dots” operate). In any case, the district
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`court’s finding that there is a factual dispute as to infringement does not provide
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`support for Petitioners’ efforts to neglect the same court’s claim construction.
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`G.
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`Petitioners’ construction is overly broad as it would make any
`display a “notification”
`
`Petitioners advocate for an overbroad construction of notifications that
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`“merely requires a visual, auditory, or physical cue that increases the likelihood of
`
`a user noticing a new message.” Reply at 10. This construction ignores the
`
`distinctions made by the claims, specification, and prosecution history discussed
`
`above, and therefore should be rejected. Indeed, under this construction any
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`display characteristic—font style, attachment indication, time stamps, file size
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`indicators, email icons or message counters—might be a “notification” of an
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`incoming message. In fact, it is unclear what, if anything, is not a notification
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`under Petitioners’ interpretation of the claims.
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`Petitioners’ construction leads to illogical results that reflect internal
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`inconsistencies in Petitioners’ positions. For example, a message number
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`counter—which the district court confirmed is not a “notification,” a finding
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`uncontested by Petitioners (Reply at 11)—would “increase the likelihood of a user
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`noticing a new message,” since a user who notices the number has increased would
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`know a new message has arrived. Likewise, a message’s time stamp, date stamp,
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`and file size displays would also fall within Petitioners’ construction, since each
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`would increase the likelihood that a user would notice the new message. Indeed, a
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`new message’s very presence in an inbox itself increases the likelihood a user will
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`notice it as compared to its absence.
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`But this all-encompassing reading of “notifications” to include all manners
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`of display is not supported by the claims, specification, or the prosecution history,
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`which confirm the understanding of a POSITA that a “notification” is of the form
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`of “alerts” or “alarms” which “distract” or “bother” a user to draw attention to a
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`message that would otherwise not have been noticed. Thus, Petitioners’ proposed
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`construction is not “more sensible” than the Board’s (Reply at 9), as Petitioners
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`suggest, since it improperly includes any type of message display.
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`III. DALLAS DOES NOT DISCLOSE AND IS INCOMPATIBLE WITH
`“NOTIFICATIONS”
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`Not only does Dallas fail to disclose “notifications,” its system is
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`incompatible with them. Thus, not only does Dallas fail to teach this limitation, it
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`actually teaches away from Petitioners’ proposed combination with Leblanc.
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`A. Notifications have no place in Dallas’ system, which uses message
`icons to fight information overload
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`Dallas’ message font color and message icons are not “notifications.” As
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`noted above, the specification expressly categorizes message font color in the
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`“manner of display” category. Likewise, Dallas’ message icons are also manners
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`of display. They are not of the same form of the alarms or alerts discussed in the
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`specification as “notifications,” and instead are only displayed when the specific
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`new message is scrolled into view among potentially hundreds of other messages.
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`Indeed, Dallas’ icons otherwise are not displayed at all, and a user will have to
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`search various threads to locate new messages.
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`Dallas’ approach thus aligns well with the aim of the Collabra system that
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`Dallas discloses to “fight[] information overload”:
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`Any groupware system that is actively used quickly generates more
`new messages than there is time to read. Internet newsgroups, with
`potentially hundreds of thousands of contributors, represent an
`inexhaustible supply of new postings; the World Wide Web is
`experiencing such explosive growth that the knowledgebase seems
`infinite.
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`Ex. 1003 at 11 (emphasis added).
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`Without tools like Collabra Share, the growing mountain of data is
`overwhelming. Gleaning information from such a voluminous
`source is like drinking from a firehose. Collabra calls this
`information overload, and Share includes many features designed to
`combat the problem.
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`Id. at 12 (emphasis added). Dallas’ system is designed to help a user manage
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`these vast amounts of incoming data from many sources. Dallas’ use of message
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`icons and font—which are not displayed unless they are scrolled into the viewing
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`pane manually—align with its aim not to interrupt a user’s concentration each time
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`a message is posted.
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`As a practical matter, Dallas’ teaching of a “firehose” of “infinite” incoming
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`information from “thousands of contributors” would discourage a POSITA from
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`using notifications, such as the disruptive, bothersome pop-ups disclosed in
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`LeBlanc.1 A POSITA would not be motivated to add a distracting ring tone,
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`vibration or pop-up to each one of Dallas’ new posts from “thousands of
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`contributors” resembling a seemingly infinite “firehose” of information. Dallas is
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`thus incompatible with “notifications.” To that end, Dallas expressly distinguishes
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`its email icons from the “notifications” (i.e., “form of…cues”) disclosed in
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`the ’120 patent, like “ring tones.” Ex. 1003 at 140 (chapter page 115); see also Ex.
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`2002 (Chatterjee Tr.) at 24:10-12 (acknowledging that a “ringing sound” is an
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`expressly disclosed notification in the ’120 Patent).
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`B. Dallas teaches away from LeBlanc’s “notifications”
`As Petitioners admit, a prior art reference teaches away “‘when a person of
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`ordinary skill, upon reading the reference, would be discouraged from following
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`the path set out in the reference, or would be led in a direction divergent from the
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`1 Notably, Petitioners confirm that they are relying on the firehose of information
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`in Dallas’s group-forum, the “Collabra inbox,” not a mail application like
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`Microsoft Mail. Reply at 18 (distinguishing the Collabra inbox from an external
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`mail application). Either way, the purpose of Dallas’s flags remains the same.
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`path that was taken’ in the claim.” See Reply at 18-19, citing Meiresonne v. Google,
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`Inc., 849 F. 3d 1379, 1382 (Fed. Cir. 2017) (citation omitted).
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`As noted above, Dallas aims to fight information overload and uses visual
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`displays to ensure a user’s concentration is not interrupted by new posts.
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`Accordingly, as Dr. Smith confirmed, a POSITA would be discouraged from
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`adding LeBlanc’s notifications because Dallas criticizes them and they would not
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`fit into Dallas’s scheme of regulating information overload. See, e.g., Ex. 2003 at
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`¶ 69 (“[I]n my opinion because Dallas expressly teaches that an advantage of its
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`invention is that it does not interrupt a user’s concentration, distinguishing its ‘red
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`flags’ and ‘sparkle’ icon from the type of attention grabbing ‘notifications’
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`expressly disclosed in the ’120 patent, Dallas actually teaches away from the
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`claimed ‘notifications.’”). Dallas thus teaches away from the claimed
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`“notifications.”
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`In any case, even if Dallas’ disclosure does not meet the standard for a
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`formal “teaching away,” at a minimum it highlights the incompatibility of Dallas’s
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`system designed to reduce information overload with noisy, distracting
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`notifications like those discussed in LeBlanc. Polaris Indus., Inc. v. Arctic Cat,
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`Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018) (“[E]ven if a reference is not found to
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`teach away, its statements regarding preferences are relevant to a finding regarding
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`whether a skilled artisan would be motivated to combine that reference with
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`another reference.”). This counsels against the proposed combinations and is not
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`addressed in the Petition or Reply.
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`Petitioners’ scant motivations to combine do not adequately explain why a
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`PO