Trials@uspto.gov
`571-272-7822
`
`
`Paper 35
`Date: September 1, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC,
`and WHATSAPP INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00706
`Patent 9,349,120 B2
`____________
`
`
`
`
`Before MICHAEL R. ZECHER, MIRIAM L. QUINN,
`and AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ................................................................................ 1
`A.
`Background ................................................................................ 1
`B.
`Related Matters .......................................................................... 1
`C.
`The ’120 Patent .......................................................................... 2
`D.
`The Challenged Claims .............................................................. 3
`E.
`Evidence Relied Upon ................................................................ 5
`1.
`Dallas ............................................................................... 5
`2.
`Kent .................................................................................. 7
`3.
`Brown ............................................................................... 7
`4.
`LeBlanc ............................................................................ 7
`5.
`Bott ................................................................................... 8
`6. Mann ................................................................................ 8
`Grounds of Unpatentability ........................................................ 8
`F.
`ANALYSIS .......................................................................................... 9
`A.
`Level of Ordinary Skill in the Art .............................................. 9
`B.
`Claim Construction––“Notification” ......................................... 9
`1.
`The Claim Language ...................................................... 11
`2.
`The Written Description ................................................ 12
`3.
`The Prosecution History and Other
`Intrinsic Evidence .......................................................... 15
`Extrinsic Evidence ......................................................... 16
`4.
`The District Court Construction .................................... 16
`5.
`Subjectivity .................................................................... 18
`6.
`Conclusion ..................................................................... 20
`7.
`Obviousness ............................................................................. 20
`1.
`The Independent Claims ................................................ 21
`
`C.
`
`i
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`a.
`
`Patent Owner Arguments .................................... 23
`i.
`Notifications .............................................. 23
`ii.
`Teaching Away ......................................... 25
`iii. Manner of Display ..................................... 27
`iv.
`Silencing in LeBlanc ................................. 28
`v.
`Displaying ................................................. 29
`The Dependent Claims................................................... 31
`2.
`III. CONCLUSION .................................................................................. 35
`IV. ORDER ............................................................................................... 36
`
`
`
`ii
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`Facebook, Inc., Instagram, LLC, and Whatsapp Inc. (collectively,
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–3, 5,
`7–11, 13–15, 17, 19–22, and 24 of U.S. Patent No. 9,349,120 B2 (Ex. 1001,
`“the ’120 patent”). Paper 2 (“Pet.”). Blackberry Limited (“Patent Owner”)
`filed a Preliminary Response. Paper 8 (“Prelim. Resp.”).
`
`On September 4, 2019, we instituted an inter partes review of claims
`1–3, 5, 7–11, 13–15, 17, 19–22, and 24. Paper 9 (“Decision”), 18. Patent
`Owner then filed a Patent Owner Response (Paper 16, “PO Resp.”),
`Petitioner filed a Reply (Paper 18, “Pet. Reply”), and Patent Owner filed a
`Sur-Reply (Paper 21, “PO Sur-Reply”). An oral hearing was held on June
`10, 2020, by video only, and a transcript of the hearing is included in the
`record (Paper 34, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that claims 1–3, 5, 7–11, 13–15, 17, 19–22,
`and 24 of the ’120 patent are unpatentable.
`
`B.
`
`Related Matters
`The parties identify BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-
`01844-GW-KS (C.D. Cal.), as a related matter. See Pet. 2; Patent Owner
`Mandatory Notices (Paper 5) 2. The District Court issued a claim
`construction ruling in that case on April 5, 2019, a copy of which has been
`filed as Exhibit 1020. The case is now stayed. See Ex. 1029.
`
`1
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`C.
`
`The ’120 Patent
`The ’120 patent is directed to “[m]ethods, systems, and computer
`programming products . . . for silencing message threads.” Ex. 1001,
`Abstract. The general scheme is illustrated in Figure 6 of the patent, which
`is reproduced in part below.
`
`
`
`Figure 6 is a “schematic flow diagram of an
`example method for receiving a message.” Ex. 1001 2:1–2.
`The method “can begin at 602 where a message is received which is
`addressed or otherwise identified in such a way as to be associated with an
`inbox.” Ex. 1001 14:5–7. “At 604, it may be determined whether or not the
`message relates to a new matter, such as a new topic of conversation or a
`new activity.” Id. at 14:19–21. “If the message does relate to a new matter,
`at 606, a new message thread is started” and “[a]t 608, the user is notified of
`
`2
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`the message according to any currently-enabled notification settings, as
`described above.” Id. at 14:32–35.
`“If the message does not relate to a new matter, at 610, a thread to
`which the message belongs may be determined” and “[a]t 612, it [may be]
`determined whether or not the message thread to which the message belongs
`has been silenced by the user.” Ex. 1001 at 14:36–38, 44–46. If the thread
`has been silenced, “no notification may be activated and at 614 the message
`may appear ‘greyed out’ or other diminished fashion when displayed with
`the inbox contents.” Id. at 14:49–52. If, on the other hand, the thread has
`not been silenced, “then at 616 the user may be notified of the incoming
`message according to any currently-enabled notification settings.” Id. at
`14:52–55.
`The ’120 patent explains that the “[n]otifications could include, for
`example, auditory user alerts such as ring tones, visual alerts such as
`flashing lights or pop-ups and physical alerts such as vibrations.” Ex. 1001,
`1:30–32; see also id. at 9:6–8.
`The ’120 patent also explains that “[m]essage threads which have
`been silenced may be marked or flagged as silenced in memory 300 by, for
`example, setting a flag or other indicator in a data record associated with the
`message thread.” Ex. 1001, 9:35–38.
`
`D.
`
`The Illustrative Claim
`Independent claim 1 is to a system for silencing notifications,
`independent claim 13 is to a corresponding method, and independent claim
`24 is a corresponding Beauregard claim. Claim 1 thus reflects the subject
`matter addressed in this proceeding:
`
`3
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`1. A communication system configured to silence notifications for
`incoming electronic messages, the system comprising a data
`processor, non-transitory media readable by the data processor and a
`communications subsystem:
`the communication subsystem adapted for receiving the incoming
`electronic messages; and
`the non-transitory media readable by the data processor comprising
`coded program instructions adapted to cause the processor to:
`receive a selected message thread for silencing;
`in response to receiving the selected message thread, activate a flag
`stored in the non-transitory media in association with the
`selected message thread, wherein the flag indicates that the
`selected message thread has been silenced;
`determine that a new incoming electronic message is associated
`with the selected message thread;
`determine that the selected message thread has been flagged as
`silenced using the flag stored in the nontransitory media;
`override a currently-enabled notification setting to prevent a
`receipt notification pertaining to new incoming electronic
`messages associated with the selected message thread from
`being activated; and
`display the new incoming electronic message in an inbox together
`with any message thread not flagged as silenced, while
`silencing any further notifications pertaining to receipt of the
`new incoming electronic message, wherein the new incoming
`message thread flagged as silenced is displayed in the inbox in
`a different manner than any message thread not flagged as
`silenced.
`Ex. 1001, 16:–17:11.
`
`4
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`E.
`
`Evidence Relied Upon
`Petitioner relies on the following references:
`
`Reference
`Alastair Dallas, Using Collabra Share 2 (Que
`Corporation 1995) (“Dallas”)
`Mark R. Brown, Using Netscape Communicator 4 (Que
`Corporation 1997) (“Brown”)
`Jeff Kent, C++ Demystified: A Self-Teaching Guide
`(McGraw-Hill/Osborne 2004) (“Kent”)
`Ed Bott, Using Microsoft Windows Millennium Edition
`(Que Corporation 2001) (“Bott”)
`Bill Mann, How to Do Everything with Microsoft Office
`Outlook 2007 (The McGraw-Hill Companies 2007)
`(“Mann”)
`Dee-Ann LeBlanc, Using Eudora (Que Corporation 2d
`ed. 1997) (“LeBlanc”)
`
`Exhibit No.
`1003
`
`1004
`
`1010
`
`1007
`
`1011
`
`1005
`
`Petitioner also relies on a Declaration of Sandeep Chatterjee, Ph.D,
`filed as Exhibit 1002. Patent Owner relies on a Declaration of Dr. Hugh M.
`Smith, filed as Exhibit 2003.
`
`Dallas
`1.
`Dallas is a user guide for a computer application called Collabra Share
`2. See Ex. 1003, 28. Figure 1.9 of the reference is reproduced below.
`
`5
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`
`
`Figure 1.9 is a screenshot of
`a Collabra Share 2 window.
`The Collabra Share 2 window shown in Figure 1.9 includes a box
`with categories on the top left, a box with hierarchically arranged items from
`the selected category on the top right, and box with the contents of the
`current item at the bottom. The items may include messages. See, e.g., Ex.
`1003, 53, 192–193.
`Dallas explains that red flags applied to the category and thread icons
`“lead [the user] directly to [a] new document, which has a sparkle on its icon
`and has a different color title to indicate that [the user has not] read it yet.”
`Ex. 1003, 55. Dallas also explains that Collabra Share 2 allowed a user to
`select the color of the font used for new items. See id. at 169 (“To change
`the color of unread documents, click the Browse Colors button on the
`Miscellaneous tab of the Properties, General dialog box.”).
`
`6
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`Dallas further describes a Collabra Share 2 option called “Ignore,”
`that would allow a user “[t]o stop seeing new documents in a particular
`thread or category.” Ex. 1003, 195. According to Dallas, “[t]hreads (but not
`categories) are automatically collapsed when you ignore them,” but “you can
`expand them again, if you like.” Id. If the user were to expand the collapsed
`ignored thread, they “[would] still see the documents [they] ignored, but no
`documents in ignored threads or categories [would] appear new.” Id. In
`other words, new documents or messages in ignored threads would not have
`the user selected color font or the sparkle.
`
`Kent
`2.
`Kent is a self-teaching guide to the programming language C++. It
`describes the use of Boolean variables as flags. See, e.g., Ex. 1010, 131.
`
`Brown
`3.
`Brown is a user guide for Netscape Communicator 4 that includes a
`description of a related email application called Messenger. See Ex. 1004,
`34–36.
`
`LeBlanc
`4.
`LeBlanc is a user guide for an email application called Eudora. See
`Ex. 1005, 20. In pertinent part, it describes how Eudora included a dialog
`box that allowed the user to select the method(s) by which they would be
`notified of new email, the options including alerts, flashing icons, and
`sounds. See Ex. 1005, 24–25.
`
`7
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`Bott
`5.
`Bott is a user guide for Windows ME. See Ex. 1007, 1. Petitioner
`cites Bott for its disclosures concerning the use of a wireless device. See
`Pet. 12, 58–60.
`
`6. Mann
`Mann is a book titled How to Do Everything with Microsoft Office
`Outlook 2007. See Ex. 1011, 1. Petitioner cites Mann for its disclosure of
`displaying messages in a message thread even when the thread is collapsed.
`See Pet. 12, 61–64.
`
`F. Grounds of Unpatentability
`This trial was instituted on the following grounds:
`
`103(a)
`
`103(a)
`103(a)
`
`103(a)
`
`35 U.S.C. § Claim(s)
`1–3, 5, 7, 8, 10,
`13–15, 17, 19–21,
`24
`9
`11, 22
`1–3, 5, 7, 8, 10,
`13–15, 17, 19–21,
`24
`9
`
`References/Basis
`
`Dallas, Brown, Kent
`
`Dallas, Brown, Kent, Bott
`Dallas, Brown, Kent, Mann
`
`Dallas, Brown, Kent, LeBlanc
`
`Dallas, Brown, Kent, LeBlanc, Bott 103(a)
`Dallas, Brown, Kent, LeBlanc,
`Mann
`
`103(a)
`
`11, 22
`
`8
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`II. ANALYSIS
`
`We discuss below the level of skill in the art, claim construction, and
`the patentability of claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24.
`
`A.
`
`Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`possessed at least a bachelor’s degree in software engineering, computer
`science, or computer engineering, or electrical engineering with at least two
`years of experience in software application development, including
`development of applications for messaging (or equivalent
`degree/experience).” Pet. 5 (citing Ex. 1002 ¶¶ 12–15).
`Because Patent Owner “does not dispute the level of ordinary skill
`proposed by Petitioner” (PO Resp. 10), and because we find it generally
`consistent with the disclosures of the asserted prior art and the ’120 patent,
`we adopt Petitioner’s formulation.
`
`B.
`
`Claim Construction––“Notification”
`In an inter partes review for a petition filed on or after November 13,
`2018, such as this one, a claim “shall be construed using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). In applying
`this claim construction standard, we are guided by the principle that the
`words of a claim “are generally given their ordinary and customary
`meaning,” as would have been understood by a person of ordinary skill in
`the art in question at the time of the invention. Phillips v. AWH Corp., 415
`F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citation omitted). “In
`determining the meaning of [a] disputed claim limitation, we look
`
`9
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`principally to the intrinsic evidence of record, examining the claim language
`itself, the written description, and the prosecution history, if in evidence.”
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
`(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). There is, however, a
`“heavy presumption,” that claim terms have their ordinary and customary
`meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002) (citation omitted).
`The only term the parties presently dispute1 is “notification.” At
`institution, we adopted the District Court’s construction of that term––“some
`form of visual, auditory, or physical cue to draw attention to an incoming
`message that would not otherwise have been noticed, at the time of the
`incoming message”––but expressed concerns about how one might evaluate
`the “that would not otherwise have been noticed” portion of the
`construction, and suggested that the parties may wish to address that issue
`during the trial. See Decision 8–9.
`Patent Owner argues that we should maintain the District Court’s
`construction, but, as discussed below, also argues that “notification” (a) does
`not include display characteristics of a message, (b) is limited to “attention-
`grabbing ‘alerts’ or ‘alarms,’” and (c) must be something that “bothers” a
`user. Petitioner agrees that “notification” should be construed to mean
`“some form of visual, auditory, or physical cue to draw attention to an
`incoming message at the time of its receipt,” but would omit the “that would
`not otherwise have been noticed” language from the District Court’s
`
`
`1 The Petition also proposed that we construe “flag,” but the parties have
`resolved any dispute regarding that term (see PO Resp. 11; Decision 8) and
`Patent Owner does not dispute that the asserted combinations teach flags.
`
`10
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`construction. Reply 2−4. We address Patent Owner’s arguments (a)–(c) in
`the course of our discussion, but focus on the specific dispute presented by
`the competing constructions, which is the propriety of including “that would
`not otherwise have been noticed” in the construction.
`
`The Claim Language
`1.
`We start with the plain language of claim 1 itself, which is directed to
`a “communication system configured to silence notifications for incoming
`electronic messages,” which “override[s] a currently-enabled notification
`setting to prevent a receipt notification pertaining to new incoming
`electronic messages associated with the selected message thread from being
`activated” and “silenc[es] any further notifications pertaining to receipt of
`the new incoming electronic message.” We see nothing in the claim’s use of
`the term “notification” that tends to support either including or not including
`the disputed language.
`We do, however, observe that claim 1, as a whole, is directed to a
`“communication system” with a processor that silences notifications. This
`suggests that a “notification” is simply a feature of the software that
`indicates the presence of a new message and is not dependent on the user’s
`presence or absence, attention, or subjective likes or dislikes. This weighs
`against inclusion of the disputed language in the construction.
`
`11
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`Citing claim limitation 1[h]2 and the corresponding description, Patent
`Owner argues that the patent “distinguishes between ‘notifications’ and
`display characteristics of a message.” PO Resp. 15; see Sur-Reply 4;
`Ex. 2003 ¶¶ 57–58. We fail to see how this bears on the question of whether
`to include “that would not otherwise have been noticed” in the construction.
`We also disagree with Patent Owner’s analysis, because we fail to see how
`the fact that messages in a silenced thread will be, for example, “grayed out”
`means that no aspect of any message display can be a notification. We see
`no reason why, for messages in non-silenced threads, the user could not be
`notified of a new message by, for example, bold text, blue text, flashing text,
`or the like. Contrary to Patent Owner’s arguments, the ’120 patent does not
`draw a line between “notification” and “manner of display.”
`
`The Written Description
`2.
`We next consider the written description, which explains the
`“notification module” as follows, with pertinent parts italicized:
`Memory 300 can also include notification module(s) 310 for
`providing notifications to user(s) of a wireless device 102. 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. . . . When a new
`message
`is received by communication subsystem 112,
`microprocessor 140 may store the message in memory 300 and
`signal notification module 310 to indicate the arrival of the new
`message in any one or more of a very wide variety of ways.
`
`2 See Ex. 1001, 18:4–6 (“[h] wherein the new incoming message thread
`flagged as silenced is displayed in the inbox in a different manner than any
`message thread not flagged as silenced”); 14:49–52 (“If the message thread
`has been silenced by the user then no notification may be activated and . . .
`the message may appear ‘greyed out’ or other diminished fashion when
`displayed with the inbox contents.”).
`
`12
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`Notification module 310 may comprise one or more notification
`settings which may indicate how and when notifications should
`be activated. For example, a user of wireless device 102 may
`enable a notification setting which will cause a sound to be
`emitted each time a new communication is received. Other
`notification settings may indicate that a user only wishes to
`receive
`auditory notifications
`for
`specific
`types of
`communications, such as telephony communications. In other
`circumstances, a user may enable a notification setting which
`may prevent any auditory notifications from being emitted for
`any type of communication while the setting is enabled. 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, 9:4–31. This explanation of what things may be notifications is
`entirely open-ended––e.g., “to indicate the arrival of the new message in any
`one or more of a very wide variety of ways.” Id. at 9:14–15. And we do not
`find, in this passage or elsewhere in the ’120 patent, a suggestion that
`“notifications” should be limited to cues “that would not otherwise have
`been noticed.”
`Instead, the “notifications” described in the patent are simply visual,
`audible, or physical events generated by the device or computer. The
`notifications may be intended (e.g., by the software developer) to capture a
`user’s attention, but they occur (as pop-up windows, blinking lights, sounds,
`etc.) regardless of whether the user may or may not be in a position to notice
`them. There is no description of producing notifications only when they
`might be noticed by a user, or that the cues are only called “notifications”
`when they can be seen or heard by a user.
`
`13
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`Patent Owner argues that “the specification consistently describes
`‘notifications’ as attention-grabbing ‘alerts’ or ‘alarms.’” Sur-Reply 7; see
`Ex. 2003 ¶ 56. We find this argument unpersuasive because the auditory,
`visual, and physical alerts Patent Owner cites are just examples of
`notifications,3 and the ’120 patent more broadly explains that the notification
`module may “indicate the arrival of [a] new message in any one or more of a
`very wide variety of ways.” Ex. 1001, 9:14–15 (emphasis added). We
`conclude that the patent applicant elected to not limit the types of
`notifications that could be silenced. This is not surprising, because the core
`of the invention, as described in the patent, was the silencing concept (see
`Section I.C), not the notifications themselves. The broad language used in
`describing the notification module suggests that the applicant intended to
`cover the silencing of any type of notification.
`Because the Specification does not define “notification,” or show that
`the term has a unique meaning in the relevant art, it does not provide a basis
`for limiting notifications to cases in which the message “would not
`otherwise have been noticed.” See Merck & Co., Inc. v. Teva Pharm. USA,
`Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005) (“When a patentee acts as his
`own lexicographer in redefining the meaning of particular claim terms away
`from their ordinary meaning, he must clearly express that intent in the
`written description.”).
`
`
`3 See Ex. 1001, 9:6–7 (“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.”) (emphasis added).
`
`14
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`The Prosecution History
`3.
`Citing comments made as part of an amendment, Patent Owner argues
`
`that “prosecution history confirms that ‘notifications’ are ‘distractions’ that
`‘bother’ a user.” PO Resp. 15 (citing Ex. 2001, 28); see Ex. 2003 ¶ 59. We
`find this argument unpersuasive, for at least two reasons.
`First, like Patent Owner’s “alert” or “alarm” argument, it is unclear
`how this argument about “bothering” supports inclusion of “that would not
`otherwise have been noticed” in the construction. Patent Owner does not
`explain how notifications being “bothersome” to a user would require that
`the construction include “that would not otherwise have been noticed.”
`Second, we do not agree that the cited passage would support Patent
`Owner’s position in any event. The applicant explained that the claimed
`system would allow a user to silence notifications that would bother them.
`See Ex. 2001, 28. It does not follow, however, that all notifications are
`bothersome to all users at all times. To the contrary, the system allows a
`user to not silence notifications that would not be bothersome, and it follows
`that “bothering” is not an inherent characteristic of a “notification,” but,
`rather, depends on a particular user’s preferences at a particular time. The
`cited prosecution history, thus, does not support Patent Owner’s argument
`that all notifications are bothersome and, instead, suggests that Patent
`Owner’s construction is improperly subjective, as we discuss further in
`Section II.B.6 below.
`
`We do not find in the prosecution history the type of disclaimer or
`disavowal that might operate to limit the meaning of “notification.” See
`Sorensen v. Int’l Trade Comm’n, 427 F.3d 1375, 1378–79 (Fed. Cir. 2005)
`
`15
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`(“Disclaimers based on disavowing actions or statements during prosecution
`. . . must be both clear and unmistakable.”).
`
`Extrinsic Evidence
`4.
`Patent Owner also offers testimony of its expert in support of its claim
`construction. See Ex. 2003 ¶¶ 49–64. Although Dr. Smith contends that
`font color, bold text, and italics cannot be “notifications” because “[a person
`of skill in the art] would not have understood any of these display
`characteristics as a claimed ‘notification,’” he cites no evidence to support
`that bare conclusion and does not explain why font color and the like could
`not be notifications. See id. ¶ 52. We thus give this testimony little weight.
`Dr. Smith also reiterates Patent Owner’s arguments about “alerts,” the
`“manner of display,” and “bothering,” which we find unpersuasive for the
`reasons explained above. See id. ¶¶ 56–60.
`Dr. Smith further argues that Dallas’ flags, icons, and colors cannot be
`“notifications” because the user must be looking at their inbox in order to
`notice them. See id. at ¶¶ 53–55, 61–64. We find the question of whether
`Dallas’ flags, icons, and colors are “notifications” to be a matter of fact to be
`resolved in the patentability analysis, not a claim construction issue.
`
`The District Court Construction
`5.
`Patent Owner argues that “[t]he District Court flatly rejected
`
`Petitioner’s broad reading of ‘notifications’” and “agreed with
`[Patent Owner’s] interpretation of ‘notification,’ which [Patent Owner] again
`asserts here.” PO Resp. 12. According to Patent Owner, “the district court’s
`construction . . . is an explicit rejection of Petitioner’s position that display
`characteristics, such as changing icons and font color, are ‘notifications,’ in
`
`16
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`favor of [Patent Owner’s] proper reading that ‘notifications’ must draw a
`user’s attention to a new message that would not otherwise be noticed.” Id.
`at 13.
`
`This argument is unpersuasive. We do not read the District Court’s
`claim construction order as excluding “display characteristics,” because the
`portion of the order Patent Owner cites addressed the narrow issue of
`whether changing a number on an icon could be a “notification.” See Ex.
`2004, 31 (discussing whether the construction “would cover a change to a
`numeric character on a phone application icon”). Because Petitioner is not
`relying on changing numbers on icons for the “claimed” notification, we
`find that discussion to be inapplicable here.
`Because the construction adopted by the District Court, and now
`advanced Patent Owner, does not exclude “display characteristics, such as
`changing icons and font color,” we fail to see how it is an “explicit
`rejection” of those things as notifications. Patent Owner again does not
`explain why such characteristics may not be a “visual, auditory, or physical
`cue to draw attention to an incoming message at the time of its receipt that
`would not otherwise have been noticed.”
`Moreover, the District Court’s subsequent order denying summary
`judgment of infringement confirms that the claim construction did not
`exclude visual differences in the display of incoming messages from the
`scope of “notifications.” The District Court found that whether bold text and
`a blue dot could be notifications was a disputed question of fact:
`Now, the parties argue whether new, silenced messages that
`arrive in an electronic message inbox with bolded text and a blue
`dot next to them satisfy the claim limitation requiring “silencing
`any further notifications pertaining to receipt of the new
`
`17
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`
`incoming electronic message.” . . . Although [Patent Owner]
`would characterize this dispute as a renewed claim construction
`dispute, from the Court’s perspective, the disagreement is
`factual. Whether these visual differences for incoming messages
`satisfy the requirements for the term “notification,” including
`that it be some “cue to draw attention to an incoming message
`that would not otherwise have been noticed,” presents [a] jury
`question.
`Ex. 1025, 50 (emphasis added). We agree with the District Court that, even
`under Patent Owner’s proposed construction, whether a font change or
`similar device may be a “notification” is a question of fact to be decided on a
`case-by-case basis.
`
`Subjectivity
`6.
`Petitioner argues that the disputed language would render the claim
`
`indefinite because “whether a notification would ‘distract or otherwise
`interrupt a user’ depends on the characteristics of that user,” “a particular
`cue that distracts one user might go entirely unnoticed by another,” and
`“[t]he Federal Circuit has made clear that a claim is indefinite when its
`applicability depends on the subjective experience or reaction of a human
`operator.” Pet. Reply 5 (citing Interval Licensing v. AOL, Inc., 766 F.3d
`1364, 1371 (Fed. Cir. 2014); Datamize, LLC v. Plumtree Software, Inc., 417
`F.3d 1342, 1349-50 (Fed. Cir. 2005), abrogated on other grounds,
`Nautilus,Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).
`We agree with Petitioner that “would not otherwise have been
`noticed” is improperly subjective, as whether something would be noticed
`depends on the personal characteristics of the user who may or may not be
`doing the noticing. It also depends on what that user may be doing at the
`time a new message is received by the inbox. For example, it appears that if
`
`18
`
`

`

`IPR2019-00706
`Patent 9,349,120 B2
`
`the user was watching an empty inbox for new messages, a pop-up window
`indicating receipt of a new message would not be a notification under Patent
`Owner’s construction because the user would have noticed the new message
`anyway, meaning that the pop-up did not “draw attention to an incoming
`message that would no