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`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 RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`05710-00016B/11236096.1
`
`

`

`TABLE OF CONTENTS
`
`IPR2019-00706
`U.S. Patent No. 9,349,120
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`Page
`
`I.
`
`OVERVIEW OF THE ’120 PATENT ............................................................ 3
`
`A.
`
`B.
`
`C.
`
`The ’120 Patent Specification ............................................................... 3
`
`The ’120 Patent Claims ......................................................................... 4
`
`Prosecution History of the ’120 Patent ................................................. 4
`
`II.
`
`OVERVIEW OF THE CITED ART ............................................................... 5
`
`A. Dallas (Ex. 1003) ................................................................................... 5
`
`B.
`
`C.
`
`D.
`
`E.
`
`Brown (Ex. 1004) .................................................................................. 7
`
`LeBlanc (Ex. 1005) ............................................................................... 7
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`Bott (Ex. 1007) ...................................................................................... 8
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`Kent (Ex. 1010) ..................................................................................... 9
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`F. Mann (Ex. 1011) .................................................................................... 9
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`III. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
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`IV. THE BOARD’S CONSTRUCTION OF “NOTIFICATION(S)” ................. 10
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`V.
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`STANDARD OF REVIEW ........................................................................... 18
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`VI. DALLAS FAILS TO DISCLOSE THE CLAIMED
`“NOTIFICATIONS” ..................................................................................... 19
`
`A. Dallas’s “Red Flags,” “Sparkle” Icon and Font Variations Are
`Not “Notifications”.............................................................................. 19
`
`B.
`
`C.
`
`Dallas Teaches Away From Using the Claimed “Notifications” ........ 21
`
`Dallas’s Red Flags and Sparkle Icon Are a Message’s “Manner
`of Display,” Not “Notifications” ......................................................... 22
`
`VII. DALLAS AND LEBLANC DO NOT TEACH “SILENCING”
`NOTIFICATIONS ......................................................................................... 25
`
`VIII. THE PROPOSED COMBINATIONS FAIL TO DISCLOSE
`“DISPLAYING” IGNORED MESSAGES ................................................... 26
`
`A. Dallas Teaches Automatically “Hiding” Ignored Threads ................. 26
`
`B.
`
`Dallas Teaches Away From Automatically “Expanding”
`Ignored Threads ................................................................................... 30
`
`
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`i
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`

`

`C.
`
`Brown Teaches Away From Automatically “Expanding”
`Ignored Threads ................................................................................... 32
`
`IX. CONCLUSION .............................................................................................. 33
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Phillips v. AWH Corp.,
` 415 F.3d 1303 (Fed. Cir. 2005) ....................................................................10
`
`Samsung Elecs. Co., Ltd. v. Infobridge Pte. Ltd.,
`IPR2017-00100 (Paper 30) slip. op., 15 (PTAB Apr. 23, 2018) ...................19
`
`Trivascular, Inc. v. Samuels,
` 812 F.3d 1056 (Fed. Cir. 2016) ............................................................. 18, 19
`
`STATUTORY AUTHORITIES
`
`35 U.S.C. § 282(b) ...................................................................................................10
`
`35 U.S.C. § 314(a) ...................................................................................................18
`
`35 U.S.C. § 316(e) ...............................................................................................2, 18
`
`RULES AND REGULATIONS
`
`37 C.F.R. § 42.100(b) ..............................................................................................11
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`
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`iii
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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
`
`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
`
`iv
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`
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`Facebook, Inc., Instagram, LLC, and WhatsApp Inc.’s Petition (Paper 2,
`
`“Pet.”) proffer six invalidity grounds for U.S. Patent No. 9,349,120 B2 (“’120
`
`Patent”) (Ex. 1001).1 Claims 1–3, 5, 7–11, 13–15, 17, 19–22, and 24 (“Challenged
`
`Claims”) are allegedly obvious over primary reference Alastair Dallas, Using
`
`Collabra Share 2 (Que Corporation 1995) (“Dallas”) (Ex. 1003) in view of five
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`secondary references: (i) Mark R. Brown, Using Netscape Communicator 4 (Que
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`Corporation 1997) (“Brown”) (Ex. 1004), (ii) Jeff Kent, C++ Demystified: A Self-
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`Teaching Guide (McGraw-Hill/Osborne 2004) (“Kent”) (Ex. 1010); (iii) Ed Bott,
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`Using Microsoft Windows Millennium Edition (Que Corporation 2001) (“Bott”)
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`(Ex. 1007); (iv) Bill Mann, How to Do Everything with Microsoft Office Outlook
`
`2007 (The McGraw-Hill Companies 2007) (“Mann”) (Ex. 1011); and (v) Dee-Ann
`
`LeBlanc, Using Eudora (Que Corporation 2d ed. 1997) (“LeBlanc”) (Ex. 1005).
`
`On September 4, 2019, the Board instituted review (Paper 9, “ID”). Patent Owner
`
`BlackBerry Limited (“PO”) timely submits this Response.
`
`The ’120 Patent is directed to a system and method for silencing receipt
`
`notifications for select message threads. Petitioner has not met its “burden of
`
`
`1 Hereinafter, Facebook, Inc., Instagram, LLC, and WhatsApp Inc. are
`
`collectively referred to as “Petitioner.”
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`
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`1
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`proving a proposition of unpatentability by a preponderance of the evidence.” 35
`
`U.S.C. § 316(e). The Petition should be denied for many reasons.
`
`First, as described in more detail below, the Petition fails to show that any
`
`proposed prior art combination teaches the ’120 Patent’s claimed “notification(s).”
`
`Indeed, Petitioner’s primary reference, Dallas, not only fails to disclose the
`
`claimed “notification(s),” it teaches away from the limitation.
`
`Second, the Petition fails to prove the proposed combination of Dallas and
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`LeBlanc discloses the limitation of “silencing” notifications. Even if LeBlanc
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`arguably discloses allowing a user to choose which notification to use, the Petition
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`has failed to prove LeBlanc teaches “silencing” these notifications.
`
`Third, none of the relied-upon references teaches “displaying” new silenced
`
`messages. To the contrary, the prior art teaches away from doing so, describing
`
`the advantages of automatically hiding new “ignored” messages.
`
`As these aforementioned limitations are found in the independent claims,
`
`they are a requirement of each and every Challenged Claim. Accordingly, as the
`
`Petition has failed to demonstrate these independent limitations, the Board should
`
`affirm the validity of the Challenged Claims by denying the Petition.
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`
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`2
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`I.
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`OVERVIEW OF THE ’120 PATENT
`
`A. The ’120 Patent Specification
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`At the time of the claimed invention, users could receive notifications in the
`
`form of auditory user alerts such as ringtones, visual alerts such as flashing lights
`
`or pop-ups, and physical alerts such as vibration upon receipt of an electronic
`
`message. Ex. 1001 at 1:28-32. In the past, however, the user would receive a
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`notification each time a new message was received in any thread, regardless of
`
`whether the user was actually engaging with that thread. See id. at 1:43-46; Ex.
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`2003 at ¶ 29-30.
`
`The ’120 Patent addresses this and other issues by allowing the user to
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`“silence” individual message threads, thereby permitting the user to continue to
`
`receive messages in those threads without receiving associated receipt notifications.
`
`Id. at 13:28-33. The patent accomplishes this by grouping messages into “threads”
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`based on, e.g., conversation topics. Id. at 1:33-43, 11:53-12:7. The claimed
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`invention then uses a “flag” that, on a thread-by-thread basis, “override[s] a
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`currently-enabled notification setting,” thereby “prevent[ing] . . . receipt
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`notification[s]” for new messages “associated with the selected message thread[.]”
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`Id. at 16:66-17:2. Such new messages are still displayed in the inbox, but in a
`
`different manner than messages in any thread not flagged as silenced. Id. at 17:8-
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`10; Ex. 2003 at ¶ 31-32.
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`
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`3
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`B.
`
`The ’120 Patent Claims
`
`The ’120 Patent has three independent claims: 1, 13 and 24. All of the
`
`claims relate to silencing notifications for incoming electronic messages. Ex. 2003
`
`at ¶ 33.
`
`C.
`
`Prosecution History of the ’120 Patent
`
`The ’120 Patent was filed as U.S. Application No. 12/713,577 on February
`
`26, 2010. Related application data includes Provisional Application No.
`
`61/167,542, filed on April 8, 2009.
`
`The ’120 Patent was subject to a thorough examination by Examiners
`
`Benjamin A. Ailes and Quang N. Nguyen. During prosecution, the Applicant
`
`repeatedly pointed out a novel aspect of the invention that allows a user to be
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`“made aware of” silenced messages by displaying them together with unsilenced
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`messages in an inbox in a different manner, while at the same time avoiding
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`distracting and bothersome “notifications”:
`
`[Amended] Claim 1 recites “to 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.”
`
`This 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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`4
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`Ex. 2001 at 28 (12/19/2014 Amendment page 17 of 18) (emphasis added). The
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`Examiner accepted these arguments and they were incorporated by reference into
`
`the ’120 Patent’s “reasons for allowance.” Id. at 35 (1/21/2016 NOA page 2) (“In
`
`this case, the substance of applicant's remarks filed on 12/19/2014 with respect to
`
`the amended claim limitations point out the reason claims are patentable over the
`
`prior art of record.”).
`
`II. OVERVIEW OF THE CITED ART
`
`A. Dallas (Ex. 1003)
`
`The Petition’s primary reference for Grounds 1-6 is excerpts from Dallas.
`
`Dallas is a user manual describing the functionality and use of “groupware”
`
`software aimed at “empower[ing] workers to organize and categorize documents
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`and discussion threads.” Ex. 1003 at 28.2 Dallas’s “Collabra Share” software is
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`based on a hierarchal document management system which is comprised of
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`“librar[ies]” at the highest level, which contain within them “forums,” “categories,”
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`“threads” and finally “document[s]” as the lowest tier. Id. at 53; Ex. 2003 at ¶ 34-
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`35. Dallas’s “libraries,” for example, are shown in the Library viewing pane in
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`Figure 4.4:
`
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`2 Unless otherwise noted, citations refer to the parties’ bates stamped pagination.
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`5
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`U.S. Patent No. 9,349,120
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`Ex 1003 at 109, Fig. 4.4 (annotated). Dallas shows using “red flags” and a
`
`document counter to indicate that new documents have been added to a library. Id.
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`Dallas also describes “threads” and “categories” as using the “red flag” and
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`“sparkle” icons. See, e.g., id. at 55, Fig. 1.9; Ex. 2003 at ¶ 36.
`
`Dallas explains that, unlike an alert such as a telephone ringing, these flags
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`and sparkle icons do not interrupt a user’s concentration. Ex. 1003 at 140
`
`(chapter page 115) (“Unlike a ringing telephone, when you see the red flag on the
`
`button, indicating that there are new documents, you can choose whether to
`
`interrupt your concentration.”). A user can also choose to turn off the red flags and
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`sparkle icons for “threads” and “categories,” by using the “ignore” feature. Id. at
`
`
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`
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`6
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`

`

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`111-12. Dallas does not disclose an “ignore” feature for turning off red flags and
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`sparkle icons for libraries. Ex. 2003 at ¶ 37-38.
`
`B.
`
`Brown (Ex. 1004)
`
`The Petition cites excerpts from Brown as a secondary reference for
`
`Grounds 1-6. Brown is a user manual for the Netscape Communicator software
`
`which allows users to browse the web, read email and the like. Ex. 1004 at 34; Ex.
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`2003 at ¶ 39. Brown includes an “ignore” feature that hides the selected thread
`
`entirely from view:
`
`To ignore a thread, select the first message in the thread (or the
`collapsed thread's only message) and choose Message, Ignore from
`the Messenger menu; then choose Thread. The newly ignored thread
`disappears from view in the Message List. The best part is that
`messages in this thread continue to be downloaded and sorted by
`Messenger. They're just not shown. Of course, there's a way to show
`the ignored threads again, if you want or need to.
`
`Ex. 1004 at 50 (chapter page 209).
`
`C. LeBlanc (Ex. 1005)
`
`The Petition adds LeBlanc as “further support for ‘notification’ limitations
`
`of the challenged claims” for Grounds 4-6. See, e.g., Pet. at 65-66. LeBlanc is a
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`user manual describing the Eudora program aimed at assisting individuals using
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`email. Ex. 1005 at 20. The Petition has only submitted select excerpts from
`
`LeBlanc amounting to 26 pages (only four of which are substantive), although the
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`manual is over 290 pages long. The provided four substantive pages address the
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`7
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`IPR2019-00706
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`“Checking Mail Manually” feature and include a partial disclosure of the “reading
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`mail” function. Id. at 23-26; Ex. 2003 at ¶ 40-41. The “Checking Mail Manually”
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`feature discloses popups which are displayed both when there is new mail and
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`when no new mail has arrived:
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`Ex. 1005 at 23 (annotated). The limited excerpts of LeBlanc also indicate that a
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`user may choose what type of user alerts to receive (pop-up windows, flashing etc.).
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`Ex. 1005 at 24-25 (“You can choose what Eudora does to point out to you that you
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`
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`have new mail.”); Ex. 2003 at ¶ 42.
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`D. Bott (Ex. 1007)
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`The Petition cites Bott as a secondary reference for Grounds 2 and 5 for the
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`“system comprises a wireless device” limitation of dependent claim 9. Pet. at 4,
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`19-20, 58. Bott describes the features of Microsoft’s Windows Millennium Edition
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`8
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`

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`operating system. Ex. 1007 at 1. Bott discusses wireless networks for connecting
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`to the Internet, including the use of wireless adapters that can be attached to a
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`user’s computer. Id. at 421-22; Ex. 2003 at ¶ 43.
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`E. Kent (Ex. 1010)
`
`The Petition cites Kent as a secondary reference for Ground 1-6 to allegedly
`
`show the “activate a flag stored in the non-transitory media” and “using the flag
`
`stored in the non-transitory media” limitations of the Challenged Claims. See, e.g.,
`
`Pet. at 4, 31, 38; Ex. 2003 at ¶ 44.
`
`Kent is a basic reference on coding without any disclosure of managing
`
`incoming messages. Thus, Kent explains the C++ programming language,
`
`including the use of C++ to implement Boolean variables called “flags.” Ex 1010
`
`at 148-51. Kent defines a “flag” as a “variable whose value indicates whether a
`
`condition exists.” Id. at 150. Kent describes a flag titled “quit,” which is given the
`
`value “true” if the user enters “Y” and “false” if the user enters “N.” Id. at 150-51;
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`Ex. 2003 at ¶ 45.
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`F. Mann (Ex. 1011)
`
`The Petition cites Mann as a secondary reference for Grounds 3 and 6 for the
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`“new incoming message is displayed in a default view of the inbox” limitation of
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`dependent claims 11 and 22 of the ’120 Patent. See Pet. at 4, 20, 61; Ex. 2003 at ¶
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`9
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`

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`46. Mann is not used in the Petition’s grounds addressing the independent claims.
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`Paper 2 at 4.
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`Mann describes Microsoft Office Outlook 2007 (“Outlook”). Mann
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`discusses allowing the user to group messages by conversation, which “creates
`
`groups in the Inbox pane that consist of all the messages in a particular thread.” Ex.
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`1011 at 89. In this configuration, Mann’s Inbox pane shows only the most recent
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`message in each conversation; the user must click a “down arrow” appearing
`
`adjacent to the subject line to display older messages. Id.; Ex. 2003 at ¶ 46.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner alleges that a person of ordinary skill in the art (“POSITA”) 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). For purposes of this
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`Response, BlackBerry does not dispute the level of ordinary skill proposed by
`
`Petitioner. Ex. 2003 at ¶ 19-21.
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`IV. THE BOARD’S CONSTRUCTION OF “NOTIFICATION(S)”
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`For inter partes reviews filed on or after November 13, 2018, such as this
`
`one, claim terms are construed using the same claim construction standard that is
`
`used in a civil action under 35 U.S.C. Section 282(b), as articulated in Phillips v.
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`10
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`C.F.R. § 42.100(b).
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`While the Petition proffered two claim terms for construction, “flag” and
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`“notification(s),” as recognized by the Board in its Institution Decision, the parties
`
`have resolved their dispute regarding the claim term “flag.” See ID at 8 (“Given
`
`the parties’ positions, we will not construe “flag” in this decision.”). Accordingly,
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`the sole claim term for construction is “notification(s).” Ex. 2003 at ¶ 47-50.
`
`In the ID, the Board adopted the district court’s construction of “notification”
`
`to require “some form of visual, auditory, or physical cue to draw attention to an
`
`incoming message that would not otherwise have been noticed, at the time of the
`
`incoming message.” ID (Paper 9) at 9 (emphasis added). The Board also invited
`
`the parties to address “how one might evaluate the ‘that would not otherwise have
`
`been noticed’ portion of the construction with regard to what a user might or might
`
`not be doing for the user to not otherwise have noticed the message.” Id.
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`In the related district court proceeding, the parties engaged in a similar
`
`dispute regarding the meaning of “notification” during claim construction. As here,
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`Petitioner argued in the district court that display characteristics of a new message
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`(e.g., font color and icon changes) are the claimed “notification.” Ex. 2005 at 8
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`(Dkt. 117, Facebook’s Opening Markman Brief) (“Each of the Accused Products,
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`11
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`even when a message thread is allegedly ‘silenced,’ continues to provide visual
`
`notifications and/or alerts pertaining to receipt of new messages in the message
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`thread, such as badge notifications or other graphical indications and text, such as
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`bold-face font.”); id at 7-8 (arguing that “visual notifications” such as “check
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`boxes, an icon, a distinctive color, or a distinctive font” are the claimed
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`“notifications”). The District Court flatly rejected Petitioner’s broad reading of
`
`“notifications”:
`
`At the hearing, Facebook Defendants agreed that their proposed
`construction of this term would cover a change to a numeric
`character on a phone application icon, without any other cue to draw
`attention to it. They also agreed that a change in the listed number of
`unread messages in an email inbox, without any other cue to draw
`attention to it, would be considered a notification under their
`interpretation. There is inadequate support for such a broad
`interpretation of
`the
`term “notification,” particularly when
`considering the patent intrinsic record.
`
`Ex. 2004 (Markman Order) at 31 (emphasis added). Instead, the Court agreed with
`
`PO’s interpretation of “notification,” which PO again asserts here. In particular,
`
`the district court directly copied from PO’s Markman briefing to construe the claim
`
`term “notification”:
`
`In one portion of its opening claim construction brief, BlackBerry
`states that “notification” in the context of the ’120 Patent “refers to
`some form of visual, auditory, or physical cue to draw a user’s
`attention to an occurrence that the user would not otherwise notice
`and at the time of the occurrence.” Docket No. 116 at 27. The Court
`agrees with BlackBerry and its expert that this explanation is
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`12
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`consistent with the plain meaning of the term “notification” as used in
`the ’120 Patent.
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`Ex. 2004 (Markman Order) at 30 (emphasis added), citing Ex. 1001 at 1:30-33,
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`9:26-31, 13:19-22 and BlackBerry’s expert declaration. Thus, the district court’s
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`construction—which the Board has correctly adopted here—is an explicit rejection
`
`of Petitioner’s position that display characteristics, such as changing icons and font
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`color, are “notifications,” in favor of BlackBerry’s proper reading that
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`“notifications” must draw a user’s attention to a new message that would not
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`otherwise be noticed.
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`Contrary to the district court’s construction, adopted by the Board, Petitioner
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`and its expert reiterate their arguments rejected by the district court that nearly any
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`display characteristic of a new message is a “notification.” For example, Dr.
`
`Chatterjee testified consistently with Petitioner’s position that a new message’s
`
`font color is a “notification” (Ex. 2002 (Chatterjee Tr.) at 53:16-25), and likewise
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`that bolded text (id. at 54:24-55:4) or italicized text (id. at 55:22-56:4) alone are
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`also “notifications.” Thus, Petitioner and its expert incorrectly argue that nearly
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`any difference in a message’s visual appearance is a “notification”—an argument
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`already rejected by the district court. Ex. 2004 (Markman Order) at 29 (criticizing
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`Facebook’s position: “Facebook Defendants originally suggested by their proposal,
`
`however, that almost any difference in visual appearance could satisfy this claim
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`13
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`IPR2019-00706
`U.S. Patent No. 9,349,120
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`language, stating that even certain un-bolded messages in an email inbox could still
`
`be considered ‘notifications’…Facebook Defendants appear to still suggest by their
`
`proposal that the term “notification” should be construed to encompass almost any
`
`other difference in the visual appearance of a message.”); Ex. 2003 at ¶ 51-55.
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`Indeed, the district court’s adoption of PO’s description of “notifications”
`
`emphasizes that a “notification” is something that must draw a user’s attention
`
`away from something else, i.e., it must distract or otherwise interrupt a user from
`
`another activity. Ex. 2003 at ¶ 56. “Notifications” do not include display
`
`characteristics only noticed by a user that is already attentive to a thread with a
`
`new message. As recognized by the District Court, this is confirmed by the ’120
`
`Patent’s specification, which consistently refers to “notifications” as alerts such as
`
`“ring tones, visual alerts such as flashing lights or popups and physical alerts such
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`as vibrations.” See Ex. 1001 at 1:30-32, 9:4-8, 9:17-20, 9:26-31, 13:19-21.
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`Petitioner’s expert acknowledged that these types of notifications would alert a
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`user to the arrival of a new message, even if a user’s attention was directed
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`elsewhere:
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`Q: Okay, so if your attention was on something else besides the phone,
`when the ring tone happened, you would hear the ring tone, right?
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`A: You would hear the sound irrespective of what you're looking at,
`whether in your hypothetical you're reading a book, or whether you're
`looking at the phone, whether you're holding the phone, whether
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`you're looking out the window, irrespective of what you're doing, with
`the caveat that the person in this hypothetical does not have any
`hearing issues, they would be able to hear the sound.
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`Ex. 2002 (Chatterjee Tr.) at 31:23-32:8; see also 33:18-34:14 (confirming
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`the same with respect to vibration notifications).
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`Moreover, the ’120 Patent itself distinguishes its “notifications” from the
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`display characteristics of a new message by including a separate limitation
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`covering a “manner of display” of a message. See Ex. 1001 at claim 1[h]. The
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`specification describes an adjustment of the display characteristics of an incoming
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`message, such as font color, weight etc. as a change to a message’s “manner of
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`display.” See, e.g., id. at 14:49-52 (“If the message thread has been silenced by the
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`user then no notification may be activated and at 614 the message may appear
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`‘greyed out’ or other diminished fashion when displayed with the inbox contents.”);
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`Ex. 2003 at ¶ 57-58. Thus, the ’120 Patent itself distinguishes between
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`“notifications” and display characteristics of a message.
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`Likewise, the prosecution history confirms that “notifications” are
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`“distractions” that “bother” a user:
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`[Displaying silenced messages together with unsilenced messages]
`allows a user to conveniently see messages at one glance in his/her
`inbox, while not being bothered by notifications related to message
`threads which have been marked as silenced. Accordingly, while a
`user is made aware of such messages and can track them in the inbox,
`the user can avoid being distracted by unnecessary notifications.
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`Ex. 2001 at 28 (12/19/2014 Amendment page 17 of 18) (emphasis added). A
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`change in font color or an icon change would not “bother” or “distract” a user. Ex.
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`2003 at ¶ 59-60.
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`For example, as Dr. Chatterjee acknowledged during his deposition, a user
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`would not see Dallas’s icon or font change if the user was working in a different
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`document (Ex. 2002 (Chatterjee Tr.) at 50:13-51:17), if the message thread were
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`scrolled out of view (id. at 47:20-49:25), or if the viewing window were minimized
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`(id. at 50:2-8). Likewise, if a thread is collapsed, a user would be unaware of
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`Dallas’s icons or font color. Ex. 2003 at ¶ 61.
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`Dallas itself provides a prime example of this deficiency in one of its
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`disclosures relied-upon by Petitioner and its expert, Figure 7.5 (Ex. 1003 at 179)
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`(annotated):
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`As seen in Dallas’s Figure 7.5, even if a user is already attentive to the
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`Collabra Share screen, and further still, even if that user is already attentive to a
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`particular category with a new message in it, the new message’s “red flag” and
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`“sparkle” icons will only be noticed if they are scrolled into view. For example,
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`the image above shows that the selected category “Business Planning” has a “red
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`flag” on its icon, indicating that this selected category contains a new message.
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`But no “red flags” or “sparkle” icons are visible in the thread/message viewing
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`pane shown in Figure 7.5—they are scrolled out of view. Ex. 2003 at ¶ 62-63.
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`As demonstrated by this example, a user will be unaware of Dallas’s “red
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`flags” and “sparkle” icon unless a user already has the new message thread scrolled
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`into view. Thus, Petitioner’s assertion that Dallas’s colored icons will “notify” a
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`user of a new message would, as a practical matter, require a user to anticipate
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`where the new message will arrive, to select the particular category containing that
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`new message, and to scroll the new message thread into view. See Ex. 2002
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`(Chatterjee Tr.) at 48-49 (confirming that Dallas’s “red flags” and “sparkle” icons
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`are only apparent to a user when they are scrolled into view). Otherwise, Dallas’s
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`“red flags” and “sparkle” icon will not be noticed. Ex. 2003 at ¶ 64.
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`Thus, Dallas does not disclose a “notification” in any sense. And, in any
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`case, its disclosures certainly do not comport with the Board’s adopted claim
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`construction that requires notifications to alert a user to a new message “that would
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`not have otherwise been noticed.” Accordingly, Petitioner’s assertion should be
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`rejected.
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`V.
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`STANDARD OF REVIEW
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`“[T]here is a significant difference between a petitioner’s burden to establish
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`a ‘reasonable likelihood of success’ at institution, and actually proving invalidity
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`by a preponderance of the evidence at trial.” Trivascular, Inc. v. Samuels, 812
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`F.3d 1056, 1068 (Fed. Cir. 2016); see also 35 U.S.C. §§ 314(a), 316(e). Because,
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`at the institution phase, the “Board is considering the matter preliminarily [and]
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`without the benefit of a full record,” “the Board is not bound by any findings made
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`in its Institution Decision.” Trivascular, 812 F.3d at 1068. Findings made during
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`Trial are rendered “under a qualitatively different standard” than is used when
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`considering institution. Id.; see also Samsung Elecs. Co., Ltd. v. Infobridge Pte.
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`Ltd., IPR2017-00100 (Paper 30) slip. op., 15 (PTAB Apr. 23, 2018) (“[W]e
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`consider anew [the] arguments presented in [the] Response. . . . We are not
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`persuaded by [the] argument that [PO] has not presented anything new to rebut our
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`previous analysis and conclusion because we now must evaluate the evidence of
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`record against a different, and higher, standard.” (internal quotation marks
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`omitted)).
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`VI. DALLAS FAILS TO DISCLOSE THE CLAIMED “NOTIFICATIONS”
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`A. Dallas’s “Red Flags,” “Sparkle” Icon and Font Variations Are
`Not “Notifications”
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`Dallas’s “red flags” and “sparkle” icon are not “notifications” under the
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`district court’s well-reasoned construction, correctly adopted by the Board in this
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`proceeding. Ex. 2003 at ¶ 65. Petitioner’s assertion that different icon graphics are
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`“notifications” would stretch the term to encompass almost any difference in the
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`visual appearance of a message—a position that the district court has already
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`rejected. Ex. 2004 (Markman Order) at 29 (criticizing Facebook’s position:
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`“Facebook Defendants originally suggested by their proposal, however, that almost
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`any difference in visual appearance could satisfy this claim language, stating that
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`even certain un-bolded messages in an email inbox could still be considered
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`‘notifications’…Facebook Defendants appear to still suggest by their proposal that
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`the term “notification” should be construed to encompass almost any other
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`difference in the visual appearance of a message.”); see Ex. 2003 at ¶ 65. Indeed,
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`Petitioner’s assertion directly conflicts with the specification, which repeatedly
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`describes “notifications” as the attention-grabbing cues designed to draw a user’s
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`attention to a message “that the user would not otherwise notice.” Ex. 2004
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`(Markman Order) at 30 (citing Ex. 1001 at 1:30-33, 9:26-31, 13:19-22 and
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`BlackBerry’s expert); Ex. 2003 ¶ 65. Moreover, the district court has already
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`agreed with BlackBerry that display characteristics of a message—including
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`changing an icon graphic—are insufficient to meet the “notification” limitation
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`because they would not be noticed unless the user was already attentive to the new
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`message:
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`At the hearing, Fac