Facebook Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2019-00706
• Patent #: 9,349,120
• Filed: February 19, 2019
• Petitioner(s): Facebook, Inc., Instagram, LLC and WhatsApp Inc.
• Patent Owner(s): BlackBerry Limited
• Challenged Claims: 1-3, 5, 7-11, 13-15, 17, 19-22, and 24

2. Patent Overview

• Title: System and Method for Silencing Notifications for a Message Thread
• Brief Description: The ’120 patent discloses systems and methods for a user to silence notifications for a specific electronic message thread. When a thread is designated as silenced, the system is configured to override notification settings to prevent alerts for new incoming messages associated with that thread.

3. Grounds for Unpatentability

Ground 1: Obviousness of Claims 1-3, 5, 7-8, 10, 13-15, 17, 19-21, and 24 over Dallas, Brown, and Kent

• Prior Art Relied Upon: Dallas (a 1995 book describing Collabra Share 2 software), Brown (a 1997 book describing Netscape Communicator 4), and Kent (a 2004 C++ programming textbook).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Dallas disclosed the core features of the invention. Dallas described the Collabra messaging system, which organized messages into threads and included an "ignore" feature. When a user ignored a thread, the system would suppress visual notifications (e.g., red flags, sparkles, distinct text color) that indicated new messages, effectively "silencing" them. Petitioner contended this mapped to the key limitations of independent claim 1, including receiving a selection to silence a thread and overriding a notification setting.
  • Motivation to Combine: A POSITA would combine these references to arrive at the claimed invention. Kent was introduced because it taught the use of a Boolean "flag" as a standard, elementary programming concept for tracking a status, such as whether a thread is "ignored." Petitioner asserted this was an obvious implementation choice for the functionality described in Dallas. Brown was cited for its teaching that an ignored thread could continue to receive new messages in the background. A POSITA would incorporate this feature into the Dallas system because it was described as a beneficial function ("the best part") that allows a user to later review messages in an ignored thread.
  • Expectation of Success: A POSITA would have had a high expectation of success, as the combination involved applying a fundamental programming technique (Kent's flag) to an existing system (Dallas) and incorporating a complementary feature from an analogous messaging system (Brown).

Ground 2: Obviousness of Claim 9 over Dallas, Brown, and Kent, in Further View of Bott

• Prior Art Relied Upon: The combination from Ground 1, plus Bott (a 2001 book describing Microsoft Windows Millennium Edition).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground specifically addressed dependent claim 9, which adds the limitation "the system comprises a wireless device." Petitioner argued that the base combination of Dallas, Brown, and Kent taught the other limitations of the claim. Bott was cited to show that wireless hardware for computers, such as wireless network interface cards for laptops, was well-known and commercially available prior to the ’120 patent.
  • Motivation to Combine: A POSITA would have been motivated to implement the messaging system of Dallas on a wireless device as taught by Bott. This combination was driven by the recognized and growing market demand for mobile computing and remote access, a trend that Dallas itself acknowledged was becoming popular. The combination would predictably result in the claimed system.

Ground 3: Obviousness of Claims 11 and 22 over Dallas, Brown, and Kent, in Further View of Mann

• Prior Art Relied Upon: The combination from Ground 1, plus Mann (a 2007 book describing Microsoft Outlook 2007).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground targeted dependent claims 11 and 22, which require that a "new incoming message is displayed in a default view of the inbox" when a thread is collapsed. Petitioner asserted that while Dallas disclosed collapsing ignored threads, it displayed the oldest message in the collapsed view. Mann, in contrast, taught a feature in Microsoft Outlook that displayed the most recent message of a conversation in a collapsed view.
  • Motivation to Combine: A POSITA would modify the system in Dallas with the technique from Mann to improve user experience. Displaying the most recent message allows a user to more efficiently assess the current status of an ignored thread without needing to expand it fully. This was presented as an obvious-to-try design choice that would have improved the Dallas system.
• Additional Grounds: Petitioner asserted alternative obviousness challenges for all claims (Grounds 4-6) that added the LeBlanc reference (a 1997 book on the Eudora email program). LeBlanc was included to provide further support for the "notification" limitations in the event of a narrow claim construction, as it disclosed various user-selectable auditory and visual alerts.

4. Key Claim Construction Positions

• "flag": Petitioner argued the term should be construed as a "status indicator." While Patent Owner proposed "a mark or code indicating a status or condition," Petitioner contended that the prior art disclosed the limitation under either construction and the difference was immaterial to the invalidity analysis.
• "notification": Petitioner proposed the plain and ordinary meaning of "an indication providing notice that an event has occurred." It argued against Patent Owner's narrower proposed construction of "user alert," asserting that this improperly imported limitations from the specification's examples and violated the doctrine of claim differentiation, as dependent claims 10 and 21 explicitly added limitations reciting an "auditory alert, a visual alert or a physical alert."

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted because none of the prior art references relied upon in the petition were previously presented to or considered by the USPTO during the original prosecution of the ’120 patent.
• Petitioner further stated it was unaware of any basis for denial under §314(a), noting that the petition was timely filed well within the one-year statutory window and was the first post-grant challenge filed against the patent.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 5, 7-11, 13-15, 17, 19-22, and 24 of the ’120 patent as unpatentable.