Facebook Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2019-00924
• Patent #: 8,209,634
• Filed: April 4, 2019
• Petitioner(s): Facebook, Inc., Instagram, LLC, and WhatsApp Inc.
• Patent Owner(s): BlackBerry Limited
• Challenged Claims: 1, 4-7, 10-13, and 16-18

2. Patent Overview

• Title: Previewing a New Event on a Small Screen Device
• Brief Description: The ’634 patent discloses a graphical user interface for wireless devices. The purported invention is a method of modifying a messaging icon to display a numeric character representing a count of the plurality of different messaging correspondents (i.e., distinct senders) from whom unread messages have been received, rather than a count of the total number of unread messages.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-5, 7, 10-11, 13, and 16-17 are obvious over Ording in view of Canfield and Schwartz.

• Prior Art Relied Upon: Ording (Patent 7,434,177), Canfield (Patent 7,281,215), and Schwartz (The Complete Idiot's Guide to Online Dating and Relating (1999)).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ording taught the foundational concept of displaying a numeric badge over an application icon (e.g., in a dock) to indicate the number of new messages. However, Ording counted total messages, not distinct senders. Canfield was introduced to supply this missing element, as it disclosed calculating and displaying a statistic for the "number of instant messaging sessions with new messages." Petitioner asserted that in a typical one-to-one messaging context, this number is functionally equivalent to the number of distinct senders with unread messages. Schwartz was added to foreclose any argument that Canfield's system could include group chats, as Schwartz described a popular instant messaging service (Odigo) that was explicitly limited to one-on-one conversations, thereby ensuring a direct correspondence between the number of sessions with new messages and the number of distinct senders.
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ording's common visual notification method with Canfield's more nuanced and useful statistic to improve the user experience. Both references are in the analogous art of user interface notifications. A POSITA would have been further motivated to incorporate the teachings of Schwartz to implement a one-on-one messaging system, which was a known and predictable design choice, to ensure the accuracy of the sender-based count.
  • Expectation of Success: The combination involved applying a known notification display method (Ording) to a known data type (Canfield's sender count) in a predictable software environment. No technical obstacles would have prevented the successful integration of these conventional UI features.

Ground 2: Claims 6, 12, and 18 are obvious over Ording in view of Canfield, Schwartz, and McPherson.

• Prior Art Relied Upon: Ording (Patent 7,434,177), Canfield (Patent 7,281,215), Schwartz (The Complete Idiot's Guide to Online Dating and Relating (1999)), and McPherson (How to Do Everything with Your Pocket PC (2d ed. 2002)).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground built upon the combination in Ground 1 to address dependent claims requiring the display of "at least one preview of content" from a received message. Petitioner argued that McPherson taught this exact feature. McPherson described the MSN Messenger application for Pocket PCs, which displayed a "Notification bubble" containing a preview of an incoming message text (e.g., "hi frank!") without requiring the user to open the full application. This preview functionality was precisely what the dependent claims required.
  • Motivation to Combine: A POSITA would combine McPherson's notification bubble with the badged icon system of the primary combination (Ording/Canfield/Schwartz) for the straightforward purpose of enhancing user notifications. Providing a message preview is a logical and simple improvement over a numeric count alone, as it gives the user more context to decide whether to open the application. All references relate to the analogous art of electronic messaging notifications.
  • Expectation of Success: Adding a pop-up text preview to a notification system was a well-understood and common feature in messaging applications at the time, presenting a simple and predictable design choice with a high expectation of success.

• Additional Grounds: Petitioner asserted two additional obviousness challenges (Grounds 3 and 4) that mirrored Grounds 1 and 2, respectively. These grounds added the Strom reference (a 1999 Computerworld article) to explicitly disclose a "small-screen wireless mobile device" (the Blackberry Interactive Pager 950). These grounds were presented as an alternative argument in the event the Board adopted the Patent Owner's proposed narrow construction of "wireless communication device" to require a small screen.

4. Key Claim Construction Positions

• "wireless communication device": This was the most critical disputed term. Petitioner argued that the term should be given its plain meaning and is not limited to a "small-screen" device, citing the specification and prosecution history where an explicit "small display" limitation was added and later removed from the claims. Petitioner noted that the district court in a parallel litigation had tentatively agreed with this broader construction. This dispute was the basis for Petitioner's contingent Grounds 3 and 4.

5. Key Technical Contentions (Beyond Claim Construction)

• Interpretation of "Canfield": Petitioner contended that the Examiner during prosecution reviewed a different, less complete reference ("Considered Canfield," an application) and found it did not teach counting senders from both new and old (ongoing) conversations. Petitioner's technical argument was that the asserted prior art patent, Canfield, explicitly disclosed a statistic for "a number of instant messaging sessions with new messages" that was unqualified and therefore inclusive of both old and new sessions. This interpretation was critical to arguing that Canfield taught the exact counting method the patent applicants had used to distinguish their invention from the prior art during prosecution.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the core prior art reference, Canfield (the patent), was not the same as and was not cumulative to the "Considered Canfield" reference (the application) that was before the Examiner. Petitioner asserted that Canfield contained unique disclosures, particularly regarding the counting of all messaging sessions with new messages, which were absent from the reference considered by the Examiner. This key disclosure directly addressed the sole stated reason for allowance, making the newly presented art materially different.

7. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 4-7, 10-13, and 16-18 of the ’634 patent as unpatentable.