Facebook Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2019-00925
• 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, 16-18

2. Patent Overview

• Title: Previewing a New Event on a Small Screen Device
• Brief Description: The ’634 patent describes a graphical user interface for wireless devices that provides notifications for unread electronic messages. The core inventive concept involves visually modifying a message icon to include a numeric character representing a count of the plurality of different message correspondents who have sent unread messages.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ording/Abiko/Crumlish/Dvorak - Claims 1, 4-5, 7, 10-11, 13, 16-17 are obvious over Ording in view of Abiko, Crumlish, and Dvorak.

• Prior Art Relied Upon: Ording (Patent 7,434,177), Abiko (Application # 2002/0142758), Crumlish (a 1996 book), and Dvorak (a 1999 article).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the claimed method was a combination of known elements. Ording disclosed the fundamental user interface of displaying a numeric badge superimposed on an application icon (e.g., an email icon in a dock) to indicate the number of new messages. While Ording taught a message count, it did not teach counting distinct senders. This missing element was supplied by Abiko, which taught a technique for mobile devices to organize messages by sender and generate a display showing a count of distinct senders. The combination of Ording’s badging interface with Abiko’s sender-counting logic allegedly rendered the core limitation of claim 1 obvious. Crumlish was cited to show it was well-known to separate new (unread) messages into a dedicated folder, making it obvious to apply Abiko’s sender-counting logic specifically to unread messages.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine these references to create a more useful notification system. As argued with support from Dvorak, users were receiving unmanageable volumes of email, including duplicates and spam. A numeric badge showing the number of distinct senders provides more meaningful information than a raw message count, as it is not inflated by multiple messages from a single source. A POSITA would have been motivated to implement Abiko’s sender-centric counting within Ording's familiar badging interface to provide this enhanced utility. Applying this count to only unread messages (per Crumlish) was a natural step to help users prioritize new information.
  • Expectation of Success: Combining these known software features—a UI display technique from Ording and a data-sorting logic from Abiko—involved conventional programming and presented no technical obstacles. A POSITA would have had a high expectation of successfully creating the claimed notification system.

Ground 2: Obviousness over Ording/Abiko/Crumlish/Dvorak and McPherson - Claims 6, 12, and 18 are obvious over the combination of Ground 1 in further view of McPherson.

• Prior Art Relied Upon: Ording (Patent 7,434,177), Abiko (Application # 2002/0142758), Crumlish (a 1996 book), Dvorak (a 1999 article), and McPherson (a 2002 book).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims requiring the display of "at least one preview of content" from a received message. Petitioner asserted that McPherson, which described the Microsoft Windows Pocket PC operating system, disclosed this feature. Specifically, McPherson showed that MSN Messenger on a Pocket PC would display a "Notification bubble" with a preview of an incoming message's content (e.g., "hi frank!").
  • Motivation to Combine: A POSITA would be motivated to add McPherson’s message preview capability to the system of Ground 1 to further enhance user convenience. A notification showing only a count of senders does not inform the user about the content or urgency of the messages. Adding a content preview would allow the user to make a more informed decision about whether to open the messaging application, improving the user experience. This was a straightforward and logical feature enhancement.
  • Expectation of Success: Displaying content previews in notification pop-ups was a known and common feature in messaging applications. Integrating this feature into the combined Ording/Abiko system would have been a predictable and routine programming task.

• Additional Grounds: Petitioner asserted two additional grounds (Grounds 3 and 4) that mirrored Grounds 1 and 2, respectively, but added Strom (a 1999 article) to the combination. Strom was added to preemptively address a potential narrow claim construction of "wireless communication device" as requiring a "small-screen," showing that the combinations would be obvious even on a device with a demonstrably small screen.

4. Key Claim Construction Positions

• "wireless communication device": This was the central disputed term. Petitioner argued that the term should be given its plain and ordinary meaning, covering any device that communicates wirelessly. Petitioner contested Patent Owner's position from related litigation that the term should be narrowly construed to mean a "small-screen wireless mobile device." Petitioner supported its broader construction by pointing to the patent’s prosecution history, where an explicit "having a small display" limitation was added to the claims and later removed, indicating a surrender of that limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate under both §325(d) and §314(a).
• Under §325(d): Denial was argued to be improper because none of the prior art references or arguments presented in the petition were previously considered by the USPTO during the original prosecution of the ’634 patent.
• Under §314(a) (General Plastic factors): Petitioner acknowledged filing a second IPR petition (IPR2019-00924) against the same patent on the same day. However, it argued that this did not warrant denial because the petitions were filed simultaneously, not successively, and were not redundant. Petitioner contended that the two petitions relied on entirely different prior art references to challenge the patent’s central feature (the sender count), and that separating the grounds into two petitions was necessary for a thorough analysis within the PTAB's word limits.

6. Relief Requested

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