PTAB

IPR2019-00938

Snap Inc v. BlackBerry Ltd

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Previewing a New Event on a Small Screen Device
  • Brief Description: The ’634 patent describes a method for providing notifications of unread messages on a wireless device. The core inventive concept asserted during prosecution was visually modifying a messaging icon to include a numeric character representing a count of the plurality of different messaging correspondents (i.e., distinct senders) with unread messages, 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 Abiko, Crumlish, and Dvorak.

  • Prior Art Relied Upon: Ording (Patent 7,434,177), Abiko (Application # 2002/0142758), Crumlish (The ABCs of the Internet (1996)), and Dvorak (Scarier than Spam, PC Magazine (Jan. 1999)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination renders independent claim 1 and its counterparts obvious. Ording taught the fundamental user interface element: displaying an application icon (e.g., for e-mail) on a userbar and superimposing a numeric character over it to represent the number of new messages. However, Ording counted total new messages, not distinct senders. To supply this missing element, Petitioner relied on Abiko, which disclosed organizing received messages based on their respective senders and generating a "sender table" that effectively counts the number of distinct senders. Crumlish was cited to support the common practice of processing only new (unread) messages, as it described an email program (Pegasus Mail) that stored new messages in a separate "New mail folder." Dvorak was cited not for a specific limitation, but to support the motivation to combine.
    • Motivation to Combine: Petitioner contended a POSITA would combine Ording’s user interface with Abiko’s sender-counting logic. The motivation, reinforced by Dvorak, was to solve the problem of message overload. As email volume grew, a raw message count became less informative, especially with duplicate messages from the same sender. A count of distinct senders provided a more valuable metric for assessing the user's inbox. Applying this count only to unread messages (as suggested by Crumlish and Abiko) was a natural way to focus the user's attention on actionable items. Ording’s userbar provided a simple, consolidated, and convenient location for this improved notification.
    • Expectation of Success: The combination involved applying known software techniques (sender-based counting) to a known user interface element (icon badging). Petitioner argued there were no technical obstacles, and the implementation would have been a straightforward programming task for a POSITA.

Ground 2: Claims 6, 12, and 18 are obvious over Ording, Abiko, Crumlish, and Dvorak, in further view of McPherson.

  • Prior Art Relied Upon: Ording (Patent 7,434,177), Abiko (Application # 2002/0142758), Crumlish (The ABCs of the Internet (1996)), Dvorak (Scarier than Spam, PC Magazine (Jan. 1999)), and McPherson (How to Do Everything with Your Pocket PC (2d ed. 2002)).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground addressed dependent claims requiring the display of "at least one preview of content associated with at least one of the received electronic messages." Petitioner argued that McPherson, which described features of Pocket PC devices, taught this exact feature. McPherson explained that when a new message is received in MSN Messenger, a "Notification bubble" appears, showing a preview of the message content (e.g., "hi frank!").
    • Motivation to Combine: A POSITA would have been motivated to add McPherson's notification bubble to the messaging system of Ground 1 to enhance user convenience. The numeric badge from the Ording/Abiko combination indicates that new messages from a certain number of senders have arrived, but provides no context. The preview bubble from McPherson would allow a user to quickly see a message's content and importance, enabling a more informed decision about whether to open the full application. This provides a quick, convenient, and screen-space-efficient notification method.
    • Expectation of Success: Combining a notification preview bubble with a badged icon was a well-understood and common practice in user interface design. Petitioner asserted a POSITA would have had a high expectation of success in implementing this feature.

  • Additional Grounds: Petitioner asserted Grounds 3 and 4, which mirrored Grounds 1 and 2, respectively, but added Strom (Computerworld (Nov. 1999)). Strom was included to preemptively address Patent Owner’s litigation position that "wireless communication device" should be narrowly construed to mean a "small-screen" device, a construction Petitioner disputed. Strom disclosed a Blackberry device with a screen demonstrably smaller than other devices from the era, ensuring the prior art met even this narrow construction.

4. Key Claim Construction Positions

  • "wireless communication device": This was the most critical disputed term. Petitioner argued for a plain and ordinary meaning: any device capable of wireless communication, including laptops. This was contrasted with the Patent Owner's proposed construction in co-pending litigation requiring a "small-screen wireless mobile device." Petitioner argued the specification, and particularly the prosecution history (where applicants explicitly removed a "having a small display" limitation), supported the broader construction. The alternative grounds including Strom were presented to show obviousness even if the Board adopted the Patent Owner's narrower view.
  • "messaging correspondent": Petitioner noted a minor dispute over this term but argued that the prior art disclosures were met under any reasonable construction, making the dispute immaterial to the invalidity analysis.

5. 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 under 35 U.S.C. §103.