Snap Inc. v. BlackBerry Limited

1. Case Identification

• Patent #: 8,209,634
• Filed: April 5, 2019
• Petitioner(s): Snap 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 relates to graphical user interfaces (GUIs) for wireless devices. It discloses a method of visually modifying an application icon to provide a notification for unread electronic messages, where the modification includes a numeric character representing a count of the plurality of different message correspondents who have sent the 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 base reference, Ording, disclosed the core user interface concept: a dock-like "userbar" with application icons that could be visually modified with a numeric badge to indicate the number of new messages. Petitioner asserted this taught most limitations of independent claim 1. To supply the key missing element—counting distinct correspondents instead of messages—Petitioner relied on Abiko. Abiko was argued to teach techniques for organizing messages based on their senders and explicitly disclosed creating a sender table that tracks and displays the number of distinct senders. To address the "unread" limitation, Petitioner cited Crumlish, which taught the common practice of separating new (unread) messages into a dedicated folder, making it obvious to apply Abiko's sender-counting logic only to unread messages.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Ording's UI badging with Abiko's sender-centric counting to provide a more useful and informative notification. The motivation was reinforced by Dvorak, which described the growing problem of email overload, where a raw message count is less meaningful due to duplicate messages and spam. Dvorak suggested that sender-based information would be more valuable, motivating a POSITA to display a count of distinct senders rather than a simple message count.
  • Expectation of Success: Petitioner contended the combination involved applying known UI techniques to solve a recognized problem in electronic messaging. The implementation was presented as a straightforward integration of software features with no technological barriers, leading to a predictable result.

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

• Prior Art Relied Upon: The combination from Ground 1, plus 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 that further required "displaying... at least one preview of content associated with at least one of the received electronic messages." Petitioner argued that McPherson taught this exact feature. McPherson described the MSN Messenger application on a Pocket PC, which displayed a temporary "Notification bubble" containing a text preview of a newly received message (e.g., "hi frank!"). This directly met the "preview of content" limitation.
  • Motivation to Combine: Petitioner asserted a POSITA would be motivated to add McPherson's message preview to the base system from Ground 1 to enhance its utility. The preview would provide the user with more context about an incoming message beyond the numeric count, allowing for a more informed choice about whether to immediately open the full application. This was presented as a straightforward enhancement to improve user experience.
  • Expectation of Success: Combining a notification preview with an icon badge was argued to be a simple and predictable design choice for improving a messaging system's user interface.

• Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 3 and 4) that mirrored the combinations of Grounds 1 and 2, but with the further addition of Strom (Three New Wireless E-Mail Devices, Computerworld (Nov. 1999)). Strom was included to explicitly disclose a "small-screen" device (the Blackberry Interactive Pager 950) to preemptively counter a narrow claim construction of "wireless communication device" that Patent Owner had advanced in related district court litigation.

4. Key Claim Construction Positions

• Petitioner dedicated significant argument to the construction of "wireless communication device." Patent Owner, in related litigation, had argued the term should be narrowly construed to mean a "small-screen wireless mobile device."
• Petitioner argued against this narrow construction, contending the plain and ordinary meaning of the term does not inherently require a small screen. Petitioner further supported its position by citing the ’634 patent’s prosecution history, where an explicit limitation "having a small display" was added to the claims and later removed. Petitioner argued this removal constituted a clear disavowal of the "small screen" limitation, precluding Patent Owner from recapturing that narrower scope.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate. The core reason provided was that none of the asserted prior art references or the specific obviousness combinations were the "same or substantially the same" as those previously presented to or considered by the USPTO during the initial prosecution of the ’634 patent.

6. Relief Requested

• Petitioner requested the institution of an inter partes review and the cancellation of claims 1, 4-7, 10-13, and 16-18 of Patent 8,209,634 as unpatentable under 35 U.S.C. §103.