Snap Inc v. BlackBerry Ltd

1. Case Identification

• Patent #: 8,209,634
• Filed: April 5, 2019
• Petitioner(s): Snap Inc.
• Patent Owner(s): BlackBerry Ltd
• 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 a wireless communication device that provides notifications for unread electronic messages. The purported novelty is visually modifying a messaging icon to include a numeric character representing a count of the plurality of different messaging correspondents (i.e., distinct senders) who have sent 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, 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 fundamental user interface of displaying a numeric badge on an application icon (e.g., for e-mail) to indicate the number of new messages. However, Ording did not disclose basing this count on the number of distinct senders. Petitioner asserted that Canfield supplied this missing element by disclosing a system that calculates messaging statistics, including "a number of instant messaging sessions with new messages." Petitioner contended this is equivalent to counting distinct senders with unread messages, as each session typically corresponds to a unique sender. Schwartz was introduced to support the argument that instant messaging sessions are typically one-to-one, thereby ensuring that a count of "sessions with new messages" directly corresponds to a count of "distinct senders with new messages."
  • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Ording and Canfield as they are analogous arts addressing user interface notifications for messaging. The motivation was to improve Ording’s simple message count with Canfield’s more nuanced metric of counting distinct senders, which provides different and potentially more useful information. A POSITA would have been motivated to implement Canfield’s system to be one-on-one as taught by Schwartz to ensure the accuracy of the sender count and to cater to user preferences for private, non-group chats.
  • Expectation of Success: The combination involved applying known user interface elements (Ording's badge) to display a known type of data (Canfield's sender/session count) on a conventional wireless device. The technologies were mature, and their integration would have been straightforward and predictable.

Ground 2: Claims 6, 12, and 18 are obvious over Ording, Canfield, and Schwartz in view of 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 asserted that McPherson disclosed this feature, teaching a "Notification bubble" for MSN Messenger on a Pocket PC that appears upon message receipt and displays a preview of the message content (e.g., "hi frank!").
  • Motivation to Combine: A POSITA would be motivated to add McPherson’s preview bubble to the Ording/Canfield system to enhance its functionality. A numeric badge alone does not inform the user about the content or urgency of a message. Adding a preview bubble provides this context, allowing a user to make a more informed decision about whether to open the full application. This was a known technique for improving user convenience.

• Additional Grounds: Petitioner asserted two additional grounds (Grounds 3 and 4) that mirrored the combinations above but added Strom (a 1999 Computerworld article) to explicitly disclose a "small-screen" device. This was a contingent argument to rebut the Patent Owner's proposed claim construction that "wireless communication device" requires a small screen, a construction Petitioner disputed. Strom's disclosure of the BlackBerry Interactive Pager 950 was argued to satisfy this narrow construction.

4. Key Claim Construction Positions

• Petitioner dedicated significant argument to the construction of "wireless communication device."
  • The Patent Owner, in parallel litigation, argued this term should be narrowly construed as a "small-screen wireless mobile device."
  • Petitioner argued the term should be given its plain and ordinary meaning, which does not impose a screen size restriction. Petitioner supported this by pointing to the patent's specification, which includes examples like laptops, and its prosecution history, where an explicit "having a small display" limitation was added to a claim and later removed before the patent issued, indicating a surrender of that limitation.

5. Key Technical Contentions (Beyond Claim Construction)

• A central contention was the distinction between Canfield (Patent 7,281,215), cited in the petition, and an earlier "Considered Canfield" (an application publication) that was reviewed by the Examiner during the original prosecution.
  • Petitioner argued that "Considered Canfield" was deficient because it only taught counting "new" IM sessions, failing to account for new messages arriving in "old" (ongoing) sessions. This deficiency was what the applicants relied upon to overcome the Examiner's rejection.
  • Petitioner asserted that the Canfield patent cited in the IPR petition cured this defect by teaching a count of "a number of instant messaging sessions with new messages" without distinguishing between new and old sessions. This, Petitioner argued, disclosed the critical missing element and demonstrated that the art cited in the petition was substantially different and stronger than what the Examiner had previously considered.

6. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) would be inappropriate because the current petition did not rely on "the same or substantially the same prior art or arguments" as were before the Examiner.
• The core of this argument rested on the distinction between the cited Canfield patent and the "Considered Canfield" application. Petitioner contended that the Canfield patent provided the key disclosure that the Examiner had found lacking during prosecution, meaning the primary reference combination in the petition was materially different and presented a new question of patentability.

7. 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 the ’634 patent as unpatentable.