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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`BLACKBERRY LTD.,
`Patent Owner.
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`_________________
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`Case IPR2017-00911
`Patent 8,745,149 B2
`_________________
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`PETITIONER’S REPLY
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`IPR2017-00911
`Patent 8,745,149 B2
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`I. 
`II. 
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1 
`CLAIM CONSTRUCTION ............................................................................ 1 
`The Board Should Adopt the Plain and Ordinary Meaning of
`A. 
`“Automatically,” which Is “by Itself with Little or No Direct
`Human Control” .................................................................................... 2 
`The Intrinsic and Extrinsic Evidence Supports
`1. 
`Petitioner’s Plain and Ordinary Meaning ................................... 2 
`PO’s Construction Should Be Rejected Because It Is
`Inconsistent with the Intrinsic Record and Vague ...................... 7 
`“Automatically” Does Not Modify “Displaying” ................................. 9 
`B. 
`III.  THE CHALLENGED CLAIMS ARE OBVIOUS ....................................... 13 
`The Appelman-Toshio Combination Discloses the
`A. 
`“Automatically Changing” and “Displaying” Limitations Under
`Any Construction ................................................................................ 13 
`PO Does Not Contest That the Appelman-Toshio
`1. 
`Combination Discloses the “Automatically Changing”
`and “Displaying” Limitations Under Petitioner’s and the
`Board’s Interpretations .............................................................. 13 
`The Appelman-Toshio Combination Discloses the
`“Automatically Changing” and “Displaying” Limitations
`Under PO’s Construction .......................................................... 14 
`The Appelman-Milton Combination Discloses the
`“Automatically Changing” and “Displaying” Limitations Under
`Petitioner’s and the Board’s Interpretations ........................................ 17 
`The “Displaying” Limitation Is Also Obvious Under PO’s
`Construction ........................................................................................ 18 
`D.  A POSA Would Have Combined Appelman with Toshio or
`Milton .................................................................................................. 20 
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`B. 
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`2. 
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`2. 
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`C. 
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`IPR2017-00911
`Patent 8,745,149 B2
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`1. 
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`A POSA Would Have Had Reason to Combine
`Appelman with Toshio .............................................................. 20 
`Appelman Would Have Been Combined with Milton .............. 23 
`2. 
`3.  Milton Is Analogous Art ........................................................... 24 
`IV.  CONCLUSION .............................................................................................. 29 
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`IPR2017-00911
`Patent 8,745,149 B2
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Application of Glasser, 363 F.2d 449 (CCPA 1966) ............................................... 16
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 25
`In re GPAC Inc.,
`57 F.3d 1573 (Fed. Cir. 1995) ............................................................................ 28
`HTC Corp. v. IPCom GmbH & Co.,
`667 F.3d 1270 (Fed. Cir. 2012) ............................................................................ 9
`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) .......................................................................... 29
`Powell v. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011) ............................................................................ 7
`In re Power Integrations, Inc.,
`No. 2017-1304, 2018 WL 1370551 (Fed. Cir. Mar. 19, 2018) ............................ 8
`Tehrani v. Hamilton Medical, Inc.,
`331 F.3d 1355 (Fed. Cir. 2003) ............................................................................ 7
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) ............................................................................ 25
`Other Authorities
`William Strunk, Jr. & E.B. White, The Elements of Style 30 (4th ed.
`2000) ..................................................................................................................... 9
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`IPR2017-00911
`Patent 8,745,149 B2
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`LIST OF EXHIBITS
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`Ex. 1001
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`U.S. Patent No. 8,745,149
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`Ex. 1002
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`Declaration of Dr. Dan R. Olsen Jr.
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`Ex. 1003
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`CV of Dr. Dan R. Olsen Jr.
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`Ex. 1004
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`File History of U.S. Patent No. 8,745,149
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`Ex. 1005
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`RESERVED
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`Ex. 1006
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`U.S. Patent No. 5,631,949 (“Milton”)
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`Ex. 1007
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`JP Patent Application No. H03-89639 (“Toshio”)
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`Ex. 1008
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`RESERVED
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`Ex. 1009
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`U.S. Patent No. 6,661,434 (“MacPhail”)
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`Ex. 1010
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`File History of U.S. Patent No. 9,385,973
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`Ex. 1011
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`Ex. 1012
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`BlackBerry’s Opposition to Motion to Dismiss in BlackBerry LTD.
`v. BLU Prods., Inc., Case No. 1:16-cv-23535 (S.D. Fla.)
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`International Publication No. WO 01/24036 (“Appelman”)
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`Ex. 1013
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`Caroline Rose et al., “Inside Macintosh Volume 1” (1985)
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`Ex. 1014
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`U.S. Patent No. 8,554,859
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`Ex. 1015
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`RESERVED
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`Ex. 1016
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`RESERVED
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`Ex. 1017
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`RESERVED
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`Ex. 1018
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`Deposition Transcript of Dr. George T. Ligler (March 2, 2018)
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`Patent 8,745,149 B2
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`Ex. 1019
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`International Publication No. WO 02/21413
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`Ex. 1020
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`International Publication No. WO 02/065250
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`Ex. 1021
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`Oxford English Reference Dictionary (2nd ed. 2003)
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`IPR2017-00911
`Patent 8,745,149 B2
`I.
`INTRODUCTION
`Petitioner replies to Patent Owner’s (PO) Response (Paper 17, “Resp.”) and
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`the Board’s decision to institute IPR (Paper 7, “Dec.”) of the ’149 patent. PO’s
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`arguments should be rejected and claims 1-17 of the ’149 patent found
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`unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”) and
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`accompanying exhibits, and the additional reasons provided below.
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`II. CLAIM CONSTRUCTION
`PO proposes a vague construction of “automatically” and wrongly argues
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`that this term modifies both the “changing” and “displaying” limitations.1 (Resp.,
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`11-20.) The Board agreed with PO’s constructions for purposes of institution, with
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`one important clarification: “‘automatically’ only applies to the specific operations
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`of changing and then displaying the time information, and that other prior
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`operations can be manually initiated.” (Dec., 5-8.) While Petitioner agrees with the
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`Board that other prior operations can be manually initiated, PO’s constructions
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`1 Given there is no meaningful difference between claims 1, 9, and 17 for purposes
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`of this proceeding with respect to these limitations, for simplicity, Petitioner’s
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`analysis refers to the language of claim 1.
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`1
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`Patent 8,745,149 B2
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`should be rejected in favor of the plain and ordinary meaning of these terms under
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`the BRI standard, as applied in the Petition.2
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`A. The Board Should Adopt the Plain and Ordinary Meaning of
`“Automatically,” which Is “by Itself with Little or No Direct
`Human Control”
`PO’s argument that “automatically” should be construed to mean “not
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`manually initiated” should be rejected because it fails to define what
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`“automatically” is, as opposed to what it is not. While there is no per se rule
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`against negative constructions, here, PO’s construction causes uncertainty due to
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`its vagueness. Accordingly, PO’s construction should be abandoned in favor of the
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`plain and ordinary meaning of the term, as applied in the Petition, which is “by
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`itself with little or no direct human control.”
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`1.
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`The Intrinsic and Extrinsic Evidence Supports Petitioner’s
`Plain and Ordinary Meaning
`Petitioner’s plain and ordinary meaning of “automatically” is consistent with
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`the intrinsic record. To begin, claim 1 states “automatically changing the first time
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`information for the instant message to a second time information as time
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`2 As discussed in the Petition, “first input” (claims 1, 9, and 17) should be
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`interpreted to mean “any event detected by the electronic device.” (Pet., 13-14.)
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`While PO believes this term need not be construed, PO does not dispute
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`Petitioner’s interpretation. (Resp., 10.)
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`2
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`IPR2017-00911
`Patent 8,745,149 B2
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`progresses and displaying the second time information instead of the first time
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`information.” Claims 9 and 17 recite similar limitations. No further details are
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`provided. Thus, while the claims offer little guidance, they use “automatically” in a
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`way that is consistent with Petitioner’s plain and ordinary meaning.
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`The specification, which applies Petitioner’s plain and ordinary meaning, is
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`more helpful. In the single instance where “automatically” is used, the
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`specification explains that time stamp 84 of FIG. 4 may “automatically” change “if
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`the conversation was not resumed until the following day.” (Ex. 1001, 7:40-50.) As
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`explained with respect to FIGS. 4-5, a conversation is resumed manually by a
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`device user. (Id., 5:62-6:2.) PO’s expert, Dr. George T. Ligler, confirmed this
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`understanding of the specification during his deposition, stating, the time stamp is
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`“output as a result of a resumption of communication” and “a user would have had
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`to resume communication.” (Ex. 1018, 85:14-20.) Thus, although the time stamp
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`changes as a result of a user manually resuming a conversation, the change is
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`automatic because it occurs by itself with little or no direct human control,
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`consistent with Petitioner’s plain and ordinary meaning.
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`In contrast, in the single instance where “manually” is used, the specification
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`describes a user directly controlling the system for the purpose of displaying a time
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`stamp by manually selecting an option to display a time stamp: “If such a time
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`stamp is desired, the user may activate a user interface 96, such as the exemplary
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`IPR2017-00911
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`user inteerface 96 oof FIG. 6a,, which cann manuallyly cause thee output off an inserteed
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`time staamp 98 adjacent the mmessage 688, as in FIGG. 6b.” (Idd., 6:14-23
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`(Id., FIGGS. 6a-6b (annotatedd).) Duringg his depos
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`operatioon is manuual becausee the user iss directly sselecting thhe “Insert TTime” optiion
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`to causee the displaay of time stamp 98. (Ex. 1018,, 84:2-13.))
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`AAccordinglyy, consisteent with Peetitioner’s pplain and oordinary mmeaning of
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`“automaatically,” the use of ““automaticcally” and ““manually
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`eration inittiated by ddirect humaan control
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`and thatt an operattion may bee automatically perfoormed evenn if it is thee result of
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`differennt prior opeeration thatt is manuallly initiatedd.
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`TThe prosecuution history also suppports Peti
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`tioner’s innterpretatioon. During
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`prosecuution, the appplicant atttempted too distinguissh U.S. Paatent No. 7,,219,109
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`(“Lapuyyade”) by aamending claim 1 to recite “auttomaticallyy changingg the first t
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`IPR2017-00911
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`informaation for thhe instant mmessage to a second ttime informmation as ttime
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`Patent 88,745,149 BB2
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`progresses,” and bby arguing that Lapuyyade does
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`not teach tthis limitattion becausse
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`select an ooption to chhange to a
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`time zonne.” (Ex. 11004, 231-339; id., 70--71.) As shhown in FIIG. 7 of Lapapuyade
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`below, wwhen a neww time zonne is detectted, windo
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`w 712 apppears, in whhich “[t]hee
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`user is ooffered thee opportuniity to acceppt the new
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`time zonee as the dispplay time
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`ecting buttton 730.” ((Ex. 2002,
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`zone” bby “selectinng button 7724 or rejecct it by sel
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`6:21-388.)
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`(Id., FIGG. 7 (annottated).)
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`Patent 8,745,149 B2
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`In response, the examiner maintained the rejections based on Lapuyade, but
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`later allowed the claims after the applicant repeated its previous arguments that
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`Lapuyade only discloses “a prompt allowing the user to select an option to change
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`to a new time zone.” (Ex. 1004, 17-19, 68-72, 213-15.) Thus, to distinguish
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`Lapuyade, the applicant amended the claims to indicate that “changing” occurs
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`“automatically” and represented to the PTO that this limitation is not met by a user
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`selecting a displayed button for the purpose of changing a time, consistent with
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`Petitioner’s plain and ordinary meaning of “automatically.”
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`Numerous prior art references cited by the applicant during prosecution also
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`confirm this meaning of “automatically.” (See, e.g., id., 330 (citing International
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`Publication Nos. WO 02/21413 and WO 02/065250).) For example, International
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`Publication No. WO 02/21413 explains that “in response” to “the user open[ing]
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`the message” the contents of the application “are automatically dynamically
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`updated from a server.” (Ex. 1019, 30 (emphasis added); id., 7 (“automatically
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`retrieved”), 51 (“automatically sent”); Ex. 1020, [0144] (“automatically
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`directed”).) Thus, the cited prior art describes operations that are automatically
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`performed in response to prior manual operations. This is further intrinsic evidence
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`that Petitioner’s plain and ordinary meaning of “automatically” should be adopted
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`over PO’s construction, which is inconsistent with the use of this term in the prior
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`IPR2017-00911
`Patent 8,745,149 B2
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`art. See Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1230-31 (Fed. Cir.
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`2011).
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`Finally, Petitioner’s plain and ordinary meaning is also supported by
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`contemporaneous dictionary definitions. For example, the Oxford English
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`Reference Dictionary defines “automatically” as “working by itself, without direct
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`human intervention.” (Ex. 1021, 3 (emphasis added).) Unlike PO’s proffered
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`dictionary definition, this definition is consistent with the intrinsic record, and
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`therefore is a better indicator of the true meaning and scope of “automatically” in
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`the claims. See Tehrani v. Hamilton Medical, Inc., 331 F.3d 1355, 1361 (Fed. Cir.
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`2003).
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`2.
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`PO’s Construction Should Be Rejected Because It Is
`Inconsistent with the Intrinsic Record and Vague
`PO’s claim construction analysis begins by cherry-picking a dictionary
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`definition and calling it the “well-known common meaning” of “automatic.”
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`(Resp., 12-13.) Based on this definition, PO concludes that “a manually initiated
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`action is not ‘automatically’ performed.” (Id.) Only then did PO look to the
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`intrinsic evidence. (Id., 13-16.) This approach to claim construction is
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`fundamentally flawed.
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`By starting with a dictionary definition to determine the meaning of
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`“automatically,” PO improperly limited the role of intrinsic sources. As a result,
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`PO transformed the meaning of “automatically” to a POSA to the meaning of the
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`IPR2017-00911
`Patent 8,745,149 B2
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`term in the abstract, out of its particular context. As a result, PO’s construction is
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`vague and does little if anything to delineate the metes and bounds of the claim.
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`See In re Power Integrations, Inc., No. 2017-1304, 2018 WL 1370551, at *3-6
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`(Fed. Cir. Mar. 19, 2018) (rejecting the Board’s construction because it was based
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`on a dictionary definition instead of intrinsic evidence).
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`PO’s arguments that the intrinsic record supports its construction also fall
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`short. PO contends that the claims and specification confirm its construction by
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`distinguishing between manual and automatic operations (Resp., 13-14), but there
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`is no dispute that manual and automatic operations are different. The dispute is
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`whether “automatically” means that other prior operations cannot be manually
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`initiated. As discussed above, neither the claims nor the specification indicates that
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`it does.
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`In fact, the portions of the specification cited by PO support Petitioner’s
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`plain and ordinary meaning. (See id., 13-14.) As discussed above, the specification
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`describes a time stamp that “automatically” changes in response to a user resuming
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`the conversation the following day (Ex. 1001, 7:40-50), and a time stamp that is
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`“manually” displayed in response to a user selecting an option to display the time
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`stamp (id., 6:14-23, FIG. 6a-6b). The only distinction between these two
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`operations is that the manual operation is initiated by direct human control (e.g.,
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`manual input for the purpose of causing the display of the time stamp) and the
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`IPR2017-00911
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`automatic operation is not (e.g., manual input for the purpose of resuming a
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`conversation that results in changing a time stamp). This confirms that
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`“automatically” means “by itself with little or no direct human control,” as
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`proposed by Petitioner.
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`PO also suggests that Petitioner’s interpretation would render PO’s
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`amendment during prosecution “superfluous.” (Resp., 14.) The portions of the
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`prosecution history file cited by PO, however, only confirm the above distinction
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`between manual and automatic operations. As discussed above, to distinguish
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`Lapuyade, the applicant amended the claims to indicate that “changing” occurs
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`“automatically” and represented to the PTO that this limitation is not met by a user
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`directly changing a time by selecting a displayed button. (See, e.g., Ex. 1004, 70-
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`71, 231-39.)
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`B.
`“Automatically” Does Not Modify “Displaying”
`PO argues that the independent claims should be construed so that
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`“automatically” modifies both the “changing” and “displaying” limitations. PO’s
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`construction is flawed for several reasons.
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`First, “automatically” appears immediately before “changing” but not
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`“displaying.” Grammatically, modifiers should be placed next to the words they
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`modify to avoid ambiguity. William Strunk, Jr. & E.B. White, The Elements of
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`Style 30 (4th ed. 2000); see also HTC Corp. v. IPCom GmbH & Co., 667 F.3d
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`1270, 1274-75 (Fed. Cir. 2012). Applying this grammatical principle here,
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`“automatically” only modifies “changing.” Had the claim drafter intended
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`“automatically” to also modify “displaying,” the drafter likely would have also
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`included the modifier immediately before “displaying.” Having not done so, these
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`claim terms should be interpreted exactly as recited—i.e., the “displaying”
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`operation need not occur “automatically.”
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`The prosecution history supports this understanding by repeatedly and
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`explicitly stating that “the ‘changing’ is done automatically”—but not the
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`“displaying.” (Ex. 1004, 236; id., 237 (“automatic changing”), 238 (“automatically
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`changing”), 70 (same), 71 (“particularly when Appelman does not mention
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`changing timestamps (let alone automatically as recited in claim 1)”), 70
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`(“automatically changing”), 71 (“automatic change”), 72 (“automatically
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`changing”), 72 (“automatically changing”).)
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`Despite these explicit statements, PO contends that the prosecution history
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`mandates its claim interpretation because the original claims were amended to
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`combine the “changing” and “displaying” limitations into one clause and to
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`remove any reference to the “displaying” limitation occurring “in response to a
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`second input.” (Resp., 16-17.) This argument, however, elevates form over
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`substance. Without more, simply merging the “changing” and “displaying” clauses
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`by removing a semicolon and injecting the word “and” does not change the
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`IPR2017-00911
`Patent 8,745,149 B2
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`meaning of the claim language. It is the words of the claim that matter, and the
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`claim amendments did not further alter those words beyond adding the modifier
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`“automatically” and removing the reference to “in response to a second input.”
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`However, the rules of grammar and the intrinsic evidence establishes that
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`“automatically” only modifies the “changing” limitation, as discussed above, and
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`removing “in response to a second input” only broadens the “displaying”
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`limitation.
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`PO also contends that the specification supports its proposed construction in
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`two places (Resp., 18-19), but in neither place does the specification indicate that
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`the time stamp is automatically displayed. First, the specification describes
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`displayed absolute time stamps that could “automatically” change “if the
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`conversation was not resumed until the following day.” (Ex. 1001, 7:40-50.) Here,
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`the specification does not indicate what triggers the display of the changed time
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`stamp, but rather what causes the time stamp to change. Indeed, in the two
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`immediately preceding paragraphs, the specification explains that a time stamp
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`may not be displayed until activated by an input device (and only temporarily) in
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`order to save space on the display. (Id., 7:10-33.)
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`Second, the specification describes relative time stamps that “could be
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`configured to…change as time progressed.” (Ex. 1001, 7:51-64.) This portion of
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`the specification, which does not use the word “automatically,” is describing
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`7-00911
`IPR201
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`another event thatt may causee a time staamp to chaange. Whaat is more,
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`FIG. 100 below, this portion oof the speccification ddescribes aa relative ti
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`that is ““output” whhen “the mmessage 46
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`en activateed by the ccursor 474.
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`”
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`as shown
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`in
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`me stamp
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`478
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`(Ex. 10001, 7:53-58.) Accordding to PO and its exppert, displaaying a timme stamp inn
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`Ex. 1018,
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`response to such aa pointing ddevice is aa manual opperation. (RResp., 13;
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`87:10-888:13, 90:11-91:18.)
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`(Ex. 10001, FIG. 100 (annotateed).) Therrefore, the
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`specificatiion does noot support
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`PO’s coonstructionn.
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`12
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`IPR2017-00911
`Patent 8,745,149 B2
`
`III. THE CHALLENGED CLAIMS ARE OBVIOUS
`PO’s Response raises a handful of arguments concerning the prior art; all are
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`unavailing.
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`A. The Appelman-Toshio Combination Discloses the “Automatically
`Changing” and “Displaying” Limitations Under Any
`Construction
`As explained in the Petition, with respect to the combination of Appelman
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`and Toshio, Appelman discloses all of the limitations of the challenged claims
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`except for the “automatically changing” and “displaying” limitations, which would
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`have been obvious in view of Toshio. (Pet., 19-26.) This is the only limitation
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`addressed by PO and its expert, and they do so only under PO’s incorrect
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`constructions. (Resp., 21-27; Ex. 2007, ¶47; Ex. 1018, 108:24-110:15.) As
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`discussed above, PO’s constructions are wrong. Nevertheless, even under PO’s
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`constructions, the Appelman-Toshio combination discloses all of the limitations of
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`the challenged claims.
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`1.
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`PO Does Not Contest That the Appelman-Toshio
`Combination Discloses the “Automatically Changing” and
`“Displaying” Limitations Under Petitioner’s and the
`Board’s Interpretations
`The Petition demonstrates—and PO and its expert do not dispute—that the
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`Appelman-Toshio combination discloses the “automatically changing” and
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`“displaying” limitations under Petitioner’s plain and ordinary meaning. (Pet., 19-
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`26; Resp., 21-27; Ex. 2007, ¶47; Ex. 1018, 108:24-110:15.) Accordingly, under
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`13
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`IPR2017-00911
`Patent 8,745,149 B2
`
`Petitioner’s plain and ordinary meaning, it is uncontested that the Appelman-
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`Toshio combination discloses all of the limitations of the challenged claims.
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`PO also does not dispute that the Appelman-Toshio combination discloses
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`the “automatically changing” limitation under any construction of “automatically.”
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`(Resp., 22; Ex. 2007, ¶58.) And even if the Board agrees with PO that
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`“automatically” modifies “displaying,” PO does not dispute that the Appelman-
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`Toshio combination discloses the “displaying” limitation under either Petitioner’s
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`plain and ordinary meaning of “automatically” or the Board’s interpretation where
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`“other prior operations can be manually initiated.” (Dec., 8.) Thus, it is also
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`uncontested that the Appelman-Toshio combination discloses all of the limitations
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`of the challenged claims if the Board maintains its construction of “automatically”
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`or adopts Petitioner’s plain and ordinary meaning of this term.
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`2.
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`The Appelman-Toshio Combination Discloses the
`“Automatically Changing” and “Displaying” Limitations
`Under PO’s Construction
`PO only disputes whether the Appelman-Toshio combination discloses the
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`“displaying” limitation under PO’s constructions. (Resp., 21-27; Ex. 2007, ¶¶47,
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`58; Ex. 1018, 108:24-110:15.) As discussed below, it does.
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`As explained in the Petition, Toshio describes “displaying an incoming
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`message on a day after the message was received” along with the number of days
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`that have elapsed since the message was received and the receipt time. (Pet., 10
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`14
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`IPR2017-00911
`Patent 8,745,149 B2
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`(citing Ex. 1007, 230), 20 (same).) According to Toshio, this time information is
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`displayed automatically when the date has changed. For example, Toshio explains
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`that “when the date has been updated, the number of days elapsed since the
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`message was received and stored in the aforementioned storage means is displayed
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`along with the incoming message and time.” (Ex. 1007, 229 (emphasis added); id.,
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`230.)
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`Toshio also explains that the “display function displays the changes over
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`time” (id., 229 (emphases added)), which further establishes that the number of
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`days elapsed and receipt time are automatically displayed when the date has been
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`updated. Indeed, this explanation is starkly similar to the description in the
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`specification of ’149 patent that a displayed time stamp can “automatically
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`change” and that “[t]his can occur ‘as time progresse[s],’” which PO relied on to
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`support its argument that “automatically” modifies “displaying.” (Resp., 17 (citing
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`Ex. 1001, 7:40-50, 7:59-8:3).) If this description demonstrates that “automatically”
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`modifies “displaying,” as PO contends, the similar explanation in Toshio
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`demonstrates that its display function operates “automatically” under PO’s
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`interpretation.
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`PO also argues that Toshio does not disclose the automatically “displaying”
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`limitation because “Toshio discloses a manual display function invoked by the
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`user.” (Resp., 23.) According to PO, “each time Toshio discusses displaying on the
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`15
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`IPR2017-00911
`Patent 8,745,149 B2
`
`display unit, it explains that the display is invoked depending on ‘the user’s need.’”
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`(Id., 22-23.) PO also points to Toshio’s explanation that “the number of days
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`elapsed is displayed on the display unit 11a together with an incoming message
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`when the incoming message is read.” (Id., 23.) PO’s argument is flawed for
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`several reasons.
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`First, as discussed above, Toshio provides multiple examples where its
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`display function operates automatically under PO’s interpretation. PO’s response
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`to these examples is essentially that the word “automatically” is missing. (Resp.,
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`24.) But there is no requirement that the prior art use the same words as the claims.
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`Application of Glasser, 363 F.2d 449, 455 (CCPA 1966).
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`Second, contrary to PO’s assertion, Toshio frequently describes its display
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`function without reference to the user’s need. (Ex. 1007, 229 (“displayed along
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`with the incoming message and time”), 229 (“a display function displays the
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`changes over time”), 230 (“a display function useful when displaying an incoming
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`message on a day after the message was received”), 230 (“displayed along with the
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`incoming message and the receipt time”), 230 (“display the number of elapsed
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`days of a message along with an incoming message and time”), 230 (“when an
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`incoming message is displayed on days after the message was received”).)
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`Third, PO does not explain why displaying message information depending
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`on the “user’s need” means that the user is manually invoking the display function.
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`IPR2017-00911
`Patent 8,745,149 B2
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`Any display of a message—whether automatic or manual—may depend on the
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`user’s “need.” Similarly, PO does not explain why displaying message information
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`“when the incoming message is read” refers to the user manually invoking the
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`display, as opposed to functionality for reading the message from memory circuit 9
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`for display. (See Ex. 1007, 229-30.)
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` Accordingly, Toshio discloses the “displaying” limitation even under PO’s
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`constructions, because the number of elapsed days and the receipt time for a
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`message is displayed without direct human control. As such, for the reasons
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`discussed in the Petition, the Appelman-Toshio combination discloses the
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`challenged claims.
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`B.
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`The Appelman-Milton Combination Discloses the “Automatically
`Changing” and “Displaying” Limitations Under Petitioner’s and
`the Board’s Interpretations
`As explained in the Petition, the “automatically changing” and “displaying”
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`limitations would have been obvious based on the combination of Appelman and
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`Milton. (Pet., 41-45.) This is the only limitation addressed by PO and its expert
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`with respect to this combination, but only under PO’s incorrect claim
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`constructions. (Resp., 27-33; Ex. 2007, ¶70; Ex. 1018, 108:24-110:15.) Under
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`either the Board’s construction or Petitioner’s plain and ordinary meaning, PO and
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`its expert do not contest that Milton discloses these limitations.
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`17
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`IPR2017-00911
`Patent 8,745,149 B2
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`C. The “Displaying” Limitation Is Also Obvious Under PO’s
`Construction
`PO argues that Petitioner does not identify any reference that discloses the
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`“displaying” limitation under PO’s constructions. (Resp., 34-35.) Not true. As
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`discussed above, the Petition explains in detail how the prior art discloses the
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`“displaying” limitation, and this explanation shows how the prior art discloses this
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`limitation if “automatically” modifies “displaying” and means “not manually
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`initiated.” Moreover, based on this disclosure in the prior art, the Petition also
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`explains that this limitation would have been obvious if construed so that
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`“automatically” modifies “displaying.” (Pet., 24-25, 44-45.)
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`PO argues that Petitioner’s obviousness position is improper because it relies
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`solely on background knowledge. (Resp., 35.) As the Board noted, however,
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`Petitioner’s obviousness analysis relies on the testimony of Dr. Olsen, who
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`explained that a POSA would have been motivated to configure the system so that
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`the time information is automatically displayed “based on Toshio’s disclosure.”
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`(Dec., 10-11 (quoting Ex. 1002, ¶49).) As discussed above, Toshio discloses a
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`“displaying” operation that occurs “automatically.”
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`Petitioner also relies on Dr. Olsen’s explanation that the general concept of
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`updating a display in response to a change in information was well known and
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`widely used in the art at the time of the alleged invention. (Pet., 24-25 (citing Ex.
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`1002, ¶¶18-19, 49).) For example, referring to Inside Macintosh, which
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`18
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`IPR2017-00911
`Patent 8,745,149 B2
`
`demonstrates the state of the art at the relevant time, Dr. Olsen explains that it was
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`known to update a display in response to an “update” event. (Ex. 1002, ¶18.) Dr.
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`Olsen explained that this concept was used in computer animation to paint new
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`images on a display as time progresses to reflect changes in the underlying data.
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`(Id., ¶19.) Thus, while the relevance of this prior knowledge is lost on PO, it is
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`clear that the idea of updating a display to output second time information in
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`response to a change in time was not new because it was a predictable
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`implementation of a well-known concept.
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`Referring to FIG. 5 of Inside Macintosh, PO argues that any reliance on
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`Inside Macintosh would be misplaced because it only discloses updating a display
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`in response to a “manually initiated operation: switching the focus from one
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`window to another.” (Resp., 36.) But Inside Macintosh does not state that
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`switching the focus from one window to another is a manually initiated operation.
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`(See Ex. 1013, I-278 to I-279.) Nor is the relied-upon portion of Inside Macintosh
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`limited to this discussion. Nevertheless, even if switching the focus from one
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`window to another is a manually in