Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 28
`Entered: August 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00911
`Patent 8,745,149 B2
`_______________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 28
`Entered: August 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00911
`Patent 8,745,149 B2
`_______________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2017-00911
`Patent 8,745,149 B2
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`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–17 (“the challenged claims”) of U.S.
`Patent No. 8,745,149 B2 (Ex. 1001, “the ’149 patent”). BlackBerry Limited
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to
`the Petition. On August 30, 2017, we instituted an inter partes review of the
`challenged claims of the ’149 patent on the following grounds:
`Claims
`Statutory Basis
`Applied References
`1–5, 9–13, and
`35 U.S.C. § 103(a)1 Appelman et al., PCT Patent
`17
`Application Publication No. WO
`01/24036 A2 (filed Sept. 21,
`2000, published Apr. 5, 2001)
`(Ex. 1012, “Appelman”) and
`Toshio, Japanese Patent
`Application Publication No.
`H03-89639 (filed Aug. 31, 1989,
`published Apr. 15, 1991) (Ex.
`1007, “Toshio”)
`35 U.S.C. § 103(a) Appelman and Milton et al., U.S.
`Patent No. 5,631,949 (filed May
`22, 1995, issued May 20, 1997)
`(Ex. 1006, “Milton”)
`35 U.S.C. § 103(a) Appelman, Toshio, and
`MacPhail, U.S. Patent No.
`6,661,434 B1 (filed Apr. 13,
`2000, issued Dec. 9, 2003) (Ex.
`1009, “MacPhail”)
`
`1, 5–7, 9, 13–15,
`and 17
`
`8 and 16
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective on
`March 16, 2013. Id. at § 3(n). Because the challenged claims of the ’149
`patent have an effective filing date before March 16, 2013, any citations
`herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
`
`2
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`
`Claims
`8 and 16
`
`Applied References
`Statutory Basis
`35 U.S.C. § 103(a) Appelman, Milton, and
`MacPhail
`
`Paper 7 (“Dec. on Inst.”), 19–20.
`After institution, Patent Owner filed a Response (Paper 17, “PO
`Resp.”) to the Petition, and Petitioner filed a Reply (Paper 20, “Pet. Reply”)
`to the Response. Petitioner submitted a Declaration of Dr. Dan R. Olsen Jr.
`(Ex. 1002) with the Petition, and Patent Owner submitted a transcript of the
`deposition of Dr. Olsen (Ex. 2006) with the Response. Patent Owner
`submitted a Declaration of Dr. George T. Ligler (Ex. 2007) with the
`Response, and Petitioner submitted a transcript of the deposition of Dr.
`Ligler (Ex. 1018) with the Reply. An oral hearing was held on May 30,
`2018, and a transcript of the hearing is included in the record.2 Paper 27
`(“Tr.”).
`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`For the reasons set forth below, Petitioner has shown by a preponderance of
`the evidence that claims 1–17 of the ’149 patent are unpatentable.
`A.
`Related Proceedings
`The parties indicate that the ’149 patent is the subject of the following
`district court case: BlackBerry Ltd. v. BLU Products, Inc., No. 1:16-cv-
`23535 (S.D. Fla.). Pet. 1; Paper 4, 1. The parties also indicate that
`Petitioner filed another petition requesting an inter partes review of the ’149
`patent in IPR2017-00912. Pet. 1; Paper 4, 1.
`
`
`2 The oral hearing included a related proceeding, IPR2017-00912. Paper 24.
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`B.
`The ’149 Patent
`The ’149 patent relates to “a handheld electronic device and a method
`for providing information representative of the times of certain
`communications in a messaging environment.” Ex. 1001, 1:20–24. The
`’149 patent explains that when a messaging conversation continues quickly,
`there generally is no need to display time information. Id. at 1:58–64. In
`other circumstances, though, “it may be desirable for information regarding
`certain timing aspects . . . to be available to a user,” but “the limited space
`available on a display of a handheld electronic device has made a solution
`difficult.” Id. at 1:65–2:2. To address this alleged problem, the ’149 patent
`describes an electronic device that displays time information for a message
`only after the expiration of a predetermined period during which no
`additional messages are exchanged or only when a user manually requests
`time information. Id. at 5:31–38, 6:14–23, 7:11–19.
`The ’149 patent also explains that it is desirable to provide a user with
`additional time information “depending upon the prevailing circumstances”
`so that the user may have “an expedited understanding of the timing aspects
`of the message.” Id. at 7:37–40, 8:26–33. To address this alleged problem,
`the ’149 patent describes a smart time stamp and an active time stamp. Id. at
`7:37–50, 7:59–8:5. A smart time stamp displays first time information, such
`as “2:44 pm,” for a message in a conversation. Id. at 7:37–50. If the
`conversation is not resumed until the following day, the smart time stamp
`automatically changes the first time information to second time information,
`such as “2:44 pm yesterday,” to reflect the change in day. Id. An active
`time stamp displays first time information, such as “one minute ago,” for a
`message in a conversation, and then changes the first time information to
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`second time information, such as “two minutes ago,” as time progresses. Id.
`at 7:59–8:5.
`C.
`Illustrative Claim
`Claims 1, 9, and 17 are independent. Claim 1 is reproduced below.
`1. A method of displaying an instant messaging
`conversation on a display of an electronic device, the method
`comprising:
`displaying a conversation of instant messages;
`displaying a first time information for an instant message
`in the conversation in response to a first input; and
`automatically changing the first time information for the
`instant message to a second time information as time progresses
`and displaying the second time information instead of the first
`time information.
`Ex. 1001, 8:48–57.
`
`II. ANALYSIS
`A.
`Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “at least a B.S. degree in computer science, electrical engineering, or
`equivalent thereof, and at least two years of experience in the relevant field,
`e.g., graphical user interfaces,” but notes that “[m]ore education can
`supplement practical experience and vice versa.” Pet. 5–6 (citing Ex. 1002
`¶¶ 13–14). Patent Owner argues that a person of ordinary skill in the art
`would have had “at least a bachelor’s degree in computer science, electrical
`engineering, or the equivalent, and at least two years of experience in
`designing user interfaces for mobile devices such as cellular telephones,
`personal digital assistances (PDA), or other handheld devices.” PO Resp. 9–
`10 (citing Ex. 2007 ¶ 41). The parties’ respective definitions of the level of
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`ordinary skill in the art are similar. Patent Owner contends, though, that
`Petitioner’s definition improperly focuses on “generic” user interfaces,
`rather than user interfaces specifically for mobile devices. PO Resp. 10
`(citing Ex. 2007 ¶ 42).
`We are not persuaded by Patent Owner’s contention that a person of
`ordinary skill in the art must have experience in designing user interfaces for
`mobile devices. As Patent Owner points out, portions of the specification of
`the ’149 patent describe a “handheld electronic device.” Ex. 1001, 1:20–24,
`2:9–32. But other portions of the specification, as well as the claims,
`describe an “electronic device” more generally, and, thus, are not limited to
`a handheld or mobile device. Id. at 2:33–3:7, 8:48–57, 9:9–22, 10:15–25.
`Therefore, based on the evidence of record, including the types of problems
`and solutions described in the ’149 patent and the asserted prior art, we
`agree with and adopt Petitioner’s definition of the level of ordinary skill in
`the art. Pet. 5–6; Ex. 1002 ¶¶ 13–14.
`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear.3 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). “Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” TriVascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). An applicant may
`provide a definition of a term in the specification with reasonable clarity,
`
`3 We would construe the claim term discussed below the same under Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). In the absence of such a definition, limitations are not to be read into
`the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`1.
`Automatically
`Claim 1 recites “automatically changing the first time information for
`the instant message to a second time information as time progresses and
`displaying the second time information instead of the first time information.”
`Ex. 1001, 8:54–57. Claims 9 and 17 recite similar limitations. Id. at 9:19–
`22, 10:22–25. Petitioner proposes construing the term “automatically” to
`mean “by itself with little or no direct human control.” Pet. Reply 2.
`Petitioner argues that its proposed construction is supported by the claim
`language, specification, prosecution history, and certain extrinsic evidence.
`Id. at 2–7. Petitioner further contends that the term “automatically” only
`modifies the term “changing” in the challenged claims and does not modify
`the term “displaying.” Id. at 9–12. Patent Owner proposes construing the
`term “automatically” to mean “not manually initiated.” PO Resp. 12. Patent
`Owner argues that its proposed construction is supported by the claim
`language, specification, prosecution history, and certain extrinsic evidence.
`Id. at 12–16. Patent Owner further contends that the term “automatically”
`modifies both the terms “changing” and “displaying” in the challenged
`claims. Id. at 16–18.
`In the Decision on Institution, we adopted Patent Owner’s proposed
`construction. Dec. on Inst. 8. We see no reason to deviate from that
`determination. The specification of the ’149 patent supports Patent Owner’s
`proposed construction that the term “automatically” means “not manually
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`initiated.” Specifically, the ’149 patent distinguishes between a manual
`operation and an automatic operation. For example, the ‘149 patent states
`that if a time stamp for a message is desired, “the user may activate a user
`interface . . . , which can manually cause the output of an inserted time
`stamp.” Ex. 1001, 6:19–23 (emphasis added). In contrast, the ’149 patent
`states that if a first time stamp is displayed for a message and the
`conversation is not resumed until the following day, the first time stamp
`“could be configured to automatically change from being displayed as ‘2:44
`pm’ . . . to being displayed as, for instance, . . . ‘2:44 pm yesterday.’” Id. at
`7:40–50 (emphasis added). Thus, because the ’149 patent distinguishes
`between a manual operation and an automatic operation, the ’149 patent
`indicates that an automatic operation is not manually initiated.
`Petitioner appears to agree that the specification of the ’149 patent
`distinguishes between a manual operation and an automatic operation, but
`attempts to further explain the difference between them. Pet. Reply 4
`(“[T]he use of ‘automatically’ and ‘manually’ in the specification convey
`that an operation initiated by direct human control is manually performed
`and that an operation may be automatically performed even if it is the result
`of a different prior operation that is manually initiated.”). However,
`Petitioner’s use of the phrase “little or no direct human control” in its
`proposed construction injects ambiguity into the challenged claims. Tr. 7:4–
`9. Thus, we do not adopt Petitioner’s proposed construction. As discussed
`below, though, we clarify what it means for an operation to be “not manually
`initiated” in the context of the challenged claims.
`In the Decision on Institution, we agreed with Patent Owner that the
`term “automatically” modifies the terms “changing” and “displaying” in the
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`challenged claims. Dec. on Inst. 8. We see no reason to deviate from that
`determination. The specification and prosecution history of the ’149 patent
`support Patent Owner’s position that the term “automatically” modifies the
`terms “changing” and “displaying” in the challenged claims. The ’149
`patent states that if a first time stamp is displayed for a message and the
`conversation is not resumed until the following day, the first time stamp
`“could be configured to automatically change from being displayed as ‘2:44
`pm’ . . . to being displayed as, for instance, . . . ‘2:44 pm yesterday.’” Ex.
`1001, 7:40–50 (emphases added). This portion of the ’149 patent indicates
`that the automatic change is made to the displayed time stamp, thereby
`indicating that the term “automatically” also modifies the term “displaying”
`in the challenged claims. Further, during prosecution, the Examiner rejected
`the pending independent claims as being unpatentable over Appelman ’4974
`and Lapuyade.5 Ex. 1004, 237, 245–249. In response to the rejection,
`Patent Owner amended the pending independent claims “to clarify the
`protection being sought by combining the [changing and displaying]
`operations and specifying that the ‘changing’ is done automatically.” Id. at
`236 (emphasis added). Patent Owner’s statement during prosecution that it
`was combining the changing and displaying operations indicates that both
`operations are performed automatically.
`Petitioner contends that the term “automatically” appears immediately
`before the term “changing” in the challenged claims, but not immediately
`
`
`4 Appelman et al., U.S. Patent No. 7,181,497 B1 (filed Jan. 22, 2003, issued
`Feb. 20, 2007) (Ex. 2001, “Appelman ’497”).
`5 Lapuyade et al., U.S. Patent No. 7,219,109 B1 (filed Aug. 27, 2001, issued
`May 15, 2007) (Ex. 2002, “Lapuyade”).
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`before the term “displaying.” Pet. Reply 9. Thus, according to Petitioner,
`the term “automatically” only modifies the term “changing.” Id. at 10. We
`disagree. As discussed above, the specification of the ’149 patent indicates
`that the term “automatically” applies to both the changing and displaying
`operations. Ex. 1001, 7:40–50. Petitioner also contends that Patent Owner
`stated during prosecution that only the changing operation is performed
`automatically. Pet. Reply 10. We disagree. As discussed above, Patent
`Owner stated during prosecution that it was combining the changing and
`displaying operations. Ex. 1004, 236.
`In the Decision on Institution, we clarified that in the context of the
`challenged claims, the term “automatically” only applies to the specific
`operations of changing and displaying time information, and that other prior
`operations can be manually initiated. Dec. on Inst. 8. We see no reason to
`deviate from that determination. The specification of the ’149 patent
`supports our clarification. In particular, the ’149 patent describes a manual
`embodiment in which a user manually initiates the specific operation of
`displaying time information. Ex. 1001, 6:19–23, 7:11–19. For example, the
`’149 patent states that by “moving a cursor 374 or other pointing device or
`other device in proximity to a given message 368 a corresponding requested
`time stamp is output adjacent the message 368.” Id. at 7:11–16.
`In contrast, the ’149 patent describes an automatic embodiment in
`which a user manually initiates a prior operation, but the displayed time
`information changes automatically. Id. at 5:62–6:2, 7:40–50. Specifically,
`the ’149 patent explains that a user manually resumes an instant messaging
`conversation by sending another message. Id. at 5:62–6:2. The ’149 patent
`further states that “if the first time stamp 84 of FIG. 4 was output as
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`indicated above, and if the conversation was not resumed until the following
`day, the first time stamp 84 potentially could be configured to automatically
`change from being displayed as ‘2:44 pm’ . . . to being displayed as, for
`instance, . . . ‘2:44pm yesterday.’” Id. at 7:40–50 (emphases added). As
`such, according to the ’149 patent, when a user manually resumes an instant
`messaging conversation from a previous day, the displayed time information
`automatically changes to reflect the change in day. Id. at 5:62–6:2, 7:40–50.
`Thus, although the user manually initiates the prior operation of resuming
`the instant messaging conversation, the user does not manually initiate the
`specific operation of changing the displayed time information.
`The prosecution history also supports our clarification. During
`prosecution, the Examiner rejected the pending independent claims as being
`unpatentable over Appelman ’497 and Lapuyade. Ex. 1004, 237, 245–249.
`According to Patent Owner, Lapuyade teaches that a user manually
`“select[s] an option to change to a new time zone.” Id. at 238. In other
`words, in Lapuyade, a user manually initiates the specific operation of
`changing the displayed time information.6 In response to the rejection,
`Patent Owner amended the pending independent claims “to clarify the
`protection being sought by combining the [changing and displaying]
`operations and specifying that the ‘changing’ is done automatically.” Id. at
`236. Patent Owner then argued that the amended independent claims were
`
`
`6 Patent Owner similarly acknowledges in this case that “Lapuyade’s
`disclosure is clear that the displayed time information (e.g., the displayed
`time for a calendar entry) is changed manually, such as when the user
`instructs the system to ‘change display time zone’ via button 724, or by
`‘tap[ing] the displayed time zone in box 718 to make a selection of a correct
`local time zone.’” PO Resp. 7 (citing Ex. 2002, 6:21–43).
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`distinguishable from Lapuyade because “[a]lthough Lapuyade shows a
`prompt allowing the user to select an option to change to a new time zone, it
`is unclear to Applicant how such a feature would suggest automatically
`changing time information in an instant messaging conversation.” Id. at 70.
`Patent Owner’s argument regarding Lapuyade indicates that the term
`“automatically” was added to the pending independent claims to distinguish
`prior art that taught manually initiating the specific operation of changing
`the displayed time information.
`
`Patent Owner disagrees with our clarification. PO Resp. 18–20. First,
`Patent Owner points to the portion of the ’149 patent that describes a smart
`time stamp. Id. at 18–19. Patent Owner contends that “the passage of time
`is the cause of the automatically updated display” and “not an intervening
`manual action by the user.” Id. Patent Owner’s argument is not persuasive.
`The relevant portion of the ’149 patent states:
`In this regard, and in accordance with another aspect of the
`invention, a given time stamp may be a smart time stamp and
`provide additional information depending upon the prevailing
`circumstances. For instance, if the first time stamp 84 of FIG. 4
`was output as indicated above, and if the conversation was not
`resumed until the following day, the first time stamp 84
`potentially could be configured to automatically change from
`being displayed as “2:44 pm” on the day of communication of
`the non-responded-to message 80 to being displayed as, for
`instance, “2:44 pm Thursday” or, for instance, “2:44 PM Sep.
`17, 2004” or, for instance, “2:44 pm yesterday” on the
`following day, although other configurations will be apparent
`and will be within the concept of the invention.
`Ex. 1001, 7:37–50 (emphases added). As discussed above, the ’149 patent
`explains that a user manually resumes an instant messaging conversation by
`sending another message. Id. at 5:62–6:2. Thus, the smart time stamp
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`described in the ’149 patent automatically changes the displayed time
`information after a user manually resumes an instant messaging
`conversation from a previous day. Id. at 7:37–50.
`Second, Patent Owner points to the portion of the ’149 patent that
`describes an active time stamp, which, according to Patent Owner,
`automatically changes “without requiring any intervening manual input to
`prompt the updated display.” PO Resp. 19 (citing Ex. 1001, 7:59–64). The
`portion of the ’149 patent cited by Patent Owner states:
`Such a time stamp 478 could be configured to be an active time
`stamp, meaning that it would change as time progressed. For
`instance, the time stamp 478 could progressively change from
`saying “less than one minute ago” to saying “one minute ago”,
`“two minutes ago”, “forty-five minutes ago”, and the like as
`time progressed.
`Ex. 1001, 7:59–64 (emphasis added). We understand this active time stamp
`to be different than the smart time stamp discussed above. Compare id. at
`7:37–50, with id. at 7:59–64. And we are not persuaded that the term
`“automatically” in the challenged claims is limited to just the active time
`stamp described in the ’149 patent. As discussed above, the ’149 patent
`describes the smart time stamp as “automatically” changing the displayed
`time information after a user manually resumes an instant messaging
`conversation from a previous day. Id. at 5:62–6:2, 7:37–50.
`For the foregoing reasons, we adopt Patent Owner’s proposed
`construction of the term “automatically.” Specifically, we construe the term
`“automatically” to mean “not manually initiated.” We clarify, though, that
`in the context of the challenged claims, the term “automatically” only
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`applies to the specific operations of changing and displaying time
`information, and that other prior operations can be manually initiated.7
`2.
`First Input
`Petitioner proposes construing the term “first input.” Pet. 13. Patent
`Owner responds that the term “first input” does not require express
`construction. PO Resp. 11. We determine that the term “first input” does
`not require express construction to resolve the parties’ disputes regarding the
`asserted grounds of unpatentability in this case. See infra Sections II.C–II.E;
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (“[O]nly those terms need be construed that are in controversy, and
`only to the extent necessary to resolve the controversy.”).
`C. Obviousness of Claims 1–5, 9–13, and 17 over Appelman and
`Toshio
`Petitioner argues that claims 1–5, 9–13, and 17 would have been
`obvious over Appelman and Toshio. Pet. 2. A claim is unpatentable as
`obvious under 35 U.S.C. § 103(a) if the differences between the claimed
`subject matter and the prior art are such that the subject matter as a whole
`would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which the subject matter pertains. KSR
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of ordinary
`
`
`7 Our clarification regarding the term “automatically” is only pertinent to our
`analysis of the asserted grounds of unpatentability that include Milton. See
`infra Section II.D.2.
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`skill in the art; and (4) any objective indicia of non-obviousness. Graham v.
`John Deere Co., 383 U.S. 1, 17–18 (1966).
`We have considered the parties’ arguments and supporting evidence,
`and we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1–5, 9–13, and 17 would have been obvious over
`Appelman and Toshio.
`1.
`Overview of Appelman and Toshio
`Appelman relates to “a messaging application (e.g., e-mail, instant
`messaging, chat rooms, etc.) user interface.” Ex. 1012, 1:6–8.8 In
`particular, Appelman teaches a user interface with an output text field that
`displays sent and received messages. Id. at 16:23–25. Each message
`includes a time stamp that shows the time (e.g., 13:20:05) at which the
`message was sent or received. Id. at 16:25–17:4, 18:2–22, Figs. 9, 12.
`Toshio relates to “a selective call receiver with a display function,
`wherein the selective call receiver with a display function displays the
`changes over time.” Ex. 1007, 229. More specifically, Toshio’s selective
`call receiver “is configured as follows: a time function is provided to
`determine whether the date has been updated; when the date has been
`updated, the fact that the day the message was received is not today is
`memorized and displayed along with the incoming message and the receipt
`time.” Id. at 230. Toshio explains that displaying the number of elapsed
`days along with the receipt time for an incoming message “prevent[s] a user
`from being confused even in the case of multiple incoming messages
`received over several days.” Id. at 231.
`
`8 We cite to the original page numbers of Appelman, rather than the page
`numbers added by Petitioner when Appelman was filed as Exhibit 1012.
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`2.
`Claims 1, 9, and 17
`Claim 1 recites “[a] method of displaying an instant messaging
`conversation on a display of an electronic device, the method comprising:
`displaying a conversation of instant messages.” Ex. 1001, 8:48–51.
`Appelman teaches an electronic device that displays a conversation of
`instant messages. Pet. 15–17; Ex. 1012, 1:27–31, 2:12–18, 7:14–15, 20:3–
`22, Fig. 19. Patent Owner does not dispute that the combination of
`Appelman and Toshio teaches the above limitation of claim 1.
`Claim 1 recites “displaying a first time information for an instant
`message in the conversation in response to a first input.” Ex. 1001, 8:52–53.
`Appelman teaches displaying an absolute time stamp for an instant message
`in a conversation in response to a user sending or receiving a message.
`Pet. 17–19; Ex. 1002 ¶ 41; Ex. 1012, 16:25–17:4, 18:2–22, Fig. 12. Patent
`Owner does not dispute that the combination of Appelman and Toshio
`teaches the above limitation of claim 1.
`Claim 1 recites “automatically changing the first time information for
`the instant message to a second time information as time progresses and
`displaying the second time information instead of the first time information.”
`Ex. 1001, 8:54–57. Toshio teaches a call receiver that displays the time a
`message was received. Pet. 20–21; Ex. 1007, 229–231. Toshio also teaches
`that when the date changes, the call receiver automatically changes the
`receipt time for the message to indicate that it was received the previous day,
`such as by adding a simple mark. Pet. 20–21; Ex. 1007, 230 (“[W]hen the
`date has been updated, the fact that the day the message was received is not
`today is memorized and displayed along with the incoming message and the
`receipt time.”), 231 (“The display of the number of elapsed days of this
`
`16
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`IPR2017-00911
`Patent 8,745,149 B2
`
`incoming message does not need to be a complicated one; a simple mark
`may be used.”). In other words, Toshio teaches automatically changing the
`time information for a message from just the receipt time to a combination
`of the receipt time and the number of elapsed days. Pet. 20–21; Ex. 1002
`¶ 43; Ex. 1007, 230–231.
`Patent Owner responds that Toshio does not teach automatically
`changing and displaying time information as time progresses.9 PO
`Resp. 21–27. Specifically, Patent Owner argues that “[a]t best, Toshio’s call
`receiver automatically updates a variable stored in memory that represents
`‘the number of days’ since a message was received, but the Petition provides
`no explanation for how it would ‘automatically’ display the changed
`information, as required by the claims.” Id. at 22 (citing Ex. 2007 ¶ 58).
`Patent Owner further argues that Toshio teaches a manual display function
`that “chang[es] the displayed information only ‘depending on’ or ‘according
`to’ whether the user needs to view her messages.” PO Resp. 22–23 (citing
`Ex. 1007, 229–231; Ex. 2007 ¶ 58).
`Patent Owner’s argument is not persuasive because it addresses
`Toshio individually, not the combination of Appelman and Toshio proposed
`by Petitioner. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne
`cannot show non-obviousness by attacking references individually where, as
`here, the rejections are based on combinations of references.”). As
`discussed above, Appelman teaches displaying an absolute time stamp for an
`
`9 Because Petitioner has shown sufficiently that the combination of
`Appelman and Toshio teaches the limitations of claim 1, we do not address
`what Patent Owner refers to as Petitioner’s “backup” argument regarding the
`background knowledge and perspective of a person of ordinary skill in the
`art. See PO Resp. 33–38.
`
`17
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`
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`IPR2017-00911
`Patent 8,745,149 B2
`
`instant message in a conversation (Ex. 1012, 16:25–17:4, 18:2–22, Fig. 12),
`and Toshio teaches automatically changing a receipt time (i.e., an absolute
`time) for a message to a combination of the receipt time and the number of
`elapsed days (Ex. 1002 ¶ 43; Ex. 1007, 230–231). Petitioner asserts that it
`would have been obvious to modify Appelman’s absolute time stamp to
`automatically change to include an indication of the number of elapsed days
`based on the age of the message as taught by Toshio. Pet. 21; Ex. 1002 ¶ 44.
`Thus, even if Toshio only teaches automatically changing time information
`as time progresses, the combination of Appelman and Toshio teaches
`automatically changing and displaying time information as time
`progresses.10 Pet. 21; Ex. 1002 ¶ 44.
`Independent claims 9 and 17 recite limitations similar to those
`discussed above for claim 1. Ex. 1001, 9:9–22, 10:15–25. Other than the
`arguments discussed above for claim 1, Patent Owner does not raise any
`arguments specific to claims 9 and 17.
`
`
`10 Moreover, although not necessary to our determination, we note that
`Toshio alone teaches automatically changing and displaying time
`information as time progresses. Specifically, even if a user manually
`retrieves a message (see PO Resp. 22–27), Toshio does not teach that the
`user manually initiates the specific operation of displaying time information
`for the message. Rather, Toshio teaches that “a time function is provided to
`determine whether the date has been updated; when the date has been
`updated, the fact that the day the message was received is not today is
`memorized and displayed along with the incoming message and the receipt
`time.” Ex. 1007, 230. In other words, when a user retrieves a message,
`Toshio’s call receiver automatically displays time information for the
`message. Id.; Ex. 1002 ¶ 43.
`
`18
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`IPR2017-00911
`Patent 8,745,149 B2
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`
`3.
`Claims 2 and 10
`Claim 2 depends from claim 1, and recites “wherein the first time
`information comprises an absolute time.” Id. at 8:58–59. Claim 10 depends
`from claim 9, and recites a similar limitation. Id. at 9:23–24. Appelman
`teaches displaying an absolute time stamp for an instant message in a
`conversation in response to a
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