`571-272-7822
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`
`
`
`Paper 7
`Entered: August 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.,
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
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`IPR2017-00911
`Patent 8,745,149 B2
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`INTRODUCTION
`I.
`Google Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–17 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. An inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1–17 of the
`’149 patent. Accordingly, we institute an inter partes review as to claims 1–
`17 of the ’149 patent on the grounds specified below.
`Related Proceedings
`A.
`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.
`The ’149 Patent
`B.
`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.
`According to the ’149 patent, handheld electronic devices are capable of
`numerous types of communication, including instant messaging. Id. at 1:39–
`44. The ’149 patent explains that, when an instant messaging conversation
`continues quickly, there generally is no need to display time information for
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`an instant message. 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 an instant message only
`after the expiration of a predetermined period of time during which no
`messages are exchanged. Id. at 5:31–38. In another embodiment, the
`electronic device displays time information only when it is requested
`manually by a user. Id. at 6:14–23, 7:11–19. The ’149 patent also describes
`a smart time stamp. Id. at 7:37–50. For example, the smart time stamp
`displays first time information (e.g., 2:44 pm) for an instant message. Id. If
`the conversation is not resumed until the following day, the smart time
`stamp automatically changes the first time information to second time
`information (e.g., 2:44 pm yesterday) to reflect the change in day. Id.
`Illustrative Claim
`C.
`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.
`
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`Patent 8,745,149 B2
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`35 U.S.C. § 103(a)
`
`8 and 16
`
`35 U.S.C. § 103(a)
`
`Evidence of Record
`D.
`Petitioner submits the following references and declaration (Pet. 2–3):
`Reference or Declaration
`Exhibit No.
`Declaration of Dr. Dan R. Olsen, Jr. (“Olsen Declaration”)
`Ex. 1002
`Milton et al., U.S. Patent No. 5,631,949 (filed May 22,
`Ex. 1006
`1995, issued May 20, 1997) (“Milton”)
`Toshio, Japanese Patent Application Publication No. H03-
`89639 (filed Aug. 31, 1989, published Apr. 15, 1991)
`(“Toshio”)
`MacPhail, U.S. Patent No. 6,661,434 B1 (filed Apr. 13,
`2000, issued Dec. 9, 2003) (“MacPhail”)
`Appelman et al., PCT Publication No. WO 01/24036 A2
`(filed Sept. 21, 2000, published Apr. 5, 2001)
`(“Appelman”)
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 2–3):
`Claims
`Basis
`1–5, 9–13, and 17
`35 U.S.C. § 103(a)
`1, 5–7, 9, 13–15, and
`35 U.S.C. § 103(a)
`17
`8 and 16
`
`Ex. 1007
`
`Ex. 1009
`
`Ex. 1012
`
`References
`Appelman and Toshio
`Appelman and Milton
`
`Appelman, Toshio, and
`MacPhail
`Appelman, Milton, and
`MacPhail
`
`II. ANALYSIS
`A. 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. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016).
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`First Input
`1.
`Petitioner argues that the term “first input” should be construed to
`mean “any event detected by the electronic device.” Pet. 13. Patent Owner
`argues that the term “first input” does not require express construction at this
`stage of the proceeding. Prelim. Resp. 10. On this record and for purposes
`of this decision, we determine that the term “first input” does not require
`express construction at this stage of the proceeding to resolve the parties’
`disputes regarding the asserted grounds of unpatentability. See infra Section
`II.B; 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.”).
`Automatically
`2.
`Patent Owner argues that the term “automatically” should be
`construed to mean “not manually initiated.” Prelim. Resp. 12. Patent
`Owner also argues that both the “changing” limitation and the subsequent
`“displaying” limitation of the challenged claims are performed
`automatically. Id. at 16. Patent Owner argues that its proposed construction
`is supported by the claim language, specification, prosecution history, and
`extrinsic evidence. Id. at 12–17. Petitioner does not propose an express
`construction for the term “automatically” at this stage of the proceeding. See
`Pet. 12–14.
`The specification supports Patent Owner’s position that the term
`“automatically” means “not manually initiated,” and that the term
`“automatically” modifies both the “changing” limitation and the subsequent
`“displaying” limitation of the challenged claims. Specifically, the ’149
`patent states that, if a time stamp for a message is desired, “the user may
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`activate a user interface . . . , which can manually cause the output of an
`inserted time stamp.” Ex. 1001, 6:19–23 (emphasis added). The ’149 patent
`also states that, if a first time stamp is displayed 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). These two portions of the ’149 patent distinguish
`between an automatic operation and a manual one, and, thus, indicate that an
`automatic operation is not manually initiated. In addition, the second
`portion of the ’149 patent quoted above indicates that the automatic change
`is made to the displayed time stamp, thereby indicating that the term
`“automatically” modifies the “changing” limitation and the subsequent
`“displaying” limitation of the challenged claims.
`The specification also demonstrates, though, that Patent Owner’s
`proposed construction requires further clarification. In particular, the ’149
`patent indicates that the term “automatically” only applies to the specific
`operations of changing and then displaying the time information, and that
`other prior operations can be manually initiated. For example, the ’149
`patent states that “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’ . . . to being displayed as, for instance, . .
`. ‘2:44pm yesterday.’” Id. at 7:40–50 (emphasis added). In other words,
`according to the ’149 patent, the displayed time information automatically
`changes after the user manually resumes the instant messaging conversation.
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`The prosecution history also supports this clarification of Patent
`Owner’s proposed construction. During prosecution, the Examiner rejected
`the pending independent claims as being unpatentable over Appelman and
`Lapuyade.1 Ex. 1004, 237, 245–49. 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 also summarized the advantages of the claimed invention as allowing
`the first time stamp to “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.’” Id.
`at 237 (emphasis added). Patent Owner then argued that the amended
`independent claims were distinguishable from Lapuyade because Lapuyade
`teaches that the user manually “select[s] an option to change to a new time
`zone.”2 Id. at 238 (emphasis added). Patent Owner advanced similar
`arguments in an Appeal Brief, and the Examiner allowed the claims based
`on those arguments. See id. at 18, 69–71. Patent Owner’s arguments
`regarding Lapuyade during prosecution further indicate that the term
`
`
`1 Lapuyade et al., U.S. Patent No. 7,219,109 B1 (filed Aug. 27, 2001, issued
`May 15, 2007) (Ex. 2002, “Lapuyade”).
`2 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 always 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.’” Prelim. Resp. 7 (citing Ex. 2002, 6:21–43).
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`“automatically” applies to the specific operations of changing and then
`displaying the time information.
`Therefore, on this record and for purposes of this decision, 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 applies to the specific operations of changing
`and then displaying the time information, and that other prior operations can
`be manually initiated.
`Asserted Grounds of Unpatentability
`B.
`Obviousness of Claims 1–5, 9–13, and 17 over Appelman
`1.
`and Toshio
`Petitioner argues that claims 1–5, 9–13, and 17 would have been
`obvious over Appelman and Toshio. Pet. 2. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1–5, 9–13, and 17 would have been obvious over Appelman and
`Toshio.
`
`Claims 1, 9, and 17
`a.
`Claim 1 recites “displaying a conversation of instant messages.” Ex.
`1001, 8:51. Petitioner identifies evidence indicating that Appelman teaches
`an instant messaging system that displays an instant messaging conversation
`between users. Pet. 15–17 (citing Ex. 1012, 7:14–15, 20:3–22, Fig. 19).
`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.
`Petitioner identifies evidence indicating that Appelman teaches displaying a
`time stamp for each message in an instant messaging conversation. Pet. 17–
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`18 (citing Ex. 1012, 16:25–28, Fig. 12). Petitioner also identifies evidence
`indicating that the time stamp in Appelman is displayed in response to a user
`sending or receiving a message (i.e., a first input). Pet. 18–19 (citing Ex.
`1002 ¶ 41; Ex. 1012, 18:2–10, 18:15–22).
`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. Petitioner identifies evidence indicating that Toshio
`teaches a call receiver that displays the time a message was received. Pet.
`20 (citing Ex. 1007, 230). Petitioner also identifies evidence indicating that,
`when the date changes, the call receiver in Toshio automatically changes the
`time information for the message to indicate that it was received the
`previous day. Pet 20–21 (citing Ex. 1007, 230–231).
`Petitioner argues that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of Appelman and Toshio. Pet.
`21–26. Specifically, Petitioner points out that Appelman and Toshio relate
`to the same field of endeavor as the ’149 patent, namely, message
`communications. Id. at 25–26 (citing Ex. 1001, Abstract, 1:20–24; Ex.
`1007, 229–230; Ex. 1012, 1:6–8). Petitioner also explains that the time
`stamp displayed in Appelman loses precision as time progresses, and, thus, a
`person of ordinary skill in the art would have been motivated to incorporate
`the feature of automatically updating time information from Toshio into the
`instant messaging system of Appelman to ensure that precision is not lost.
`Pet. 22–23 (citing Ex. 1002 ¶ 46; Ex. 1007, 230).
`Patent Owner responds that Petitioner has not shown sufficiently that
`Appelman or Toshio teaches automatically displaying the second time
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`information instead of the first time information. Prelim. Resp. 19–22
`(citing Pet. 24–25). In particular, Patent Owner contends that, even if
`Toshio teaches automatically changing time information, Toshio only
`displays the updated time information depending on a user’s need, not
`automatically. Prelim. Resp. 27–30 (citing Ex. 1007, 229–231). Further,
`according to Patent Owner, Petitioner relies on the conclusory testimony of
`its declarant, Dr. Dan Olsen, Jr., to “fill this gap” in the prior art. Prelim.
`Resp. 22–24 (citing Pet. 24–25; Ex. 1002 ¶¶ 18–19, 49).
`On this record, Patent Owner’s argument is not persuasive. Toshio
`teaches that “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 (emphasis
`added). This portion of Toshio indicates that, when the date is updated, that
`change is displayed automatically. Toshio also teaches that the “display
`function displays the changes over time.” Id. at 229 (emphasis added). This
`portion of Toshio similarly indicates that changes to the date are displayed
`over time automatically. Thus, even if the portions of Toshio cited by Patent
`Owner teach displaying the updated time information depending on a user’s
`need (Prelim. Resp. 27–30 (citing Ex. 1007, 229–231)), Toshio is not limited
`to those teachings.
`Further, contrary to Patent Owner’s argument, Petitioner relies on the
`Olsen Declaration to show why a person of ordinary skill in the art would
`have combined the cited teachings of Appelman and Toshio, not to fill gaps
`in the prior art. Pet. 21–26. In fact, the specific portion of the Olsen
`Declaration cited by Patent Owner states, inter alia, that “one of ordinary
`skill in the art would have been motivated, based on Toshio’s disclosure, to
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`modify the combined Appelman-Toshio system and processes such that the
`combined absolute and elapsed time is automatically displayed as time
`progresses.” Ex. 1002 ¶ 49. Thus, Dr. Olsen expressly states that his
`analysis regarding the “displaying” limitation is “based on Toshio’s
`disclosure.” Id.
`Patent Owner also responds that a person of ordinary skill in the art
`would not have had a reason to combine the cited teachings of Appelman
`and Toshio. Prelim. Resp. 33–38. Specifically, Patent Owner argues that
`Toshio’s telephonic answering machine “has no obvious applicability” to
`Appelman’s “dynamic, urgent and interactive” instant messaging system.
`Id. at 35. According to Patent Owner, Appelman is not concerned with
`“days-old messages” like Toshio because users of the instant messaging
`system in Appelman cannot receive messages when they are signed off. Id.
`at 36–37 (citing Ex. 1012, 2:12–3:12). Patent Owner also argues that
`Petitioner does not explain how Appelman’s time stamps would have been
`updated or what portion of Toshio’s functionality would have been
`incorporated into Appelman. Prelim. Resp. 37.
`On this record, Patent Owner’s attorney argument is not persuasive.
`First, although users of the instant messaging system in Appelman may not
`receive messages when they are signed off, Patent Owner does not identify
`evidence indicating that users of the instant messaging system sign off
`whenever they leave their computer. See id. at 33–38. As such, users may
`receive an instant message when they are signed in but away from the
`computer, just like users may receive a telephone message when they are
`away from the telephone. Thus, as Petitioner explains, automatically
`updating the time stamps displayed in Appelman to indicate whether a
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`message was received the previous day would be beneficial to a user. Pet.
`22–23; Ex. 1002 ¶ 46; Ex. 1007, 230. Second, contrary to Patent Owner’s
`argument, Petitioner explains specifically which functionality from Toshio
`would have been incorporated into Appelman. Namely, Petitioner explains
`that Toshio’s functionality for automatically updating time information
`when the date changes would have been incorporated into Appelman so that
`the time stamps displayed in an instant messaging conversation would
`automatically update when the date changes. Pet. 21; 1002 ¶ 44.
`For the foregoing reasons, Petitioner has shown sufficiently that the
`combination of Appelman and Toshio teaches the limitations of claim 1.
`Claims 9 and 17 recite limitations similar to those discussed above with
`respect to claim 1. Ex. 1001, 9:9–22, 10:15–25. Patent Owner does not
`raise any additional arguments relating to claims 9 and 17. On this record,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1, 9, and 17 would have been obvious over Appelman and Toshio.
`Claims 2–5 and 10–13
`b.
`Claims 2–5 and 10–13 depend, directly or indirectly, from claims 1 or
`9. Petitioner identifies evidence indicating that the combination of
`Appelman and Toshio teaches the limitations of claims 2–5 and 10–13. Pet.
`27–29, 32–34. Patent Owner does not raise any specific arguments relating
`to claims 2–5 and 10–13. On this record, we agree with Petitioner’s
`assertions and supporting evidence. Therefore, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 2–5 and 10–13
`would have been obvious over Appelman and Toshio.
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`Summary
`c.
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1–5, 9–13, and 17 would
`have been obvious over Appelman and Toshio.
`Obviousness of Claims 1, 5–7, 9, 13–15, and 17 over
`2.
`Appelman and Milton
`Petitioner argues that claims 1, 5–7, 9, 13–15, and 17 would have
`been obvious over Appelman and Milton. Pet. 2. We have reviewed the
`parties’ assertions and supporting evidence. For the reasons discussed
`below, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that claims 1, 5–7, 9, 13–15, and 17 would have been obvious over
`Appelman and Milton.
`Claims 1, 9, and 17
`a.
`Claim 1 recites “displaying a conversation of instant messages.” Ex.
`1001, 8:51. As discussed above, Petitioner identifies evidence indicating
`that Appelman teaches an instant messaging system that displays an instant
`messaging conversation between users. Pet. 15–17, 37 (citing Ex. 1012,
`7:14–15, 20:3–22, Fig. 19).
`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), 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” (id. at 8:54–
`57). Petitioner identifies evidence indicating that Milton teaches a message
`retrieval system that displays an elapsed time (e.g., hours and minutes) for
`messages received less than 24 hours ago. Pet 38 (citing Ex. 1006, 1:60–61,
`1:67–2:4, 3:60–4:13). Petitioner also identifies evidence indicating that
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`Milton teaches automatically changing the elapsed time to an absolute time
`(e.g., month and day) for messages received more than 24 hours ago. Pet. 42
`(citing Ex. 1006, 1:60–61, 1:67–2:4, 3:60–4:13).
`Petitioner argues that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of Appelman and Milton. Pet.
`38–45. Specifically, Petitioner points out that Milton relates to the same
`field of endeavor as the ’149 patent, namely, message communications. Id.
`at 41 (citing Ex. 1001, Abstract, 1:20–24; Ex. 1006, 1:6–9, 1:51–2:4).
`Petitioner also explains that time information is critical to a user’s ability to
`determine a course of action, and reporting time information as an elapsed
`time or an absolute time depending on the age of the message as taught by
`Milton would allow a user of the instant messaging system in Appelman to
`better determine a course of action. Pet. 42–43 (citing Ex. 1002 ¶¶ 17–19,
`78–80; Ex. 1006, 1:21–26, 1:35–48, 1:60–61).
`Patent Owner responds that Petitioner has not shown sufficiently that
`Milton teaches automatically changing time information. Prelim. Resp. 30–
`33. Specifically, Patent Owner argues that “[t]he only time Milton discloses
`‘changing’ the 32-bit timestamp from its absolute value to a relative value is
`as part of the user’s manual message retrieval.” Id. at 31 (citing Ex. 1006,
`3:48–63). On this record, Patent Owner’s argument is not persuasive. As
`discussed above, we clarify that the term “automatically” only applies to the
`specific operations of changing and then displaying the time information,
`and not to other prior operations. See supra Section II.A.2. The portion of
`Milton cited by Patent Owner indicates that a user manually accesses the
`message retrieval system to retrieve the stored messages. Ex. 1006, 3:48–
`50. The user, however, does not manually initiate changing the displayed
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`time information in Milton. Rather, the evidence identified by Petitioner
`indicates that the time information is updated automatically after the user
`manually accesses the message retrieval system. Id. at 3:48–4:13. That is
`sufficient to meet our preliminary construction of the term “automatically.”
`See supra Section II.A.2.
`Patent Owner responds that Petitioner also has not shown sufficiently
`that either Appelman or Milton teaches automatically displaying the second
`time information instead of the first time information. Prelim. Resp. 25–26
`(citing Pet. 44–45). According to Patent Owner, Petitioner relies on the
`conclusory testimony of its declarant, Dr. Olsen, to show that this limitation
`would have been obvious. Prelim. Resp. 26 (citing Pet. 44–45; Ex. 1002
`¶ 82). On this record, Patent Owner’s argument is not persuasive. The
`evidence identified by Petitioner indicates that the time information in
`Milton is updated and then reported (i.e., displayed) automatically to a user
`after the user manually accesses the message retrieval system. Ex. 1006,
`3:48–4:13. Again, that is sufficient to meet our preliminary construction of
`the term “automatically.” See supra Section II.A.2.
`Patent Owner responds that Petitioner’s analysis is “confusing and
`contradictory” because Petitioner cites to the same portions of Milton for
`two different limitations of claim 1. Prelim. Resp. 40–42. As discussed
`above, Petitioner explains that certain portions of Milton teach a message
`retrieval system that displays an elapsed time (i.e., first time information).
`Pet. 38 (citing Ex. 1006, 1:60–61, 1:67–2:4, 3:60–4:13). Petitioner explains
`that those same portions of Milton also teach automatically changing the
`elapsed time to an absolute time (i.e., second time information). Pet. 42
`(citing Ex. 1006, 1:60–61, 1:67–2:4, 3:60–4:13). Thus, on this record, we
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`are not persuaded that Petitioner’s analysis regarding the teachings of Milton
`is confusing or contradictory.
`Patent Owner responds that a person of ordinary skill in the art would
`not have had a reason to combine the cited teachings of Appelman and
`Milton. Prelim. Resp. 38–39. Specifically, Patent Owner argues that
`Milton’s remote voicemail system “has no obvious applicability” to
`Appelman’s “dynamic, urgent and interactive” instant messaging system.
`Id. According to Patent Owner, Milton “is focused on reporting days-old
`voicemail message information,” whereas Appelman’s instant messaging
`system “is usable only when a user is signed in.” Id.
`On this record, Patent Owner’s attorney argument is not persuasive.
`As discussed above, although users of the instant messaging system in
`Appelman may not receive messages when they are signed off, Patent
`Owner does not identify evidence indicating that users of the instant
`messaging system sign off whenever they leave their computer. See id. As
`such, users may receive an instant message when they are signed in but
`away from the computer, just like users may receive a telephone message
`when they are away from the telephone. Thus, as Petitioner explains,
`automatically changing time information from an elapsed time to an absolute
`time when a message was received the previous day would allow a user to
`better determine a course of action. Pet. 42–43; Ex. 1002 ¶ 80.
`For the foregoing reasons, Petitioner has shown sufficiently that the
`combination of Appelman and Milton teaches the limitations of claim 1.
`Claims 9 and 17 recite limitations similar to those discussed above with
`respect to claim 1. Ex. 1001, 9:9–22, 10:15–25. Patent Owner does not
`raise any additional arguments relating to claims 9 and 17. On this record,
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`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1, 9, and 17 would have been obvious over Appelman and Milton.
`Claims 5–7 and 13–15
`b.
`Claims 5–7 and 13–15 depend, directly or indirectly, from claims 1 or
`9. Petitioner identifies evidence indicating that the combination of
`Appelman and Milton teaches the limitations of claims 5–7 and 13–15. Pet.
`45–48. Patent Owner does not raise any specific arguments relating to
`claims 5–7 and 13–15. On this record, we agree with Petitioner’s assertions
`and supporting evidence. Therefore, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 5–7 and 13–15 would have
`been obvious over Appelman and Milton.
`Summary
`c.
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1, 5–7, 9, 13–15, and 17
`would have been obvious over Appelman and Milton.
`Obviousness of Claims 8 and 16 over Appelman, Toshio,
`3.
`and MacPhail
`Petitioner argues that claims 8 and 16 would have been obvious over
`Appelman, Toshio, and MacPhail. Pet. 2. Petitioner identifies evidence
`indicating that MacPhail teaches the limitations of claims 8 and 16,
`specifically, that MacPhail teaches displaying a time stamp when a user
`positions a pointer over an object. Id. at 49 (citing Ex. 1009, 9:66–10:11).
`Petitioner also identifies evidence indicating that a person of ordinary skill in
`the art would have had a reason to combine the cited teachings of MacPhail
`with Appelman and Toshio because hiding a time stamp until requested by
`the user “would have avoided unnecessarily cluttering the display with
`information.” Pet. 49 (citing Ex. 1002 ¶ 94). Patent Owner does not raise
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`any specific arguments relating to claims 8 and 16. On this record, we agree
`with Petitioner’s assertions and supporting evidence. Therefore, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 8
`and 16 would have been obvious over Appelman, Toshio, and MacPhail.
`Obviousness of Claims 8 and 16 over Appelman, Milton,
`4.
`and MacPhail
`Petitioner argues that claims 8 and 16 would have been obvious over
`Appelman, Milton, and MacPhail. Pet. 3. Petitioner relies on evidence
`similar to that discussed above for the combination of Appelman, Toshio,
`and MacPhail. Pet. 52–53. Patent Owner does not raise any specific
`arguments relating to claims 8 and 16. On this record, we agree with
`Petitioner’s assertions and supporting evidence. Therefore, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 8
`and 16 would have been obvious over Appelman, Milton, and MacPhail.
`35 U.S.C. § 325(d)
`5.
`Patent Owner argues that we should deny the Petition under 35 U.S.C.
`§ 325(d), because it presents substantially the same prior art and arguments
`that were presented previously to the Office during prosecution of the ’149
`patent. Prelim. Resp. 24, 26–27, 42–44. Specifically, Patent Owner
`explains that, during prosecution, the Examiner relied on a combination of
`Appelman and Lapuyade to reject certain claims. Id. at 5–6, 43. According
`to Patent Owner, the Examiner ultimately allowed the pending claims
`because Lapuyade does not teach automatically changing first time
`information to second time information. Id. at 7–9, 43. Patent Owner
`argues that the asserted grounds of unpatentability in this case are
`substantially the same because Petitioner “does not identify any teachings
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`in Toshio or Milton that are materially different from Lapuyade, such that
`they render the ‘automatically’ limitation obvious.” Id. at 43.
`On this record, Patent Owner’s argument is not persuasive. As
`discussed above, Patent Owner acknowledges that, in Lapuyade, a user
`manually initiates a change in time information by selecting an option to
`change to a new time zone. Prelim. Resp. 7 (citing Ex. 2002, 6:21-43). In
`contrast, as discussed above, Petitioner identifies evidence indicating that, in
`Toshio and Milton, the displayed time information changes automatically.
`See supra Sections II.B.1a, II.B.2.a. As a result, based on the facts and
`circumstances in this case, we decline to exercise our discretion under
`35 U.S.C. § 325(d).
`
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of claims 1–17 of the ’149 patent. At this stage
`in the proceeding, we have not made a final determination with respect to
`the patentability of any of the challenged claims.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 3