Paper No. 17
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00911
`U.S. Patent No. 8,745,149
`
`––––––––––––––––––
`
`PATENT OWNER’S RESPONSE
`
`
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`TABLE OF CONTENTS
`
`Exhibit List ................................................................................................................. v
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The ’149 Patent ................................................................................................ 2
`
`A. Overview of the ’149 Patent .................................................................. 2
`
`B.
`
`C.
`
`Priority Date and Relevant Prosecution History ................................... 5
`
`Person of Ordinary Skill in the Art ....................................................... 9
`
`III. Claim Construction ........................................................................................ 10
`
`A.
`
`B.
`
`“First Input” (All Claims) ................................................................... 11
`
`“Automatically Changing … and Displaying” (All Claims) .............. 11
`
`i.
`
`ii.
`
`iii.
`
`“Automatically” Means Not Manually Initiated ....................... 12
`
`The Claims Require “Automatically Changing” and
`“Automatically … Displaying”................................................. 16
`
`The Board’s Clarification Reads Out the “Automatically …
`Displaying” Requirement .......................................................... 18
`
`IV. Petitioner Has Failed to Show That the Grounds of the Petition Render the
`Challenged Claims Unpatentable .................................................................. 20
`
`A. Neither Toshio Nor Milton Disclose “Automatic” Operation ............ 20
`
`i.
`
`Toshio Does Not Disclose “Automatically Changing … and
`Displaying” ............................................................................... 21
`
`ii. Milton Does Not Disclose “Automatically Changing … and
`Displaying” ............................................................................... 27
`
`iii.
`
`Petitioner’s Expert Repudiated Its Backup Argument That
`“Automatic” Operation Would Have Been Obvious, and for
`Good Reason ............................................................................. 33
`i
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`B.
`
`Appelman Would Not Have Been Combined with Toshio as Petitioner
`Alleges (Grounds 1 and 3) .................................................................. 39
`
`i.
`
`ii.
`
`Appelman Discloses a “Dynamic, Urgent and Interactive”
`Communication Scheme Entirely Unlike Toshio ..................... 39
`
`Petitioner’s Motivation to Combine Is Derived from
`Hindsight ................................................................................... 43
`
`C.
`
`Appelman Would Not Have Been Combined with Milton as Petitioner
`Alleges (Grounds 2 and 4) .................................................................. 47
`
`i.
`
`ii.
`
`Milton is Non-Analogous Art to the ’149 Patent ...................... 47
`
`Petitioner Repeats Its Obviousness Mistakes from the Toshio
`Grounds with the Milton Grounds ............................................ 52
`
`V.
`
`Reservation of Rights .................................................................................... 54
`
`VI. Conclusion ..................................................................................................... 55
`
`Certificate Of Compliance ....................................................................................... 56
`
`Certificate Of Service............................................................................................... 57
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 35, 37, 38
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .............................................................. 47, 48, 49
`Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) .......................................................................... 40
`CollegeNet, Inc. v. ApplyYourself, Inc.,
`418 F.3d 1225 (Fed. Cir. 2005) .......................................................................... 15
`Dexcowin Glob., Inc. v. Aribex, Inc.,
`IPR2016-00440, Paper 13 (PTAB July 7, 2016) .......................................... 45, 53
`In re Hughes,
`345 F.3d 184 (CCPA 1965) ................................................................................ 27
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) .................................................................... 35, 36
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .............................................................. 50, 51, 52
`KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 42, 44
`McGinley v. Franklin Sports, Inc.,
`262 F.3d 1339 (Fed. Cir. 2001) .................................................................... 43, 54
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015), overruled on other grounds, Aqua
`Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) ................... 10, 16
`Mintz v. Dietz & Watson, Inc.,
`679 F.3d 1372 (Fed. Cir. 2012) .......................................................................... 44
`
`iii
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998) ............................................................................ 44
`Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,
`No. 2015-1855, 639 F. App’x 639 (Fed. Cir. May 4, 2016), cert.
`granted, No. 16-712 (U.S. June 12, 2017) ......................................................... 54
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ................................................................ 11, 14, 15
`Statutes
`35 U.S.C. § 112(b) ................................................................................................... 16
`35 U.S.C. § 316(e) ..................................................................................................... 1
`Other Authorities
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 37
`37 C.F.R. § 42.65(a) ................................................................................................. 37
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 35
`
`
`
`iv
`
`

`

`IPR2017-0091 1 (US. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`EXHIBIT LIST
`
`n Exhibit Description
`2001 US. Patent No. 7,181,497 to Appelman et a1.
`
`
`
`2002 US. Patent No. 7,219,109 to Lapuyade et al.
`
`2003
`
`The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`
`2004 Declaration of Sharon Lee
`
`2005
`
`CV of Dr. George Ligler [NEW]
`
`2006 Deposition Transcript of Dr. Daniel R. Olsen, Jr. (Nov. 17, 2017) [NEW]
`
`2007 Declaration of Dr. George Ligler [NEW]
`
`
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`I.
`
`Introduction
`
`Patent Owner BlackBerry Limited (“Patent Owner”) submits this Response
`
`to the Petition for inter partes review (Paper 1, “Pet.”) of U.S. Patent No.
`
`8,745,149 (“’149 patent”). In its Institution Decision (Paper 7, “Dec.”), the Board
`
`instituted trial on four grounds of unpatentability: (1) claims 1-5, 9-13, and 17 as
`
`obvious over Appelman and Toshio; (2) claims 1, 5-7, 9, 13-15, and 17 as obvious
`
`over Appelman and Milton; (3) claims 8 and 16 as obvious over Appelman,
`
`Toshio, and MacPhail; and (4) claims 8 and 16 as obvious over Appelman, Milton,
`
`and MacPhail. Dec. 19-20. For the reasons discussed below, Petitioner Google
`
`LLC (“Petitioner”) has failed to meet its burden of proving, by a preponderance of
`
`the evidence, that any of claims 1-17 are unpatentable. See 35 U.S.C. § 316(e).
`
`First, none of the references advanced by Petitioner disclose “automatically
`
`changing … and displaying” time information under the correct interpretation of
`
`that phrase. Toshio discloses a manually-initiated display function, and Milton
`
`discloses a manually-initiated audio reporting function and does not display
`
`anything. Dr. Olsen also repudiated any “backup” argument advanced by
`
`Petitioner during his deposition.
`
`Second, one of ordinary skill in the art would not have combined Appelman
`
`with either Toshio or Milton. Neither of those references relate to the dynamic,
`
`urgent, and interactive framework of Appelman. Petitioner’s “precision”
`
`1
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`motivation is also driven by hindsight, and it advances no probative evidence that
`
`one of ordinary skill in the art would have been concerned with days-old instant
`
`messages. Moreover, Milton is non-analogous art to the ’149 patent. For all these
`
`reasons, Petitioner’s challenge fails.
`
`II. The ’149 Patent
`A. Overview of the ’149 Patent
`
`Portable handheld devices available by 2003 were capable of numerous
`
`types of communication, including instant messaging. Ex. 1001, 1:39-44. Instant
`
`messaging enables a first device to send a message on a more or less instantaneous
`
`basis to a second device. Id., 1:40-44. The ’149 patent describes an improved
`
`handheld electronic device that provides time data regarding certain aspects of a
`
`messaging conversation to a user. Id., 2:9-15. Time data for instant messages can
`
`be provided, for example, in situations where an interruption has occurred during a
`
`messaging conversation, or on demand in certain circumstances. Id. Figure 9
`
`illustrates one example of the functionality provided by the ’149 patent.
`
`2
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`
`
`Id., Fig. 9.
`
`Figure 9 shows an embodiment where time stamps are provided in a fashion
`
`that saves space on the display of a handheld device. Ex. 1001, 7:10-11. Messages
`
`are output without displayed time stamps, but upon moving a cursor or other
`
`pointing device in proximity to a given message a corresponding requested time
`
`stamp is output adjacent to the message. Id., 7:11-16. This allows messages to be
`
`displayed initially without time stamps, but if a time stamp is desired it can be
`
`readily output. Id., 7:16-26.
`
`Figure 10 shows another example of the functionality provided by the ’149
`
`patent in the form of a smart and active time stamp.
`
`3
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`
`
`Id., Fig. 10.
`
`
`
`As shown in Figure 10, the ’149 patent describes smart time stamps that
`
`provide additional information depending upon the prevailing circumstances. Ex.
`
`1001, 7:37-40. If a first time stamp was output and the conversation was not
`
`resumed until the following day, for example, the first time stamp could be
`
`configured to automatically change from being displayed as “2:44 pm” to “2:44
`
`PM Sep. 17, 2004,” or even “2:44 pm yesterday.” Id., 7:40-50. The first time
`
`stamp can also change as time progresses, such as by progressively changing from
`
`displaying “less than one minute ago” to displaying “one minute ago,” “two
`
`minutes ago,” etc., id., 7:59-64. These time stamps can also change from
`
`displaying relative times to displaying absolute times after the expiration of a given
`
`4
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`time duration, such as changing from displaying “fifty-nine minutes ago” to “2:54
`
`pm.” Id., 7:64-8:5.
`
`Independent claims 1, 9, and 17, respectively, recite a method, an electronic
`
`device, and a non-transitory computer readable medium related to this disclosure.
`
`Claim 1 is recited 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.
`
`B.
`
`Priority Date and Relevant Prosecution History
`
`The ’149 patent was filed on September 13, 2012, and is a continuation of
`
`U.S. Patent No. 8,301,713, itself a continuation of U.S. Patent No. 7,970,849, each
`
`of which claims priority to Provisional application No. 60/504,379, filed on
`
`September 19, 2003. The ’149 patent is entitled to at least this priority date, which
`
`Petitioner has not challenged. See Pet. 3.
`
`The Examiner initially rejected the claims as obvious over U.S. Patent No.
`
`7,181,497 to Appelman (Ex. 2001) in view of U.S. Patent No. 7,219,109 to
`5
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`Lapuyade (Ex. 2002). Ex. 1004, 245-47. Appelman discloses a messaging
`
`application user interface designed to auto-complete partially entered addresses,
`
`Ex. 2001, Figs. 17-18, 9:49-67, but the Examiner concluded it did not disclose the
`
`final two limitations of original claim 1:
`
`changing the first time information for the instant message to a
`second time information as time progresses; and
`
`displaying the second time information in response to a second
`input.
`
`Ex. 1004, 245.
`
`The Examiner argued that these features would have been obvious in view
`
`of Lapuyade’s disclosure of “displaying time and time zone information as a result
`
`of user input when a change in time zone has occurred,” i.e., a manually initiated
`
`action. Id., 246 (citing Ex. 2002, Fig. 7, 6:21-43). Lapuyade discloses a “Time
`
`Zone Alert!” that allows a user to change the displayed time zone, as well as a time
`
`zone button:
`
`6
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`
`
`Ex. 2002, Fig. 7. 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.” Id., 6:21-43.
`
`In response, Patent Owner amended the claims to (1) combine “changing the
`
`first time information …” and “displaying the second time …” clauses into a single
`
`step, and (2) clarify that the entire step happens “automatically … as time
`
`progresses,” rather than, for example, “in response to a second input”:
`
`7
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`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; and
`
`displaying the second time information in response to a second
`input.
`
`Ex. 1004, 233. Thus, both the “changing” and “displaying” are modified by
`
`“automatically.” Patent Owner pointed to the ’149 patent’s disclosure of smart and
`
`active time stamps as support for this amendment. Id., 236 (citing id., 380-381
`
`(¶¶52-54), 393 (Fig. 10), which corresponds to Ex. 1001, 7:34-8:5, Fig. 10).
`
`Patent Owner explained that “[c]laim 1 has been amended to clarify the
`
`protection being sought by combining the final two operations and specifying that
`
`the ‘changing’ [i.e., the combined operations] is done automatically.” Ex. 1004,
`
`236 (emphasis added). Patent Owner explained that “none of the cited references
`
`teach or suggest such an automatic changing of time information,” i.e.,
`
`“automatically changing the first time information … as time progresses and
`
`displaying the second time information instead of the first time information.” Id.,
`
`237. In other words, Patent Owner characterized its amendment as requiring that
`
`the combined step of “changing” and “displaying” occurs “automatically … as
`
`time progresses,” and thus distinguished the manually initiated display change
`
`disclosed by Lapuyade and relied upon by the Examiner. Id., 236.
`
`8
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`In response to Patent Owner’s argument that Lapuyade’s user selection
`
`prompt did not render obvious “automatically changing … as time progresses and
`
`displaying,” the Examiner responded by advancing the theory that such a
`
`distinction was obvious in view of the “knowledge generally available to one of
`
`ordinary skill in the art.” Ex. 1004, 214-15 (emphasis omitted). Patent Owner
`
`argued in its appeal brief that “[t]he Examiner must provide a factual basis for each
`
`of the claimed features of a rejected claim,” id., 68, and that Lapuyade merely
`
`“shows a prompt allowing the user to select an option to change to a new time
`
`zone,” id., 70. Patent Owner argued that it was “unclear … how such a feature
`
`would suggest automatically changing time information” in the context of the
`
`claims. Id. The Examiner accepted this argument—rather than maintaining this
`
`rejection on appeal, the Examiner allowed the claims “based on applicant’s
`
`Arguments in the Appeal Brief ….” Id., 18.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`The ’149 patent explains its relevant field as follows: “The invention relates
`
`generally to handheld electronic devices and, more particularly, 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.
`
`One of ordinary skill in the art in the field of the ’149 patent would have at least a
`
`bachelor’s degree in computer science, electrical engineering, or the equivalent,
`
`9
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`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. Declaration of Dr. George Ligler (Ex. 2007), ¶41.
`
` Petitioner’s level of skill in the art, however, mischaracterizes the ’149
`
`patent’s field of invention as generic graphical user interfaces: “A person of
`
`ordinary skill in the art at the time of the alleged invention 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.” Pet. 5 (emphasis added); Ex. 2007, ¶42.
`
`III. Claim Construction
`
`Under the broadest reasonable interpretation standard, claims are evaluated
`
`using the plain and ordinary meaning of their words from the perspective of a
`
`person of ordinary skill in the art in the context of the entire patent disclosure.
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015),
`
`overruled on other grounds, Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
`
`2017) (en banc). In an inter partes review, this meaning requires consideration of
`
`the prosecution history: “The PTO should also consult the patent’s prosecution
`
`history in proceedings in which the patent has been brought back to the agency for
`
`a second review.” Id. (citing Tempo Lighting Inc. v. Tivoli LLC, 742 F.3d 973, 978
`
`10
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`(Fed. Cir. 2014)). This includes giving weight to clarifying amendments made
`
`during the original prosecution. Tempo Lighting, 742 F.3d at 977-78.
`
`A.
`
`“First Input” (All Claims)
`
`Independent claims 1, 9, and 17 recite “first input.” Petitioner proposes that
`
`“first input” should be interpreted to mean “any event detected by the electronic
`
`device.” Pet. 13. The precise metes and bounds of this term does not appear
`
`relevant to the issues raised by this proceeding, so the Board need not construe it.
`
`B.
`
`“Automatically Changing … and Displaying” (All Claims)
`
`Independent claims 1, 9, and 17 recite “automatically chang[ing] the first
`
`time information for the instant message to a second time information as time
`
`progresses and display the second time information instead of the first time
`
`information.” The Petition’s patentability challenges (1) read “automatically” out
`
`of the claim by mapping this step to manually initiated actions (Pet. 19-26, 41-45),
`
`and (2) analyze the “automatically changing … and displaying” as if it were two
`
`separate steps, only the first of which occurs “automatically” (id., 24-25, 44-45).
`
`In both cases, Petitioner seeks to ignore or undo the claim amendments Patent
`
`Owner made to obtain allowance of the ’149 patent. Neither of these mappings
`
`comport with what one of ordinary skill in the art would consider the plain and
`
`ordinary meaning and broadest reasonable interpretation of the phrase in light of
`
`the intrinsic record as a whole.
`
`11
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`In its Institution Decision, the Board adopted Patent Owner’s proposed
`
`construction from the Preliminary Response, and it should do so again. See Dec.
`
`5-6. The Board, however, added one clarification: “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.”
`
`Dec. 8. On its face, this clarification is reasonable; Patent Owner does not argue
`
`that other, prior operations unrelated to the “changing” and “displaying” of time
`
`information cannot be manually initiated. As applied by the Board, however, it
`
`operates to undo the requirement of “automatically … displaying,” as explained
`
`below.
`
`i.
`
` “Automatically” Means Not Manually Initiated
`
`The broadest reasonable interpretation of an “automatic” operation is one
`
`not manually initiated. Petitioner advances an implicit construction of
`
`“automatically” that would cover manually initiated operations. See §§ IV.A
`
`below. This implicit construction reads “automatically” out of the claims and
`
`conflicts with their plain and ordinary meaning.
`
`This distinction is evident in the plain and ordinary meaning of “automatic”
`
`in the context of the ’149 patent and the claims. “Automatic” has a well-known
`
`common meaning: “[a]cting or operating in a manner essentially independent of
`
`external influence or control.” E.g., The American Heritage College Dictionary
`
`12
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`(4th Ed. 2004) (Ex. 2003), 96-97. In this context, a manually initiated action is not
`
`“automatically” performed. Claim 1 confirms this understanding by distinguishing
`
`between (1) certain types of operations (“displaying a first time information … in
`
`response to a first input”) which in certain situations could be manual (e.g., claim
`
`8’s “detecting a pointing device”) and (2) automatic operations without manual
`
`initiation (“automatically changing … as time progresses and displaying the
`
`second time information”). The plain and ordinary meaning of an “automatic”
`
`operation is one not manually initiated.
`
`This understanding is confirmed by the ’149 patent’s specification, which
`
`distinguishes a user “manually caus[ing] the output of an inserted time stamp”
`
`from a smart time stamp “configured to automatically change” from a first display
`
`to a second, such as by “chang[ing] as time progressed.” Ex. 1001, 6:19-23, 7:40-
`
`8:5. This functionality directly corresponds to the claims. Compare Ex. 1001,
`
`Claims 1 & 8 (manual operation: “displaying … in response to … detecting a
`
`pointing device”) with the third limitation of Claim 1 (automatic operation:
`
`“automatically changing the first time information … as time progresses and
`
`displaying …”). For example, the ’149 patent discloses that “upon moving a cursor
`
`… or other pointing device … a corresponding requested time stamp is output
`
`adjacent the message,” while “in accordance with another aspect of the invention, a
`
`given time stamp may be a smart time stamp and … be configured to automatically
`
`13
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`change from being displayed” one way to another way. Ex. 1001, 7:10-50. These
`
`are the same portions of the ’149 patent’s disclosure relied upon by Patent Owner
`
`when it made the original amendment. Ex. 1004, 236 (citing id., 380-381 (¶¶52-
`
`54), 393 (Fig. 10), which corresponds to Ex. 1001, 7:34-8:5, Fig. 10).
`
`Patent Owner added the “automatic” requirement to its claims during
`
`prosecution to successfully overcome prior art cited by the Examiner. Specifically,
`
`Patent Owner amended the claims to recite “automatically changing … as time
`
`progresses” and combined the “automatically” language with the second
`
`“displaying” step to overcome a rejection that relied on disclosure of a user
`
`manually selecting an option that results in new time information being displayed.
`
`Ex. 1004, 233-39. The Examiner allowed the patent based on this argument. Id.,
`
`18, 70-71. Any construction of “automatically” that would reverse this
`
`amendment and cover manually-initiated “changing” and “displaying” would
`
`render Patent Owner’s amendment superfluous, and the Examiner’s subsequent
`
`allowance based on this amendment nonsensical.
`
`The patent owner in Tempo Lighting, 742 F.3d at 976-78, had likewise
`
`amended its claims in response to an Office action, explained why the amendments
`
`had clarified the Office’s concerns, and obtained allowance of its claims. There,
`
`the Federal Circuit found that the prosecution history in such a case supported a
`
`claim construction commensurate with the patent owner’s representations to the
`
`14
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`office. Id. at 978. Here, like in Tempo Lighting, Patent Owner amended the ’149
`
`patent in response to a rejection that relied on manually initiated changing of time
`
`information, explained the claims no longer covered such a feature, and the
`
`Examiner subsequently allowed the patent based on these actions.
`
`Other cases that have interpreted “automatically” more broadly are
`
`inapposite, and instead illustrate why Petitioner’s mapping is improper. In
`
`CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005)
`
`(citation omitted), the Federal Circuit affirmed a construction of “automatically” as
`
`meaning “once initiated, the function is performed by a machine, without the need
`
`for manually performing the function.” The technology at issue in that proceeding,
`
`however, involved a variety of manual actions, with the claimed invention
`
`automating only some. Id., 1228. Conversely, the ’149 patent’s innovation was to
`
`automate the only relevant action: causing the output of a changed time stamp. Ex.
`
`1001, 6:19-23, 7:40-8:5. The understanding of “automatically” must therefore be
`
`considered in the specific context of the claimed invention.
`
`Interpreting claim 1’s “automatically changing … and displaying” step as
`
`covering manually initiated functionality would thus eviscerate the amendments
`
`Patent Owner made during prosecution to “clarify the protection being sought,” see
`
`Ex. 1004, 236, as well as Patent Owner’s efforts to “particularly point[] out and
`
`distinctly claim[] the subject matter which the inventor … regards as the
`
`15
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`invention.” 35 U.S.C. § 112(b) (pre-AIA). Petitioner’s proposed interpretation
`
`conflicts with the plain and ordinary meaning of the claims and cannot be the
`
`broadest reasonable interpretation. See Proxyconn, Inc., 789 F.3d at 1298.
`
`The broadest reasonable interpretation of an operation performed
`
`“automatically,” in view of the intrinsic record as a whole, is one not manually
`
`initiated. The Board preliminary adopted this requirement, and should maintain it
`
`in the final written decision. See Dec. 5-8.
`
`ii.
`
`The Claims Require “Automatically Changing” and
`“Automatically … Displaying”
`
`The broadest reasonable interpretation of the “automatically chang[ing] …
`
`and displaying” step as a whole requires “automatically changing” and
`
`“automatically … displaying.” Petitioner advances an implicit construction of this
`
`step as requiring only “automatically changing,” with no requirement that the
`
`claimed “displaying” occur “automatically.” See Pet. 24-25, 44-45.
`
`The prosecution history, however, mandates this interpretation because
`
`Patent Owner amended the claims to clarify this requirement. In response to the
`
`Examiner’s reliance on the Lapuyade reference, Patent Owner amended the claims
`
`as follows:
`
`automatically changing the first time information for the instant
`message to a second time information as time progresses and
`
`16
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`displaying the second time information instead of the first time
`information; and
`
`displaying the second time information in response to a second
`input.
`
`Ex. 1004, 233; see id., 246. The original claims recited “displaying the second
`
`time information in response to a second input,” but the amendment dropped any
`
`reference to “in response to a second input” and made the “displaying the second
`
`time information” limitation part of the “changing” step. Id. It also clarified that
`
`both happen “automatically.” Id. Patent Owner relied on the ’149 patent’s
`
`disclosure of smart and active time stamps as support for this amendment. Id., 236
`
`(citing id., 380-381 (¶¶52-54), 393 (Fig. 10), which corresponds to Ex. 1001, 7:34-
`
`8:5, Fig. 10).
`
`The automatic changing and display of updated time information is also the
`
`only understanding taught by the specification: “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’ ….” Ex. 1001, 7:40-50 (emphasis
`
`added). This can occur “as time progresse[s],” where the time stamp is
`
`“progressively change[d]” from displaying “less than one minute ago” to saying
`
`“one minute ago,” etc. Id., 7:59-8:3.
`
`17
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Response
`
`Petitioner’s theory of the claims would, again, undo Patent Owner’s
`
`amendment and revert the claims to their pre-amendment state. The broadest
`
`reasonable interpretation of the “automatically chang[ing] … and displaying” step
`
`as a whole requires “automatically changing” and “automatically … displaying.”
`
`The Board preliminary adopted this requirement, and should maintain it in the final
`
`written decision. See Dec. 5-8.
`
`iii.
`
`The Board’s Clarification Reads Out the “Automatically …
`Displaying” Requirement
`
`In its Institution Decision, the Board adopted Patent Owner’s proposed
`
`construction from the Preliminary Response, and it should do so again. See Dec.
`
`5-6. The Board, however, clarified “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.” Dec. 8. On its face, this clarification is reasonable; Patent Owner does
`
`not argue that other, prior operations unrelated to the “changing” and “displaying”
`
`of time information cannot be manually initiated. As applied by the Board,
`
`however, it operates to undo the requirement of “automatically … displaying.”
`
`The Board cited the ’149 patent’s disclosure of “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’ ….” Ex. 1001, 7:40-50. In
`18
`
`

`

`IPR2017-00911 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Respon