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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`BLACKBERRY LTD.,
`Patent Owner.
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`_________________
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`Case IPR2017-00912
`Patent 8,745,149 B2
`_________________
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`PETITIONER’S REPLY
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`IPR2017-00912
`Patent 8,745,149 B2
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`I.
`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`CLAIM CONSTRUCTION ............................................................................ 1
`The Board Should Adopt the Plain and Ordinary Meaning of
`A.
`“Automatically,” which Is “by Itself with Little or No Direct
`Human Control” .................................................................................... 2
`The Intrinsic and Extrinsic Evidence Supports
`1.
`Petitioner’s Plain and Ordinary Meaning ................................... 2
`PO’s Construction Should Be Rejected Because It Is
`Inconsistent with the Intrinsic Record and Vague ...................... 6
`“Automatically” Does Not Modify “Displaying” ................................. 8
`B.
`III. THE CHALLENGED CLAIMS ARE OBVIOUS ....................................... 11
`A. Graham Discloses Communicating Mixed Media Messages via
`SMS Instant Messages ........................................................................ 11
`It Would have been Obvious to Communicate Mixed Media
`Messages via non-SMS Instant Messaging Based on Deshpande ...... 14
`C. Graham Discloses the “Automatically Changing” and
`“Displaying” Limitations Under Any Construction ............................ 15
`Graham Discloses the “Automatically Changing” and
`1.
`“Displaying” Limitations Under Petitioner’s and the
`Board’s Interpretations .............................................................. 15
`Graham Discloses the “Automatically Changing” and
`“Displaying” Limitations Under PO’s Construction ................ 16
`PO Previously Argued During Foreign Prosecution that
`the Patent Application Publication Leading to Graham
`Discloses Automatically Displaying Changed Time
`Information ................................................................................ 20
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`B.
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`2.
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`2.
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`3.
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`Patent 8,745,149 B2
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`E.
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`F.
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`2.
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`2.
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`D.
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`The Graham-Toshio Combination Discloses the “Automatically
`Changing” and “Displaying” Limitations Under Any
`Construction ........................................................................................ 22
`PO Does Not Contest That the Graham-Toshio
`1.
`Combination Discloses the “Automatically Changing”
`and “Displaying” Limitations Under Petitioner’s and the
`Board’s Interpretations .............................................................. 22
`The Graham-Toshio Combination Discloses the
`“Automatically Changing” and “Displaying” Limitations
`Under PO’s Construction .......................................................... 23
`The Graham-Milton Combination Discloses the “Automatically
`Changing” and “Displaying” Limitations Under Petitioner’s
`and the Board’s Interpretations ........................................................... 25
`The “Displaying” Limitation Is Also Obvious Under PO’s
`Construction ........................................................................................ 26
`G. Milton Is Analogous Art ...................................................................... 27
`The ’149 Patent and Milton are from the Same Field of
`1.
`Endeavor ................................................................................... 27
`The ’149 Patent and Milton Relate to the Same Problem
`of Indicating Time Information ................................................ 29
`IV. CONCLUSION .............................................................................................. 30
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`Patent 8,745,149 B2
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`TABLE OF AUTHORITIES
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` Page(s)
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`Federal Cases
`Application of Glasser, 363 F.2d 449 (CCPA 1966) ............................................... 24
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .......................................................................... 14
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 28
`HTC Corp. v. IPCom GmbH & Co.,
`667 F.3d 1270 (Fed. Cir. 2012) ............................................................................ 8
`Innovention Toys, LLC v. MGA Entm’t, Inc.,
`637 F.3d 1314 (Fed. Cir. 2011) .......................................................................... 29
`Powell v. Home Depot U.S.A., Inc.,
`663 F.3d 1221 (Fed. Cir. 2011) ............................................................................ 6
`In re Power Integrations, Inc.,
`No. 2017-1304, 2018 WL 1370551 (Fed. Cir. Mar. 19, 2018) ............................ 7
`Tehrani v. Hamilton Medical, Inc.,
`331 F.3d 1355 (Fed. Cir. 2003) ............................................................................ 6
`Unwired Planet, LLC v. Google Inc.,
`841 F.3d 995 (Fed. Cir. 2016) ............................................................................ 28
`Other Authorities
`William Strunk, Jr. & E.B. White, The Elements of Style 30 (4th ed.
`2000) ..................................................................................................................... 8
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`Patent 8,745,149 B2
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`LIST OF EXHIBITS
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`Ex. 1001
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`U.S. Patent No. 8,745,149
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`Ex. 1002
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`Declaration of Dr. Dan R. Olsen Jr.
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`Ex. 1003
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`CV of Dr. Dan R. Olsen Jr.
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`Ex. 1004
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`File History of U.S. Patent No. 8,745,149
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`Ex. 1005
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`RESERVED
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`Ex. 1006
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`U.S. Patent No. 5,631,949 (“Milton”)
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`Ex. 1007
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`JP Patent Application No. H03-89639 (“Toshio”)
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`Ex. 1008
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`RESERVED
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`Ex. 1009
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`U.S. Patent No. 6,661,434 (“MacPhail”)
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`Ex. 1010
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`File History of U.S. Patent No. 9,385,973
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`Ex. 1011
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`Ex. 1012
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`BlackBerry’s Opposition to Motion to Dismiss in BlackBerry LTD.
`v. BLU Prods., Inc., Case No. 1:16-cv-23535 (S.D. Fla.)
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`International Publication No. WO 01/24036 (“Appelman”)
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`Ex. 1013
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`Caroline Rose et al., “Inside Macintosh Volume 1” (1985)
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`Ex. 1014
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`U.S. Patent No. 8,554,859
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`Ex. 1015
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`RESERVED
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`Ex. 1016
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`RESERVED
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`Ex. 1017
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`RESERVED
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`Ex. 1018
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`Deposition Transcript of Dr. George T. Ligler (March 2, 2018)
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`Patent 8,745,149 B2
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`Ex. 1019
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`International Publication No. WO 02/21413
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`Ex. 1020
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`International Publication No. WO 02/065250
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`Ex. 1021
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`Oxford English Reference Dictionary (2nd ed. 2003)
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`Ex. 1022
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`File History of European Patent No. 1668824
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`Ex. 1023
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`U.S. Patent Application Publication No. 2003/0060240 (“Graham
`Publication”)
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`v
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`IPR2017-00912
`Patent 8,745,149 B2
`I.
`INTRODUCTION
`Petitioner replies to Patent Owner’s (PO) Response (Paper 17, “Resp.”) and
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`the Board’s decision to institute IPR (Paper 7, “Dec.”) of the ’149 patent. PO’s
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`arguments should be rejected and claims 1-17 of the ’149 patent found
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`unpatentable for at least the reasons set forth in the Petition (Paper 1, “Pet.”) and
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`accompanying exhibits, and the additional reasons provided below.
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`II. CLAIM CONSTRUCTION
`PO proposes a vague construction of “automatically” and wrongly argues
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`that this term modifies both the “changing” and “displaying” limitations.1 (Resp.,
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`9-18.) The Board agreed with PO’s constructions for purposes of institution, with
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`the important clarification that “other prior operations can be manually initiated.”
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`(Dec., 5-8.) While Petitioner agrees with the Board that other prior operations can
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`be manually initiated, PO’s constructions should be rejected in favor of the plain
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`and ordinary meaning of these terms under the BRI standard, as applied in the
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`Petition.2
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`1 Given there is no meaningful difference between claims 1, 9, and 17 for purposes
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`of this proceeding with respect to these limitations, for simplicity, Petitioner’s
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`analysis refers to the language of claim 1.
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`2 As discussed in the Petition, “first input” (claims 1, 9, and 17) should be
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`interpreted to mean “any event detected by the electronic device.” (Pet., 13-14.)
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`1
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`IPR2017-00912
`Patent 8,745,149 B2
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`A. The Board Should Adopt the Plain and Ordinary Meaning of
`“Automatically,” which Is “by Itself with Little or No Direct
`Human Control”
`The Board should adopt the plain and ordinary meaning of “automatically,”
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`as applied in the Petition, which is “by itself with little or no direct human control.”
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`1.
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`The Intrinsic and Extrinsic Evidence Supports Petitioner’s
`Plain and Ordinary Meaning
`Petitioner’s plain and ordinary meaning of “automatically” is consistent with
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`the intrinsic record. To begin, claim 1 states “automatically changing the first time
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`information for the instant message to a second time information as time
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`progresses and displaying the second time information instead of the first time
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`information.” Claims 9 and 17 recite similar limitations. No further details are
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`provided. Thus, while the claims offer little guidance, they use “automatically” in a
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`way that is consistent with Petitioner’s plain and ordinary meaning.
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`The specification, which applies Petitioner’s plain and ordinary meaning, is
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`more helpful. In the single instance where “automatically” is used, the
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`specification explains that time stamp 84 of FIG. 4 may “automatically” change “if
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`the conversation was not resumed until the following day.” (Ex. 1001, 7:40-50.) As
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`explained with respect to FIGS. 4-5, and admitted by PO’s expert, a conversation
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`While PO believes this term need not be construed, PO does not dispute
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`Petitioner’s interpretation. (Resp., 10.)
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`is resummed manuaally by a deevice user. (Id., 5:62--6:2; Ex. 1
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`018, 85:144-20.) Thuss,
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`althoughh the time stamp chaanges as a rresult of a
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`user manuually resumming a
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`converssation, the change is aautomatic bbecause it
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`direct human conttrol, consisstent with PPetitioner’
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`occurs by
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`itself withh little or noo
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`meaning.
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`Inn contrast, in the singgle instance where “mmanually”
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`is used, thhe specificaation
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`describees a user diirectly conntrolling the system ffor the purppose of dissplaying a ttime
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`stamp bby “manuallly” selectiing an option (“Insertt Time” in n FIG. 6a) tto display ttime
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`stamp 998 (FIG. 6bb). (Id., 6:114-23.) Durring his deeposition, PPO’s experrt agreed thhat
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`this opeeration is mmanual. (Exx. 1018, 844:2-13.)
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`(Id., FIGGS. 6a-6b (annotatedd).) Accorddingly, connsistent witth Petitioneer’s plain aand
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`ordinaryy meaning of “autommatically,” tthe use of
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`“automaticcally” and
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`“manuallyy” in
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`the speccification cconvey thatt an operattion initiateed by direcct human ccontrol is
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`manuallly performmed and thaat an operattion may bbe automattically perfformed eveen if
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`it is the result of aa different pprior operaation that i
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`s manuallyy initiated.
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`Patent 8,745,149 B2
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`The prosecution history also supports Petitioner’s interpretation. During
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`prosecution, the applicant attempted to distinguish U.S. Patent No. 7,219,109
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`(“Lapuyade”) by amending claim 1 to recite “automatically changing the first time
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`information for the instant message to a second time information as time
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`progresses,” and by arguing that Lapuyade does not teach this limitation because
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`Lapuyade “shows a prompt allowing the user to select an option to change to a new
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`time zone.” (Ex. 1004, 231-39; id., 17-19, 68-72, 213-15.) As shown in FIG. 7 of
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`Lapuyade below, when a new time zone is detected, window 712 appears, in which
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`“[t]he user is offered the opportunity to accept the new time zone as the display
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`time zone” by “selecting button 724 or reject it by selecting button 730.” (Ex.
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`2002, 6:21-38.) Thus, to distinguish Lapuyade, the applicant amended the claims to
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`indicate that “changing” occurs “automatically” and represented to the PTO that
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`this limitation is not met by a user selecting a displayed button for the purpose of
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`changing a time, consistent with Petitioner’s plain and ordinary meaning of
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`“automatic.”
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`(Id., FIGG. 7 (annottated).)
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`also osecution aNNumerous pprior art reeferences cited by thee applicant during pro
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`confirmm this meanning of “auutomaticallyy.” (See, ee.g., id., 33
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`0 (citing Innternationaal
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`Publicattion Nos. WWO 02/214413 and WWO 02/0652250).) For
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`Publicattion No. WWO 02/21413 explainns that “in rresponse”
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`example, IInternationnal
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`to “the useer open[ingg]
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`the messsage” the ccontents off the appliccation “aree automatiically dynaamically
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`updatedd from a server.” (Ex.. 1019, 30 (emphasiss added); idd., 7, 51; EEx. 1020,
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`[0144] ((“automatiically direccted”).) Thhus, the citeed prior artt describess operationns
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`that are automaticcally perforrmed in ressponse to pprior manuual operatioons. This iss
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`further intrinsic evidence that Petitioner’s plain and ordinary meaning of
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`“automatically” should be adopted over PO’s construction, which is inconsistent
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`with the use of this term in the prior art. See Powell v. Home Depot U.S.A., Inc.,
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`663 F.3d 1221, 1230-31 (Fed. Cir. 2011).
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`Finally, Petitioner’s plain and ordinary meaning is also supported by
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`contemporaneous dictionary definitions. For example, the Oxford English
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`Reference Dictionary defines “automatically” as “working by itself, without direct
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`human intervention.” (Ex. 1021, 3 (emphasis added).) Unlike PO’s proffered
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`dictionary definition, this definition is consistent with the intrinsic record, and
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`therefore is a better indicator of the true meaning and scope of “automatically” in
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`the claims. See Tehrani v. Hamilton Medical, Inc., 331 F.3d 1355, 1361 (Fed. Cir.
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`2003).
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`2.
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`PO’s Construction Should Be Rejected Because It Is
`Inconsistent with the Intrinsic Record and Vague
`PO’s claim construction analysis begins by cherry-picking a dictionary
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`definition and calling it the “well-known common meaning” of “automatic.”
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`(Resp., 10-11.) Based on this definition, PO concludes that “a manually initiated
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`action is not ‘automatically’ performed.” (Id.) Only then did PO look to the
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`intrinsic evidence. (Id., 11-12.) This approach to claim construction is
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`fundamentally flawed.
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`Patent 8,745,149 B2
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`By starting with a dictionary definition to determine the meaning of
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`“automatically,” PO improperly limits the role of intrinsic sources. As a result, PO
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`transformed the meaning of “automatically” to a POSA to the meaning of the term
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`in the abstract, out of its particular context. As a result, PO’s construction is vague
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`and does little if anything to delineate the metes and bounds of the claim. See In re
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`Power Integrations, Inc., No. 2017-1304, 2018 WL 1370551, at *3-6 (Fed. Cir.
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`Mar. 19, 2018) (rejecting the Board’s construction because it was based on a
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`dictionary definition instead of intrinsic evidence).
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`PO’s arguments that the intrinsic record supports its construction also fall
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`short. PO contends that the claims and specification confirm its construction by
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`distinguishing between manual and automatic operations (Resp., 11-12), but there
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`is no dispute that manual and automatic operations are different. The dispute is
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`whether “automatically” means that other prior operations cannot be manually
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`initiated. As discussed above, neither the claims nor the specification indicates that
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`it does.
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`In fact, the portions of the specification cited by PO support Petitioner’s
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`plain and ordinary meaning. (See id., 11-12.) As discussed above, the specification
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`describes a time stamp that “automatically” changes in response to a user resuming
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`the conversation the following day (Ex. 1001, 7:40-50), and a time stamp that is
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`“manually” displayed in response to a user selecting an option to display the time
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`7
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`stamp (id., 6:14-23, FIG. 6a-6b). The only distinction between these two
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`operations is that the manual operation is initiated by direct human control and the
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`automatic operation is not.
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`PO also suggests that Petitioner’s interpretation would render PO’s
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`amendment during prosecution “superfluous.” (Resp., 12.) The portions of the
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`prosecution history file cited by PO, however, only confirm the above distinction
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`between manual and automatic operations. As discussed above, to distinguish
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`Lapuyade, the applicant amended the claims to indicate that “changing” occurs
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`“automatically” and represented to the PTO that this limitation is not met by a user
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`directly changing a time by selecting a displayed button. (See, e.g., Ex. 1004, 70-
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`71, 231-39.)
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`B.
`“Automatically” Does Not Modify “Displaying”
`PO’s argument that “automatically” modifies both the “changing” and
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`“displaying” limitations is flawed for several reasons.
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`First, “automatically” appears immediately before “changing” but not
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`“displaying.” Grammatically, modifiers should be placed next to the words they
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`modify to avoid ambiguity. William Strunk, Jr. & E.B. White, The Elements of
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`Style 30 (4th ed. 2000); see also HTC Corp. v. IPCom GmbH & Co., 667 F.3d
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`1270, 1274-75 (Fed. Cir. 2012). Applying this grammatical principle here,
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`“automatically” only modifies “changing.” Had the claim drafter intended
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`“automatically” to also modify “displaying,” the drafter likely would have also
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`included the modifier immediately before “displaying.” Having not done so, the
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`claims should be interpreted so that “automatically” does not modify “displaying.”
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`The prosecution history supports this understanding by repeatedly and
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`explicitly stating that “the ‘changing’ is done automatically”—but not the
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`“displaying.” (Ex. 1004, 236; id., 237 (“automatic changing”), 238 (“automatically
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`changing”), 70 (same), 71 (“particularly when Appelman does not mention
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`changing timestamps (let alone automatically as recited in claim 1)”), 70
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`(“automatically changing”), 71 (“automatic change”), 72 (“automatically
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`changing”), 72 (“automatically changing”).)
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`Despite these explicit statements, PO contends that the prosecution history
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`mandates its claim interpretation because the original claims were amended to
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`combine the “changing” and “displaying” limitations into one clause and to
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`remove any reference to the “displaying” limitation occurring “in response to a
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`second input.” (Resp., 16-17.) This argument, however, elevates form over
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`substance. Without more, simply merging the “changing” and “displaying” clauses
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`by removing a semicolon and injecting the word “and” does not change the
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`meaning of the claim language. It is the words of the claim that matter, and the
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`claim amendments did not further alter those words beyond adding the modifier
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`“automatically” and removing the reference to “in response to a second input.”
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`However, the rules of grammar and the intrinsic evidence establishes that
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`“automatically” only modifies the “changing” limitation, as discussed above, and
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`removing “in response to a second input” only broadens the “displaying”
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`limitation.
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`PO also contends that the specification supports its proposed construction in
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`two places (Resp., 16-17), but in neither place does the specification indicate that
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`the time stamp is automatically displayed. First, the specification describes
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`displayed absolute time stamps that could “automatically” change “if the
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`conversation was not resumed until the following day.” (Ex. 1001, 7:40-50.) Here,
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`the specification does not indicate what triggers the display of the changed time
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`stamp. Indeed, in the two immediately preceding paragraphs, the specification
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`explains that a time stamp may not be displayed until activated by an input device
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`(and only temporarily). (Id., 7:10-33.)
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`Second, the specification describes relative time stamps that “could be
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`configured to…change as time progressed.” (Ex. 1001, 7:51-64.) This portion of
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`the specification, which does not use the word “automatically,” is describing an
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`event that may cause a time stamp to change (rather than display). What is more,
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`as shown in FIG. 10 below, this portion of the specification describes a relative
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`time stamp 478 that is “output” when “the message 468…has been activated by the
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`cursor 474.” (Ex. 1001, 7:53-58.) According to PO and its expert, displaying a time
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`stamp inn responsee to such a pointing ddevice is a mmanual opperation. (RResp., 11; EEx.
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`1018, 87:10-88:133, 90:11-911:18.)
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`(Ex. 10001, FIG. 100 (annotateed).)
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`III. TTHE CHAALLENGEED CLAIMMS ARE OOBVIOUSS
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`PPO’s Respoonse raises a handful of argumeents concerrning the pprior art; al
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`l are
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`unavailiing.
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`A. Grahham Disclooses Commmunicatingg Mixed MMedia Messsages via
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`SMSS Instant MMessages
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`As discusseed in the Peetition, Graaham’s miixed mediaa messaginng embodimment
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`disclosees “a conveersation of f instant meessages” beecause thee mixed meedia messaages
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`constituute a threadd of messagges that caan be commmunicated uusing SMSS. (Pet., 133-
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`15.) POO respondss that Grahham’s mixeed media mmessages arre not “insstant
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`IPR2017-00912
`Patent 8,745,149 B2
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`messages” because these messages “rel[y] on email, not SMS.” (Resp., 18-28.)
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`PO’s argument, however, is based only on text that appears in FIGS. 13a-13c
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`rather than Graham’s teachings as a whole, which establishes that one medium for
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`transmitting mixed media messages is SMS. (Id.)
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`PO argues that Graham’s mixed media messaging embodiment is limited to
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`email because FIGS. 13a-13c recite “Texting with bob_test using email.” (Id., 21-
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`25.) But the specification does not limit the medium for communicating mixed
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`media messages to email. For example, where the specification describes the
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`process for communicating mixed media messages, Graham does not state which
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`transport medium is used. (Ex. 1005, 14:15-15:56.) Likewise, FIG. 12, which
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`illustrates this process, does not indicate which transport medium is used. While
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`FIGS. 13a-13c mentions “email,” these figures merely illustrate “example screen
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`snapshots for the communication process of FIG. 12.” (Ex. 1001, 3:16-17
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`(emphasis added); id., 15:1-2.) Thus, at most, FIGS. 13a-13c indicate that email is
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`one medium for communicating mixed media messages—but it certainly is not the
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`only medium.
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`Indeed, Graham elsewhere describes that its invention includes a mobile
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`device 400 that communicates messages via various mediums, including SMS. For
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`example, referring to FIG. 1, Graham explains that Gateway 115 may be used to
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`translate exchanges of “SMS (short message service) messages.” (Id., 4:43-47; id.,
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`12
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`4:22-30.) With reference to FIG. 4, Graham explains that “device 400 may be
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`arranged to send and receive SMS messages.” (Id., 7:1-6; id., 7:28-31.) While PO
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`attempts to restrict these teachings to Graham’s “image-only embodiment” (Resp.,
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`22-23), these teachings are not specific to either the image messaging embodiment
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`or the mixed media messaging embodiment, which are described later.3 (See Ex.
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`1018, 146:15-150:8 (confirming that FIGS. 1 and 4 relate to both image and mixed
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`media messages).) And PO does not argue that SMS cannot be used to transmit
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`mixed media messages.4 Accordingly, considering all of Graham’s teachings, Dr.
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`Olsen concluded that Graham discloses communicating mixed media messages via
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`SMS. (Ex. 1002, ¶40.) PO’s disregard of these teachings violates the principle that
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`“[a] reference must be considered for everything it teaches by way of technology
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`3 That Graham states that device 400 may “send and receive SMS messages that
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`can include data representing an image” does not mean that SMS is described only
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`for use with image messages because Graham explains that mixed media messages
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`may have “image contents.” (Ex. 1005, 14:17-22; id., 14:50-55, 14:64-67, 15:15-
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`17.)
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`4 Presumably this is because mixed media messages may include, for example,
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`“textual and image contents,” “only textual content,” or “only image content” (Ex.
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`1005, 14:17-24; id., 15:50-56), which Graham explains can be transmitted via
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`SMS (id., 11:20-61).
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`13
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`and is not limited to the particular invention it is describing and attempting to
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`protect.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1076-77 (Fed. Cir. 2015)
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`(citation omitted).
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`B.
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`It Would have been Obvious to Communicate Mixed Media
`Messages via non-SMS Instant Messaging Based on Deshpande
`The Petition also presents Grounds 7-12, which describe how the instant
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`messaging terms would have been obvious based on Deshpande. (Pet., 60-62.) PO
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`argues that Petitioner’s reliance on Deshpande is insufficient because Graham’s
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`mixed media messaging embodiment “does not use SMS messages” (Resp., 29
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`(emphasis omitted)) and “Petitioner’s entire obviousness analysis is predicated on
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`comparing Deshpande’s non-SMS messaging to Graham’s SMS messaging” (id.,
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`30). However, PO’s characterization of Graham is wrong for the reasons discussed
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`above, but even if correct, the Petition sufficiently explains how these terms would
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`have been obvious based on Deshpande.
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`Contrary to PO’s allegations, the Petition does “identify the differences
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`between the claimed subject matter…and the prior references, and demonstrate that
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`the differences…would have been obvious.” (Id., 29-30 (internal quotation marks
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`and citations omitted).) The identified difference is that Graham does not disclose
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`the instant messaging terms, under the assumption that SMS messages are not
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`instant messages. (Pet., 60-61.) The Petition then describes several reasons
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`explicitly identified in Deshpande for why this difference would have been
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`14
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`obvious. For example, as discussed in the Petition, Deshpande explains that non-
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`SMS instant messaging was well known, could have been used with a wide variety
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`of devices, allows for presence awareness, and could have been achieved via the
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`Internet (e.g., cellular service is not required). (Id., 61-62.) Given these well-
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`known benefits of non-SMS instant messaging, whether the modification results in
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`replacing SMS or email messaging is irrelevant. Indeed, the portions of Deshpande
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`cited in the Petition describe these benefits as improvements over both SMS and
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`email messaging. (Id. (citing Ex. 1008, ¶¶[0006]-[0008], [0016]-[0017], [0028]-
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`[0029], [0039]); Ex. 1008, ¶¶[0004]-[0005].) Even PO and its expert acknowledge
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`the benefits of instant messaging over email. (Resp., 25-27; Ex. 2007, ¶¶59-62.)
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`C. Graham Discloses the “Automatically Changing” and
`“Displaying” Limitations Under Any Construction
`1.
`Graham Discloses the “Automatically Changing” and
`“Displaying” Limitations Under Petitioner’s and the
`Board’s Interpretations
`The Petition demonstrates—and PO and its expert do not dispute—that
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`Graham discloses the “automatically changing” and “displaying” limitations under
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`Petitioner’s plain and ordinary meaning. (Pet., 24-27; Resp., 31-43.) Accordingly,
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`under Petitioner’s plain and ordinary meaning, it is uncontested that Graham
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`discloses all of the limitations of the challenged claims.
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`If the Board agrees with PO that “automatically” modifies “displaying,” PO
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`also does not dispute that Graham discloses the “displaying” limitation under
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`15
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`either Petitioner’s plain and ordinary meaning of the term “automatically” or the
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`Board’s interpretation where “other prior operations can be manually initiated.”
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`(Dec., 8.) Thus, it is also uncontested that Graham discloses the challenged claims
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`if the Board maintains its construction of “automatically” or adopts Petitioner’s
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`plain and ordinary meaning.
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`2.
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`Graham Discloses the “Automatically Changing” and
`“Displaying” Limitations Under PO’s Construction
`The Petition demonstrates that it would have been obvious to modify
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`Graham to display first time information for instant messages in a conversation as
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`(i) an elapsed time, and/or (ii) a color that indicates age, and that Graham discloses
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`“automatically changing” such time information to a second time information as
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`time progresses and “displaying” the second time information instead of the first
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`time information. (Pet., 16-27.) PO argues that Graham does not disclose the
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`“automatically changing” and “displaying” limitations under its proposed
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`construction for either type of time information. PO’s arguments fail, however,
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`because they are centered on a faulty understanding of Graham.
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`PO argues that Graham does not disclose these claim limitations for an
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`elapsed time because “the user must manually request an update to the image
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`messages.” (Resp., 32-34 (citing Ex. 1005, 10:29-37).) As described with respect
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`to FIG. 10 and confirmed by PO’s expert, however, this “update” functionality
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`relates to receiving “new image messages” rather than updating previously
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`16
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`received messages. (Ex. 1005, 13:17-19; Ex. 1018, 165:14-166:18 (confirming that
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`the “update” functionality is for receiving “new image messages”), 173:21-176:12
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`(confirming that the teachings in Ex. 1005 at columns 10:29-37 and 13:17-46 are
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`interrelated).) That is, after a user has received an image message sent by another
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`user, the sending user may have updated its image message by selecting one or
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`more new images. (Ex. 1005, 13:17-27, FIG. 10; Ex. 1018, 156:3-157:2.)
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`Accordingly, the recipient user can “request and receive an update to any of the
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`image messages received.” (Ex. 1005, 10:32-37.) As shown in FIG. 10, an image
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`message server sends (step 630/650) only new image message(s) that it has
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`received and stored (step 610) upon receiving such a request (step 620/640). (Ex.
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`1018, 172:5-180:13 (confirming that the “update” functionality illustrated in FIG.
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`10 results in sending an image message to a recipient device only if both the image
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`message is new and the recipient device user requested an update).) Accordingly,
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`this functionality does not update an elapsed time for a previously received image
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`message, as PO contends.
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`This is further confirmed by the format of the image message illustrated in
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`FIG. 7, which shows that an image message includes “time information 1040” (Ex.
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`1005, 10:59-61) indicating “when the image message was sent” by a sending user
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`so that the “recipient mobile device” can “compute and display the amount of
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`elapsed time for the received image message” (id., 11:14-18 (emphasis added)).
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`17
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`(Id., 9:53-54, 10:29-32; Ex. 1018, 157:14-164:5 (confirming that the timestamp is
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`the time the message was sent).) Thus, a message received from the image message
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`server does not indicate a changed elapsed time. It indicates the time the message
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`was sent by the sending user, which never changes. The recipient device is
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`responsible for determining the elapsed time to display, which may automatically
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`change as time progresses. (Pet., 16-27.)
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`Moreover, even if PO is correct that a displayed elapsed time only changes
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`in response to receiving an update, Graham still disclose these limitations because
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`a user can enable the image server to automatically forward each new image
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`message to other users. (Ex. 1005, 13:47-14:11, FIG. 11; Ex. 1018, 171:8-172:4.)
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`PO argues that Graham does not disclose these claim limitations for a color
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`that indicates age because illuminator 450 will illuminate
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