Paper No. 27
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00912
`U.S. Patent No. 8,745,149
`
`––––––––––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00912
`U.S. Patent No. 8,745,149
`
`––––––––––––––––––
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`IPR2017-00912 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Sur-Reply
`
`Petitioner’s Reply incorrectly argues that statements from the prosecution of
`
`related European Patent No. 1668824 (Ex. 1022) contradict Patent Owner’s
`
`arguments in this proceeding, and that those statements confirm that Graham’s
`
`“displayed elapsed time and color automatically change as time progresses . . . .”
`
`Paper 20 at 20-21. Petitioner’s Reply mischaracterizes Patent Owner’s arguments
`
`and ignores the differences in claim language between the two proceedings.
`
`Patent Owner argued in the European proceeding that the Graham
`
`application did not condition the initial display of a time stamp on an elapsed time
`
`or predetermined user input. Ex. 1022, 136-38. Conversely, Patent Owner argued
`
`in this proceeding that Graham does not automatically change and update an
`
`already-displayed time stamp as time progresses. Paper 17 at 31-43. Across both
`
`proceedings, Patent Owner’s position is consistent: Graham displays a time display
`
`with a message, but does not automatically update that displayed time.
`
`Petitioner selectively quotes Patent Owner’s February 5, 2008
`
`correspondence in the European proceeding to imply otherwise, and omits the
`
`context of those quotations. Paper 20 at 20-21 (quoting Ex. 1022, 136-38). The
`
`claims at issue there involved two distinct “outputting” steps: a first “outputting”
`
`step where a portion of a first messaging communication is displayed, and a second
`
`“outputting” step where a time stamp of the conversation is displayed responsive to
`
`“determining that a predetermined period of time has elapsed … without further
`
`1
`
`
`
`IPR2017-00912 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Sur-Reply
`
`communication between the first device and the second device.” Ex. 1022, 140.
`
`As Patent Owner explained, if a message is determined to be “non-responded-to”
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`for a period of time, “then and only then is a time stamp output on the receiving
`
`device to indicate the received time of the non-responded-to message.” Id., 135-
`
`36. This selective output is advantageous because it conserves the “limited space
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`on the display of the electronic device.” Id., 136. Patent Owner then explained
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`that Graham displays “relative age” information “regardless of whether any further
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`communications have taken place,” and cannot satisfy the claims. Id., 136-37.
`
`The issue in the European proceeding, therefore, was not whether Graham
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`automatically changes and updates time information (it does not), but whether
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`Graham displays an initial time stamp for a messaging communication only after
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`certain conditions had been met (it also does not). Petitioner quotes, for example,
`
`the following portion of Patent Owner’s explanation: “Of particular relevance here
`
`is the fact that in [the Graham application], this ‘relative age’ information is output
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`automatically, regardless of whether any further communications have taken
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`place.” Ex. 1022, 137 (emphasis added); Paper 20 at 21. Petitioner’s reliance on
`
`this sentence is misplaced—“automatically” was not a claim term at issue, so
`
`Patent Owner’s use of that word cannot be a concession the Graham application
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`discloses “automatically changing … and displaying” as claimed by the ’149
`
`patent. Patent Owner’s meaning in this sentence is also plain: the Graham
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`2
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`
`
`IPR2017-00912 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Sur-Reply
`
`application’s display of time information does not depend on whether any further
`
`communications have taken place. Ex. 1022, 136-37. That sentence says nothing
`
`about whether the Graham application automatically changes and displays the
`
`relative age of a message as time progresses. Earlier claims conditioned the
`
`second “outputting” step on “a predetermined input from a user,” and Patent
`
`Owner explained that this conditioned outputting functionality was not described
`
`by Graham. Ex. 1022, 222-25. Patent Owner consistently explained that the
`
`Graham application simply displays time information along with a message, and
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`does not condition the display of that time information on the claimed events.
`
`Petitioner also misinterprets Patent Owner’s statement that Graham discloses
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`“display[ing], starting as soon as a communication has been received from a
`
`sending device, ongoing information on the time elapsed since that communication
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`was received.” Id., 138; Paper 20 at 22. The Graham application “is concerned
`
`with presenting, without any initial delay, a display related to a received message
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`according to the age of that message . . . .” Ex. 1022, 138. A manually initiated
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`display update operation would still allow displaying “ongoing information” on the
`
`elapsed time, is consistent with Graham’s disclosure, and would not constitute
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`“automatically changing … and displaying” as claimed. Petitioner is wrong to
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`equate this argument with its argument now that the Graham application discloses
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`“automatically changing … and displaying” updated time information.
`
`3
`
`
`
`IPR2017-00912 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Sur-Reply
`
`Dated: May 8, 2018
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`4
`
`
`
`IPR2017-00912 (U.S. Patent No. 8,745,149)
`
`Patent Owner’s Sur-Reply
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 8th day of May,
`
`2018, I caused to be served a true and correct copy of the foregoing and any
`
`accompanying exhibits by electronic mail on the following counsel:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroën
`John S. Holley
`PH-Google-Blackberry-IPR@paulhastings.com
`
`
`
`Dated: May 8, 2018
`
`Respectfully Submitted,
`
`/Ching-Lee Fukuda/
`Ching-Lee Fukuda
`Reg. No. 44,334
`SIDLEY AUSTIN LLP
`787 Seventh Avenue
`New York, NY 10019
`P: (212) 839-7364
`F: (212) 839-5599
`Attorney for Patent Owner
`
`
`
`
`
`
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