Paper No. 6
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00912
`U.S. Patent No. 8,745,149
`
`––––––––––––––––––
`
`PATENT OWNER’S PRELIMINARY RESPONSE
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`

`

`IPR2017-00912 (U.S. Patent 8,745,149)
`
`Patent Owner’s Preliminary Resp.
`
`TABLE OF CONTENTS
`
`Exhibit List ................................................................................................................ iv
`
`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 ....................................................... 8
`
`III. Claim Construction .......................................................................................... 9
`
`A.
`
`B.
`
`“Automatically” (All Claims) ............................................................. 11
`
`“Automatically … Displaying” (All Claims) ...................................... 15
`
`IV. The Petition Fails to Meet the Requirements for Instituting an Inter Partes
`Review ........................................................................................................... 17
`
`A.
`
`B.
`
`The Petition’s Obviousness Analysis for “Displaying a First Time
`Information” is Flawed ........................................................................ 18
`
`None of Graham’s Embodiments Render Obvious “Automatically
`Changing … and Displaying” ............................................................. 20
`
`i.
`
`ii.
`
`Graham’s Relative Timestamps are Not “Automatically
`Chang[ed] … As Time Progresses” .......................................... 21
`
`Graham’s Illuminated Input Key Is Not “Automatically
`Chang[ed] … As Time Progresses,” and Is Not Part of the
`“Conversation” .......................................................................... 23
`
`iii.
`
`The Petition’s Backup Obviousness Ground Is Legally
`Deficient .................................................................................... 26
`
`C.
`
`The Petition’s Remaining Grounds Do Not Cure Graham’s
`Deficiencies ......................................................................................... 31
`
`i
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`

`

`IPR2017-00912 (U.S. Patent 8,745,149)
`
`Patent Owner’s Preliminary Resp.
`
`i.
`
`ii.
`
`Milton Is Not Relied on to Disclose “Automatic” Functionality,
`nor Could It ............................................................................... 31
`
`Toshio Is Not Relied on to Disclose “Automatic” Functionality,
`nor Could It ............................................................................... 35
`
`V.
`
`The Board Should Deny the Petition under 35 U.S.C. § 325(d) Because
`“Substantially the Same” Grounds Overcome During Prosecution .............. 38
`
`VI. Conclusion ..................................................................................................... 40
`
`Certificate Of Compliance .......................................................................................... i
`
`Certificate Of Service................................................................................................ ii
`
`
`
`
`
`
`
`ii
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc. v. Papst Licensing GMBH & Co. KG,
`IPR2016-01841, Paper 10 (PTAB Apr. 17, 2017) ............................................. 39
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 27, 29, 30
`CollegeNet, Inc. v. ApplyYourself, Inc.,
`418 F.3d 1225 (Fed. Cir. 2005) .......................................................................... 14
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2016) .................................................................... 27, 28
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) ................................................................ 9, 10, 14
`Nu Mark LLC v. Fontem Holdings 1, B.V.,
`IPR2016-01309, Paper 11 (PTAB Dec. 15, 2016) ............................................. 40
`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ...................................................................... 10, 13
`Statutes
`35 U.S.C. § 112(b) ................................................................................................... 14
`35 U.S.C. § 325(d) ......................................................................................... 1, 30, 38
`Other Authorities
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 29
`37 C.F.R. § 42.65(a) ........................................................................................... 20, 29
`37 C.F.R. § 42.100(b) ................................................................................................ 9
`37 C.F.R. § 42.104(b)(4) .................................................................................... 20, 27
`
`
`iii
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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`EXHIBIT LIST
`
`Exhibit Description
`No.
`2001 U.S. Patent No. 7,181,497 to Appelman et al.
`2002 U.S. Patent No. 7,219,109 to Lapuyade et al.
`2003 The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`
`
`
`
`
`iv
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`I.
`
`Introduction
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`Patent Owner BlackBerry Limited (“Patent Owner”) submits this
`
`Preliminary Response in opposition to the Petition for inter partes review (Paper 1)
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`of U.S. Patent No. 8,745,149 (“’149 patent”). The Petition challenges the
`
`patentability of claims 1-17 of the ’149 patent on twelve different grounds, each of
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`which relies on the Graham reference. For the reasons discussed below, trial
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`should not be instituted.
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`The Petition should be denied because none of the references show
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`“automatically changing … and displaying” as required by every claim. This
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`requirement was added during prosecution to overcome a reference that disclosed
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`manually initiated operations, but the Petition points to similar operations in
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`Graham as examples of operations supposedly performed “automatically.” Neither
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`Graham’s relative timestamps or illuminated input key embodiments
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`“automatically chang[e] … and display[]” updated time information, or otherwise
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`render the claims obvious. The Petition also never explains what modification of
`
`Graham it proposes, and instead cobbles together features from different
`
`embodiments without any explanation. Finally, the Board should exercise its
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`discretion to deny the petition under 35 U.S.C. § 325(d) for advancing “the same or
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`substantially the same” patentability challenges and arguments considered during
`
`prosecution.
`
`1
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
`
`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
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`basis to a second device. Id., 1:40-44. The ’149 patent describes an improved
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`handheld electronic device that provides time data regarding certain aspects of a
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`messaging conversation to a user. Id., 2:9-15. Time data for instant messages can
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`be provided, for example, in situations where an interruption has occurred during a
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`messaging conversation, or on demand in certain circumstances. Id. Figure 9
`
`illustrates one example of the functionality provided by the ’149 patent.
`
`Id., Fig. 9.
`
`2
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`
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`Figure 9 shows an embodiment where time stamps are provided in a fashion
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`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
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`displayed initially without time stamps, but if a time stamp is desired it can be
`
`readily output. Id., 7:16-26.
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`Figure 10 shows another example of the functionality provided by the ’149
`
`patent in the form of a smart and active time stamp.
`
`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.
`
`
`
`3
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`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
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`PM Sep. 17, 2004,” or even “2:44 pm yesterday.” Id., 7:41-50. The first time
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`stamp can also changes as time progresses, such as by progressively changing from
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`displaying “less than one minute ago” to displaying “one minute ago,” “two
`
`minutes ago,” etc., id., 7:59-64. These time stamps can also revert from displaying
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`relative times to displaying absolute times after the expiration of a given time
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`duration, such as changing from displaying “fifty-nine minutes ago” to “2:54 pm.”
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`Id., 7:64-8:5.
`
`Independent claims 1, 9, and 17 recite a method, an electronic device, and a
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`non-transitory computer readable medium related to this disclosure. Claim 1 is
`
`representative at this stage of the proceeding:
`
`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
`
`4
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`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 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 Lapuyade (Ex.
`
`2002). 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
`
`5
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`action. Id., 246 (citing Ex. 2002, Fig. 7, 6:21-43). Lapuyade discloses a “Time
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`Zone Alert!” that allows a user to change the displayed time zone, as well as a time
`
`zone button:
`
`
`
`Ex. 2002, Fig. 7. Lapuyade’s disclosure is clear that the displayed time
`
`information (e.g., the displayed time for a calendar entry) is always changed
`
`manually, such as when the user instructs the system to “change display time zone”
`
`via button 724, or by “tap[ing] the displayed time zone in box 718 to make a
`
`selection of a correct local time zone.” 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
`6
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`step, and (2) clarify that the entire step happens “automatically … as time
`
`progresses,” rather than, for example, “in response to a second input”:
`
`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. 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
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`the combined step of “changing” and “displaying” occurs “automatically … as
`
`time progresses,” and thus distinguished the manually initiated display change
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`7
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`disclosed by Lapuyade and relied upon by the Examiner. Id., 236 (emphasis
`
`added).
`
`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. 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
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`Owner argued that it was “unclear … how such a feature would suggest
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`automatically changing time information” in the context of the claims. Id. The
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`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.
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`C.
`
`Person of Ordinary Skill in the Art
`
`One of ordinary skill in the art in the field of the ’149 patent would have at
`
`least a bachelors degree in computer science, electrical engineering, or the
`
`equivalent, and at least two years of experience in designing user interfaces for
`
`mobile devices such as cellular telephones, personal digital assistances (PDA), or
`
`8
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`other handheld devices. While Petitioner has advanced a different statement of the
`
`level of ordinary skill in the art, these differences do not appear material at this
`
`stage of the proceedings. See Pet. 5-6.
`
`III. Claim Construction
`
`Petitioner proposes a single claim construction: it argues “first input” should
`
`be interpreted to mean “any event detected by the electronic device.” Pet. 13. The
`
`Petition is defective under any reasonable construction of this term, so the Board
`
`need not construe it.
`
`Central to the Parties’ dispute, however, is the proper scope of the
`
`“automatically changing … and displaying” step. The Petition’s patentability
`
`challenges rest on a broad and unstated claim construction of this step that is not
`
`reasonable in the context of the claims and the ’149 patent’s intrinsic record. See
`
`37 C.F.R. § 42.100(b). When the claims are given their broadest reasonable
`
`construction, the Petition must be denied.
`
`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) (“A
`
`construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect
`
`the plain language and disclosure’ will not pass muster.”). In an inter partes
`
`9
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`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 (Fed. Cir. 2014)). This
`
`includes giving weight to clarifying amendments made during the original
`
`prosecution. Tempo Lighting, 742 F.3d at 977-78.
`
`Each of the independent claims (i.e., claims 1, 9, and 17) recites
`
`“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.” Petitioner’s patentability
`
`challenges (1) effectively read “automatically” out of the claim by mapping this
`
`step to manually initiated actions (Pet. 24-27), and (2) analyze the “automatically
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`changing … and displaying” as if it were two separate steps, only the first of which
`
`occurs “automatically” (id., 25-26). In both cases, Petitioner seeks to ignore or
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`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.
`
`10
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`A.
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`“Automatically” (All Claims)
`
`The broadest reasonable interpretation of an “automatic” operation is one
`
`not manually initiated. Petitioner advances an implicit construction of
`
`“automatically” that would cover operations such as those disclosed in Graham,
`
`Milton, and Toshio, which as explained below are manually initiated. This implicit
`
`construction reads “automatically” out of the claims and conflicts with the plain
`
`and ordinary meaning of the claims.
`
`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: “acting or operating in a manner essentially independent of
`
`external influence or control.” E.g., The American Heritage College Dictionary
`
`(4th Ed. 2004) (Ex. 2003), 96. In this context, a manually initiated action is not
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`“automatically” performed. Claim 1 confirms this understanding by distinguishing
`
`between 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 automatic operations without manual
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`initiation (“automatically changing … as time progresses and displaying the
`
`second time information”). The plain and ordinary meaning of an “automatic”
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`operation is one not manually initiated.
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`11
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`This understanding is confirmed by the ’149 patent’s specification, which
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`distinguishes a user “manually caus[ing] the output of an inserted time stamp” and
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`a smart time stamp “configured to automatically change” from a first display to a
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`second, such as by “chang[ing] as time progressed.” Ex. 1001, 6:19-23, 7:40-8:5.
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`This functionality directly corresponds to the claims. Compare Ex. 1001, Claims 1
`
`& 8 (manual operation: “displaying … in response to … detecting a pointing
`
`device”) with Claim 1 (automatic operation: “automatically … as time
`
`progresses”). 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
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`change from being displayed” one way to another way. Ex. 1001, 7:10-50. These
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`are the same portions of the ’149 patent’s disclosure pointed to by Patent Owner
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`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,
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`Patent Owner amended the claims to recite “automatically changing … as time
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`progresses” 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,
`
`12
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`233-39. The Examiner allowed the patent based on this argument. Id., 18, 70-71.
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`Any construction of “automatically” that would reverse this amendment and cover
`
`manually-initiated operations would render Patent Owner’s amendment
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`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
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`amended its claims in response to an Office action, explained why the amendments
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`had clarified the Office’s concerns, and obtained allowance of its claims. There,
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`the Federal Circuit found that the prosecution history in such a case supported a
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`claim construction commensurate with the patent owner’s representations to the
`
`office:
`
`This court also observes that the PTO is under no obligation to accept
`a claim construction proffered as a prosecution history disclaimer,
`which generally only binds the patent owner. However, in this
`instance, the PTO itself requested Tivoli rewrite the "non-
`photoluminescent" limitation in positive terms. Tivoli complied, and
`then supplied clarification about the meaning of the "inert to light"
`limitation. J.A. 1216. For all these reasons, this court affirms the
`Board's construction of "inert to light."
`
`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
`
`13
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`

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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`information, explained the claims no longer covered such a feature, and the
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`Examiner subsequently allowed the patent based on these actions.
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`Other cases that have interpreted “automatically” more broadly are
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`inapposite, and instead illustrate why Petitioners mapping is improper. In
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`CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005), 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
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`only relevant action: causing the output of a changed time stamp. Ex. 1001, 6:19-
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`23, 7:40-8:5.
`
`Interpreting claim 1’s “automatically changing … and displaying” step as
`
`covering manually initiated functionality would thus eviscerate the amendments
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`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
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`distinctly claim[] the subject matter which Toshthe inventor … regards as the
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`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.
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`14
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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`The broadest reasonable interpretation of an operation performed
`
`“automatically,” in view of the intrinsic record as a whole, is one not manually
`
`initiated.
`
`B.
`
`“Automatically … Displaying” (All Claims)
`
`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
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`claimed “displaying” occur “automatically.” Pet. 25-26.
`
`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
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`as follows:
`
`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; see id., 246. The claims recited “displaying the second time
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`information in response to a second input,” but the amendment dropped any
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`15
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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`reference to “in response to a second input” and made the “displaying the second
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`time information” limitation part of the “changing” step. Id. It also clarified that
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`both happen “automatically.” Id. Patent Owner pointed to the ’149 patent’s
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`disclosure of smart and active time stamps as support for this amendment. Id., 236
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`(citing id., 380-381 (¶¶52-54), 393 (Fig. 10), which corresponds to Ex. 1001, 7:34-
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`8:5, Fig. 10).
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`The automatic changing and display of updated time information is also the
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`only understanding taught by the specification: “the first time stamp 84 potentially
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`could be configured to automatically change from being displayed as ‘2:44 pm’
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`on the day of communication of the non-responded-to message 80 to being
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`displayed as, for instance, ‘2:44 pm Thursday’ ….” Ex. 1001, 7:37-50 (emphasis
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`added). This can occur “as time progresse[s],” where the time stamp is
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`“progressively change[d]” from displaying “less than one minute ago” to saying
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`“one minute ago,” etc. Id., 7:59-8:3. Petitioner’s theory of the claims would,
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`again, undo Patent Owner’s amendment and revert the claims to their pre-
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`amendment state.
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`The broadest reasonable interpretation of the “automatically chang[ing] …
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`and displaying” step as a whole requires “automatically changing” and
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`“automatically … displaying.”
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`16
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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`IV. The Petition Fails to Meet the Requirements for Instituting an Inter
`Partes Review
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`Petitioner proposes twelve grounds of unpatentability: (1) claims 1, 5, 7, 9,
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`13, and 17 as obvious over Graham, (2) claims 1, 5-7, 9, 13-15, and 17 as obvious
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`over Graham in view of Milton, (3) claims 1-5, 9-13, and 17 as obvious over
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`Graham in view of Toshio, (4)-(6) claims 8 and 16 as obvious over each of those
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`grounds in further view of MacPhail, and (7)-(12) each sets of those claims and
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`grounds are obvious in further view of Deshpande. Pet. 2-3.
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`In all of these grounds, the Petition maps Graham to claim 1’s preamble and
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`“displaying a conversation of instant messages.” Graham discloses a wireless
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`mobile device with mixed media messaging capabilities. Ex. 1005, 1:64-2:49.
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`The Petition rightly concedes, however, that Graham’s mixed media messaging
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`embodiment does not disclose “displaying a first time information for an instant
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`message in the conversation in response to a first input” or “automatically
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`changing the first time information … to 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,” and instead relies principally on other embodiments in Graham to
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`argue that such features would have been obvious. Pet. 16-27. The Petition’s
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`obviousness rationales suffer from a number of critical flaws, however, each of
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`which is independently fatal. The remaining grounds do not cure these
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`deficiencies.
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`17
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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`A. The Petition’s Obviousness Analysis for “Displaying a First Time
`Information” is Flawed
`
`The Petition concedes that Graham’s mixed media embodiment does not
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`disclose “displaying a first time information for an instant message in the
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`conversation in response to a first input.” Pet. 16. To remedy this deficiency, the
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`Petition points to functionality associated with a separate image-messaging
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`embodiment. Id., 16-20. The Petition relies on two ways of supposedly
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`“displaying a first time information”: (1) displaying a relative timestamp for a
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`given image message (Ex. 1005, 10:29-32), and (2) displaying the age of an image
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`message as an input key color around a separate physical input key (id., 13:1-12).
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`See Pet. 17-20. The Petition characterizes these two ways as associated with
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`separate embodiments: “Graham’s FIGs. 5, 6, and 9 embodiments disclose
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`displaying a first time information … [but] those embodiments do not explicitly
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`disclose displaying such time information for an instant message ‘in a
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`conversation,’ as recited in claim 1.” Id., 21 (emphasis added).
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`During its obviousness analysis, however, the Petition never differentiates
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`between these two disclosures and never explicitly explains what would have been
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`obvious that supposedly meets the claim element. For example, the Petition does
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`not state that it would have been obvious to modify Graham’s instant message
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`conversation in Figure 13 to (1) incorporate the relative timestamp supposedly
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`disclosed in 10:29-32, (2) additionally trigger an illuminated input key based on
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`IPR2017-00912 (U.S. Patent 8,745,149)
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`Patent Owner’s Preliminary Resp.
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`the disclosure in 13:1-12, (3) incorporate both, or (4) something else entirely.
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`Instead, the Petition instead argues that it would be obvious “to incorporate
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`features from the embodiments of Graham’s FIGs. 5, 6, and 9”:
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`In particular, Graham’s FIG. 13 embodiment discloses displaying an
`instant message conversation, and it would have been obvious to
`modify the system and processes of that embodiment to incorporate
`features from the embodiments of Graham’s FIGs. 5, 6, and 9 to
`display first time information relating to an instant message in the
`conversation.
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`Pet. 21 (emphasis added).
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`No specific “features” or “embodiments” are ever identified. The Petition
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`instead distills the disparate disclosures—(1) displaying relative timestamps with
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`an image message and (2) illuminating a physical input key—into an amalgam that
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`coincidentally uses the same words as the claims: “[I]t would have been obvious to
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`… display first time information relating to an instant message in the
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`conversation.” Pet. 21; see Ex. 1001, Claim 1 (“displaying a first time information
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`for an instant message in the conversation”). The Petition does not articulate with
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`particularity what it is contending to be obvious. It states that it would be o