Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 31
`Entered: August 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00912
`Patent 8,745,149 B2
`_______________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 31
`Entered: August 28, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`_______________
`
`Case IPR2017-00912
`Patent 8,745,149 B2
`_______________
`
`
`Before SALLY C. MEDLEY, ROBERT J. WEINSCHENK, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2017-00912
`Patent 8,745,149 B2
`
`
`1, 5–7, 9, 13–15,
`and 17
`
`1–5, 9–13, and
`17
`
`INTRODUCTION
`I.
`Google LLC (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–17 (“the challenged claims”) of U.S.
`Patent No. 8,745,149 B2 (Ex. 1001, “the ’149 patent”). BlackBerry Limited
`(“Patent Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”) to
`the Petition. On August 30, 2017, we instituted an inter partes review of the
`challenged claims of the ’149 patent on the following grounds:
`Claims
`Statutory Basis
`Applied Reference(s)
`1, 5, 7, 9, 13, 15,
`35 U.S.C. § 103(a)1 Graham et al., U.S. Patent No.
`and 17
`7,167,703 B2 (filed Sept. 25,
`2002, issued Jan. 23, 2007) (Ex.
`1005, “Graham”)
`35 U.S.C. § 103(a) Graham and Milton et al., U.S.
`Patent No. 5,631,949 (filed May
`22, 1995, issued May 20, 1997)
`(Ex. 1006, “Milton”)
`35 U.S.C. § 103(a) Graham and Toshio, Japanese
`Patent Application Publication
`No. H03-89639 (filed Aug. 31,
`1989, published Apr. 15, 1991)
`(Ex. 1007, “Toshio”)
`35 U.S.C. § 103(a) Graham and MacPhail, U.S.
`Patent No. 6,661,434 B1 (filed
`Apr. 13, 2000, issued Dec. 9,
`2003) (Ex. 1009, “MacPhail”)
`35 U.S.C. § 103(a) Graham, Milton, and MacPhail
`35 U.S.C. § 103(a) Graham, Toshio, and MacPhail
`
`8 and 16
`
`8 and 16
`8 and 16
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
`which was enacted on September 16, 2011, made amendments to 35 U.S.C.
`§§ 102, 103. AIA § 3(b), (c). Those amendments became effective on
`March 16, 2013. Id. at § 3(n). Because the challenged claims of the ’149
`patent have an effective filing date before March 16, 2013, any citations
`herein to 35 U.S.C. §§ 102, 103 are to their pre-AIA versions.
`
`2
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`Patent 8,745,149 B2
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`
`Claims
`1, 5, 7, 9, 13, 15,
`and 17
`
`1, 5–7, 9, 13–15,
`and 17
`1–5, 9–13, and
`17
`8 and 16
`
`8 and 16
`
`8 and 16
`
`Applied Reference(s)
`Statutory Basis
`35 U.S.C. § 103(a) Graham and Deshpande et al.,
`U.S. Patent Application
`Publication No. 2003/0039340
`A1 (filed Aug. 24, 2001,
`published Feb. 27, 2003) (Ex.
`1008, “Deshpande”)
`35 U.S.C. § 103(a) Graham, Deshpande, and Milton
`
`35 U.S.C. § 103(a) Graham, Deshpande, and Toshio
`
`35 U.S.C. § 103(a) Graham, Deshpande, and
`MacPhail
`35 U.S.C. § 103(a) Graham, Deshpande, Milton, and
`MacPhail
`35 U.S.C. § 103(a) Graham, Deshpande, Toshio,
`and MacPhail
`
`Paper 7 (“Dec. on Inst.”), 22–23.
`After institution, Patent Owner filed a Response (Paper 17, “PO
`Resp.”) to the Petition, Petitioner filed a Reply (Paper 20, “Pet. Reply”) to
`the Response, and Patent Owner filed a Sur-reply (Paper 27, “PO Sur-
`reply”) to the Reply.2 Petitioner submitted a Declaration of Dr. Dan R.
`Olsen Jr. (Ex. 1002) with the Petition, and Patent Owner submitted a
`transcript of the deposition of Dr. Olsen (Ex. 2006) with the Response.
`Patent Owner submitted a Declaration of Dr. George T. Ligler (Ex. 2007)
`with the Response, and Petitioner submitted a transcript of the deposition of
`Dr. Ligler (Ex. 1018) with the Reply. An oral hearing was held on May 30,
`2018, and a transcript of the hearing is included in the record. Paper 30
`(“Tr.”).3
`
`2 We authorized Patent Owner to file a Sur-reply to the Reply. Paper 22, 3.
`3 The oral hearing included a related proceeding, IPR2017-00911. Paper 26.
`
`3
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`Patent 8,745,149 B2
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`We issue this Final Written Decision pursuant to 35 U.S.C. § 318(a).
`For the reasons set forth below, Petitioner has shown by a preponderance of
`the evidence that claims 1–17 of the ’149 patent are unpatentable.
`A.
`Related Proceedings
`The parties indicate that the ’149 patent is the subject of the following
`district court case: BlackBerry Ltd. v. BLU Products, Inc., No. 1:16-cv-
`23535 (S.D. Fla.). Pet. 1; Paper 4, 1. The parties also indicate that
`Petitioner filed another petition requesting an inter partes review of the ’149
`patent in IPR2017-00911. Pet. 1; Paper 4, 1.
`B.
`The ’149 Patent
`The ’149 patent relates to “a handheld electronic device and a method
`for providing information representative of the times of certain
`communications in a messaging environment.” Ex. 1001, 1:20–24. The
`’149 patent explains that when a messaging conversation continues quickly,
`there generally is no need to display time information. Id. at 1:58–64. In
`other circumstances, though, “it may be desirable for information regarding
`certain timing aspects . . . to be available to a user,” but “the limited space
`available on a display of a handheld electronic device has made a solution
`difficult.” Id. at 1:65–2:2. To address this alleged problem, the ’149 patent
`describes an electronic device that displays time information for a message
`only after the expiration of a predetermined period during which no
`additional messages are exchanged or only when a user manually requests
`time information. Id. at 5:31–38, 6:14–23, 7:11–19.
`The ’149 patent also explains that it is desirable to provide a user with
`additional time information “depending upon the prevailing circumstances”
`so that the user may have “an expedited understanding of the timing aspects
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`of the message.” Id. at 7:37–40, 8:26–33. To address this alleged problem,
`the ’149 patent describes a smart time stamp and an active time stamp. Id. at
`7:37–50, 7:59–8:5. A smart time stamp displays first time information, such
`as “2:44 pm,” for a message in a conversation. Id. at 7:37–50. If the
`conversation is not resumed until the following day, the smart time stamp
`automatically changes the first time information to second time information,
`such as “2:44 pm yesterday,” to reflect the change in day. Id. An active
`time stamp displays first time information, such as “one minute ago,” for a
`message in a conversation, and then changes the first time information to
`second time information, such as “two minutes ago,” as time progresses. Id.
`at 7:59–8:5.
`C.
`Illustrative Claim
`Claims 1, 9, and 17 are independent. Claim 1 is reproduced below.
`1. A method of displaying an instant messaging
`conversation on a display of an electronic device, the method
`comprising:
`displaying a conversation of instant messages;
`displaying a first time information for an instant message
`in the conversation in response to a first input; and
`automatically changing the first time information for the
`instant message to a second time information as time progresses
`and displaying the second time information instead of the first
`time information.
`Ex. 1001, 8:48–57.
`
`
`
`II. ANALYSIS
`A.
`Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “at least a B.S. degree in computer science, electrical engineering, or
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`equivalent thereof, and at least two years of experience in the relevant field,
`e.g., graphical user interfaces,” but notes that “[m]ore education can
`supplement practical experience and vice versa.” Pet. 6–7 (citing Ex. 1002
`¶¶ 13–14). Patent Owner argues that a person of ordinary skill in the art
`would have had “at least a bachelor’s 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 other handheld devices.” PO Resp. 7–
`8 (citing Ex. 2007 ¶ 41). The parties’ respective definitions of the level of
`ordinary skill in the art are similar. Patent Owner contends, though, that
`Petitioner’s definition improperly focuses on “generic” user interfaces,
`rather than user interfaces specifically for mobile devices. PO Resp. 8
`(citing Ex. 2007 ¶ 42).
`We are not persuaded by Patent Owner’s contention that a person of
`ordinary skill in the art must have experience in designing user interfaces for
`mobile devices. As Patent Owner points out, portions of the specification of
`the ’149 patent describe a “handheld electronic device.” Ex. 1001, 1:20–24,
`2:9–32. But other portions of the specification, as well as the claims,
`describe an “electronic device” more generally, and, thus, are not limited to
`a handheld or mobile device. Id. at 2:33–3:7, 8:48–57, 9:9–22, 10:15–25.
`Therefore, based on the evidence of record, including the types of problems
`and solutions described in the ’149 patent and the asserted prior art, we
`agree with and adopt Petitioner’s definition of the level of ordinary skill in
`the art. Pet. 6–7; Ex. 1002 ¶¶ 13–14.
`
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`B.
`Claim Construction
`The claims of an unexpired patent are interpreted using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear.4 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016). “Under a broadest reasonable interpretation,
`words of the claim must be given their plain meaning, unless such meaning
`is inconsistent with the specification and prosecution history.” TriVascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). An applicant may
`provide a definition of a term in the specification with reasonable clarity,
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
`1994). In the absence of such a definition, limitations are not to be read into
`the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993).
`1.
`Automatically
`Claim 1 recites “automatically changing the first time information for
`the instant message to a second time information as time progresses and
`displaying the second time information instead of the first time information.”
`Ex. 1001, 8:54–57. Claims 9 and 17 recite similar limitations. Id. at 9:19–
`22, 10:22–25. Petitioner proposes construing the term “automatically” to
`mean “by itself with little or no direct human control.” Pet. Reply 2.
`Petitioner argues that its proposed construction is supported by the claim
`language, specification, prosecution history, and certain extrinsic evidence.
`Id. at 2–6. Petitioner further contends that the term “automatically” only
`modifies the term “changing” in the challenged claims and does not modify
`
`4 We would construe the claim term discussed below the same under Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`the term “displaying.” Id. at 8–11. Patent Owner proposes construing the
`term “automatically” to mean “not manually initiated.” PO Resp. 10. Patent
`Owner argues that its proposed construction is supported by the claim
`language, specification, prosecution history, and certain extrinsic evidence.
`Id. at 10–14. Patent Owner further contends that the term “automatically”
`modifies both the terms “changing” and “displaying” in the challenged
`claims. Id. at 14–16.
`In the Decision on Institution, we adopted Patent Owner’s proposed
`construction. Dec. on Inst. 8. We see no reason to deviate from that
`determination. The specification of the ’149 patent supports Patent Owner’s
`proposed construction that the term “automatically” means “not manually
`initiated.” Specifically, the ’149 patent distinguishes between a manual
`operation and an automatic operation. For example, the ‘149 patent states
`that if a time stamp for a message is desired, “the user may activate a user
`interface . . . , which can manually cause the output of an inserted time
`stamp.” Ex. 1001, 6:19–23 (emphasis added). In contrast, the ’149 patent
`states that if a first time stamp is displayed for a message and the
`conversation is not resumed until the following day, the first time stamp
`“could be configured to automatically change from being displayed as ‘2:44
`pm’ . . . to being displayed as, for instance, . . . ‘2:44 pm yesterday.’” Id. at
`7:40–50 (emphasis added). Thus, because the ’149 patent distinguishes
`between a manual operation and an automatic operation, the ’149 patent
`indicates that an automatic operation is not manually initiated.
`Petitioner appears to agree that the specification of the ’149 patent
`distinguishes between a manual operation and an automatic operation, but
`attempts to further explain the difference between them. Pet. Reply 3
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`(“[T]he use of ‘automatically’ and ‘manually’ in the specification convey
`that an operation initiated by direct human control is manually performed
`and that an operation may be automatically performed even if it is the result
`of a different prior operation that is manually initiated.”). However,
`Petitioner’s use of the phrase “little or no direct human control” in its
`proposed construction injects ambiguity into the challenged claims. Tr. 7:4–
`9. Thus, we do not adopt Petitioner’s proposed construction. As discussed
`below, though, we clarify what it means for an operation to be “not manually
`initiated” in the context of the challenged claims.
`In the Decision on Institution, we agreed with Patent Owner that the
`term “automatically” modifies the terms “changing” and “displaying” in the
`challenged claims. Dec. on Inst. 8. We see no reason to deviate from that
`determination. The specification and prosecution history of the ’149 patent
`support Patent Owner’s position that the term “automatically” modifies the
`terms “changing” and “displaying” in the challenged claims. The ’149
`patent states that if a first time stamp is displayed for a message and the
`conversation is not resumed until the following day, the first time stamp
`“could be configured to automatically change from being displayed as ‘2:44
`pm’ . . . to being displayed as, for instance, . . . ‘2:44 pm yesterday.’” Ex.
`1001, 7:40–50 (emphases added). This portion of the ’149 patent indicates
`that the automatic change is made to the displayed time stamp, thereby
`indicating that the term “automatically” also modifies the term “displaying”
`in the challenged claims. Further, during prosecution, the Examiner rejected
`the pending independent claims as being unpatentable over Appelman ’4975
`
`5 Appelman et al., U.S. Patent No. 7,181,497 B1 (filed Jan. 22, 2003, issued
`Feb. 20, 2007) (Ex. 2001, “Appelman ’497”).
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`and Lapuyade.6 Ex. 1004, 237, 245–249. In response to the rejection,
`Patent Owner amended the pending independent claims “to clarify the
`protection being sought by combining the [changing and displaying]
`operations and specifying that the ‘changing’ is done automatically.” Id. at
`236 (emphasis added). Patent Owner’s statement during prosecution that it
`was combining the changing and displaying operations indicates that both
`operations are performed automatically.
`Petitioner contends that the term “automatically” appears immediately
`before the term “changing” in the challenged claims, but not immediately
`before the term “displaying.” Pet. Reply 8. Thus, according to Petitioner,
`the term “automatically” only modifies the term “changing.” Id. We
`disagree. As discussed above, the specification of the ’149 patent indicates
`that the term “automatically” applies to both the changing and displaying
`operations. Ex. 1001, 7:40–50. Petitioner also contends that Patent Owner
`stated during prosecution that only the changing operation is performed
`automatically. Pet. Reply 9. We disagree. As discussed above, Patent
`Owner stated during prosecution that it was combining the changing and
`displaying operations. Ex. 1004, 236.
`In the Decision on Institution, we clarified that in the context of the
`challenged claims, the term “automatically” only applies to the specific
`operations of changing and displaying time information, and that other prior
`operations can be manually initiated. Dec. on Inst. 8. We see no reason to
`deviate from that determination. The specification of the ’149 patent
`supports our clarification. In particular, the ’149 patent describes a manual
`
`6 Lapuyade et al., U.S. Patent No. 7,219,109 B1 (filed Aug. 27, 2001, issued
`May 15, 2007) (Ex. 2002, “Lapuyade”).
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`embodiment in which a user manually initiates the specific operation of
`displaying time information. Ex. 1001, 6:19–23, 7:11–19. For example, the
`’149 patent states that by “moving a cursor 374 or other pointing device or
`other device in proximity to a given message 368 a corresponding requested
`time stamp is output adjacent the message 368.” Id. at 7:11–16.
`In contrast, the ’149 patent describes an automatic embodiment in
`which a user manually initiates a prior operation, but the displayed time
`information changes automatically. Id. at 5:62–6:2, 7:40–50. Specifically,
`the ’149 patent explains that a user manually resumes an instant messaging
`conversation by sending another message. Id. at 5:62–6:2. The ’149 patent
`further states that “if the first time stamp 84 of FIG. 4 was output as
`indicated above, and if the conversation was not resumed until the following
`day, the first time stamp 84 potentially could be configured to automatically
`change from being displayed as ‘2:44 pm’ . . . to being displayed as, for
`instance, . . . ‘2:44 pm yesterday.’” Id. at 7:40–50 (emphasis added). As
`such, according to the ’149 patent, when a user manually resumes an instant
`messaging conversation from a previous day, the displayed time information
`automatically changes to reflect the change in day. Id. at 5:62–6:2, 7:40–50.
`Thus, although the user manually initiates the prior operation of resuming
`the instant messaging conversation, the user does not manually initiate the
`specific operation of changing the displayed time information.
`The prosecution history also supports our clarification. During
`prosecution, the Examiner rejected the pending independent claims as being
`unpatentable over Appelman ’497 and Lapuyade. Ex. 1004, 237, 245–249.
`According to Patent Owner, Lapuyade teaches that a user manually
`“select[s] an option to change to a new time zone.” Id. at 238. In other
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`words, in Lapuyade, a user manually initiates the specific operation of
`changing the displayed time information.7 In response to the rejection,
`Patent Owner amended the pending independent claims “to clarify the
`protection being sought by combining the [changing and displaying]
`operations and specifying that the ‘changing’ is done automatically.” Id. at
`236. Patent Owner then argued that the amended independent claims were
`distinguishable from Lapuyade because “[a]lthough Lapuyade shows a
`prompt allowing the user to select an option to change to a new time zone, it
`is unclear to Applicant how such a feature would suggest automatically
`changing time information in an instant messaging conversation.” Id. at 70.
`Patent Owner’s argument regarding Lapuyade indicates that the term
`“automatically” was added to the pending independent claims to distinguish
`prior art that taught manually initiating the specific operation of changing
`the displayed time information.
`
`Patent Owner disagrees with our clarification. PO Resp. 16–18. First,
`Patent Owner points to the portion of the ’149 patent that describes a smart
`time stamp. Id. at 16–17. Patent Owner contends that “the passage of time
`is the cause of the automatically updated display” and “not an intervening
`manual action by the user.” Id. Patent Owner’s argument is not persuasive.
`The relevant portion of the ’149 patent states:
`In this regard, and in accordance with another aspect of the
`invention, a given time stamp may be a smart time stamp and
`
`7 Patent Owner similarly acknowledges in this case that “Lapuyade’s
`disclosure is clear that the displayed time information (e.g., the displayed
`time for a calendar entry) is 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.’” PO Resp. 6 (citing Ex. 2002, 6:21–43).
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`provide additional information depending upon the prevailing
`circumstances. For instance, if the first time stamp 84 of FIG. 4
`was output as indicated above, and if the conversation was not
`resumed until the following day, the first time stamp 84
`potentially could be configured to automatically change from
`being displayed as “2:44 pm” on the day of communication of
`the non-responded-to message 80 to being displayed as, for
`instance, “2:44 pm Thursday” or, for instance, “2:44 PM Sep.
`17, 2004” or, for instance, “2:44 pm yesterday” on the
`following day, although other configurations will be apparent
`and will be within the concept of the invention.
`Ex. 1001, 7:37–50 (emphases added). As discussed above, the ’149 patent
`explains that a user manually resumes an instant messaging conversation by
`sending another message. Id. at 5:62–6:2. Thus, the smart time stamp
`described in the ’149 patent automatically changes the displayed time
`information after a user manually resumes an instant messaging
`conversation from a previous day. Id. at 7:37–50.
`Second, Patent Owner points to the portion of the ’149 patent that
`describes an active time stamp, which, according to Patent Owner,
`automatically changes “without requiring any intervening manual input to
`prompt the updated display.” PO Resp. 17 (citing Ex. 1001, 7:59–64). The
`portion of the ’149 patent cited by Patent Owner states:
`Such a time stamp 478 could be configured to be an active time
`stamp, meaning that it would change as time progressed. For
`instance, the time stamp 478 could progressively change from
`saying “less than one minute ago” to saying “one minute ago”,
`“two minutes ago”, “forty-five minutes ago”, and the like as
`time progressed.
`Ex. 1001, 7:59–64 (emphasis added). We understand this active time stamp
`to be different than the smart time stamp discussed above. Compare id. at
`7:37–50, with id. at 7:59–64. And we are not persuaded that the term
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`“automatically” in the challenged claims is limited to just the active time
`stamp described in the ’149 patent. As discussed above, the ’149 patent
`describes the smart time stamp as “automatically” changing the displayed
`time information after a user manually resumes an instant messaging
`conversation from a previous day. Id. at 5:62–6:2, 7:37–50.
`For the foregoing reasons, we adopt Patent Owner’s proposed
`construction of the term “automatically.” Specifically, we construe the term
`“automatically” to mean “not manually initiated.” We clarify, though, that
`in the context of the challenged claims, the term “automatically” only
`applies to the specific operations of changing and displaying time
`information, and that other prior operations can be manually initiated.8
`2.
`First Input
`Petitioner proposes construing the term “first input.” Pet. 11. Patent
`Owner responds that the term “first input” does not require express
`construction. PO Resp. 9. We determine that the term “first input” does not
`require express construction to resolve the parties’ disputes regarding the
`asserted grounds of unpatentability in this case. See infra Sections II.C–
`II.G; Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999) (“[O]nly those terms need be construed that are in controversy,
`and only to the extent necessary to resolve the controversy.”).
`C. Obviousness of Claims 1, 5, 7, 9, 13, 15, and 17 over Graham
`Petitioner argues that claims 1, 5, 7, 9, 13, 15, and 17 would have
`been obvious over Graham. Pet. 2. A claim is unpatentable as obvious
`
`
`8 Our clarification regarding the term “automatically” is only pertinent to our
`analysis of the asserted grounds of unpatentability that include Milton. See
`infra Section II.D.2.
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`under 35 U.S.C. § 103(a) if the differences between the claimed subject
`matter and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made to a person having
`ordinary skill in the art to which the subject matter pertains. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is
`resolved on the basis of underlying factual determinations, including: (1) the
`scope and content of the prior art; (2) any differences between the claimed
`subject matter and the prior art; (3) the level of ordinary skill in the art; and
`(4) any objective indicia of non-obviousness. Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`We have considered the parties’ arguments and supporting evidence,
`and we determine that Petitioner has shown by a preponderance of the
`evidence that claims 1, 5, 7, 9, 13, 15, and 17 would have been obvious over
`Graham.
`
`1.
`Overview of Graham
`Graham relates to “sending and receiving image messages between
`users of mobile devices.” Ex. 1005, 1:15–18. One aspect of Graham
`involves “tracking and indicating for a user of a wireless mobile device,
`image messages sent/received, and the amount of time since the image
`messages have been sent/received.” Id. at 2:20–23. For example, Graham
`teaches displaying an elapsed time or an absolute time to indicate the age of
`a message. Id. at Abstract, 9:1–4, 11:14–18, 12:54–58. Graham also
`teaches illuminating an input key with different colors to indicate the age of
`a message. Id. at Abstract, 2:24–31, 13:1–12.
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`2.
`Claims 1, 9, and 17
`Claim 1 recites “[a] method of displaying an instant messaging
`conversation on a display of an electronic device, the method comprising:
`displaying a conversation of instant messages.” Ex. 1001, 8:48–51. Graham
`teaches a mobile device that displays a conversation of instant messages.
`Pet. 13–15; Ex. 1002 ¶ 40; Ex. 1005, 4:3–7, 7:4–8, 11:20–23, 14:17–24,
`15:11–14, Fig. 13d.
`Patent Owner responds that Graham does not teach displaying a
`conversation of instant messages. PO Resp. 18–28. Specifically, Patent
`Owner argues that Petitioner relies on Graham’s mixed media messaging
`embodiment to show a conversation of messages, but then relies on
`Graham’s SMS messaging to show instant messages. Id. at 19–20 (citing
`Pet. 13–15). Patent Owner further argues that Graham’s mixed media
`messaging embodiment uses email, not SMS messaging. PO Resp. 21–25
`(citing Ex. 1005, Figs. 13a–13c; Ex. 2007 ¶¶ 56–57). And, according to
`Patent Owner, an email is not an instant message. PO Resp. 25–28 (citing
`Ex. 2007 ¶¶ 59–61).
`Patent Owner’s arguments are not persuasive. Graham’s Figure 13d
`shows a conversation of mixed media messages. Ex. 1005, 15:11–14, Fig.
`13d. Graham explains that a mixed media message is a message having
`textual and image contents, or, in a degenerate form, having only textual
`content or only image content. Id. at 14:17–22. Further, Graham teaches
`that SMS may be used to send and receive messages that have textual and
`image contents (i.e., mixed media messages). Id. at 11:20–23. For example,
`Graham states:
`Any message protocol used by mobile devices may be used to
`send and receive an image message, e.g., SMS. Generally,
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`SMS enables short text and data messages to be sent and
`received by mobile devices over wireless networks.
`Id. (emphases added). Thus, although Graham indicates that the mixed
`media messages in Figure 13d are sent and received using email, Graham
`also teaches that mixed media messages can be sent and received using
`SMS. Id. Patent Owner does not dispute that an SMS message is an instant
`message. PO Resp. 29 (“But Patent Owner does not argue that Graham’s
`SMS messages cannot satisfy the claimed ‘instant messaging.’”).
`Claim 1 recites “displaying a first time information for an instant
`message in the conversation in response to a first input.” Ex. 1001, 8:52–53.
`Graham teaches displaying an elapsed time in response to a user sending or
`receiving a message. Pet. 16–19; Ex. 1002 ¶¶ 48–49; Ex. 1005, 9:1–2,
`11:14–18, 12:54–58, Figs. 5, 6. Graham also teaches illuminating an input
`key with different colors to indicate the age of a message in response to a
`user receiving a message. Pet. 19–20; Ex. 1002 ¶ 61; Ex. 1005, 13:1–12,
`Fig. 9. Patent Owner does not dispute that Graham teaches the above
`limitation of claim 1.
`Petitioner acknowledges that the embodiment in Graham that teaches
`displaying an instant messaging conversation is different than the
`embodiments in Graham that teach displaying time information. Pet. 21.
`Petitioner argues that a person of ordinary skill in the art would have had
`reason to combine the cited teachings from the different embodiments in
`Graham. Id. at 21–24. We agree with and adopt Petitioner’s reasoning.
`Specifically, a person of ordinary skill in the art would have recognized that
`displaying time information is useful and convenient for a user, and, thus, a
`person of ordinary skill in the art would have been motivated to incorporate
`Graham’s feature of displaying time information into Graham’s embodiment
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`that displays an instant messaging conversation. Id.; Ex. 1002 ¶¶ 52–57.
`Patent Owner does not dispute that a person of ordinary skill would have had
`reason to combine the embodiment in Graham that teaches displaying an
`instant messaging conversation with the embodiments in Graham that teach
`displaying time information.
`Claim 1 recites “automatically changing the first time information for
`the instant message to a second time information as time progresses and
`displaying the second time information instead of the first time information.”
`Ex. 1001, 8:54–57. Graham teaches automatically changing first time
`information for an instant message to second time information as time
`progresses and displaying the second time information instead of the first
`time information. Pet. 24–27; Ex. 1002 ¶¶ 59, 61; Ex. 1005, Abstract, 2:20–
`31, 9:1–2, 11:14–18, 12:54–58, 13:1–12. Specifically, Graham teaches that
`a mobile device “compute[s] and display[s] the amount of elapsed time for
`the received image message,” so that the received image message “may be
`aged” via the time display. Ex. 1005, Abstract, 2:20–23, 9:1–2, 11:14–18,
`12:54–58. Graham also teaches that an input key is illuminated with
`“different colors . . . to depict the advanced age of received image
`messages.” Id. at 2:24–31, 13:1–12.
`With respect to Graham’s elapsed time display, Patent Owner
`responds that Graham does not teach automatically changing the elapsed
`time display as time progresses. PO Resp. 32–37. First, Patent Owner
`argues that “Petitioner points to no disclosure in Graham that ‘automatically
`chang[es]’ the relative timestamps ‘as time progresses.’” Id. at 32–33
`(citing Pet. 24–25). Patent Owner’s argument is not persuasive. Graham
`teaches a time identifier “that identifies when the image message was sent,
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`thereby allowing the recipient mobile device to compute and display the
`amount of elapsed time for the received image message.” Ex. 1005, 11:14–
`18; see also id. at 9:1–2 (“Timer 510 indicates an amount of elapsed time
`when an image was last sent by the user to other users.”); Pet. 24–25 (citing
`Ex. 1005, 9:1–4, 11:14–18). Graham further teaches that the received image
`message “may be aged” via the time display. Ex. 1005, Abstract; see also
`Pet. 24–25 (citing Ex. 1005, Abstract). These p
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