Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: August 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.,
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Entered: August 30, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE INC.,
`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.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`IPR2017-00912
`Patent 8,745,149 B2
`
`
`INTRODUCTION
`I.
`Google Inc. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) requesting
`an inter partes review of claims 1–17 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. An inter
`partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing the unpatentability of claims 1–17 of the
`’149 patent. Accordingly, we institute an inter partes review as to claims 1–
`17 of the ’149 patent on the grounds specified below.
`Related Proceedings
`A.
`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.
`The ’149 Patent
`B.
`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.
`According to the ’149 patent, handheld electronic devices are capable of
`numerous types of communication, including instant messaging. Id. at 1:39–
`44. The ’149 patent explains that, when an instant messaging conversation
`continues quickly, there generally is no need to display time information for
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`an instant message. 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 an instant message only
`after the expiration of a predetermined period of time during which no
`messages are exchanged. Id. at 5:31–38. In another embodiment, the
`electronic device displays time information only when it is requested
`manually by a user. Id. at 6:14–23, 7:11–19. The ’149 patent also describes
`a smart time stamp. Id. at 7:37–50. For example, the smart time stamp
`displays first time information (e.g., 2:44 pm) for an instant message. Id. If
`the conversation is not resumed until the following day, the smart time
`stamp automatically changes the first time information to second time
`information (e.g., 2:44 pm yesterday) to reflect the change in day. Id.
`Illustrative Claim
`C.
`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.
`
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`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Reference(s)
`Graham
`
`35 U.S.C. § 103(a)
`
`Graham and Milton
`
`Evidence of Record
`D.
`Petitioner submits the following references and declaration (Pet. 2–4):
`Reference or Declaration
`Exhibit No.
`Declaration of Dr. Dan R. Olsen, Jr. (“Olsen Declaration”)
`Ex. 1002
`Graham et al., U.S. Patent No. 7,167,703 B2 (filed Sept. 25,
`Ex. 1005
`2002, issued Jan. 23, 2007) (“Graham”)
`Milton et al., U.S. Patent No. 5,631,949 (filed May 22,
`1995, issued May 20, 1997) (“Milton”)
`Toshio, Japanese Patent Application Publication No. H03-
`89639 (filed Aug. 31, 1989, published Apr. 15, 1991)
`(“Toshio”)
`Deshpande et al., U.S. Patent Application Publication No.
`2003/0039340 A1 (filed Aug. 24, 2001, published Feb. 27,
`2003) (“Deshpande”)
`MacPhail, U.S. Patent No. 6,661,434 B1 (filed Apr. 13,
`2000, issued Dec. 9, 2003) (“MacPhail”)
`Asserted Grounds of Unpatentability
`E.
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 2–4):
`Claims
`Basis
`1, 5, 7, 9, 13, 15, and
`35 U.S.C. § 103(a)
`17
`1, 5–7, 9, 13–15, and
`17
`1–5, 9–13, and 17
`8 and 16
`8 and 16
`
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`35 U.S.C. § 103(a)
`
`8 and 16
`
`1, 5, 7, 9, 13, 15, and
`17
`1, 5–7, 9, 13–15, and
`17
`1–5, 9–13, and 17
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`4
`
`Graham and Toshio
`Graham and MacPhail
`Graham, Milton, and
`MacPhail
`Graham, Toshio, and
`MacPhail
`Graham and Deshpande
`
`Graham, Deshpande, and
`Milton
`Graham, Deshpande, and
`Toshio
`
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`IPR2017-00912
`Patent 8,745,149 B2
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`
`Claims
`8 and 16
`
`8 and 16
`
`8 and 16
`
`Basis
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`35 U.S.C. § 103(a)
`
`Reference(s)
`Graham, Deshpande, and
`MacPhail
`Graham, Deshpande,
`Milton, and MacPhail
`Graham, Deshpande,
`Toshio, and MacPhail
`
`II. ANALYSIS
`A. 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. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2144–45 (2016).
`First Input
`1.
`Petitioner argues that the term “first input” should be construed to
`mean “any event detected by the electronic device.” Pet. 11. Patent Owner
`argues that the term “first input” does not require express construction at this
`stage of the proceeding. Prelim. Resp. 9. On this record and for purposes of
`this decision, we determine that the term “first input” does not require
`express construction at this stage of the proceeding to resolve the parties’
`disputes regarding the asserted grounds of unpatentability. See infra Section
`II.B; 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.”).
`Automatically
`2.
`Patent Owner argues that the term “automatically” should be
`construed to mean “not manually initiated.” Prelim. Resp. 11. Patent
`Owner also argues that both the “changing” limitation and the subsequent
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`“displaying” limitation of the challenged claims are performed
`automatically. Id. at 15. Patent Owner argues that its proposed construction
`is supported by the claim language, specification, prosecution history, and
`extrinsic evidence. Id. at 11–16. Petitioner does not propose an express
`construction for the term “automatically” at this stage of the proceeding. See
`Pet. 10–11.
`The specification supports Patent Owner’s position that the term
`“automatically” means “not manually initiated,” and that the term
`“automatically” modifies both the “changing” limitation and the subsequent
`“displaying” limitation of the challenged claims. Specifically, 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). The ’149 patent
`also states that, if a first time stamp is displayed 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). These two portions of the ’149 patent distinguish
`between an automatic operation and a manual one, and, thus, indicate that an
`automatic operation is not manually initiated. In addition, the second
`portion of the ’149 patent quoted above indicates that the automatic change
`is made to the displayed time stamp, thereby indicating that the term
`“automatically” modifies the “changing” limitation and the subsequent
`“displaying” limitation of the challenged claims.
`The specification also demonstrates, though, that Patent Owner’s
`proposed construction requires further clarification. In particular, the ’149
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`patent indicates that the term “automatically” only applies to the specific
`operations of changing and then displaying the time information, and that
`other prior operations can be manually initiated. For example, the ’149
`patent 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, . .
`. ‘2:44pm yesterday.’” Id. at 7:40–50 (emphasis added). In other words,
`according to the ’149 patent, the displayed time information automatically
`changes after the user manually resumes the instant messaging conversation.
`The prosecution history also supports this clarification of Patent
`Owner’s proposed construction. During prosecution, the Examiner rejected
`the pending independent claims as being unpatentable over Appelman and
`Lapuyade.1 Ex. 1004, 237, 245–49. 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 also summarized the advantages of the claimed invention as allowing
`the first time stamp to “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.’” Id.
`at 237 (emphasis added). Patent Owner then argued that the amended
`independent claims were distinguishable from Lapuyade because Lapuyade
`teaches that the user manually “select[s] an option to change to a new time
`
`1 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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`zone.”2 Id. at 238 (emphasis added). Patent Owner advanced similar
`arguments in an Appeal Brief, and the Examiner allowed the claims based
`on those arguments. See id. at 18, 69–71. Patent Owner’s arguments
`regarding Lapuyade further indicate that the term “automatically” applies to
`the specific operations of changing and then displaying the time information.
`Therefore, on this record and for purposes of this decision, 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 then displaying the time information, and that other prior operations can
`be manually initiated.
`Asserted Grounds of Unpatentability
`B.
`Obviousness of Claims 1, 5, 7, 9, 13, 15, and 17 over
`1.
`Graham
`Petitioner argues that claims 1, 5, 7, 9, 13, 15, and 17 would have
`been obvious over Graham. Pet. 2. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1, 5, 7, 9, 13, 15, and 17 would have been obvious over Graham.
`
`
`2 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 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.’” Prelim. Resp. 6 (citing Ex. 2002, 6:21–43).
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`Claims 1, 9, and 17
`a.
`Claim 1 recites “displaying a conversation of instant messages.” Ex.
`1001, 8:51. Petitioner identifies evidence indicating that Graham teaches a
`mobile device that displays a conversation of instant messages
`communicated between users. Pet. 13–15 (citing Ex. 1005, 14:17–25,
`15:11–14, Fig. 13d).
`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.
`Petitioner identifies evidence indicating that Graham teaches displaying an
`elapsed time in response to a user sending or receiving a message. Pet. 17–
`19 (citing Ex. 1005, 9:1–4, 16:37–41, Figs. 5, 6). Petitioner also identifies
`evidence indicating that Graham teaches illuminating a key on a mobile
`device with different colors to denote the age of a message. Pet. 19–20
`(citing Ex. 1005, 13:1–12, Fig. 9).
`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, therefore, argues that a person of ordinary skill in the art would
`have had a reason to combine the cited teachings from the different
`embodiments of Graham. Id. at 21–24. Specifically, according to
`Petitioner, Graham teaches 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 the feature of displaying time
`information into the embodiment that displays an instant messaging
`conversation. Id. (citing Ex. 1002 ¶¶ 15–17, 52–57).
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`
`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. As discussed above, Petitioner identifies two different
`ways in which Graham teaches displaying first time information, namely, as
`an elapsed time and as an illuminated key. With respect to the elapsed time,
`Petitioner identifies evidence indicating that Graham teaches “a time
`identifier [that] allows the mobile device to ‘compute and display the
`amount of elapsed time for the received image message,’” such that the
`received message may be “‘aged’” via the time display. Pet. 24–25 (citing
`Ex. 1005, Abstract, 2:20–23, 11:14–18). With respect to the illuminated
`key, Petitioner identifies evidence indicating that, in Graham, “‘different
`colors may . . . be employed to indicate an age of a received image message
`from the corresponding sender.’” Pet. 26 (citing Ex. 1005, 13:4–13).
`Patent Owner responds that Petitioner relies on two different ways
`that Graham teaches displaying first time information, but “never
`differentiates between these two disclosures and never explicitly explains
`what would have been obvious that supposedly meets the claim element.”
`Prelim. Resp. 18–20. On this record, Patent Owner’s argument is not
`persuasive. Petitioner explains that it would have been obvious to
`incorporate either of the two different ways of displaying first time
`information from the embodiments shown in Figures 5, 6, and 9 of Graham
`with the instant messaging embodiment shown in Figure 13 of Graham
`because it would have been useful and convenient for a user. Pet. 21–24.
`Thus, Petitioner identifies exactly which teachings from which embodiments
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`of Graham would have been combined, and explains specifically why it
`would have been obvious to combine them.
`Patent Owner responds that Petitioner has not shown sufficiently that
`Graham teaches automatically changing the displayed elapsed time as time
`progresses. Prelim. Resp. 21–23. Specifically, Patent Owner argues that, in
`Graham, “the user must manually request an update to the image messages.”
`Id. at 22 (citing Ex. 1005, 10:29–37). On this record, Patent Owner’s
`argument is not persuasive. Graham teaches a mobile device that
`“compute[s] and display[s] the amount of elapsed time for the received
`image message,” such that the received message “may be aged via time . . .
`displays.” Ex. 1005, Abstract, 11:14–18. These portions of Graham
`indicate that the mobile device automatically computes, displays, and then
`ages the elapsed time as time progresses. Thus, even if the portions of
`Graham cited by Patent Owner indicate that a user can manually initiate a
`change to the displayed elapsed time (Prelim. Resp. 22 (citing Ex. 1005,
`10:29–37)), Graham is not limited to those teachings.3
`Patent Owner responds that Petitioner has not shown sufficiently that
`the illuminated key in Graham displays time information or that it
`automatically changes color as time progresses. Prelim. Resp. 23–26.
`Patent Owner also argues that the illuminated key in Graham is not
`displayed in a message conversation. Id. at 24–25. On this record, Patent
`Owner’s arguments are not persuasive. First, Graham teaches that a
`received message “may be aged via . . . color displays,” such as by changing
`
`
`3 Because we are persuaded that Graham teaches the limitations of claim 1,
`for purposes of this decision, we do not address what Patent Owner refers to
`as Petitioner’s “backup position.” Prelim. Resp. 26–31.
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`the color of an illuminated key from green to yellow to red “to depict the
`advanced age” of the received message. Ex. 1005, Abstract, 13:1–12. These
`portions of Graham indicate that the illuminated key depicts how much time
`has passed since a message was received (i.e., time information), and that
`the color changes automatically as the messages ages. Second, 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 (emphasis
`added). This claim language can be interpreted to mean that the instant
`message is in the conversation, and that the first time information is
`displayed for that message. Patent Owner does not explain specifically why
`we should interpret claim 1 to require that the time information also be in the
`conversation. See Prelim. Resp. 24–25.
`For the foregoing reasons, Petitioner has shown sufficiently that
`Graham teaches the limitations of claim 1. Claims 9 and 17 recite
`limitations similar to those discussed above with respect to claim 1. Ex.
`1001, 9:9–22, 10:15–25. Patent Owner does not raise any additional
`arguments relating to claims 9 and 17. On this record, Petitioner
`demonstrates a reasonable likelihood of prevailing in showing that claims 1,
`9, and 17 would have been obvious over Graham.
`Claims 5, 7, 13, and 15
`b.
`Claims 5, 7, 13, and 15 depend from claims 1 or 9. Petitioner
`identifies evidence indicating that Graham teaches the limitations of claims
`5, 7, 13, and 15. Pet. 27–28, 31. Patent Owner does not raise any specific
`arguments relating to claims 5, 7, 13, and 15. On this record, we agree with
`Petitioner’s assertions and supporting evidence. Therefore, Petitioner
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`demonstrates a reasonable likelihood of prevailing in showing that claims 5,
`7, 13, and 15 would have been obvious over Graham.
`Summary
`c.
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1, 5, 7, 9, 13, 15, and 17
`would have been obvious over Graham.
`Obviousness of Claims 1, 5–7, 9, 13–15, and 17 over
`2.
`Graham and Milton
`Petitioner argues that claims 1, 5–7, 9, 13–15, and 17 would have
`been obvious over Graham and Milton. Pet. 2. We have reviewed the
`parties’ assertions and supporting evidence. For the reasons discussed
`below, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that claims 1, 5–7, 9, 13–15, and 17 would have been obvious over
`Graham and Milton.
`Claims 1, 9, and 17
`a.
`Claim 1 recites “displaying a conversation of instant messages.” Ex.
`1001, 8:51. Petitioner identifies evidence indicating that Graham teaches a
`mobile device that displays a conversation of instant messages
`communicated between users. Pet. 13–15, 34–35 (citing Ex. 1005, 14:17–
`25, 15:11–14, Fig. 13d).
`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.
`Petitioner identifies evidence indicating that Graham teaches displaying an
`elapsed time in response to a user sending or receiving a message. Pet. 17–
`19, 35 (citing Ex. 1005, 9:1–4, 16:37–41, Figs. 5, 6). As discussed above,
`Petitioner also identifies evidence indicating that a person of ordinary skill in
`the art would have had a reason to combine the embodiment in Graham that
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`displays an instant messaging conversation with the embodiments in Graham
`that display time information.4 Pet. 21–24.
`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. Petitioner identifies evidence indicating that Milton
`teaches automatically changing an elapsed time (e.g., hours and minutes) for
`messages received less than 24 hours ago to an absolute time (e.g., month
`and day) for messages received more than 24 hours ago. Pet. 36 (citing Ex.
`1006, 1:60–61, 1:67–2:4, 3:60–4:13).
`Petitioner argues that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of Graham and Milton. Pet. 36–
`40. Specifically, Petitioner points out that Graham and Milton relate to the
`same field of endeavor as the ’149 patent, namely, message
`communications. Id. at 40 (citing Ex. 1001, Abstract, 1:20–24; Ex. 1005,
`1:15–18, Ex. 1006, 1:6–9). Petitioner also explains that time information is
`critical to a user’s ability to determine a course of action, and reporting time
`information as an elapsed time or an absolute time depending on the age of
`the message as taught by Milton would allow a user of the instant messaging
`system in Graham to better determine a course of action. Pet. 36–39 (citing
`Ex. 1002 ¶¶ 15, 17, 78–83; Ex. 1006, 1:21–26, 1:35–48, 1:60–61).
`Patent Owner responds that Petitioner has not shown sufficiently that
`Milton teaches automatically changing the displayed time information.
`
`
`4 As discussed above, we are not persuaded by Patent Owner’s argument that
`Petitioner “never explicitly explains what would have been obvious that
`supposedly meets the claim element.” See supra Section II.B.1.a.
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`Prelim. Resp. 31–35. Specifically, Patent Owner argues that “[t]he only
`time Milton discloses ‘changing’ the 32-bit timestamp from its absolute
`value to a relative value is as part of the user’s manual message retrieval.”
`Id. at 33 (citing Ex. 1006, 3:48–63). On this record, Patent Owner’s
`argument is not persuasive. As discussed above, we clarify that the term
`“automatically” only applies to the specific operations of changing and then
`displaying the time information, and not to other prior operations. See supra
`Section II.A.2. The portion of Milton cited by Patent Owner indicates that a
`user manually accesses the message retrieval system to retrieve the stored
`messages. Ex. 1006, 3:48–50. The user, however, does not manually
`initiate changing the displayed time information in Milton. Rather, the
`evidence identified by Petitioner indicates that the displayed time
`information is updated automatically after the user manually accesses the
`message retrieval system. Id. at 3:48–4:13. That is sufficient, on this
`record, to meet our preliminary construction of the term “automatically.”
`See supra Section II.A.2.
`For the foregoing reasons, Petitioner has shown sufficiently that the
`combination of Graham and Milton teaches the limitations of claim 1.
`Claims 9 and 17 recite limitations similar to those discussed above with
`respect to claim 1. Ex. 1001, 9:9–22, 10:15–25. Patent Owner does not
`raise any additional arguments relating to claims 9 and 17. On this record,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1, 9, and 17 would have been obvious over Graham and Milton.
`Claims 5–7 and 13–15
`b.
`Claims 5–7 and 13–15 depend, directly or indirectly, from claims 1 or
`9. Petitioner identifies evidence indicating that the combination of Graham
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`
`and Milton teaches the limitations of claims 5–7 and 13–15. Pet. 41–42.
`Patent Owner does not raise any specific arguments relating to claims 5–7
`and 13–15. On this record, we agree with Petitioner’s assertions and
`supporting evidence. Therefore, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 5–7 and 13–15 would have
`been obvious over Graham and Milton.
`Summary
`c.
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1, 5–7, 9, 13–15, and 17
`would have been obvious over Graham and Milton.
`Obviousness of Claims 1–5, 9–13, and 17 over Graham
`3.
`and Toshio
`Petitioner argues that claims 1–5, 9–13, and 17 would have been
`obvious over Graham and Toshio. Pet. 2. We have reviewed the parties’
`assertions and supporting evidence. For the reasons discussed below,
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1–5, 9–13, and 17 would have been obvious over Graham and
`Toshio.
`
`Claims 1, 9, and 17
`a.
`Claim 1 recites “displaying a conversation of instant messages.” Ex.
`1001, 8:51. Petitioner identifies evidence indicating that Graham teaches a
`mobile device that displays a conversation of instant messages
`communicated between users. Pet. 13–15, 43 (citing Ex. 1005, 14:17–25,
`15:11–14, Fig. 13d).
`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.
`Petitioner identifies evidence indicating that Graham teaches displaying an
`
`16
`
`
`
`IPR2017-00912
`Patent 8,745,149 B2
`
`absolute time in response to a user sending or receiving a message. Pet. 44–
`45 (citing Ex. 1005, 9:1–4, 10:29–32, 12:36–67, Fig. 5). As discussed
`above, Petitioner also identifies evidence indicating that a person of ordinary
`skill in the art would have had a reason to combine the embodiment in
`Graham that displays an instant messaging conversation with the
`embodiments in Graham that display time information.5 Pet. 21–24.
`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. Petitioner identifies evidence indicating that Toshio
`teaches a call receiver that displays the time that a message was received.
`Pet. 46 (citing Ex. 1007, 230–231). Petitioner also identifies evidence
`indicating that, when the date changes, the call receiver in Toshio
`automatically changes the receipt time for the message to indicate that it was
`received the previous day. Pet. 46–47 (citing Ex. 1007, 230–231).
`Petitioner argues that a person of ordinary skill in the art would have
`had a reason to combine the cited teachings of Graham and Toshio. Pet. 46–
`51. Specifically, Petitioner points out that Graham and Toshio relate to the
`same field of endeavor as the ’149 patent, namely, message
`communications. Id. at 50–51 (citing Ex. 1001, Abstract, 1:20–24; Ex.
`1005, 1:15–18; Ex. 1007, 229–230). Petitioner also explains that the time
`information displayed in Graham loses precision as time progresses, and,
`thus, a person of ordinary skill in the art would have been motivated to
`
`
`5 As discussed above, we are not persuaded by Patent Owner’s argument that
`Petitioner “never explicitly explains what would have been obvious that
`supposedly meets the claim element.” See supra Section II.B.1.a.
`
`17
`
`
`
`IPR2017-00912
`Patent 8,745,149 B2
`
`incorporate the feature of automatically updating time information from
`Toshio into the instant messaging system of Graham to ensure that precision
`is not lost. Pet. 47–48 (citing Ex. 1002 ¶¶ 17, 102; Ex. 1007, 230).
`Patent Owner responds that Petitioner has not shown sufficiently that
`Graham or Toshio teaches automatically changing the displayed time
`information. Prelim. Resp. 35–38. In particular, Patent Owner contends
`that, even if Toshio teaches automatically changing time information stored
`in a memory, Toshio only displays the updated time information depending
`on a user’s need, not automatically. Id. at 36–38 (citing Ex. 1007, 229–231).
`On this record, Patent Owner’s argument is not persuasive. Toshio
`teaches that “when the date has been updated, the fact that the day the
`message was received is not today is memorized and displayed along with
`the incoming message and the receipt time.” Ex. 1007, 230 (emphasis
`added). This portion of Toshio indicates that, when the date is updated, that
`change is displayed automatically. Toshio also teaches that the “display
`function displays the changes over time.” Id. at 229 (emphasis added). This
`portion of Toshio similarly indicates that changes to the date are displayed
`over time automatically. Thus, even if the portions of Toshio cited by Patent
`Owner teach displaying the updated time information depending on a user’s
`need (Prelim. Resp. 36–38 (citing Ex. 1007, 229–231)), Toshio is not limited
`to those teachings.
`For the foregoing reasons, Petitioner has shown sufficiently that the
`combination of Graham and Toshio teaches the limitations of claim 1.
`Claims 9 and 17 recite limitations similar to those discussed above with
`respect to claim 1. Ex. 1001, 9:9–22, 10:15–25. Patent Owner does not
`raise any specific arguments relating to claims 9 and 17. On this record,
`
`18
`
`
`
`IPR2017-00912
`Patent 8,745,149 B2
`
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`claims 1, 9, and 17 would have been obvious over Graham and Toshio.
`Claims 2–5 and 10–13
`b.
`Claims 2–5 and 10–13 depend, directly or indirectly, from claims 1 or
`9. Petitioner identifies evidence indicating that the combination of Graham
`and Toshio teaches the limitations of claims 2–5 and 10–13. Pet. 51–54.
`Patent Owner does not raise any specific arguments relating to claims 2–5
`and 10–13. On this record, we agree with Petitioner’s assertions and
`supporting evidence. Therefore, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 2–5 and 10–13 would have
`been obvious over Graham and Toshio.
`Summary
`c.
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1–5, 9–13, and 17 would
`have been obvious over Graham and Toshio.
`Obviousness of Claims 8 and 16 over Graham and
`4.
`MacPhail; Graham, Milton, and MacPhail; and Graham,
`Toshio, and MacPhail
`Petitioner argues that claims 8 and 16 would have been obvious over
`1) Graham and MacPhail; 2) Graham, Milton, and MacPhail; and 3)
`Graham, Toshio, and MacPhail.
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