Paper No. 17
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00912
`U.S. Patent No. 8,745,149
`
`––––––––––––––––––
`
`PATENT OWNER’S RESPONSE
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`
`
`

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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`TABLE OF CONTENTS
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`Exhibit List ................................................................................................................ iv
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`The ’149 Patent ................................................................................................ 2
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`A. Overview of the ’149 Patent .................................................................. 2
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`B.
`
`C.
`
`Priority Date and Relevant Prosecution History ................................... 5
`
`Person of Ordinary Skill in the Art ....................................................... 7
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`III. Claim Construction .......................................................................................... 8
`
`A.
`
`B.
`
`“First Input” (All Claims) ..................................................................... 9
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`“Automatically Changing … and Displaying” (All Claims) ................ 9
`
`i.
`
`ii.
`
`iii.
`
`“Automatically” Means Not Manually Initiated ....................... 10
`
`The Claims Require “Automatically Changing” and
`“Automatically … Displaying”................................................. 14
`
`The Board’s Clarification Reads Out the “Automatically …
`Displaying” Requirement .......................................................... 16
`
`IV. Petitioner Has Failed to Show That the Grounds of the Petition Render the
`Challenged Claims Unpatentable .................................................................. 18
`
`A. Graham’s Mixed Media Embodiment Relies on Email, Not “Instant
`Messages,” and Petitioner’s Deshpande Grounds Cannot Cure This
`Deficiency (All Grounds) .................................................................... 18
`
`i.
`
`Graham’s Mixed Media Embodiment Relies on Email, Not
`SMS (Grounds 1-6) ................................................................... 21
`
`ii.
`
`Graham’s Use of Email Does Not Show “Instant Messages” .. 25
`
`B.
`
`Deshpande Cannot Cure Petitioner’s “Conversation of Instant
`Messages” Deficiency in Graham (Grounds 7-12) ............................. 28
`i
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`

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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`C.
`
`Graham Does Not Disclose “Automatically Changing … and
`Displaying” (Grounds 1, 4, 7, and 10) ................................................ 31
`
`i.
`
`Graham’s Relative Timestamp Is Not “Automatically
`Chang[ed] … and Display[ed]” ................................................ 32
`
`ii.
`
`Graham’s Input Key Is Not “Automatically Chang[ed]” ......... 37
`
`iii. Dr. Olsen’s Attempts to Justify Graham’s “Automatic”
`Functionality are Not Credible.................................................. 40
`
`iv. Dr. Olsen Repudiated Petitioner’s Backup Argument That
`“Automatic” Operation Would Have Been Obvious, and for
`Good Reason ............................................................................. 43
`
`D. Graham and Toshio Do Not Render Claims 1-5, 9-13, and 17 Obvious
`(Grounds 3, 6, 9, and 12) ..................................................................... 48
`
`E.
`
`Graham and Milton Do Not Render Claims 1, 5-7, 9, 13-15, and 17
`Obvious (Grounds 2, 5, 8, and 11) ...................................................... 53
`
`i.
`
`Milton is Non-Analogous Art to the ’149 Patent ...................... 54
`
`ii. Milton Does Not Disclose “Automatically Changing … and
`Displaying” ............................................................................... 58
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`V.
`
`Reservation of Rights .................................................................................... 62
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`VI. Conclusion ..................................................................................................... 62
`
`Certificate Of Compliance ....................................................................................... 63
`
`Certificate Of Service............................................................................................... 64
`
`
`
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`ii
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................. 45, 46, 48
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .................................................................... 54, 56
`CollegeNet, Inc. v. ApplyYourself, Inc.,
`418 F.3d 1225 (Fed. Cir. 2005) .......................................................................... 13
`Google Inc. v. Koninklijke Philips N.V.,
`IPR2017-00447, Paper 7 (PTAB June 8, 2017) ................................................. 30
`Graham v. John Deere Co. of Kansas City,
`383 U.S. 1 (1966) ................................................................................................ 29
`In re Hughes,
`345 F.2d 184 (CCPA 1965) .......................................................................... 37, 52
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2016) .................................................................... 45, 46
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) .............................................................. 56, 57, 58
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015), overruled on other grounds, Aqua
`Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc) ..................... 8, 14
`Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,
`No. 2015-1855, 639 F. App’x 639 (Fed. Cir. May 4, 2016), cert.
`granted, No. 16-712 (U.S. June 12, 2017) ......................................................... 62
`Ryko Mfg. Co. v. Nu-Star, Inc.,
`950 F.2d 714 (Fed. Cir. 1991) ............................................................................ 42
`SecureNet Techs., LLC v. Icontrol Networks, Inc.,
`IPR2016-01919, Paper 9 (PTAB Mar. 30, 2017) ............................................... 29
`
`iii
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`IPR2017-00912 (US. Patent No. 8,745,149)
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`Patent Owner’s Response
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`Tempo Lighting Inc. v. Tivoli LLC,
`742 F.3d 973 (Fed. Cir. 2014) ........................................................................ 8, 12
`
`Statutes
`
`35 U.S-C. § 112(b) ................................................................................................... 13
`
`35 U.S.C. § 316(e) ..................................................................................................... 1
`
`Other Authorities
`
`37 C-F.R- § 42.6(a)(3) .............................................................................................. 47
`
`37 C.F.R. § 42.65(a) ................................................................................................. 47
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 45
`
`EXHIBIT LIST
`
`n Exhibit Description
`2001 US. Patent No. 7,181,497 to Appelman et al.
`
`2002 US. Patent No. 7,219,109 to Lapuyade et al.
`
`2003
`
`The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`
`2004 Declaration of Sharon Lee
`
`2005
`
`CV of Dr. George Ligler [NEW]
`
`2006 Deposition Transcript of Dr. Daniel R. Olsen, Jr. (Nov. 17, 2017) [NEW]
`
`2007 Declaration of Dr. George Ligler [NEW]
`
`
`
`
`
`iv
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`I.
`
`Introduction
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`Patent Owner BlackBerry Limited (“Patent Owner”) submits this Response
`
`in opposition to the Petition for inter partes review (Paper 1) of U.S. Patent No.
`
`8,745,149 (“’149 patent”). In its Institution Decision (Paper 7, “Dec.”), the Board
`
`instituted trial on twelve grounds of unpatentability: (1) claims 1, 5, 7, 9, 13, 15,
`
`and 17 as obvious over Graham; (2) claims 1, 5-7, 9, 13-15, and 17 as obvious over
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`Graham and Milton; (3) claims 1-5, 9-13, and 17 as obvious over Graham and
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`Toshio; (4) claims 8 and 16 as unpatentable over Graham and MacPhail; (5) claims
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`8 and 16 as unpatentable over Graham, Milton, and MacPhail; (6) claims 8 and 16
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`as unpatentable over Graham, Toshio, and MacPhail; and (7)-(12) each of grounds
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`(1)-(6) with the further addition of Deshpande. For the reasons discussed below,
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`Petitioner Google LLC (“Petitioner”) has not met its burden of proving, by a
`
`preponderance of the evidence, that any of claims 1-17 are unpatentable. See 35
`
`U.S.C. § 316(e).
`
`First, Petitioner mistakenly relies on Graham to disclose a “conversation of
`
`instant messages” via a combination of its mixed media messaging embodiment
`
`and SMS messages. But Graham’s mixed media messaging embodiment uses
`
`email to communicate, not SMS, and one of ordinary skill in the art would not
`
`consider Graham’s use of email to be “instant messaging.” Nor can Petitioner
`
`show that it have been obvious to modify Graham with Deshpande to cure this
`
`1
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`deficiency—its analysis is entirely premised on replacing Graham’s non-existent
`
`use of SMS messages in the mixed media messaging embodiment.
`
`Second, Graham does not disclose “automatically changing … and
`
`displaying” time information under the correct interpretation of that phrase.
`
`Graham does not explicitly describe how the disclosed input key or relative time
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`embodiments are updated, and its disclosure is instead consistent with manually-
`
`initiated functionality. Dr. Olsen also repudiated any “backup” argument advanced
`
`by Petitioner during his deposition.
`
`Finally, Toshio nor Milton cannot cure these deficiencies. Neither of them
`
`are relied on to disclose “instant messages” and neither disclose “automatically
`
`changing … and displaying” time information. Moreover, Milton is non-
`
`analogous art to the ’149 patent. For all these reasons, Petitioner’s challenge fails.
`
`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
`
`basis to a second device. Id., 1:40-44. The ’149 patent describes an improved
`
`handheld electronic device that provides time data regarding certain aspects of a
`
`messaging conversation to a user. Id., 2:9-15. Time data for instant messages can
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`2
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`be provided, for example, in situations where an interruption has occurred during a
`
`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.
`
`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
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`are output without displayed time stamps, but upon moving a cursor or other
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`pointing device in proximity to a given message a corresponding requested time
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`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
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`readily output. Id., 7:16-26.
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`3
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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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.
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`
`
`As shown in Figure 10, the ’149 patent describes smart time stamps that
`
`provide additional information depending upon the prevailing circumstances. Ex.
`
`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
`
`PM Sep. 17, 2004,” or even “2:44 pm yesterday.” Id., 7:40-50. The first time
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`stamp can also change 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 change from
`
`4
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`displaying relative times to displaying absolute times after the expiration of a given
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`time duration, such as changing from displaying “fifty-nine minutes ago” to “2:54
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`pm.” Id., 7:64-8:5.
`
`Independent claims 1, 9, and 17, respectively, recite a method, an electronic
`
`device, and a non-transitory computer readable medium related to this disclosure.
`
`Claim 1 is recited 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.
`
`B.
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`Priority Date and Relevant Prosecution History
`
`The ’149 patent was filed on September 13, 2012, and is a continuation of
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`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
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`September 19, 2003. The ’149 patent is entitled to at least this priority date, which
`
`Petitioner has not challenged. See Pet. 3.
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`5
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`The Examiner initially rejected the claims 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
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`Lapuyade (Ex. 2002). Ex. 1004, 245-47. Lapuyade discloses a “Time 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 changed manually,
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`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.
`6
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`Patent Owner amended the claims to (1) combine “changing the first time
`
`information …” and “displaying the second time …” clauses into a single step, and
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`(2) clarify that the entire step happens “automatically … as time progresses,”
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`rather than, for example, “in response to a second input.” Ex. 1004, 233. Thus,
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`both the “changing” and “displaying” are modified by “automatically.” Patent
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`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
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`“[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).
`
`C.
`
`Person of Ordinary Skill in the Art
`
`The ’149 patent explains its relevant field as follows: “The invention relates
`
`generally to handheld electronic devices and, more particularly, 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.
`
`One of ordinary skill in the art in the field of the ’149 patent would have 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
`
`7
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`such as cellular telephones, personal digital assistances (PDA), or other handheld
`
`devices. Declaration of Dr. George Ligler (Ex. 2007), ¶41.
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` Petitioner’s level of skill in the art, however, mischaracterizes the ’149
`
`patent’s field of invention as generic graphical user interfaces: “A person of
`
`ordinary skill in the art … at the time of the alleged invention would have had at
`
`least a B.S. degree in computer science, electrical engineering, or equivalent
`
`thereof, and at least two years of experience in the relevant field, e.g., graphical
`
`user interfaces.” Pet. 6-7 (emphasis added); Ex. 2007, ¶42.
`
`III. Claim Construction
`
`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),
`
`overruled on other grounds, Aqua Prod., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir.
`
`2017) (en banc). In an inter partes 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.
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`8
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`A.
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`“First Input” (All Claims)
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`Independent claims 1, 9, and 17 recite “first input.” Petitioner proposes that
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`“first input” should be interpreted to mean “any event detected by the electronic
`
`device.” Pet. 11. The precise metes and bounds of this term does not appear
`
`relevant to the issues raised by this proceeding, so the Board need not construe it.
`
`B.
`
`“Automatically Changing … and Displaying” (All Claims)
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`Independent claims 1, 9, and 17 recite “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) read “automatically” out of
`
`the claim by mapping this step to manually initiated actions (Pet. 19-26, 41-45),
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`and (2) analyze the “automatically changing … and displaying” as if it were two
`
`separate steps, only the first of which occurs “automatically” (id., 24-25, 44-45).
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`In both cases, Petitioner seeks to ignore or undo the claim amendments Patent
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`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.
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`In its Institution Decision, the Board adopted Patent Owner’s proposed
`
`construction from the Preliminary Response, and it should do so again. See Dec.
`
`9
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`5-6. The Board, however, added one clarification: “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.”
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`Dec. 8. On its face, this clarification is reasonable; Patent Owner does not argue
`
`that other, prior operations unrelated to the “changing” and “displaying” of time
`
`information cannot be manually initiated. As applied by the Board, however, it
`
`operates to undo the requirement of “automatically … displaying,” as explained
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`below.
`
`i.
`
` “Automatically” Means Not Manually Initiated
`
`The broadest reasonable interpretation of an “automatic” operation is one
`
`not manually initiated. Petitioner advances an implicit construction of
`
`“automatically” that would cover manually initiated operations. This implicit
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`construction reads “automatically” out of the claims and conflicts with their plain
`
`and ordinary meaning.
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`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
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`common meaning: “[a]cting or operating in a manner essentially independent of
`
`external influence or control.” E.g., The American Heritage College Dictionary
`
`(4th Ed. 2004) (Ex. 2003), 96-97. In this context, a manually initiated action is not
`
`“automatically” performed. Claim 1 confirms this understanding by distinguishing
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`10
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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`between (1) 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 (2) 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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`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”
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`from a smart time stamp “configured to automatically change” from a first display
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`to a second, such as by “chang[ing] as time progressed.” Ex. 1001, 6:19-23, 7:40-
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`8:5. This functionality directly corresponds to the claims. Compare Ex. 1001,
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`Claims 1 & 8 (manual operation: “displaying … in response to … detecting a
`
`pointing device”) with the third limitation of Claim 1 (automatic operation:
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`“automatically changing the first time information … as time progresses and
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`displaying …”). For example, the ’149 patent discloses that “upon moving a cursor
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`… or other pointing device … a corresponding requested time stamp is output
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`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 relied upon by Patent Owner
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`11
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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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).
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`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
`
`progresses” and combined the “automatically” language with the second
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`“displaying” step 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, 233-39. The Examiner allowed the patent based on this argument. Id.,
`
`18, 70-71. Any construction of “automatically” that would reverse this
`
`amendment and cover manually-initiated “changing” and “displaying” would
`
`render Patent Owner’s amendment superfluous, and the Examiner’s subsequent
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`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
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`office. 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
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`12
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Patent Owner’s Response
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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.
`
`Other cases that have interpreted “automatically” more broadly are
`
`inapposite, and instead illustrate why Petitioner’s mapping is improper. In
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`CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1235 (Fed. Cir. 2005)
`
`(citation omitted), 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 only relevant action: causing the output of a changed time stamp. Ex.
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`1001, 6:19-23, 7:40-8:5. The understanding of “automatically” must therefore be
`
`considered in the specific context of the claimed invention.
`
`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
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`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 the inventor … regards as the
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`invention.” 35 U.S.C. § 112(b) (pre-AIA). Petitioner’s proposed interpretation
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`conflicts with the plain and ordinary meaning of the claims and cannot be the
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`broadest reasonable interpretation. See Proxyconn, Inc., 789 F.3d at 1298.
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`The broadest reasonable interpretation of an operation performed
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`“automatically,” in view of the intrinsic record as a whole, is one not manually
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`initiated. The Board preliminary adopted this requirement, and should maintain it
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`in the final written decision. See Dec. 5-8.
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`ii.
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`The Claims Require “Automatically Changing” and
`“Automatically … Displaying”
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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.” Petitioner advances an implicit construction of this
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`step as requiring only “automatically changing,” with no requirement that the
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`claimed “displaying” occur “automatically.” See Pet. 24-25, 44-45.
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`The prosecution history, however, mandates this interpretation because
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`Patent Owner amended the claims to clarify this requirement. In response to the
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`Examiner’s reliance on the Lapuyade reference, Patent Owner amended the claims
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`as follows:
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`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
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`displaying the second time information in response to a second
`input.
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`Ex. 1004, 233; see id., 246. The original claims recited “displaying the second
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`time information in response to a second input,” but the amendment dropped any
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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 relied on 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, 7:40-50 (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.
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`Petitioner’s theory of the claims would, again, undo Patent Owner’s
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`amendment and revert the claims to their pre-amendment state. The broadest
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`reasonable interpretation of the “automatically chang[ing] … and displaying” step
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`as a whole requires “automatically changing” and “automatically … displaying.”
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`The Board preliminary adopted this requirement, and should maintain it in the final
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`written decision. See Dec. 5-8.
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`iii.
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`The Board’s Clarification Reads Out the “Automatically …
`Displaying” Requirement
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`In its Institution Decision, the Board adopted Patent Owner’s proposed
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`construction from the Preliminary Response, and it should do so again. See Dec.
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`5-6. The Board, however, clarified “in the context of the challenged claims, the
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`term ‘automatically’ only applies to the specific operations of changing and then
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`displaying the time information, and that other prior operations can be manually
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`initiated.” Dec. 8. On its face, this clarification is reasonable; Patent Owner does
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`not argue that other, prior operations unrelated to the “changing” and “displaying”
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`of time information cannot be manually initiated. As applied by the Board,
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`however, it operates to undo the requirement of “automatically … displaying.”
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`The Board cited the ’149 patent’s disclosure of “the first time stamp 84
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`potentially could be configured to automatically change from being displayed as
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`‘2:44 pm’ on the day of communication of the non-responded-to message 80 to
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`being displayed as, for instance, ‘2:44 pm Thursday’ ….” Ex. 1001, 7:40-50. In
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`that situation, it is not an intervening manual action by the user that is the cause of
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`the automatic change and display. Instead, the passage of time is the cause of the
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`automatically updated display. If the user has the application open when the
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`automatic change occurs, then the display will be automatically updated.
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`This is further clarified by the ’149 patent’s disclosure related to “active
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`time stamps,” which show “automatically changing … and displaying” on a
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`shorter time scale, such as changing from saying “less than one minute ago” to
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`saying “one minute ago”, “two minutes ago”, “forty-five minutes ago”, and the like
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`as time progressed. Ex. 1001, 7:59-64. In this case, the ’149 patent describes
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`“automatically changing … and displaying” time information as time progresses,
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`without requiring any intervening manual input to prompt the updated display. Ex.
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`2007, ¶¶28-30, 45.
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`Dr. Olsen confirmed during his deposition the ordinary understanding of the
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`distinction between manually initiated and automatically initiated actions. For
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`example, setting an oven to preheat is a manually initiated action. Ex. 2006, 39:7-
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`40:3. The oven beeping once it reaches 375 degrees, however, is an automatically
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`initiated action. Id. Conversely, if one manually turns on a microwave that
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`simultaneously and immediately heats the food and spins a turntable, both of those
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`actions would be manually initiated. Id., 41:7-42:16.
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`Therefore, while Patent Owner agrees with the Board that “the term
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`‘automatically’ only applies to the specific operations of changing and then
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`displaying the time information, and that other prior operations can be manually
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`initiated,” those prior operations cannot be the direct and immediate cause of the
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`“changing … and displaying,” which would then render those operations manually
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`initiated.
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`IV. Petitioner Has Failed to Show That the Grounds of the Petition Render
`the Challenged Claims Unpatentable
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`In its Institution Decision, the Board instituted trial on twelve grounds of
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`unpatentability:
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`(1) claims 1, 5, 7, 9, 13, 15, and 17