Trials@uspto.gov
`571-272-7822
`
`
`Paper 37
`Date: October 5, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., INSTAGRAM, LLC,
`and WHATSAPP INC.,
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`IPR2019-00899
`Patent 8,301,713 B2
`____________
`
`
`
`
`Before MIRIAM L. QUINN, ROBERT L. KINDER,
`and AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

`

`IPR2019-00899
`Patent 8,301,713 B2
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`
`I.
`
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION ................................................................................ 4
`A.
`Background ................................................................................ 4
`B.
`Related Matters .......................................................................... 5
`C.
`The ’713 Patent .......................................................................... 5
`D.
`The Challenged Claims .............................................................. 8
`E.
`Evidence Relied Upon ................................................................ 9
`1.
`Crawford ........................................................................ 10
`2. Watson ........................................................................... 11
`3.
`Stevens and Snader ........................................................ 11
`4.
`Erickson ......................................................................... 12
`5. Missig ............................................................................. 12
`Grounds of Unpatentability ...................................................... 12
`F.
`ANALYSIS ........................................................................................ 13
`A.
`Level of Ordinary Skill in the Art ............................................ 13
`B.
`Claim Construction .................................................................. 14
`1.
`“resumption message ..................................................... 15
`2.
`“predetermined duration of time” .................................. 15
`3.
`“responsive to said detecting an input wherein
`the input is a resumption message, outputting
`in the electronic conversation, a time stamp
`representative of the second time” ................................. 16
`a.
`The Claim Language ........................................... 17
`b.
`The Specification ................................................. 18
`c.
`The Prosecution History ...................................... 22
`d.
`“Responsive To” .................................................. 28
`e.
`Conclusion ........................................................... 29
`Obviousness ............................................................................. 29
`
`C.
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`Patent 8,301,713 B2
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`1.
`
`ii.
`
`iii.
`
`Grounds 1 and 2: Crawford, Watson, Stevens,
`Snader, and Erickson ..................................................... 30
`a.
`Claim 1 ................................................................ 30
`i.
`“[a] method of operating an electronic
`device” ....................................................... 30
`“outputting an electronic conversation
`comprising a plurality of indications,
`each indication being representative
`of at least a portion of a corresponding
`messaging communication between
`the electronic device and a second
`electronic device” ...................................... 30
`“identifying a first messaging
`communication between the electronic
`device and the second electronic device
`occurring at a first time, the first
`messaging communication having a
`corresponding first indication
`representative of at least a portion
`of the first messaging communication
`and which is one of the plurality of
`indications” ............................................... 31
`“determining that a predetermined
`duration of time has elapsed since
`the first time without additional
`communication between the electronic
`device and the second electronic
`device during that duration of time” ......... 31
`“detecting an input to the electronic
`device following said identifying and
`determining steps, said input
`occurring at a second time” ....................... 33
`“responsive to said detecting an
`input, outputting in the electronic
`conversation, a time stamp
`representative of the second time” ............ 34
`
`iv.
`
`v.
`
`vi.
`
`2
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`Patent 8,301,713 B2
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`
`b. Claims 2–3 ........................................................... 34
`c.
`Claim 4 ................................................................ 35
`d.
`Patent Owner Arguments .................................... 35
`i.
`Outputting a Timestamp “Responsive
`To” Detecting a Resumption Message ...... 36
`“Disposed Between” ................................. 36
`ii.
`iii. Determining That a Predetermined
`Duration of Time Has Elapsed .................. 37
`iv. Motivation to Combine ............................. 40
`Conclusion on Grounds 1 and 2 .......................... 44
`e.
`Grounds 3 and 4: Crawford, Watson, and Missig ........ 44
`2.
`III. CONCLUSION .................................................................................. 47
`IV. ORDER ............................................................................................... 48
`
`
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`Patent 8,301,713 B2
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`
`I.
`
`INTRODUCTION
`
`A.
`
`Background
`Facebook, Inc., Instagram, LLC, and Whatsapp Inc. (collectively,
`“Petitioner”) filed a Petition for inter partes review of claims 1–12 of U.S.
`Patent No. 8,301,713 B2 (Ex. 1001, “the ’713 patent”). Paper 2 (“Pet.”).
`Blackberry Limited (“Patent Owner”) filed a Preliminary Response. Paper
`10 (“Prelim. Resp.”).
`
`On October 8, 2019, we instituted an inter partes review of claims 1–
`12. Paper 15 (“Decision”), 32. Patent Owner then disclaimed claims 1–3,
`5–7, and 9–11 (see Ex. 2013) and filed a Patent Owner Response (Paper 23,
`“PO Resp.”),1 Petitioner filed a Reply (Paper 27, “Pet. Reply”), and Patent
`Owner filed a Sur-Reply (Paper 30, “PO Sur-Reply”). An oral hearing was
`held on July 9, 2020, by video only, and a transcript of the hearing is
`included in the record. Paper 36 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`
`1 As a result of the statutory disclaimer, claims 1–3, 5–7, and 9–11 are no
`longer regarded as claims challenged in the Petition. See Vectra Fitness,
`Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has
`interpreted the term ‘considered as part of the original patent’ in section 253
`to mean that the patent is treated as though the disclaimed claims never
`existed.” (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996))); see
`also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367,
`1372–75 (Fed. Cir. 2019) (explaining that disclaimer during infringement
`litigation “mooted any controversy” over the disclaimed claims, ending the
`Article III case or controversy requirement for district court jurisdiction).
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`
`For the reasons that follow, we determine that Petitioner has shown by
`a preponderance of the evidence that remaining claims 4, 8, and 12 of the
`’713 patent are unpatentable.
`
`B.
`
`Related Matters
`The parties identify BlackBerry Ltd. v. Facebook, Inc. et al., No. 2:18-
`cv-01844-GW-KS (C.D. Cal.), and BlackBerry Ltd. v. Snap Inc., Case No.
`2:18-cv-02693-GW-KS (C.D. Cal.), as related matters. See Pet. 1–2; Patent
`Owner Mandatory Notices (Paper 5) 2. The District Court issued a claim
`construction ruling in those cases on April 5, 2019, copies of which have
`been filed as Exhibits 1024 and 2006, and, on February 13, 2020, the District
`Court entered an order staying the proceedings as to the ’713 patent. See
`Paper 25, 1.
`Patent Owner also identifies ten inter parties review proceedings as
`matters that may affect or be affected by this one. See Paper 5, at 2–3.
`
`C.
`
`The ’713 Patent
`The ’713 patent “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, 1:18–21.
`The claimed invention can be described with reference to Figures 4
`and 5, reproduced below:
`
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`Figures 4 and 5 are “exemplary view[s] of . . . output[s]
`provided in accordance with [aspects] of the method
`of the invention.” Ex. 1001, 43–46.
`The exemplary conversation of Figure 4 includes “a plurality of
`incoming messages 72 and a plurality of outgoing messages 76 that are
`transmitted . . . at a conversational speed, i.e., at a speed in which back-to-
`back communications . . . occur without a meaningful delay therebetween.”
`Ex. 1001, 5:10–16. The patent explains that “[d]ue to the conversational
`speed of the back-to-back communications,” the messages 68 do not include
`an indication of the times at which they were transmitted, “it being assumed
`as a general matter that in such circumstances the specific time at which a
`given message within such a conversation occurred may not be of
`significance to a user.” Id. at 5:16–22. At a certain point in the
`conversation, however, “an exemplary message 68 which, for example, may
`be an outgoing message 76, may also become a non-responded-to message
`80, meaning that subsequent to its transmission substantially no additional
`
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`communication occurs . . . within a predetermined duration of time.” Id. at
`5:23–28. In that case, “the message 68 is determined in accordance with the
`invention to be a non-responded-to message 80, and responsive to such
`determination a first time stamp 84 is output adjacent the non-responded-to
`message 80.” Id. at 5:35–38.
`As shown in Figure 5, “another message 68 may subsequently be
`communicated” and “[s]ince the message 68 corresponds with a resumption
`of communication . . . after a period of interruption, the message 68 is
`determined to be a resumption message 88, and a second time stamp 92 is
`output adjacent the resumption message 88.” Ex. 1001, 5:63–67. This
`allows a user to “determine from the output on the display 50 the period of
`time during which the conversation was suspended, i.e., the time between
`transmission of the non-responded-to message 80 and transmission of the
`resumption message 88.” Id. at 6:2–6.
`The patent also describes an “exemplary output of FIG. 7” in which
`“the first time stamp 184 and the second time stamp 192 are disposed
`adjacent one another and are both disposed between the non-responded-to
`message 180 and the resumption message 188” (Ex. 1001, 6:33–36):
`
`
`Figure 7 is “another exemplary view of an output provided in accordance
`with an aspect of the method of the invention.” Ex. 1001, 51–52.
`
`7
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`D.
`
`The Challenged Claims
`Independent claim 1 is to a method of operating an electronic device,
`independent claim 4 is a corresponding Beauregard claim, and independent
`claim 9 is a corresponding device claim. They have corresponding sets of
`dependent claims.
`As noted, Patent Owner disclaimed claims 1–3, 5–7, and 9–11 of the
`’713 patent after institution. See Ex. 2013. The only claims remaining in
`are dependent claims 4, 8, and 12. Claim 4, reproduced below along with
`claims 1–3, from which it depends, is representative of the subject matter
`remaining to be addressed in this proceeding:
`1. A method of operating an electronic device, the method
`comprising:
`outputting an electronic conversation comprising a plurality of
`indications, each indication being representative of at least a
`portion of a corresponding messaging communication between
`the electronic device and a second electronic device;
`identifying a first messaging communication between the
`electronic device and the second electronic device occurring at
`a first time, the first messaging communication having a
`corresponding first indication representative of at least a
`portion of the first messaging communication and which is one
`of the plurality of indications;
`determining that a predetermined duration of time has elapsed
`since the first time without additional communication between
`the electronic device and the second electronic device during
`that duration of time;
`detecting an input to the electronic device following said
`identifying and determining steps, said input occurring at a
`second time; and
`responsive to said detecting an input, outputting in the electronic
`conversation, a time stamp representative of the second time.
`
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`2. The method of claim 1, wherein the input is a resumption
`message.
`3. The method of claim 2, further comprising outputting in the
`electronic conversation a second indication representative of at
`least a portion of the resumption message.
`4. The method of claim 3, wherein the time stamp is disposed
`between the first indication and the second indication.
`Ex. 1001, 8:48–9:3, 9:6–10.
`
`E.
`
`Evidence Relied Upon
`Petitioner relies on the following references:
`
`Reference
`U.S. Patent No. 7,366,779 B1, filed June 19, 2000
`(“Crawford”)
`Jennifer Watson and Dave Marx, Your
`Official America Online Tour Guide, 6th
`Edition (AOL Press 2001) (“Watson”)
`W. Richard Stevens, TCP/IP Illustrated, Volume 1
`(Addison-Wesley 1994) (“Stevens”)
`Jon C. Snader, Effective TCP/IP Programming
`(Addison-Wesley 2000) (“Snader”)
`Thomas Erickson et al., Socially Translucent
`Systems: Social Proxies, Persistent Conversation,
`and the Design of “Babble,” in Proceedings of the
`SIGCHI Conference on Human Factors in
`Computing Systems, pp. 72–79 (1999) (“Erickson”)
`Julian Missig, iChat Thought Bubbles, sourced from
`<https://web.archive.org/web/20030204074155/http:/
`/missig.org:80/julian/jabber/iChat/> (“Missig”)
`
`Exhibit
`1003
`
`1004
`
`1006
`
`1005
`
`1007
`
`1008
`
`Petitioner also relies on Declarations of Sandeep Chatterjee, Ph.D, filed as
`Exhibits 1002 and 1031. Patent Owner relies on a Declaration of Rajeev Surati,
`Ph.D., filed as Exhibit 2001.
`
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`
`Crawford
`1.
`Crawford is a United States patent describing aspects of an America
`Online messaging system. See Ex. 1003, 1:12–33. A screenshot illustrating
`certain features of the system is provided in Figure 16:
`
`
`
`
`Crawford’s Figure 16 is an “illustration[] of [a]
`graphical user interface[].” Ex. 1003, 2:46–47.
`Figure 16 shows that “HokieFanforLife” sent a first message
`including text “Look at my Kitty” and accompanying image 1620, and that
`“AIM Runningman” sent a reply message that includes the text “So Cute!
`Whats her name?” Ex. 1003, 17:57–62, Fig. 16. HokieFanforLife responds
`“Her name is Siri.”
`Petitioner also relies on Crawford for its “detailed explanation about
`how the IM participants’ client devices communicate with each other” using
`
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`the Transmission Control Protocol (“TCP”).2 See Pet. 14–15. That comes
`into play when Petitioner combines TCP/IP references Stevens and Snader
`with Crawford.
`
`2. Watson
`Watson is a user guide for America Online, which Petitioner cites for
`its use of messaging timestamps, such as those in brackets in Figure 7–7:
`
`
`Watson’s Figure 7-7 shows “[a]n instant message
`conversation with timestamps.” Ex. 1004, 89.
`
`Stevens and Snader
`3.
`Stevens and Snader are texts describing the use of TCP/IP. Petitioner
`cites Stevens for its description of TCP’s “keepalive timer” which, according
`to Petitioner, “allows a device to determine when a period of inactivity
`reaches the predetermined duration of time of two hours, after which a probe
`is sent to the other device to determine if the other device is still connected.”
`Pet. 18–19 (citing Ex. 1006, § 23.2, 76). Snader suggests that Stevens’ TCP
`
`2 TCP is used for communication over the Internet, using the Internet
`Protocol (“IP”), the combination being known as TCP/IP. See Ex. 1002 ¶¶
`36, 48.
`
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`keepalive timer may not be useful in some situations because it requires the
`connection to be idle for at least two hours, but also provides an
`improvement: “implementing a similar mechanism in the application,”
`known as a “heartbeat,” in which the amount of time that a connection can
`be idle is chosen based on the application’s needs and type of network. See
`Ex. 1005, 95–97.
`
`Erickson
`4.
` Erickson is an article that describes messaging software called
`“Babble,” in which users exchange messages in chat-like conversations. See
`Ex. 1007, 75. The Petition “cites Erickson for a narrow purpose – to
`disclose the output of a timestamp ‘disposed between’ two messages, as
`recited in claims 4, 8, and 12.” Pet. 53.
`
`5. Missig
`Missig is a printout of a web page maintained by the Internet Archive
`that appears to be an informal review of the Apple iChat messaging
`application by an individual named Julian Missig and posted on his personal
`website, missig.org. See Ex. 1008; Ex. 1010. The reference describes
`iChat’s use of timestamps that “appear in small text centered at the top when
`the chat starts, and whenever there is a gap of about 5 minutes or so . . . if a
`new message is sent, a new timestamp is printed.” Ex. 1008, 2.
`
`F. Grounds of Unpatentability
`This trial was instituted on the following grounds:
`
`Claims
`Basis
`References
`§ 103(a) 1–12
`Crawford, Watson, Stevens, Snader
`Crawford, Watson, Stevens, Snader, Erickson § 103(a) 4, 8, 12
`
`12
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`
`Claims
`Basis
`References
`§ 103(a) 1–3, 5–7, 9–11
`Crawford, Watson, Missig
`§ 103(a) 4, 8, 12
`Crawford, Watson, Missig, Erickson
`Following Patent Owner’s disclaimer, this Final Written Decision
`addresses the following claims and grounds:
`References
`Crawford, Watson, Stevens, Snader
`Crawford, Watson, Stevens, Snader, Erickson
`Crawford, Watson, Missig, Erickson
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims
`4, 8, 12
`4, 8, 12
`4, 8, 12
`
`II. ANALYSIS
`
`We discuss below the level of skill in the art, claim construction, and
`the patentability of remaining challenged claims 4, 8, and 12.
`
`A.
`
`Level of Ordinary Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art “would have
`possessed at least a bachelor’s degree in software engineering, computer
`science, computer engineering, or electrical engineering with at least two
`years of experience in software application development, including
`development of applications for messaging on mobile or wireless devices,
`such as development of associated user interface features and functionality
`(or equivalent degree or experience).” Pet. 5 (citing Ex. 1002 ¶¶ 12–15).
`Patent Owner argues that a person of ordinary skill in the art “would
`have had a bachelor of science degree in Computer Engineering/Computer
`Science or similar subject matter, or at least approximately two years of
`work or research experience in the fields of computer software, networking,
`and/or user experience design, or an equivalent subject matter, sufficient to
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`understand fundamental computer networking and software architecture and
`user-interface design.” PO Resp. 11 (citing Ex. 2012 ¶¶ 8–9).
`Although the parties’ formulations differ in some respects, neither
`argues that the differences would matter to the claim construction or validity
`analyses. That being the case, for purposes of this decision, we adopt Patent
`Owner’s proposal, which is consistent with the level of skill reflected in the
`prior art of record and the ’713 patent.
`
`B.
`
`Claim Construction
`In an inter partes review for a petition filed on or after November 13,
`2018, such as this one, a claim “shall be construed using the same claim
`construction standard that would be used to construe the claim in a civil
`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). In applying
`this claim construction standard, we are guided by the principle that the
`words of a claim “are generally given their ordinary and customary
`meaning,” as understood by a person of ordinary skill in the art in question
`at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–
`13 (Fed. Cir. 2005) (en banc) (citation omitted). “In determining the
`meaning of the disputed claim limitation, we look principally to the intrinsic
`evidence of record, examining the claim language itself, the written
`description, and the prosecution history, if in evidence.” DePuy Spine, Inc.
`v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006)
`(citing Phillips, 415 F.3d at 1312–17).
`We address certain terms that have been identified for construction by
`the parties, in the order originally raised.
`
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`
` “resumption message
`1.
`The parties agree that “resumption message” should be construed as
`“message after a period of interruption.” See Pet. 8; PO Resp. 27. We find
`this agreed construction to be supported in the Specification (see, e.g., Ex.
`1001, 5:64–6:2) and, therefore, adopt it.
`Patent Owner also argues in connection with this term that “the
`claimed ‘outputting’ of a time stamp representative of the second time must
`be performed ‘responsive to’ . . . detecting a ‘resumption message,’” that
`“detecting a ‘resumption message’ is a different condition from simply
`detecting every instant message of any type,” and that, as a result, the
`claims “do not encompass methods that output a time stamp invariably with
`every input message, without regard as to whether the instant message was
`detected to be a resumption message.” PO Resp. 27–28. We see this
`argument as pertaining to the “responsive to” limitation, and address it in the
`course of our discussion of that term below.
`
`“predetermined duration of time”
`2.
`Petitioner contends that “predetermined duration of time” means “a
`length of time set in advance before the first messaging communication is
`sent.” Pet. 10. Patent Owner argues that “the proper construction of this
`phrase is ‘a duration of time determined based on computer programming
`that is implemented prior to the first messaging communication.’” PO Resp.
`25 (citing Ex. 2012 ¶ 22; Ex. 2006, 27). However, the parties agree that “the
`Board need not construe this term for purposes of comparing the claims to
`the prior art references cited in this proceeding.” PO Resp. 26.
`We agree that this term does not need to be interpreted for us resolve
`the patentability issue and, therefore, do not construe it. See Vivid Techs.,
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`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding
`that “only those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy”); see also Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017
`(Fed. Cir. 2017).
`
`3.
`
`“responsive to said detecting an input wherein the
`input is a resumption message, outputting in the electronic
`conversation, a time stamp representative of the second time”
`Patent Owner argues that “remaining claims 4, 8, and 12 further
`narrow the original phrase ‘responsive to said detecting an input’ to only that
`condition in which the recited ‘input’ must be ‘a resumption message’” and
`that “[t]herefore, the claimed ‘outputting’ of a time stamp representative of
`the second time does not encompass outputting a time stamp invariably with
`every input message, but instead must be performed ‘responsive to’ a
`specific and tailored condition—said detecting ‘a resumption message.’”
`PO Resp. 12–13. Patent Owner further argues that the ’713 patent
`“expressly disparage[s] such a method as something to be ‘avoid[ed]’” and
`that “‘every embodiment disclosed’ in the ’713 patent shows the opposite
`configuration in which a timestamp is not displayed with every instant
`message.” Id. at 13.
`According to Patent Owner, “this limitation of claim 4 does not
`merely recite ‘outputting a time stamp representative of a second time,’” but
`instead “requires more,” because
`[w]hen the entirety of claim 4’s requirements are considered, it
`is plain to see that a specific type of ‘outputting’ must be
`performed in response to a required condition precedent
`(detecting a resumption message) and with reference to other
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`preceding steps in the claim (‘said’ detecting step which must
`follow ‘said’ identifying and determining steps).
`PO Resp. 13–14.
`Patent Owner more specifically argues that the Petition’s “analysis of
`Grounds 12 implies a claim scope premised on at least four legal errors”:
`(1) “the law forbids the claims to be interpreted in a manner that
`encompasses the traditional method disparaged and expressly ‘avoided’ in
`the ’713 patent specification”; (2) “the law forbids an overly broad
`interpretation of the claims that are inconsistent with ‘every embodiment
`disclosed’ in the ’713 patent”; (3) “ignoring the prosecution history of the
`’713 patent”; and (4) not acknowledging that the “Federal Circuit has
`previously held that ‘responsive to’ language should be treated as a
`condition precedent for selectively performing the claimed step, which is
`distinct from prior methods that ‘invariably’ perform the step.” PO Resp.
`14, 16, 20, 22.
`We begin our analysis with the claims, and then discuss Patent
`Owner’s arguments regarding the Specification, the file history, and the
`cases cited regarding “responsive to.”
`
` The Claim Language
`a.
` We find that Patent Owner’s arguments are not supported by the
`claim language. Claim 1 requires outputting a time stamp in response to the
`detection of a resumption message, but simply does not require that time
`stamps are output only upon the detection of a resumption message, or that
`time stamps are not output upon the detection of a non-resumption message.
`Patent Owner’s argument that claim 2 narrows claim 1 such that
`timestamps are only output upon satisfaction of a “condition in which the
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`recited ‘input’ must be ‘a resumption message’” is not persuasive. Claim 2
`does limit the type of “input” that triggers the claimed output of a timestamp
`to resumption messages, but it does not narrow claim 1 to require that
`timestamps be output only upon detection of that input. While it is correct to
`say that claim 2 recites the output of a time stamp upon receipt of a
`resumption message, and that the output of that time stamp is thus
`“conditioned” on receipt of the time stamp, nothing in the claim limits what
`happens if the condition is not satisfied.
`
`The Specification
`b.
`Patent Owner argues that “the law forbids the claims to be interpreted
`in a manner that encompasses the traditional method disparaged and
`expressly “avoided” in the ’713 patent specification.” PO Resp. 14.
`To support this argument, Patent Owner points us to the following
`portions of the Specification of the ’713 Patent:
`If the conversation continues quickly, i.e., substantially without
`interruption, the messages do not need a time stamp on them. In
`the environment of a handheld electronic device, it would be
`desirable to avoid unnecessary time stamps and other unneces-
`sary output since it occupies too much valuable space on the
`limited display of the handheld electronic device.
`Ex. 1001, 1:56–67.
`The different fashions of selectively providing intelligent time
`data in the form of selectively output time stamps advanta-
`geously saves valuable space on the display 50. Moreover, such
`selective outputting of time stamps advantageously avoids un-
`necessary visual clutter on the display 50.
`Id. at 8:34–3. See PO Resp. 14–15.
`As an initial matter, we do not agree with Patent Owner that “the law
`forbids” claim interpretations that encompass features that are disparaged.
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`There is no absolute rule; instead, and as in the cases cited by Patent
`Owner,3 claim interpretation involves a holistic analysis of the claim
`language, the specification, the file history, and any available extrinsic
`evidence. See Philips, 415 F.3d at 1312–17. And, of course, “[t]here is a
`heavy presumption that claim terms are to be given their ordinary and
`customary meaning.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353,
`1358 (Fed. Cir. 2017). “Properly viewed, the ‘ordinary meaning’ of a claim
`term is its meaning to the ordinary artisan after reading the entire patent.”
`Id. (quoting Phillips, 415 F.3d at 1321).
`That said, we also do not agree with Patent Owner’s analysis of the
`cited passages, because both are describing concerns that are present in
`handheld devices, with correspondingly small screens. The first specifically
`identifies “the environment of a handheld electronic device,” and the second
`expresses concerns associated with “display 50,” which is that of a handheld
`device. See Ex. 1001, 3:66–4:10. The claims, however, are directed more
`generally to “electronic devices,” and Patent Owner does not show that the
`concerns about display size that exist in handheld devices necessarily apply
`to all electronic devices. Patent Owner thus has not shown that the
`advantages identified in the specification would necessarily apply to the full
`scope of devices covered by the claims. This significantly undercuts Patent
`Owner’s argument that claims must be read to include this feature. See Tate
`Access Floors, Inc. v. Maxcess Techs., Inc., 222 F.3d 958, 966 (Fed. Cir.
`
`
`3 SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d
`1337 (Fed. Cir. 2001); Techtronic Indus. v. International Trade Commission,
`944 F.3d 901 (Fed. Cir. 2019); Inpro II Licensing, S.A.R.L. v. T-Mobile USA,
`Inc., 450 F.3d 1350, 1354 (Fed. Cir. 2006).
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`2000) (“[A]lthough the specification may well indicate that certain
`embodiments are preferred, particular embodiments appearing in the
`specification will not be read into the claims when the claim language is
`broader than such embodiments.”) (quoting Kemco Sales, Inc. v. Control
`Papers Co., 208 F.3d 1352, 1362 (Fed. Cir. 2000)).
`Patent Owner next argues that “the law forbids an overly broad
`interpretation of the claims that are inconsistent with ‘every embodiment
`disclosed’ in the ’713 patent.” PO Resp. 16. Again, however, there is no
`such prohibition and, in fact, the Federal Circuit explained in Philips that
`“although the specification often describes very specific embodiments of the
`invention, [the Court has] repeatedly warned against confining the claims to
`those embodiments.” 415 F.3d at 1323; see also Nazomi Communications,
`Inc. v. ARM Holdings, PLC, 403 F.3d 1364, 1369 (Fed. Cir. 2005) (also
`confirming that claims may embrace “different subject matter than is
`illustrated in the specific embodiments in the specification”). It is thus clear
`that the law does not require us to interpret the claims to cover the described
`embodiments. Instead, we consider the descriptions of the disclosed
`embodiments as part of a full analysis of the record.
`We agree with Patent Owner that all disclosed embodiments that
`determine a predetermined duration of time has elapsed, as claimed, describe
`generating time stamps only for resumption messages. However, we do not
`agree that the claims must be construed to preclude time stamps for non-
`resumption messages in order to be “consistent” with the disclosed
`embodiments. This is because construing the claims as specifying what
`happens upon receiving a resumption message, but not specifying what
`happens upon receipt of a non-resumption message, is not inconsistent with
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`the disclosed embodime