Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`FACEBOOK, INC., WHATSAPP INC., AND INSTAGRAM, LLC,
`Petitioners
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`U.S. Patent No. 8,677,250 B2
`Issue Date: March 18, 2014
`
`
`Title: SYSTEM AND METHOD FOR SWITCHING BETWEEN AN INSTANT MESSAGING
`CONVERSATION AND A GAME IN PROGRESS
`
`
`DECLARATION OF SANDEEP CHATTERJEE, PH.D.
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`I. 
`
`Table of Contents
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`Page
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`II. 
`III. 
`
`B. 
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A.  Qualifications and Experience ............................................................. 1 
`B.  Materials Considered ............................................................................ 4 
`PERSON OF ORDINARY SKILL IN THE ART ......................................... 5 
`STATEMENT OF LEGAL PRINCIPLES ..................................................... 7 
`A. 
`Claim Construction .............................................................................. 7 
`IV.  THE ’250 PATENT ........................................................................................ 9 
`A. 
`The Specification .................................................................................. 9 
`B. 
`The Claims of the ’250 Patent ............................................................ 13 
`V.  APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ........... 14 
`A. 
`Brief Summary of Prior Art ............................................................... 15 
`1. 
`Galli [Ex. 1003] ........................................................................ 15 
`2. 
`Crane [Ex. 1004] ...................................................................... 16 
`3.  Miyaji [Ex. 1005] ..................................................................... 17 
`Claims 1, 4, 5, 6, 8, 9, 12, 13 , and 14 are Obvious in View of
`Galli, Crane, and Miyaji (Ground 1) .................................................. 20 
`1. 
`Independent Claim 1 ................................................................ 20 
`a. 
`“enabling a game application on the electronic
`device to utilize a contact list for an instant
`messaging application for playing games with
`contacts in the contact list by identifying game
`play in the contact list” (Claim 1[a]) ............................. 24 
`“during a game in progress with a particular
`contact in the contact list, preparing game
`messages to be sent to the particular contact by
`including game progress data in an instant
`messaging message and an identifier to associate
`the data with the game application” (Claim 1[b]) ........ 41 
`
`b. 
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`-i-
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`Table of Contents
`(continued)
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`Page
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`c. 
`
`d. 
`
`“communicating at least one game message during
`the game in progress with the particular contact
`using an instant messaging system used by the
`instant messaging application” (Claim 1[c]) ................ 46 
`“displaying at least one instant message in an
`instant messaging conversation user interface
`associated with the particular contact indicative of
`game progress, the instant messaging conversation
`user interface enabling additional instant messages
`to be sent to the particular contact in addition to
`instant messages indicating game play; and”
`(Claim 1[d]) ................................................................... 47 
`“displaying a game in progress user interface
`associated with the game play, after detecting a
`selection in the instant messaging conversation
`user interface to switch to the game in progress.”
`(Claim 1[e]) ................................................................... 54 
`Dependent Claim 4 .................................................................. 57 
`2. 
`Dependent Claim 5 .................................................................. 58 
`3. 
`Dependent Claim 6 .................................................................. 59 
`4. 
`Dependent Claim 8 .................................................................. 61 
`5. 
`Independent Claim 9 ................................................................ 63 
`6. 
`Dependent Claim 12 ................................................................ 65 
`7. 
`Dependent Claim 13 ................................................................ 66 
`8. 
`Dependent Claim 14 ................................................................ 66 
`9. 
`VI.  NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ...... 67 
`VII.  CONCLUSION ............................................................................................. 70 
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`e. 
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`-ii-
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`I, Sandeep Chatterjee, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I am the Chief Executive Officer of Experantis LLC, a technology
`
`consulting company. I am also the Dean of the Mobility Center of Excellence at the
`
`International Institute of Digital Technologies. Previously, I was the Executive Vice
`
`President and Chief Technology Officer of SourceTrace Systems, Inc., a technology
`
`and services company enabling the delivery of secure remote electronic services
`
`over landline and wireless telecommunications networks.
`
`2.
`
`I received my bachelor’s degree in Electrical Engineering and
`
`Computer Science from the University of California, Berkeley in 1995. I received
`
`my master’s degree in Computer Science from the Massachusetts Institute of
`
`Technology (MIT) in 1997, and my doctorate in Computer Science from MIT in
`
`2001. I received a certificate of completion for an executive education program on
`
`global leadership from Harvard University in 2011. My doctoral dissertation at MIT,
`
`entitled “Composable System Resources for Networked Systems,” which involved
`
`networked client architectures and systems, was selected as one of the top inventions
`
`in the history of MIT’s Laboratory for Computer Science. This invention is
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`showcased in a time capsule at the Museum of Science in Boston, Massachusetts.
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`
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`1
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`3.
`
`In 2011, I was named a Young Global Leader. This honor, bestowed
`
`each year by the World Economic Forum, recognizes and acknowledges the top
`
`leaders—all below the age of 40—from around the world for their professional
`
`accomplishments, commitment to society, and potential to contribute to shaping the
`
`future of the world. In 2016, I was appointed to the World Economic Forum’s expert
`
`network as an expert in technology and innovation, and I advise world leaders on
`
`issues related to technology and innovation.
`
`4.
`
`From 1997, I was the Entrepreneur-in-Residence at FidelityCAPITAL,
`
`the venture capital arm of Fidelity Investments. In 1999, I founded and served as
`
`President and Chief Technology Officer (CTO) of Satora Networks, which
`
`developed tools and technologies for building appliances and services for the
`
`Internet using wireless and other technologies to extend it beyond the desktop.
`
`5.
`
`In 2001, I joined Bluestone Software’s Mobile Middleware Labs as a
`
`Senior Engineer developing applications and systems infrastructure for enterprise
`
`Java/J2EE, Web services, and enterprise mobile solutions. After the completion of
`
`Hewlett-Packard’s (“HP”) acquisition of Bluestone, I became a Senior Member of
`
`the Technical Staff at HP’s Middleware Division. I was responsible for architecting
`
`and developing the company’s next-generation Web services platform for enterprise
`
`as well as mobile environments, known as the Web Services Mediator.
`
`
`
`2
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`6.
`
`I was part of the Expert Group that developed the JSR-00172 J2ME
`
`(Java 2 Platform, Micro Edition) Web Services Specification, the worldwide
`
`standard for mobile Web services. I am the co-author, with James Webber, of the
`
`book “Developing Enterprise Web Services: An Architect’s Guide” (published by
`
`Prentice-Hall in 2004). This book has been adopted by over 100 universities and
`
`colleges around the world and has been translated or reprinted in numerous countries
`
`around the world.
`
`7.
`
`I have extensive experience in architecting, developing, optimizing,
`
`deploying and managing complex computing systems, including mobile computing
`
`systems and messaging based systems, throughout the world. I have architected and
`
`developed mobile and distributed computing systems, including hardware and
`
`software for these systems. As part of supporting multiple devices and form factors,
`
`I have extensive experience with creating user interfaces that allow users to view the
`
`system through a display device and provide user input using a keypad, mouse and/or
`
`other input device. I also have experience in developing distributed computing
`
`systems for single- and multi-player gaming. In the case of multi-player games, the
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`system supported the communication of messages between each player through an
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`intermediary server. The messages contained information about gaming actions
`
`
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`3
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
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`performed by each player, and could further include additional player-to-player
`
`communications.
`
`8.
`
`9.
`
`I have attached a more detailed list of my qualifications as Exhibit A.
`
`Experantis is being compensated for my time working on this matter at
`
`my standard hourly rate plus expenses. Neither Experantis nor I have any personal
`
`or financial stake or interest in the outcome of the present proceeding, and the
`
`compensation is not dependent on the outcome of this IPR and in no way affects the
`
`substance of my statements in this declaration.
`
`B. Materials Considered
`10. The analysis that I provide below is based on my education and
`
`experience in the fields of messaging systems and user interface design, as well as
`
`the documents I have considered, including U.S. Patent No. 8,677,250 (“’250
`
`patent”) [Ex. 1001] and its file wrapper. The ’250 patent on its face claims priority
`
`to Application No. 11/537,047, filed on September 29, 2006, so for purposes of this
`
`Declaration, I have assumed a priority date of September 29, 2006, for the claims of
`
`the ’250 patent. My Declaration cites to the following documents listed in the table
`
`below. As explained in my Declaration below, some of these documents are cited
`
`as prior art that discloses one or more limitations of the challenged claims, and the
`
`
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`4
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`others are cited primarily as background or to establish the state of the relevant art
`
`as of September 2006.
`
`Exhibit
`No.
`1001
`
`1003
`
`1004
`
`1005
`
`1006
`1007
`
`Description of Document
`
`U.S. Patent No. 8,667,250 to Christopher R. Wormald et al.
`(filed Dec. 7, 2010, issued Mar. 18, 2014) (“the ’250 patent”)
`
`U.S. Patent App. Pub. No. 2005/0086309 A1 to Marcio dos
`Santos Galli et al. (filed Oct. 6, 2003, published Apr. 21, 2005)
`(“Galli”)
`
`International Patent App. Pub. No. WO 01/31476 A1 to Richard
`Anthony Crane et al. (filed Oct. 27, 2000, published May 3,
`2001) (“Crane”)
`
`U.S. Patent App. Pub. No. 2006/0116205 A1 to Takeshi Miyaji
`(filed Nov. 4, 2005, published Jun. 1, 2006) (“Miyaji”)
`
`Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`
`Excerpts from Dictionary of Computer and Internet Words
`(2002)
`
`II. PERSON OF ORDINARY SKILL IN THE ART
`11.
`I am informed by counsel that an assessment of the claims of the ’250
`
`patent is to be undertaken from the perspective of a person of ordinary skill in the
`
`art as of the earliest claimed priority date, which as noted above, I have assumed to
`
`be September 29, 2006. I have also been advised that to determine the appropriate
`
`level of a person having ordinary skill in the art, the following factors may be
`
`considered: (1) the types of problems encountered by those working in the field and
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`prior art solutions thereto; (2) the sophistication of the technology in question, and
`
`the rapidity with which innovations occur in the field; (3) the educational level of
`
`active workers in the field; and (4) the educational level of the inventor.
`
`12.
`
`In my opinion, a person of ordinary skill in the art as of September
`
`2006, would have possessed a bachelor’s degree in software engineering, computer
`
`science, electrical engineering, computer engineering with at least two years of
`
`experience in the design and implementation of messaging systems and user
`
`interfaces, including user interfaces for messaging systems (or equivalent degree or
`
`experience). A person of ordinary skill in the art would have had a working
`
`knowledge about how to create useful software programs, including creating and
`
`presenting a user interface for the user (for example for viewing through a computer
`
`monitor or other display device), and accepting and processing user input (for
`
`example from a keyboard, mouse or other user input device) – which would have
`
`been acquired as part of the person’s basic computer education or experience. A
`
`person of ordinary skill would have also acquired as part of the person’s basic
`
`computer education experience a working knowledge about messaging systems,
`
`including instant messaging (IM) systems.
`
`13. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over two decades of experience in the field of computer
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`science and messaging-based systems, my understanding of the basic qualifications
`
`that would be relevant to an engineer or scientist tasked with investigating methods
`
`and systems in the relevant area, and my familiarity with the backgrounds of
`
`colleagues, co-workers, and employees, both past and present.
`
`14. Although my qualifications and experience exceed those of the
`
`hypothetical person of ordinary skill in the art that I defined above, I have formulated
`
`all of my opinions regarding the ’250 patent from the perspective of a person of
`
`ordinary skill in the art as of September 2006.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`15.
`I understand that under the legal principles, claim terms are generally
`
`given their ordinary and customary meaning, which is the meaning that the term
`
`would have to a person of ordinary skill in the art in question at the time of the
`
`invention, i.e., as of the effective filing date of the patent application. I further
`
`understand that the person of ordinary skill in the art is deemed to read the claim
`
`term not only in the context of the particular claim in which a claim term appears,
`
`but in the context of the entire patent, including the specification.
`
`16.
`
`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`7
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of those
`
`terms.
`
`17.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as to
`
`the meaning of a claim term. Because the claim terms are normally used consistently
`
`throughout the patent, the usage of a term in one claim an often illuminate the
`
`meaning of the same term in other claims. Differences among claims can also be a
`
`useful guide in understanding the meaning of particular claim terms.
`
`18.
`
`I understand that the prosecution history can further inform the meaning
`
`of the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution, making
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
`
`be consulted in construing the claim terms, such as my expert testimony.
`
`19.
`
`I have been informed by counsel that, in Inter Partes Review (IPR)
`
`proceedings, a claim of a patent 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) (the “Phillips” claim construction standard), including construing the claim
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`in accordance with the ordinary and customary meaning of such claim as understood
`
`by one of; ordinary skill in the art and the prosecution history pertaining to the patent.
`
`20.
`
`I have applied the “Phillips” claim construction standard for purposes
`
`of interpreting the claims in this proceeding, to the extent they require an explicit
`
`construction. The description of the legal principles set forth above thus provides
`
`my understanding of the “Phillips” standard as provided to me by counsel.
`
`IV. THE ’250 PATENT
`A. The Specification
`21. The ’250 patent, entitled “System and Method for Switching Between
`
`an Instant Messaging Conversation and a Game in Progress,” generally relates to “a
`
`user interface for a messaging application” and more specifically to integrating a
`
`game application with an instant messaging application. (’250, 1:15-19, 2:36-39.)
`
`As explained in the “Background of the Invention” section:
`
`One currently popular form of such communication is Instant
`Messaging (IM) facilitated by an application having a graphical user
`interface (GUI) whereby two or more users of different communication
`devices can engage in a conversational data communication exchange.
`
`To permit IM message exchanges, a user may invite another to agree to
`receive IM messages and be included in the user’s list of IM contacts
`(sometimes called an IM friend or buddy in view of the agreement to
`be a potential IM message recipient)…. To begin an IM conversation,
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`a user selects a buddy represented by a contact list entry of a list of
`contacts and inputs a message.
`
`(’250, 1:25-40; see also id., 7:57-62.)
`
`22. As further explained in the “Background” section:
`
`In addition to conducting conversations, an IM user may invite a buddy
`to engage in an on-line game where two (or more) players take turns
`during game play to compete against each other. Conventional board
`and card games such as checkers or poker may be adapted for IM game
`playing for example, among others. A game may be invoked via a game
`application interface or from within an IM application providing an
`interface to a game application.
`
`(’250, 1:45-52.)
`
`23. As acknowledged by the ’250 patent, “IM applications and IM games
`
`[were] commercially available (e.g. AIM™ from AOL, Yahoo! Messenger™, MSN
`
`Messenger™, etc.) for many platforms such as PCs with various Windows® or
`
`Windows compatible operating systems….” (’250, 13:2-7.) The ’250 patent
`
`purports to disclose a technique “for using a contact list entry of an IM contact list
`
`interface to designate an IM game in progress to facilitate switching between an IM
`
`conversation and an IM game.” (’250, 2:36-39.)
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`24. One example of such an IM
`
`contact list is shown in Figure 7A. (’250, Fig.
`
`7A (at right with red annotation added).) The
`
`’250 patent states that “contact list 703
`
`interface shows contacts element 308 expanded to present representative contacts
`
`308A-308E.” (’250, 10:44-46.) As shown highlighted in the red box, “contact
`
`element 308E of FIG. 7 designates a current game in progress with a contact, namely
`
`‘StephanieB’.” (’250, 10:47-49.) The ’250 patent further states that “[t]his
`
`respective contact-list element 308E may be selected and activated (whether by a
`
`menu interface or by clicking an enter key
`
`for example) to invoke a view (e.g. 600 of
`
`FIG. 6) of a GUI for the respective IM game
`
`application 1012 for conducting the game in
`
`progress 1014.” (’250, 10:49-53.)
`
`25. Another example of a contact list
`
`is shown in Figure 7B. (’250, Fig. 7B (at right
`
`with red annotation added).)
`
` “FIG. 7B
`
`illustrates a view 710 of contact list 703
`
`depicting contacts 308 in an embodiment
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
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`where a single individual contact element (e.g. 704) may represent a contact element
`
`for both IM conversation and IM game purposes rather than use separate
`
`elements….” (’250, 10:60-64.) In this case, selection of the contact list element
`
`(e.g., 704) invokes a menu that allows the user to open either the conversation screen
`
`or the game screen. (’250, 11:11-21, Fig. 8B (at right).)
`
`26. An
`
`example
`
`of
`
`an
`
`IM
`
`conversation screen is shown in Figure 5B.
`
`(’250, Fig. 5B (at right with red annotation
`
`added).) “As a new move is received from
`
`the contact
`
`in
`
`the associated game
`
`in
`
`progress, a notification of the new move 522 is presented in the conversation screen
`
`(e.g. portion 504) in a manner similar to how a new message is presented. The user
`
`may then select and open or switch (not shown) to the game in progress from the
`
`conversation interface 520.” (’250, 10:10-15.)
`
`27. Although the specification describes an IM application “with reference
`
`to a handheld mobile device such as a smart PDA or smart phone,” it states that its
`
`teachings “may be implemented on other computing devices such as personal
`
`computers (laptops, desktops), workstations and the like configured for network
`
`communications.” (’250, 12:65-13:2; see also id., 2:31-36 (“Persons of ordinary
`
`
`
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`skill in the art will appreciate that teachings herein are applicable to messages
`
`received via wired or wireless communication and though a wireless communication
`
`device and network including wireless communication capabilities are discussed in
`
`the examples, no limitations should be imposed.”).)
`
`B.
`The Claims of the ’250 Patent
`28. This Declaration addresses claims 1, 4, 5, 6, 8, 9, 12, 13, and 14 of the
`
`’250 patent. Claims 9, 12, 13, and 14 recite “non-transitory computer readable
`
`storage medium” claims that are otherwise substantially similar to the “method”
`
`claims recited in claims 1, 4, 5, and 6, respectively. Claims 1 and 9 are the sole
`
`independent claims addressed in this Declaration, and the other claims I address
`
`depend from either claim 1 or claim 9.
`
`29. Claim 1 is thus representative of the claims I address in this
`
`Declaration, and it reads:
`
`1. A method of enabling a game to be played on an electronic
`device, the method comprising:
`
`[a]
`
`enabling a game application on the electronic device to utilize a
`contact list for an instant messaging application for playing
`games with contacts in the contact list by identifying game play
`in the contact list;
`
`[b]
`
`during a game in progress with a particular contact in the contact
`list, preparing game messages to be sent to the particular contact
`
`
`
`13
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`by including game progress data in an instant messaging message
`and an identifier to associate the data with the game application;
`
`[c]
`
`[d]
`
`communicating at least one game message during the game in
`progress with the particular contact using an instant messaging
`system used by the instant messaging application;
`
`displaying at least one instant message in an instant messaging
`conversation user interface associated with the particular contact
`indicative of game progress, the instant messaging conversation
`user interface enabling additional instant messages to be sent to
`the particular contact in addition to instant messages indicating
`game play; and
`
`[e]
`
`displaying a game in progress user interface associated with the
`game play, after detecting a selection in the instant messaging
`conversation user interface to switch to the game in progress.
`
`(’250, 13:18-43 (Claim 1).) I have added the bracketed notations above (e.g., “[a],”
`
`“[b],” etc.) to facilitate identification of the limitations in my analysis below.
`
`V. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS
`30.
`I have reviewed and analyzed the prior art references and materials
`
`listed in Part I.B above. In my opinion the claims of the ’250 patent are rendered
`
`obvious based on the following prior art:
`
`Ground
`
`1
`
`References
`Galli (Ex. 1003),
`Crane (Ex. 1004),
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`
`
`14
`
`Claim(s)
`1, 4, 5, 6, 8, 9,
`12, 13, 14
`
`Facebook's Exhibit No. 1002
`017
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`Ground
`
`References
`Miyaji (Ex. 1005)
`
`Claim(s)
`
`A. Brief Summary of Prior Art
`1. Galli [Ex. 1003]
`31. Galli, U.S. Patent App. Publication No. 2005/0086309 A1, entitled
`
`“System and Method for Seamlessly Bringing External Services into Instant
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`Messaging Session” (Ex. 1003), describes a framework for integrating third-party
`
`applications with an instant messaging (IM) system. (Galli, e.g., Abstract (“The
`
`invention provides a framework that allows a number of software application agents
`
`to be stacked on top of an instant messenger application.”).) I understand Galli
`
`qualifies as prior art to the ’250 patent because it was published on April 21, 2005,
`
`and filed on October 6, 2003, both dates being before the earliest claimed priority
`
`date for the ’250 patent.
`
`32. Galli’s framework “enables the user to seamless [sic] bring a local
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`application into the instant messaging session.” (Galli, ¶0019 (underlining added);
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`see also id., e.g., ¶¶0002, 0004, 0019, 0039, 0042-47, 0115; Abstract; Figs. 1B, 2.)
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`This integration is accomplished by stacking one or more “software agents,” which
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`Galli also refers to as “IMLets,” on top of the IM application that creates the IM
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`session between two end users. (Galli, ¶¶0020, 0021, 0036, 0050, Abstract.) “Each
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`of the software application agents establishes a connection with… a local application
`
`
`
`15
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`Facebook's Exhibit No. 1002
`018
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`in the user’s computer.” (Galli, Abstract; see also id., ¶0020.) The agents or IMLets
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`“act as the representation of a local application exposed to the user’s IM session.”
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`(Galli, ¶0039; see also id., ¶¶0024, 0036, 0049, 0067.) Thus, “[w]hen the IMLet is
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`activated, the represented local application can access the user’s IM session to
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`facilitate communication with the both ends.” (Galli, ¶0039; see also id., ¶0024.)
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`Data “produced in using the local application” on different user computers can be
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`exchanged “in the IM session” between the users. (Galli, ¶0039.)
`
`2.
`Crane [Ex. 1004]
`33. Crane, International Patent Publication No. WO 2001/031476 Al, is
`
`entitled “Method and System for Providing a Turn-Based Game.” (Ex. 1004.) Crane
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`discloses “a method and system for providing a turn-based game and, more
`
`particularly, a turn-based game to be played by communication over a network.”
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`(Crane, 1:5-6; see also id., 4:6-11.) I understand Crane qualifies as prior art to the
`
`’250 patent because it was published on May 3, 2001, which is before the earliest
`
`claimed priority date for the ’250 patent.
`
`34. Crane discloses a game application that uses an instant messaging (IM)
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`system to communicate game move data between two players over a computer
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`network:
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`[G]ame moves can be sent and received using an instant messaging
`protocol such as TCP/IP. For this to happen, the game software for each
`
`
`
`16
`
`Facebook's Exhibit No. 1002
`019
`
`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`
`player must be provided with the IP address of the other player through
`a central server, for example such as game server 4 or the commonly
`known instant messaging system “ICQ”…. The game will then offer
`to each player the option of playing with the instant messaging
`facility….
`
`[T]he game packets are sent directly between the IP addresses of the
`players while they are online and the game is running. This instant
`messaging arrangement is facilitated by the operating system code of
`the game.
`
`(Crane, 19:6-23 (underlining added).) The game moves are transmitted in the form
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`of “game packets” that are displayed as icons that can be clicked to activate the
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`associated game application interface. (E.g., Crane, 13:9-20, 14:23-27.)
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`35. As I explain below, it would have been obvious to a person of ordinary
`
`skill in the art to integrate Crane’s game application into Galli’s IM system, and to
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`thereby enable the game application to communicate game moves using instant
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`messages.
`
`3. Miyaji [Ex. 1005]
`36. Miyaji, U.S. Patent App. Pub. No. 2006/0116205 A1, entitled
`
`“Operating Program of Multiple Match-Up Type Network Game,” describes a
`
`technique for enabling a user to play multiple matches of a game played over a
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`communications network concurrently. (Miyaji, ¶0002 (“The present invention
`
`
`
`17
`
`Facebook's Exhibit No. 1002
`020
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,677,250 B2
`
`relates to an operating program of a multiple match-up type network game which is
`
`performed through communication networks such as an internet or a carrier network
`
`managed by a carrier.”).) I understand Miyaji qualifies as prior art to the ’250 patent
`
`because it was filed on November 4, 2005 and published on June 1, 2006, both dates
`
`being before the earliest claimed priority date for the ’250.
`
`37. The claims of the ’250 patent addressed in this Declaration include
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`various limitations related to “identifying game play” in a list (claim 1), “associating
`
`a … list entry … with a game in progress” (claim 4), and “displaying [a] game in
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`progress user interface” upon detection a selection of an entry in a list (claim 5). My
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`analysis cites Miyaji in connection with these limitations.
`
`38. Miyaji explains that “[i]n the conventional ‘one game/one-to-one’ type
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`match-up game, for example, in a case of the ‘shogi (Japanese chess)’ game, there
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`is a problem that a client has to wait for a long time until one game ends because the
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`game does not proceed until an opponent player does not move even when the client
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`moves.” (Miyaji, ¶0006.) Miyaji addresses this issue with a system where “multiple
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`games are allowed to proceed simultaneously, therefore, one can enjoy the game
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`without bothering about proceeding speed or a level of skill of an opponent player
`
`in the game.” (Miyaji, ¶0019.) “[F]or exa