BlackBerry Limited

Patent Trials and Appeals Board

Oct 6, 2020

IPR2019-00899 (P.T.A.B. Oct. 6, 2020)

Trials@uspto.gov Paper 37
571-272-7822 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)
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TABLE OF CONTENTS
I. 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
F. Grounds of Unpatentability ...................................................... 12
II. 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
C. Obviousness ............................................................................. 29
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1. Grounds 1 and 2: Crawford, Watson, Stevens,
Snader, and Erickson ..................................................... 30
a. Claim 1 ................................................................ 30
i. “[a] method of operating an electronic
device” ....................................................... 30
ii. “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
iii. “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
iv. “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
v. “detecting an input to the electronic
device following said identifying and
determining steps, said input
occurring at a second time” ....................... 33
vi. “responsive to said detecting an
input, outputting in the electronic
conversation, a time stamp
representative of the second time” ............ 34
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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
ii. “Disposed Between” ................................. 36
iii. Determining That a Predetermined
Duration of Time Has Elapsed .................. 37
iv. Motivation to Combine ............................. 40
e. Conclusion on Grounds 1 and 2 .......................... 44
2. Grounds 3 and 4: Crawford, Watson, and Missig ........ 44
III. CONCLUSION .................................................................................. 47
IV. ORDER ............................................................................................... 48

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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.
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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 Exhibit
U.S. Patent No. 7,366,779 B1, filed June 19, 2000
(“Crawford”)
1003
Jennifer Watson and Dave Marx, Your
Official America Online Tour Guide, 6th
Edition (AOL Press 2001) (“Watson”)
1004
W. Richard Stevens, TCP/IP Illustrated, Volume 1
(Addison-Wesley 1994) (“Stevens”)
1006
Jon C. Snader, Effective TCP/IP Programming
(Addison-Wesley 2000) (“Snader”)
1005
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”)
1007
Julian Missig, iChat Thought Bubbles, sourced from
(“Missig”)
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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1. Crawford
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.
3. Stevens and Snader
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.
4. Erickson
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:
References Basis Claims
Crawford, Watson, Stevens, Snader § 103(a) 1–12
Crawford, Watson, Stevens, Snader, Erickson § 103(a) 4, 8, 12
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References Basis Claims
Crawford, Watson, Missig § 103(a) 1–3, 5–7, 9–11
Crawford, Watson, Missig, Erickson § 103(a) 4, 8, 12
Following Patent Owner’s disclaimer, this Final Written Decision
addresses the following claims and grounds:
References Basis Claims
Crawford, Watson, Stevens, Snader § 103(a) 4, 8, 12
Crawford, Watson, Stevens, Snader, Erickson § 103(a) 4, 8, 12
Crawford, Watson, Missig, Erickson § 103(a) 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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1. “resumption message
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.
2. “predetermined duration of time”
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.”
a. The Claim Language
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.
b. The Specification
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 embodiments. Instead, it simply reflects that the claim drafter
elected to not cover all aspects of those embodiments. This is not
uncommon. For example, all disclosed embodiments of the ’713 patent also
involve a mobile device, but the claims are not limited to mobile devices. In
the same way that the claims need not be limited to the mobile device of all
embodiments, they need not be limited to excluding the display of
timestamps for non-resumption messages, even if that occurs in all
embodiments.
Patent Owner’s argument that it is not necessary to show an “express”
disavowal (see Sur-Reply 6–7) is unpersuasive in view of the mismatch
between the “disparagement” and the claim scope, and the cases cited by
Patent Owner on this point4 are thus inapposite.
Patent Owner also argues that “it is impossible to discern how
Petitioner’s claim construction would be any different under a BRI analysis,
which is improper here.” PO Sur-Reply 6. There is nothing, however, that
requires the different claim construction frameworks to result in different
claim constructions. See Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed.
Appx. 864, 869 (Fed. Cir. 2014) (“The broadest reasonable interpretation of
a claim term may be the same as or broader than the construction of a term
under the Phillips standard.”).

4 On Demand Mach. Corp. v. Ingram Indus., 442 F.3d 1331 (Fed. Cir.
2006); Bell Atlantic Network Services, Inc. v. Covad Communications
Group, Inc., 262 F.3d 1258 (Fed. Cir. 2001); SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001);
Trustees of Columbia Univ. v. Symantec, 811 F.3d 1359 (Fed. Cir. 2016);
Cheese Sys. v. Tetra Pak Cheese & Powder Sys., 725 F.3d 1341 (Fed. Cir.
2013).
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c. The Prosecution History
Patent Owner argues that the prosecution history “unambiguously
clarified that the claimed invention outputs a timestamp ‘only when a time
elapsed between communication of consecutive messages exceeds a
predetermined duration.’” PO Resp. 20 (citing Ex. 2002, 547–551, 614-
618). Specifically, Patent Owner argues that “the applicant repeatedly
argued that Appleman, which teaches that a time stamp is included with
every message . . . , alone and in combination with other references, ‘fail[s]
to teach or suggest selectively displaying time information.’” Id. at 21.
Patent Owner claims that “[t]he prosecution history crystallized the same
fact repeated in all embodiments of the specification—that the claimed
invention displays time stamps selectively in response to a detected timing
condition, not invariably with every instant message on the screen.” Id. at
22.
We first summarize the file history to provide background for our
analysis, focusing on claim 1 of the application, which was eventually
canceled, and claim 13 of the application, which issued as claim 1 of the
patent.
Claim 1 of the application recited a method of displaying an instant
messaging conversation that included the step of “displaying time
information . . . only when a time elapsed between communication of the
consecutive messages exceeds a predetermined duration.” See Ex. 2002, 31.
Claim 13 of the application was a method claim that included the patent
claim 1’s “determining,” “detecting,” and “responsive to detecting steps.’”
In the first Office Action, the examiner rejected claim 1 as
unpatentable over Appelman and Yamada. See Ex. 2002, 263–264. The
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examiner explained that “Appelman is silent about displaying time
information in association with at least one of two consecutive messages of
the conversation only when a time elapsed between communication of the
consecutive messages exceeds a predetermined duration,” but that it would
have been obvious “to incorporate Yamada’s teaching . . . in order to alert
the user only when the timer expires by displaying time information in
association with at least one of two consecutive messages of the
conversation only when a time elapsed between communication of the
consecutive messages exceeds a predetermined duration.” The examiner
rejected claim 13 as unpatentable over Appelman, Yamada, and Hwang,
combining Appleman and Yamada in the same way as for claim 1. See
Ex. 2002, 269.
The applicant responded to the rejection with argument, citing the
portions of claim 1 that expressly recited displaying time information only
when a predetermined amount of time had passed, and asserting that “neither
Appelman nor Yamada teach displaying time information only when a time
elapsed between communication of consecutive messages exceeds a
predetermined duration.” Ex. 2002, 547–548. The applicant also argued
that Appelman and Yamada were not reasonably combined. See id. at 548.
Regarding the rejection of claim 13, the applicant made the following
argument:
Applicant has shown above that Appelman and Yamada, both
individually and in combination, fail to teach or suggest
selectively displaying time information. With respect to claim
13, Applicant respectfully submits that Appelman and Yamada
also fail to teach, responsive to detecting an input following
determining that a predetermined duration of time has elapsed
since a first time, outputting in an electronic conversation, a
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time stamp representative of a second time. Neither reference
has recognized let alone addressed the advantage of balancing
the competing objectives of providing useful time information
and conserving display space.
Ex. 2002, 550 (emphasis added).
In the next office action, the Examiner rejected claim 1 as
unpatentable over Appleman and Nobukiyo. See Ex. 2002, 563. The
examiner found that it would have been obvious “to incorporate Nobukiyo’s
teaching into Appelman’s method for the purpose of providing time data
regarding certain aspects of a messaging conversation between handheld
electronic devices to a user in situation where an interruption has occurred
during a messaging conversation by displaying time information only when
a time elapsed between communication of the consecutive messages exceeds
a predetermined duration, thereby alerting the user only when needed and
timely.” Id. at 563–64. The Examiner rejected claim 13 as unpatentable
over Appelman, Nobukio, and McPhail, finding that “Appelman is silent
about determining that a predetermined duration of time has elapsed since
the first time without additional communication,” but that it would have
been obvious “to incorporate Nobukiyo’s teaching . . . in order to alert the
user when a timer expires (i.e., a predetermined duration of time has
elapsed) by determining that a predetermined duration of time has elapsed
since the first time without additional communication.” See Ex. 2002, 570.
The applicant responded to the second rejection of claim 1 by arguing
that “[t]here is nothing in Appelman that teaches or suggests selectively
including or not including time information according to certain conditions,
let alone displaying time information in association with at least one of two
consecutive messages of the conversation only when a time elapsed between
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communication of the consecutive messages exceeds a predetermined
duration, as recited in claim 1.” Ex. 2002, 614. The applicant further argued
that “Nobukiyo does not teach what is missing from Appelman and, even if
combined with Appelman, the combination fails to teach or suggest:
‘displaying time information in association with at least one of two
consecutive messages of the conversation only when a time elapsed between
communication of the consecutive messages exceeds a predetermined
duration.’” Id. at 615.
The applicant then made the following argument regarding the second
rejection of claim 13, mirroring the argument from the preceding response:
Applicant has shown above that Appelman and Nobukiyo, both
individually and in combination, fail to teach or suggest
selectively displaying time information. With respect to claim
13, Applicant respectfully submits that Appelman and
Nobukiyo also fail to teach, responsive to detecting an input
following determining that a predetermined duration of time
has elapsed since a first time, outputting in an electronic
conversation, a time stamp representative of a second time.
Neither reference has recognized, let alone addressed, the
advantages of balancing the competing objectives of providing
useful time information and conserving display space.
Ex. 2002, 616 (emphasis added). The applicant also argued that “MacPhail
fails to make up for the deficiencies in Appelman and Nobukiyo” because it
“does not teach or suggest, responsive to detecting an input following
determining that a predetermined duration of time has elapsed since a first
time, outputting in an electronic conversation, a time stamp representative of
a second time.” Id. at 616. The applicant argued that McPhail’s disclosure
“is quite dissimilar to selectively displaying time information for a message
by: responsive to detecting an input following determining that a
predetermined duration of time has elapsed since a first time, outputting in
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an electronic conversation, a time stamp representative of a second time
responsive to detecting an input in association with an indication for a
message.”
Following a telephone interview, the examiner canceled claims 1–12,
which were the claims that recited displaying the time information “only
when a time elapsed,” and allowed claims 13–24. See Ex. 2002, 628–29.
Upon careful consideration, we cannot agree with Patent Owner that
this sequence of events is sufficient to support a construction of the claims
that would require no timestamp in the event of a message that is not a
resumption message.
In connection with claim 13, the applicant twice argued that it “ha[d]
shown above [i.e., when arguing claim 1] that Appelman and [Yamada or
Nobukiyo], both individually and in combination, fail to teach or suggest
selectively displaying time information.” Ex. 2002, 550, 616. The argument
continued that “[w]ith respect to claim 13, . . . Appelman and Nobukiyo also
fail to teach, responsive to detecting an input following determining that a
predetermined duration of time has elapsed since a first time, outputting in
an electronic conversation, a time stamp representative of a second time.”
Ex. 2002, 550, 616.
We read the applicant’s argument as being that the references (a) do
not teach displaying a timestamp only when the time has elapsed, as in
application claim 1, and (b) also do not teach the detecting, determining, and
outputting steps recited in application claim 13. We do not interpret this as
contending that application claim 13 was patentable because it broadly
requires selectively displaying time information, but, instead, that it was
patentable due to the specific detecting, determining, and outputting steps
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recited in that claim. Our conclusion is supported in the examiner’s
determination that application claim 13 was allowable, but that application
claim 1 was not. If application claim 13 was allowable because it required
displaying a timestamp only when the time has elapsed, then application
claim 1, which explicitly required that, would have been allowable as well.
Patent Owner also points to the argument that MacPhail’s teachings
were “quite dissimilar to selectively displaying time information for a
message by: responsive to detecting an input following determining that a
predetermined duration of time has elapsed since a first time, outputting in
an electronic conversation, a time stamp representative of a second time
responsive to detecting an input in association with an indication for a
message.” See PO Sur-Reply 2–3 (citing Ex. 2002, 617). We find that this
does not support Patent Owner’s argument, and instead undercuts it, because
it suggests that “selectively displaying” was simply the applicant’s shorthand
for the detecting, determining, and outputting steps, which do not recite what
happens in the event of receipt of a non-resumption message.
We disagree with Patent Owner’s analysis of the file history, and thus
find that it does not support Patent Owner’s proposed claim construction.
However, even if we did agree with Patent Owner’s reading of the file
history, we find that it still would be insufficiently clear to justify reading
what amounts to an entirely new limitation into the claim. See 3M
Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir.
2013) (“[I]n order for prosecution disclaimer to attach, the disavowal must
be both clear and unmistakable.”); see also Phillips, 415 F.3d at 1317
(“[B]ecause the prosecution history represents an ongoing negotiation
between the PTO and the applicant, rather than the final product of that
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negotiation, it often lacks the clarity of the specification and thus is less
useful for claim construction purposes.”).
d. “Responsive To”
Patent Owner argues 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. 22 (citing Creative Internet
Adver. Corp. v. Yahoo!, Inc., 476 Fed. Appx. 724 (Fed. Cir. 2011); WAG
Acquisition, LLC v. WebPower, Inc., 781 Fed. Appx. 1007 (Fed. Cir. 2019);
General Protecht Group, Inc. v. ITC, 619 F.3d 1303 (Fed. Cir. 2010)).
Patent Owner contends that “the Petition ignored the ‘responsive to’
condition as if it was not a required condition at all, especially for the
narrowed condition required by the dependent claims.” Id.
We agree with Patent Owner that “responsive to” generally reflects a
situation in which a condition must be satisfied for something to occur, but
we do not agree that it was ignored in the Petition. These claims recite that a
time stamp is output if the condition of receiving a resumption message is
satisfied. That does not, however, speak to what, if anything, happens in the
case of receipt of a non-resumption message. Patent Owner’s distinction
between methods with a “condition precedent” and methods that “invariably
perform the step” is a faulty dichotomy. That an action is conditioned on the
occurrence of one thing (e.g., receipt of a resumption message) does not,
standing alone, preclude that same action from being performed on the
occurrence of another thing (e.g., receipt of a non-resumption message). We
accordingly find this argument unpersuasive and insufficient to support
Patent Owner’s proposed construction.
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e. Conclusion
Because we find insufficient support in the claim, the specification,
the file history, or the cited cases for Patent Owner’s proposed construction,
we decline to read the claims as limited to cases in which time stamps are
output only in the case of resumption messages. The claims do require that a
time stamp is generated when a resumption message is received, but they do
not require that a time stamp is not output when a non-resumption message
is received.
No matter the content of the specification, it always falls to the
applicant to present and prosecute claims that include the features deemed
important to the invention and necessary to avoid the prior art, while not
unduly narrowing the scope of protection. As Judge Rich famously
observed, “the name of the game is the claim.”5 In this instance, the claim
drafter elected to not recite what happens in the case of a non-resumption
message. It is not our place to undo that decision in this proceeding.
C. Obviousness
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said subject matter
pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The
question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art; (2) any

5 Giles S. Rich, Extent of Protection and Interpretation of Claims–American
Perspectives, 21 Int’l Rev. Indus. Prop. & Copyright L. 497, 499 (1990).
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) any secondary considerations, if in
evidence.6 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
1. Grounds 1 and 2: Crawford, Watson, Stevens,
Snader, and Erickson
We first describe the combinations advanced by Petitioner in Grounds
1 and 2 for remaining claim 4, including the limitations of the now
disclaimed claims 1–3 from which claim 4 depends.
a. Claim 1
i. “[a] method of operating an electronic device”
Petitioner argues that Crawford discloses an “electronic device” and
“a number of techniques that enable the client device to establish and
conduct an instant messaging conversation.” Pet. 21–22.
ii. “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”
According to Petitioner, “[t]he ‘electronic conversation’ in Crawford
takes the form of an instant message conversation between at least two
people,” as shown in Figure 16. Id. at 24–25. Petitioner argues “the
plurality of indications corresponds to the content of the messages” and that,
for example, “[a] first indication corresponds to HokieFanforLife’s message
that includes the text “Look at my Kitty” and accompanying image 1620”

6 Patent Owner does not present any objective evidence of nonobviousness
(i.e., secondary considerations) as to any of the challenged claims.
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and “[a] second indication corresponds to AIM Runningman’s reply “So
Cute! Whats her name?” Id. at 25–26.
iii. “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”
Petitioner contends that the “identifying” step “is disclosed by
Crawford in view of Watson.” Pet. 27. Specifically, Petitioner asserts that
Watson describes a “timestamping feature that lets [a user] see when [the]
instant messages are sent and received.” Id. at 29. According to Petitioner,
a person of ordinary skill in the art would have had “a number of reasons” to
add Watson’s timestamps to Crawford,” including that “Watson provides an
express motivation for the combination by extolling the advantages of its
timestamping feature,” calling it a “useful tool” that is “wonderfully
helpful.” Id. at 29, 34.
iv. “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”
Petitioner argues that the “determining” step “would have been
obvious . . . in view of Stevens and Snader” because it “recites nothing more
than known functionality for detecting an idle TCP socket connection.” Pet.
35. According to Petitioner, “Stevens explains that TCP connections – such
as the connections established between client devices in Crawford – can
remain open for extended periods without any information being sent or
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received,” presenting “a specific challenge – how does one determine if the
lack of communication is attributable to a break in the conversation (just like
an in-person conversation), or because of a communications or network
failure?” Id. at 35–36. To address this problem, Petitioner points to
Stevens’ keepalive timer and Snader’s “improvement [of] ‘implementing a
similar mechanism in the application,’” i.e., the heartbeat, “which allows the
idle time to be set to shorter time durations.” Id. at 36.
For a motivation to combine, Petitioner argues that the combination
“would have predictably resulted in the instant messaging system of
Crawford and Watson . . . in which a client device could determine whether
the connection with the other client device has been idle for a predetermined
duration of time, such as 60 seconds as suggested in Snader.” Pet. 40.
Petitioner further argues that (1) “Snader itself provides an express
motivation to combine by providing ‘44 Tips to Improve Your Network
Programs’ [and] “the implementation of the keep-alive feature is ‘Tip 10,’”
(2) “Snader explains that ‘network outages or system crashes can render peer
applications unable to communicate with each other without either
application being immediately aware of the fact,” and (3) “[a] person of
ordinary skill would also have been motivated to adapt Crawford to detect
an idle TCP connection in order to determine whether the other device had
suffered a connectivity failure.” Id. at 41. Petitioner argues that “[a] lost
connection could be reported in a timely manner in keeping with the real-
time, conversational nature IM communication” and “[t]he client device
could then take appropriate action in response, such as attempt to reconnect
to continue the IM conversation,” whereas, “[w]ithout this functionality, a
user would not know whether a lack of incoming messages from the other
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client was the result of a gap in the conversation or a network failure.” Id. at
42 n.8. Petitioner concludes that one would “have been motivated to adapt
the instant message system of Crawford to detect whether the TCP
connection between the two devices has been idle or inactive for a specified
period of time” because “[t]his would have allowed the client to determine
whether the idleness of the connection was attributable (1) to a lack of
communications in the IM conversation, or (2) a disruption in the actual
communication link between two clients.” Id. at 41–42.
Petitioner also argues that although the motivation to adapt Crawford
to perform the “determining” step from Stevens and Snader is not the same
reason the step is performed in the ’713 patent, the difference “is legally
irrelevant . . . because ‘the skilled artisan need not be motivated to combine
[] for the same reason contemplated by [the inventor].’” Pet. 42–43 (quoting
In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)).
v. “detecting an input to the electronic device
following said identifying and determining
steps, said input occurring at a second time”
Petitioner argues that “the ‘input to the electronic device following
said identifying and determining steps’ takes the form of the second message
shown sent after approximately two minutes of inactivity, e.g., the message
from AIM Runningman at 3:12PM (‘So Cute! Whats her name?’)” and
“[t]his limitation simply corresponds to electronic device in Crawford
receiving a second instant message (or detecting a command to send an
instant message) after the “keep-alive” technique in Snader determined that
the TCP connection was idle/inactive for the predetermined duration of time
(e.g. 60 seconds).” Pet. 43–44. For example, in the case of an outgoing
message that did not receive a response for two minutes, the heartbeat
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mechanism would determine that a sixty second period of time elapsed with
no communication after the outgoing message and check the connection, and
the subsequent incoming message would be the input at a second time.
vi. “responsive to said detecting an input, outputting
in the electronic conversation, a time stamp
representative of the second time”
Finally, Petitioner argues that “Crawford discloses the claimed
electronic conversation” and that “it would have been obvious in view of
Watson to output a timestamp with a message in the conversation, where the
timestamp represented the time that the message was sent or received.” Pet.
45. Petitioner also “observes that the instant messaging system under the
combination of Crawford and Watson would display a timestamp with every
instant message” but argues the claim does “not appear to impose any
requirement that the timestamp only be output when the predetermined
duration of time has elapsed.” Id. at 46.
b. Claims 2–3
Claim 2 recites that “the input is a resumption message” and claim 3
recites “outputting in the electronic conversation a second indication
representative of at least a portion of the resumption message.”
Petitioner argues that “the ‘resumption message’ could take the form
of the second message from AIM Runningman associated the ‘3:12PM’
timestamp [of Crawford] . . . , which shows the communication having been
resumed after a delay of approximately two minutes” and that “[t]he ‘second
indication” could take the form of the content of the second message from
AIM Runningman (e.g. “So cute! What is her name”) as shown in Figure
16” of Crawford. Pet. 47.
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c. Claim 4
Claim 4 recites that “the time stamp is disposed between the first
indication and the second indication.”
Petitioner argues that Watson discloses timestamps that are disposed
between indications in that, for example, Figure 7–7 shows a time stamp
(“[3:12]”) that is positioned between parts of the first and second messages.
See Pet. 48. Petitioner illustrates how that might work with a markup of
Crawford’s Figure 16, excerpted below:

Petitioner’s Combination of Crawford’s
Figure 16 and Watson’s Figure 7–7
In this example, the timestamp [3:12 PM] “appears after the ‘first
indication’ in Crawford (i.e. ‘Look at my Kitty’ as shown in Figure 16) but
before the ‘second indication’ (i.e. ‘So Cute! Whats her name?’).” Pet. 48.
Petitioner also argues that “to the extent claim 4 requires outputting
the timestamps on a different vertical plane than their corresponding
messages, this is disclosed by Erickson.” Pet. 56 (citing Ex. 1007, 75).
d. Patent Owner Arguments
We consider Patent Owner’s arguments in the order presented.
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i. Outputting a Timestamp “Responsive To”
Detecting a Resumption Message
Patent Owner first argues that, for claim 4, “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. 29. This argument is
unavailing because it is based on Patent Owner’s construction of the claim
as excluding systems that output time stamps for all messages, which we do
not adopt for the reasons articulated above.
Patent Owner also argues that the Petition improperly “assume[s] the
Crawford/Watson combination discloses the step of detecting a “resumption
message” merely because the second message at 3:12PM “could” be the
claimed resumption message.” PO Resp. 30 (emphasis in original). This is
not persuasive. In context, it is clear that Petitioner used “could” to indicate
that the 3:12PM time stamp is one example of the second time stamp, not
that the combination might or might not have second time stamps. Petitioner
did not fail to meet its burden on that point.
ii. “Disposed Between”
Patent Owner also argues that claim 4 “does not merely recite that the
time stamp is ‘disposed between’ any two messages, but instead must be
disposed between the first indication of the first messaging communication
and the second indication of the ‘resumption message’” and that “nothing in
Erickson contemplates outputting the claimed time stamp in response to
detection of a ‘resumption message.’” PO Resp. 33. This is a version of the
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argument addressed immediately above and the claim construction
arguments which, as explained, are not persuasive.
iii. Determining That a Predetermined
Duration of Time Has Elapsed
Patent Owner argues that “the Petition’s analysis of Stevens/Snader’s
‘keepalive timer’ relies upon a number of factual and legal errors regarding
the claimed ‘determining’ step.” PO Resp. 35.
Patent Owner first argues that “Stevens and Snader detect how long a
TCP connection has been idle” but “in Crawford’s system, the time elapsed
since a TCP connection was idle is not the same as the claimed time that has
elapsed ‘since the first time without additional communication between the
electronic device and the second electronic device during that duration of
time.’” PO Resp. 35–36. “For example,” argues Patent Owner, “a first
message could be transmitted from a first user to a second user during an
electronic conversation at a ‘first time,’ yet the TCP connection is not idle
for the alleged ‘60 seconds’ . . . when the second user merely begins to type
before then, which would result in continued use of the TCP connection
because the first user’s device is updated to indicate the ‘buddy is typing’ on
the second device.” PO Resp. 36. Patent Owner argues that “even if
Crawford’s system was modified to include Stevens/Snader’s ‘keepalive
timer,’ such a timer would cease tolling when either user merely begins to
type and would restart after the typing ceases—regardless of when the
additional communication in the conversation from the second user is
actually sent between the client devices.” PO Resp. 37. Patent Owner
concludes that the combination would not satisfy the “determining” step
because “the duration of time calculated by such a ‘keepalive timer’ would
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have a value different from the claimed duration of time elapsed ‘since the
first time without additional communication between the first electronic
device and the second electronic device during that time.’” Id.
We are not persuaded. There is nothing in the claim that would
require the “duration of time calculated by [the] ‘keepalive timer’” to be the
same as the time between messages. In the system contemplated by the
Petition, a first message would be sent, the keepalive or heartbeat timer
would begin to count, and, if nothing was sent within the preset duration of
the timer, the system would “determin[e] 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,” as claimed, and send a probe. Because of the way claim 1
is structured, the determination of an amount of elapsed of time has no
connection to the remaining steps in the claim.7
Patent Owner offers a “second reason that the duration of time
calculated by that Stevens/Snader ‘keepalive timer’ would have a value
different from the claimed duration of time,” namely that “Snader teaches
that the keepalive timer is not started simply when the purported first instant
message is transmitted, but instead is started only after the second/receiving
device provides an acknowledgement back.” PO Resp. 37. Patent Owner
argues that because “the start of the keepalive timer is not contemporaneous
with the first messaging communication and would occur at a later time only

7 See Decision 10–11 (explaining that the applicant claimed checking for the
expiration of a certain period of time after a first message but did not include
in the claim a subsequent step of outputting the time of that non-responded-
to message, i.e., outputting a time stamp representative of the first time).
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after the second device receives the first messaging communication and
subsequently transmits an acknowledgement,” the timer “would not
correspond to the elapsed time ‘since the first time’ when the first messaging
communication occurred” as claimed. PO Resp. 38.
We find this argument unpersuasive because it is inconsistent with
how TCP/IP operates. Specifically, we do not agree with Patent Owner that
the “first communication” is concluded before the ACK that would start the
keepalive timer is sent. Instead, we agree with Petitioner’s expert, Dr.
Chatterjee, that the skilled artisan “would have understood the ‘ACK’ signal
in TCP to be an integral part of the ‘messaging communication.’” Ex. 1031
¶ 37. As Dr. Chatterjee explains, “[a] sending device in TCP relies on the
ACK signal to determine that the recipient received the packet, and thus, that
retransmission is not required” and “[t]he transmission of ACKs by the
recipient is part of the end-to-end process of reliably communicating data
using TCP.” Id. ¶ 38; see also id. ¶¶ 39–40. The “first messaging
communication” is not complete until the sender knows that the message has
received—until then, the sender is waiting to possibly resend the message.
We conclude that, in the system contemplated by the combination, the
keepalive time would start after the ACK is received, and, if the next
communication did not come until after the keepalive time expires, the
system would “determin[e] 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,” as claimed.
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iv. Motivation to Combine
Patent Owner argues that Petitioner has not shown that one of
ordinary skill would have been motivated to modify Crawford’s instant
messaging system to include determining that a predetermined duration of
time has elapsed without additional communication. See PO Resp. 41.
First, Patent Owner argues that “the instant messaging system under
the combination of Crawford and Watson would display a timestamp with
every instant message” and that “a POSITA implementing Crawford/Watson
would have recognized the stated preferences of those systems and why
those preferences render the proposed ‘keepalive timer’ modification
redundant and wastefully unnecessary.” PO Resp. 42. Patent Owner argues
that the “Petition had a burden to explain adequately why such a
modification to Crawford and Watson “would have been an improvement on
what [the primary system] already provides,” but no such showing was
provided.” Id.
This argument is unpersuasive because the Petition did provide a
reason, which Patent Owner identifies two pages later in the Response:
Petitioners theorized that a POSITA would have been
motivated to “adapt the instant message system of Crawford to
detect whether the TCP connection between the two devices has
been idle or inactive for a specified period of time” because
“[t]his would have allowed the client to determine whether the
idleness of the connection was attributable (1) to a lack of
communications in the IM conversation, or (2) a disruption in
the actual communication link between two clients.”
PO Resp. 44 (citing Pet. 41–42; Ex. 1002 ¶¶ 103–104). The keepalive timer
would allow the client to determine that the connection was lost, allowing
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the client or user to take corrective action. Crawford and Watson did not
provide such functionality.
Next, Patent Owner argues that “the Petition never sufficiently
demonstrated why a POSITA would have been motivated to look toward
Stevens and Snader in the context of Crawford’s client-to-client AOL instant
messaging system—especially where Stevens and Snader describe “server
applications” and are wholly unrelated to outputting time stamps in any
electronic conversation.” PO Resp. 43.
This argument is unpersuasive. As Petitioner argues, “[b]oth sides’
experts agree that these techniques could be implemented between two
‘client’ computers.” Pet. Reply 20 (citing Ex. 1031 ¶ 47; Ex. 1002 ¶ 98 n.8;
Ex. 1032 at 50:22–52:7, 56:11–20). And, as Petitioner also argues, Patent
Owner’s contention is based on the idea that the sender and receiver are both
clients that communicate through a server, but that is not necessarily the case
in TCP/IP, where “‘server’ simply refers to the TCP endpoint that initiated a
TCP connection, and ‘client’ to the TCP endpoint that accepted that
connection.” Pet. Reply 20–21 (citing Ex. 1031, ¶ 45; Ex. 1005, 20). In
addition, Snader specifically suggests “implementing [the heartbeat] in the
application.” See Ex. 1005, 95–97.
Patent Owner then argues that “the foundation for Petitioners’ theory
is that Crawford’s instant message client actually needs to determine a cause
of inactivity, but this foundation is unsupported by evidence and make[s]
little sense in light of Crawford’s original solution.” PO Resp. 44.
According to Patent Owner, there is no “evidence demonstrating why
Crawford’s instant message client actually needed to determine the cause of
inactivity.” Id. at 44.
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We disagree with this argument too. The question is not whether the
modification was “needed,” but rather whether there is an identified benefit
that would have motivated the skilled artisan to make the change. Petitioner
has identified advantages that would have motivated the combination. See,
e.g., Pet. 41–42 (explaining that the keepalive “would have allowed the
client to “determine whether the idleness of the connection was attributable
(1) to a lack of communications in the IM conversation, or (2) a disruption in
the actual communication link between two clients”); Ex. 1002, ¶¶ 103–104.
Patent Owner further argues that “both Stevens and Snader provide
multiple and explicit reasons not to use these mechanisms for detecting a
lost connection,” namely that “(1) they can cause perfectly good connections
to be dropped during transient failures, (2) they consume unnecessary
bandwidth, and (3) they cost money on an Internet that charges by the
packet.” PO Resp. 45–46 (quoting Ex. 1006, 75; citing Ex. 1005, 94).
According to Patent Owner, “[t]he Petition ignored this contrary evidence in
Stevens/Snader,” erroneously considered only its unsupported assumptions
“in a vacuum,” and “[s]uch legal error cannot be adopted.” Id. at 46.
We agree that the art describes some disadvantages to the use of a
keepalive timer. However, in the absence of a persuasive argument from
Patent Owner that the disadvantages rise to the level of teaching away, we
find them to be tradeoffs that the skilled artisan would weigh in
implementing the keepalive timer. One would have needed to decide, in
particular, if the advantages of knowing that the connection was lost was
outweighed the possible drawbacks. But the mere fact that a modification
includes negative effects is not alone sufficient to preclude a combination.
Stevens and Snader identify some problems associated with the use of
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keepalives timers, but do not teach away from using them. See DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (“A reference does not teach away . . . if it merely expresses a
general preference for an alternative invention but does not ‘criticize,
discredit, or otherwise discourage’ investigation into the invention
claimed.”) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
Finally, Patent Owner argues that “the law mandates an ‘especially
strong’ inference of ‘nonobviousness’ where the primary reference’s original
solution undermines the very reason being proffered as to why the primary
reference should be modified.” PO Resp. 46 (citing DePuy, 567 F.3d at
1326). Specifically, Patent Owner asserts that “Crawford already provided a
mechanism that reports to the first user when the second user is typing a
message, thus confirming that the connection is active in a timely manner
consistent with the real-time, conversational nature of Crawford’s instant
messaging.” PO Resp. 47. Patent Owner argues that “Crawford’s original
solution already enabled the user to recognize[] when there is a lack of
incoming messages because any potential messages would have been
signaled by the ‘typing’ indicator and the ‘typing’ icon before any such
messages were actually.” Id.
We do not agree with this argument because, as explained above, the
keepalive timer would provide an advantage that that typing indicator and
typing icon would not. The indicator and icon would tell one party that the
other was connected and in the process of typing something, but would not
distinguish between silence resulting from the other party not responding
and silence resulting from a lost connection. Nor would they allow the
client/user to proactively correct a connection problem. There is no
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“original solution” in Crawford or Watson that “undermines the very reason
being proffered as to why the primary reference should be modified,” as
Patent Owner argues.
e. Conclusion on Grounds 1 and 2
We find that Petitioner has shown how the combination of Crawford,
Watson, Stevens, Snader, and Erickson teaches the limitations of claim 4,
that the combination of these references is supported with sufficient
motivations to combine, and that Patent Owner’s arguments against the
combination are not persuasive. We conclude, therefore, that Petitioner has
shown by a preponderance of the evidence that claim 4 was unpatentable.
Claims 8 and 12 correspond to claim 4, and the parties do not argue
them separately. We conclude, for the reasons explained above in
connection with claim 4, that Petitioner has also shown by a preponderance
of the evidence that claims 8 and 12 were unpatentable.
2. Grounds 3 and 4: Crawford, Watson, and Missig
For Grounds 3 and 4, the Petition again relied on Crawford and
Watson, but substituted Missig for Stevens and Snader. See Pet. 59–75.
Petitioner argued that Missig discloses the step of “determining that a
predetermined duration of time has elapsed” because it “explains that
‘whenever there is a gap of about 5 minutes or so . . . a new timestamp is
printed.’” Pet. 66. According to Petitioner, “[b]ecause Missig indicates that
a ‘gap of about 5 minutes or so’ is always used (‘whenever’) in determining
whether to print a new timestamp, a person of ordinary skill in the art would
have understood ‘about 5 minutes or so’ to be a predetermined duration. Id.
(citing Ex. 1002 ¶ 152) (emphasis omitted). Petitioner contends that the
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skilled artisan would have “understood the ‘gap of about 5 minutes or so’ to
describe a duration of time [that] elapse[s] since the first time without
additional communication between the electronic device and the second
electronic device during that duration of time,” and that “[i]t would also
have been obvious that in order for the software to respond and output a
timestamp . . . the software would need to be able to determine that this
duration of inactivity has in fact occurred.” Id. at 67.
In the Institution Decision, we observed that “[a]lthough Missig
evidently does show determining that a predetermined time has elapsed (e.g.,
5 minutes) and then displaying a timestamp, the figures suggest the
determination is simply that the predetermined time has passed since the first
time, not ‘since the first time without additional communication between the
electronic device and the second electronic device during that duration of
time.’” Decision 31.
In the Reply, Petitioner argues that “[a] person of ordinary skill would
have interpreted Missig’s reference to ‘a gap of 5 minutes or so’ to refer to a
gap in the conversation, not the mere passage of time untethered to the
existence of communications. Pet. Reply 24 (citing Ex. 1031 ¶ 53).
Petitioner’s expert argues that “[a] ‘gap’ generally refers to a break in
something, such as a break in continuity,” and that “since Missig describes
an ongoing chat conversation, any ‘gap’ would be with respect to a break in
conversation activity.” Ex. 1031 ¶ 53.
We find Petitioner’s arguments insufficient to carry its burden of
proving unpatentability in view of Crawford, Watson, and Missig by a
preponderance of the evidence
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The key figure from Missig is reproduced below:

An Apple iChat Window as Depicted in Missig
Ex. 1008, 2. This shows that the system displayed a first timestamp, 19:55,
then two red messages by one person, then a grey response, then another red
message, and then a second time stamp, 20:00. We fail to see how this
supports “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.” If the
“first time” is that of the first red message, 19:55, the second timestamp,
20:00, is displayed despite the existence of several intervening
communications and it thus cannot be a “time [that] has elapsed since the
first time without additional communication.” On the other hand, if the
“first time” is the time of the second red message, or third red message (so
there are no intervening messages), there is no basis to conclude that
Missig’s “gap of 5 minutes or so” starts with that message and, instead the
sequence strongly suggests that the interval between the second or third red
messages and the second time stamp would be less than five minutes.
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We thus find that Petitioner has not shown that dependent claims 4, 8,
and 12 would have been obvious in view of Crawford, Watson, and Missig.
Because we find Missig substantively insufficient, we do not reach the
argument about its status as a printed publication.
III. CONCLUSION
Claims 4, 8, and 12 have been shown to be unpatentable. The results
are summarized below.
Claims
35
U.S.C.
§ Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
4, 8, 12 103 Crawford, Watson, Stevens, Snader, Erickson 4, 8, 12
4, 8, 12 103 Crawford, Watson, Missig 4, 8, 12
Overall
Outcome
4, 8, 12
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IV. ORDER
For the reasons given, it is:
ORDERED that claims 4, 8, and 12 of U.S. Patent 8,301,713 B2 have
been shown to be unpatentable;
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.8

8 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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FOR PETITIONER:

Heidi L. Keefe
Andrew C. Mace
Mark R. Weinstein
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com
mweinstein@cooley.com

FOR PATENT OWNER:

Michael T. Hawkins
Kim Leung
Nicholas Stephens
Kenneth W. Darby
Craig A. Deutsch
FISH & RICHARDSON
hawkins@fr.com
leung@fr.com
nstephens@fr.com
kdarby@fr.com
deutsch@fr.com

James M. Glass
Ogi Zivojnovic
QUINN EMANUEL URQUHART & SULLIVAN, LLP
jimglass@quinnemanuel.com
ogizivojnovic@quinnemanuel.com