Google Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2017-00911
• Patent #: 8,745,149
• Filed: February 16, 2017
• Petitioner(s): Google Inc.
• Patent Owner(s): Blackberry Ltd.
• Challenged Claims: 1-17

2. Patent Overview

• Title: Handheld Electronic Device and Associated Method Providing Time Data in a Messaging Environment
• Brief Description: The ’149 patent discloses a method for providing dynamic time information for messages displayed on a handheld electronic device. The system automatically changes an initial timestamp (e.g., "2:44 pm") to a different format (e.g., "2:44 pm yesterday") as time progresses to provide more contextually relevant information.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 9-13, and 17 are obvious over Appelman in view of Toshio.

• Prior Art Relied Upon: Appelman (International Publication No. WO 01/24036) and Toshio (Japanese Patent Application Publication No. H03-89639).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Appelman, which discloses an instant messaging application for a computer system (e.g., AOL Instant Messenger), teaches all elements of the independent claims except for the automatic changing of time information. Appelman’s interface displays a conversation of instant messages, with each message displaying a static, absolute timestamp (e.g., "13:20:05") in response to the message being sent or received (the "first input"). Toshio addresses the known problem of static timestamps becoming confusing or less meaningful over subsequent days. It teaches a display function that, upon a date change, displays additional information, such as the number of elapsed days, along with the original receipt time.
  • Motivation to Combine: Petitioner contended that a person of ordinary skill in the art (POSITA) would combine Toshio’s dynamic time display function with Appelman’s messaging interface to solve a known problem. Toshio explicitly states that displaying only an absolute time is problematic because its meaning diminishes after the first day. A POSITA would have been motivated to improve the user experience of Appelman's messaging system by incorporating Toshio's solution, thereby providing users with more useful and less confusing temporal information for older messages.
  • Expectation of Success: The combination was asserted to be a predictable integration of known technologies. A POSITA would have found it straightforward to modify Appelman’s software to check the system date and alter the timestamp display for messages older than the current day, as taught by Toshio, with a high expectation of success.

Ground 2: Claims 1, 5-7, 9, 13-15, and 17 are obvious over Appelman in view of Milton.

• Prior Art Relied Upon: Appelman (WO 01/24036) and Milton (Patent 5,631,949).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground again used Appelman as the primary reference for a messaging system with timestamps. Petitioner asserted that Milton teaches automatically changing a message's time information from one format to another based on a predetermined time interval. Specifically, Milton discloses displaying a relative time (e.g., elapsed hours and minutes) for messages received less than 24 hours ago and automatically changing the display to an absolute time (e.g., month and day) for messages older than 24 hours.
  • Motivation to Combine: The motivation asserted was to improve the utility of Appelman's messaging system by providing the most appropriate type of time information based on message age. Milton teaches that relative time is more useful for recent messages where immediacy is key, while absolute time is better for older messages where archival context is more important. A POSITA would have been motivated to implement this functionality into Appelman’s system to provide users with these recognized benefits, allowing a user to "better determine his course of action."
  • Expectation of Success: Petitioner argued that this combination represented a simple substitution of one known method of time display for another. Modifying Appelman’s system to incorporate Milton’s time-based display logic would have been a predictable software modification with a reasonable expectation of success.

Ground 3: Claims 8 and 16 are obvious over Appelman and Toshio/Milton in view of MacPhail.

• Prior Art Relied Upon: Appelman (WO 01/24036), Toshio (JP Application H03-89639) or Milton (Patent 5,631,949), and MacPhail (Patent 6,661,434).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combinations in Grounds 1 and 2 to address dependent claims 8 and 16, which require the "first input" to be the detection of a pointing device in proximity to the message. Petitioner argued that MacPhail teaches this specific feature. MacPhail addresses the problem of screen clutter on devices with limited display space and discloses displaying a timestamp "only upon request by a viewer," such as by positioning a pointer (e.g., from a mouse or trackball) over an object.
  • Motivation to Combine: The motivation for adding MacPhail’s teaching to the systems of Appelman/Toshio or Appelman/Milton was to conserve valuable display space. A POSITA would have recognized that constantly displaying timestamps for every message, as in Appelman, clutters the interface. MacPhail provides an elegant solution to this known problem by hiding the time information until it is explicitly requested by a user action like hovering. This would be a particularly desirable improvement for devices with smaller screens.
  • Expectation of Success: Incorporating a "hover-to-display" feature was a well-known UI technique at the time. A POSITA would have found it straightforward to modify the proposed systems to display the dynamic timestamp only in response to a pointer-hover event, achieving the predictable result of a cleaner interface.

4. Key Claim Construction Positions

• "first input": Petitioner proposed that this term should be construed to mean "any event detected by the electronic device." This broad construction was argued to be supported by the specification, which lists examples including "receipt of a message," "actuation of a key," or detection of a cursor. This construction is central to Petitioner's argument that Appelman's disclosure of displaying a timestamp upon message receipt satisfies the "in response to a first input" limitation of the independent claims.

5. Relief Requested

• Petitioner requested the institution of an inter partes review and cancellation of claims 1-17 of the ’149 patent as unpatentable.