PTAB

IPR2019-00937

Snap Inc. v. BlackBerry Limited

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1. Case Identification

2. Patent Overview

  • Title: Handheld Electronic Device and Associated Method Providing Time Data in a Messaging Environment
  • Brief Description: The ’713 patent describes a method for presenting time data within an electronic messaging conversation. The invention purports to improve user interfaces by selectively outputting a new timestamp next to a "resumption message"—a message sent after a "predetermined duration of time" has elapsed without any communication—to indicate a gap in the conversation.

3. Grounds for Unpatentability

Petitioner asserted four grounds for unpatentability, which rely on two core prior art combinations to address two alternative interpretations of the claims. The two primary grounds are summarized below.

Ground 1: Claims 1-12 are obvious over Crawford, Watson, Stevens, and Snader.

  • Prior Art Relied Upon: Crawford (Patent 7,366,779), Watson (Your Official America Online Tour Guide (6th ed. 2001)), Stevens (TCP/IP Illustrated, Volume 1 (1994)), and Snader (Effective TCP/IP Programming (2000)).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued this combination teaches every element of the challenged claims. Crawford was asserted to teach a foundational instant messaging (IM) system, like AOL’s, that uses direct TCP connections between user devices to exchange messages in an electronic conversation. Watson, which also describes the AOL IM service, was cited for teaching the addition of timestamps to messages to show when they were sent or received. The key limitation—"determining that a predetermined duration of time has elapsed"—was argued to be obvious in view of Stevens and Snader. These references describe the standard and widely known TCP "keepalive timer" functionality, which allows a system to detect when a TCP connection has been idle for a specified, predetermined interval (e.g., 60 seconds as taught by Snader).
    • Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine Crawford and Watson because they describe analogous features of the same commercial IM service, and adding timestamps was a known method to improve usability. A POSITA implementing the TCP-based system of Crawford would have been motivated to consult well-known TCP treatises like Stevens and Snader to address the common problem of managing idle connections, either to detect network failures or conversation lulls. Snader’s express citation to Stevens provides a direct link between the two references.
    • Expectation of Success: Implementing a standard TCP keepalive feature into a TCP-based application was a routine and conventional programming task that a POSITA would have undertaken with a high expectation of success.

Ground 3: Claims 1-3, 5-7, and 9-11 are obvious over Crawford, Watson, and Missig.

  • Prior Art Relied Upon: Crawford (Patent 7,366,779), Watson (Your Official America Online Tour Guide (6th ed. 2001)), and Missig (“iChat Thought Bubbles” web page (2003)).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground was presented as an alternative to Ground 1, addressing a narrower interpretation of the claims where a timestamp is output only after a conversational gap. The base combination of Crawford and Watson was used to teach the basic IM system with timestamps. Missig, a 2003 web page describing features of Apple's iChat software, was asserted to teach the "determining" step. Missig explicitly discloses that "whenever there is a gap of about 5 minutes or so ... if a new message is sent, a new timestamp is printed." This directly teaches determining that a predetermined duration has elapsed and selectively outputting a timestamp in response.
    • Motivation to Combine: A POSITA looking to implement or improve the IM system of Crawford and Watson would have naturally looked to other contemporary IM systems, like the iChat system described in Missig, for ideas. Missig provides an express motivation for its approach, describing it as one of the "least obtrusive" uses of timestamps. This focus on improving usability would have motivated a POSITA to incorporate Missig’s technique for selectively displaying timestamps to create a less cluttered interface.
    • Expectation of Success: Combining features from different but analogous IM systems was argued to be a straightforward modification for a POSITA, who would have had every expectation of success.

  • Additional Grounds: Petitioner asserted additional obviousness challenges (Grounds 2 and 4) that built upon the combinations above. These grounds added Erickson (a 1999 paper describing the "Babble" chat system) to address the specific limitation in dependent claims 4, 8, and 12 of displaying a timestamp "disposed between" two messages. Erickson was cited to show the practice of vertically separating a timestamp from the message text, which Petitioner argued was a simple and obvious design choice.

4. Key Claim Construction Positions

Petitioner argued that no claim terms required construction but addressed two terms from the related district court litigation.

  • "resumption message": Petitioner stated that the parties in the parallel litigation had stipulated to the construction "message after a period of interruption." Petitioner endorsed this construction as consistent with the patent’s specification.
  • "predetermined duration of time": Petitioner highlighted a dispute over this term in litigation but contended that construction was unnecessary for the inter partes review (IPR). Petitioner argued the prior art disclosed this limitation under any reasonable interpretation, including its own proposal ("a length of time set in advance before the first messaging communication is sent") and the Patent Owner's. For example, the 60-second interval in Snader and the 5-minute gap in Missig are both set in advance.

5. Arguments Regarding Discretionary Denial

Petitioner presented arguments that the Board should not exercise its discretion to deny institution.

  • Petitioner argued against denial under 35 U.S.C. §325(d), stating that the prior art references and arguments presented in the petition were new and had not been previously presented to or considered by the USPTO during the original prosecution.
  • Petitioner addressed potential denial under 35 U.S.C. §314(a), acknowledging a related district court case and a previously filed IPR by Facebook. Petitioner noted that its petition was a "substantively identical copy" of Facebook's petition, which it had obtained after it became publicly available, and argued for institution on the merits of the challenges.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-12 of Patent 8,301,713 as unpatentable.