Snap Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2019-00937
• Patent #: 8,301,713
• Filed: April 5, 2019
• Petitioner(s): Snap Inc.
• Patent Owner(s): BlackBerry Limited
• Challenged Claims: 1-12

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 in an electronic messaging conversation. The purported improvement involves determining when a "predetermined duration of time" has passed without communication and then outputting a new timestamp when the conversation resumes.

3. Grounds for Unpatentability

Ground 1: Obviousness over Crawford/Watson/Stevens/Snader - Claims 1-12 are obvious over Crawford in view of Watson, Stevens, and Snader.

• Prior Art Relied Upon: Crawford (Patent 7,366,779), Watson (a 2001 America Online guide), Stevens (a 1994 TCP/IP textbook), and Snader (a 2000 TCP/IP programming book).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Crawford, which describes an AOL instant messaging (IM) system, taught the foundational elements of the challenged claims, including an electronic device outputting an electronic conversation with a plurality of indications. The combination with Watson, which described a timestamping feature for AOL's IM service, rendered obvious the claim limitation of identifying a message occurring at a first time. The core "determining" step—that a predetermined duration of time has elapsed without communication—was not taught by Crawford or Watson. Petitioner contended this was an obvious application of the well-known TCP "keepalive" functionality described in Stevens and Snader. These references taught using a timer to detect when a TCP connection has been idle for a predetermined interval (e.g., two hours in Stevens, or a shorter, application-defined period like 60 seconds in Snader).
  • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would combine Crawford and Watson because they both described analogous features of AOL's IM service, and adding timestamps as taught by Watson was a simple, useful improvement for tracking message times. A POSITA implementing Crawford's TCP-based messaging system would have been motivated to incorporate the keepalive techniques from Stevens and Snader to address the known problem of detecting idle or broken connections. Snader provided an express motivation by describing the keepalive feature as a way to defend against "network outages or system crashes" and "loss of connectivity," allowing an application to determine if a communication gap was intentional or due to a network failure.
  • Expectation of Success: A POSITA would have had a high expectation of success, as adding a timestamp feature was a routine design choice and implementing a keepalive timer involved using well-understood, conventional network programming techniques.

Ground 2: Obviousness over Crawford/Watson/Missig - Claims 1-3, 5-7, and 9-11 are obvious over Crawford in view of Watson and Missig.

• Prior Art Relied Upon: Crawford (Patent 7,366,779), Watson (a 2001 America Online guide), and Missig (a 2003 web page describing Apple's iChat).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground used the same Crawford and Watson combination as Ground 1 to teach the basic timestamped IM system. However, for the "determining" step, Petitioner relied on Missig instead of Stevens and Snader. Missig described a feature in Apple's iChat where a new timestamp was printed "whenever there is a gap of about 5 minutes or so." Petitioner argued this explicitly taught determining that a predetermined duration of inactivity had passed and then selectively outputting a timestamp only when a new message was sent after that gap. This provided an alternative, user-interface-focused approach to satisfying the limitation.
  • Motivation to Combine: A POSITA seeking to improve the user experience of the messaging system in Crawford and Watson would have looked to analogous systems like iChat, as described in Missig. Missig provided express motivation by describing the iChat timestamping method as one of the "least obtrusive" uses of timestamps and by emphasizing the general importance of "usability" in IM client development. Combining Missig's teachings would improve usability by reducing visual clutter, showing timestamps only when a significant pause in conversation occurred, which helps users understand the conversation's tempo.
  • Expectation of Success: The combination represented a routine and conventional modification to an IM system. A POSITA would have had every expectation of success in implementing a timer to selectively display timestamps, as it was a known feature in existing commercial products.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claims 4, 8, and 12 under Ground 2 (adding Erickson to the Ground 1 combination) and Ground 4 (adding Erickson to the Ground 3 combination). Erickson, a 1999 paper on the "Babble" messaging system, was added to teach the specific limitation of a timestamp being "disposed between" two messages, addressing a potential claim interpretation requiring vertical separation of the timestamp from the message text.

4. Key Claim Construction Positions

• "predetermined duration of time": Petitioner contended this term means "a length of time set in advance before the first messaging communication is sent." While disagreeing with the Patent Owner's proposed construction in parallel litigation, Petitioner argued that the prior art disclosed this limitation under any reasonable construction. For example, the idle time in Snader (e.g., 60 seconds) or Missig (about 5 minutes) would be set in the application's programming before any conversation started.
• "resumption message": Petitioner noted that the parties in litigation had stipulated to the construction "message after a period of interruption." Petitioner argued this construction was supported by the patent's specification and that the second message in the prior art combinations, sent after a period of inactivity, met this limitation.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §325(d) was inappropriate because all prior art cited in the petition was new and had not been previously presented to the USPTO during prosecution. Regarding §314(a), Petitioner noted that Facebook had previously filed an IPR petition challenging the ’713 patent and that Snap's petition was a "substantively identical copy" of Facebook's, which Snap obtained after it was publicly filed.

6. Relief Requested

• Petitioner requests institution of IPR and cancellation of claims 1-12 of the ’713 patent as unpatentable.