PTAB

IPR2020-00930

Square Inc v. SendSig LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method and System for Creating and Sending Handwritten or Handdrawn Messages
  • Brief Description: The ’249 patent discloses a "real-time electronic messaging system" that allows a user to create a handwritten or handdrawn message on a client device, send it over a network via a server, and have it displayed in real time on a recipient's client device.

3. Grounds for Unpatentability

Ground 1: Obviousness over Busey and Blakeslee - Claims 1, 2, 4, 5, 11, 12, 14, and 15 are obvious over Busey in view of Blakeslee.

  • Prior Art Relied Upon: Busey (Patent 5,764,916) and Blakeslee (WO 1997/023992).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Busey disclosed the core client-server architecture of the challenged claims. Busey taught a "Method and Apparatus for Real Time Communication" using a real-time server and client software (an "RTM chat client") to establish a persistent, full-duplex connection for real-time chat between multiple users. This system, Petitioner contended, met the limitations of a server component and connected client devices for real-time messaging. Blakeslee, meanwhile, taught a system for "Transferring Graphical Messages Between Mobile Telephones." It disclosed using a touch-sensitive display on a mobile device to capture handwritten messages, convert them to image data, and transmit them via a server (a "Store and Forward Unit") to a recipient's mobile device. Petitioner asserted that combining Busey's real-time framework with Blakeslee's handwriting input and mobile device features rendered the independent claims obvious. The dependent claims, which add limitations for wireless, "always-on," and mobile phone devices, were argued to be expressly taught or suggested by Blakeslee's disclosure of mobile telephones on a cellular network.
    • Motivation to Combine: Petitioner contended a POSITA would combine these references to add the known and desirable feature of handwritten messaging (from Blakeslee) to an existing real-time communication platform (from Busey). This combination was presented not as hindsight, but as a response to a clear industry trend and market demand to improve communication on mobile devices, which had small screens and keyboards ill-suited for typing. Adding handwriting input was a logical and convenient enhancement for a real-time chat system intended for such devices.
    • Expectation of Success: The petition asserted that a POSITA would have had a high expectation of success. The combination involved a simple substitution of Blakeslee's handwriting-capable mobile clients for Busey's generic client devices, a modification that would predictably yield a system for real-time transmission of handwritten messages without any unexpected results.

Ground 2: Obviousness over Szymansky and Busey - Claims 1, 4, 5, 11, 14, and 15 are obvious over Szymansky in view of Busey.

  • Prior Art Relied Upon: Szymansky (Application # 2002/0099788) and Busey (Patent 5,764,916).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that Szymansky, an analogous art, disclosed nearly all elements of the claimed invention. Szymansky taught a real-time system for distributing handwritten messages from mobile users to solve a specific problem for NYSE floor brokers (the "kiss-the-booth" rule). It disclosed brokers using wireless handheld computers with touch screens and a stylus to send handwritten orders as graphics files through a server to recipient terminals. To the extent Szymansky did not explicitly detail the real-time server architecture with the specificity of the claims, Petitioner argued a POSITA would look to Busey. Busey provided a detailed blueprint for a real-time server enabling persistent, bidirectional chat over a network.
    • Motivation to Combine: A POSITA seeking to implement or improve the real-time messaging system of Szymansky would combine its teachings with Busey. As analogous arts both directed to real-time network communication, Busey provided well-known implementation details (e.g., a dedicated real-time chat server, stable TCP/IP protocols) to enhance the functionality and performance of Szymansky's system. Incorporating Busey's robust architecture was presented as an application of a known technique to improve a known system, which would predictably increase network stability and reduce latency.
    • Expectation of Success: Petitioner argued there was a high expectation of success in combining the references. Integrating Busey's established real-time server technology with Szymansky's specific application of handwriting messaging would predictably result in a more robust and efficient system, directly furthering the goals of low-latency communication outlined in Szymansky.

4. Key Claim Construction Positions

  • Petitioner argued that the "real-time" limitations recited in all challenged claims require both the sending and receiving client devices to be connected to the same real-time messaging server. This construction was presented as essential for enabling a "private, real time communication session" as described in the specification and to distinguish the claimed invention from conventional, asynchronous email systems where sender and receiver clients connect to different, unassociated servers.

5. Key Technical Contentions (Beyond Claim Construction)

  • A central contention was that the ’249 patent was not entitled to its claimed priority date from the ’636 provisional application (filed October 13, 1999). Petitioner argued the provisional failed to provide adequate written description or enablement under 35 U.S.C. §112 for the critical "real-time" limitations. The provisional was characterized as describing a conventional store-and-forward email system ("STARMAIL"), lacking any disclosure of a real-time messaging server or the specific client-server architecture required for real-time communication. This alleged deficiency would invalidate the priority claim, making references like Szymansky (filed June 28, 1999) available as prior art. Petitioner also argued the inventor's Rule 131 declaration, intended to antedate other art, was deficient and uncorroborated.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1, 2, 4, 5, 11, 12, 14, and 15 as unpatentable.