BlackBerry Limited

Patent Trials and Appeals Board

Nov 12, 2020

IPR2019-00942 (P.T.A.B. Nov. 12, 2020)

Trials@uspto.gov Paper 41
571-272-7882 Entered: November 12, 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.
____________

IPR2019-00942
Patent 8,677,250 B2
____________

Before MIRIAM L. QUINN, GARTH D. BAER, and AARON W. MOORE,
Administrative Patent Judges.

BAER, Administrative Patent Judge.

JUDGEMENT
Final Written Decision
Determining No Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
Facebook, Inc., Instagram, LLC, and WhatsApp Inc., (“Petitioner”)
filed a Petition (Paper 2, “Pet.”), requesting an inter partes review of claims
1, 4–6, 8, 9, and 12–14 of U.S. Patent No. 8,677,250 B2 (Ex. 1001, “the
’250 patent”). Patent Owner Blackberry Limited filed a Preliminary
Response (Paper 6, “Prelim. Resp.”). Pursuant to our authorization,
Petitioner additionally filed a Reply (Paper 7) and Patent Owner filed a Sur-
Reply (Paper 10). Upon consideration of the Petition, Preliminary
Response, Reply and Sur-Reply, we instituted inter partes review of all
challenged claims on all grounds raised. Paper 11 (“Dec. Inst.”).
Patent Owner filed a Response to the Petition (Paper 22, “PO Resp.”)
and Petitioner filed a Reply (Paper 30, “Pet. Reply”). Patent Owner filed a
Sur-Reply (Paper 34, “PO Sur-Reply”). An oral hearing was held on
September 8, 2020, and the hearing transcript is included in the record. See
Paper 40 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6(b). This is a Final Written
Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons
set forth below, we find Petitioner has not shown by a preponderance of
evidence that claims 1, 4–6, 8, 9, and 12–14 of the ’250 patent are
unpatentable.
A. RELATED PROCEEDINGS
The parties identify the following related matters:
BlackBerry Ltd. v. Facebook, Inc., Case No. 2:18-cv-01844-GW-KS
(C.D. Cal.); Facebook, Inc. v. BlackBerry Ltd., Case No. IPR2019-00516;
Facebook, Inc. v. BlackBerry Ltd., Case No. IPR2019-00528; Facebook, Inc.
v. BlackBerry Ltd., Case No. IPR2019-00706; Facebook, Inc. v. BlackBerry
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Patent 8,677,250 B2
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Ltd., Case No. IPR2019-00787; Facebook, Inc. v. BlackBerry Ltd., Case No.
IPR2019-00899; Facebook, Inc. v. BlackBerry Ltd., Case No. IPR2019-
00923; Facebook, Inc. v. BlackBerry Ltd., Case No. IPR2019-00924;
Facebook, Inc. v. BlackBerry Ltd., Case No. IPR2019-00925; Facebook, Inc.
v. BlackBerry Ltd., Case No. IPR2019-00940; Facebook, Inc. v. BlackBerry
Ltd., Case No. IPR2019-00941. Pet. 1; Paper 4, 2–3.
B. THE ’250 PATENT
The ’250 patent is directed to integrating a game application with an
instant messaging (IM) application. Ex. 1001, 1:15–19, 2:36–39.
Specifically, the ’250 patent discloses a technique “for using a contact list
entry of an IM contact list interface to designate an IM game in progress to
facilitate switching between an IM conversation and an IM game.” Id. at
2:36–39. Figure 7B is reproduced below.

Figure 7B “illustrates a view 710 of contact list 703 depicting contacts 308
in an embodiment where a single individual contact element (e.g. 704) may
represent a contact element for both IM conversation and IM game
purposes.” Id. at 10:60–64. Selecting a contact element invokes a menu that
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allows the user to open either a conversation or game screen. Id. at 11:11–
21.
Figure 5B is reproduced below.

Figure 5B is an example of an IM view of a current conversation interface.
Id. at 10:8–9.
As a new move is received from the contact in the associated
game in progress, a notification of the new move 522 is presented
in the conversation screen (e.g. portion 504) in a manner similar
to how a new message is presented. The user may then select and
open or switch (not shown) to the game in progress from the
conversation interface 520.
Id. at 10:10–15.
C. ILLUSTRATIVE CLAIM
Petitioner challenges claims 1, 4–6, 8, 9, and 12–14. Challenged
claims 1 and 9 are independent. Claim 1 is illustrative and is reproduced
below:
1. A method of enabling a game to be played on an electronic
device, the method comprising:
enabling a game application on the electronic device to utilize
a contact list for an instant messaging application for playing
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games with contacts in the contact list by identifying game play
in the contact list;
during a game in progress with a particular contact in the
contact list, preparing game messages to be sent to the particular
contact by including game progress data in an instant messaging
message and an identifier to associate the data with the game
application;
communicating at least one game message during the game in
progress with the particular contact using an instant messaging
system used by the instant messaging application;
displaying at least one instant message in an instant
messaging conversation user interface associated with the
particular contact indicative of game progress, the instant
messaging conversation user interface enabling additional
instant messages to be sent to the particular contact in addition to
instant messages indicating game play; and
displaying a game in progress user interface associated with
the game play, after detecting a selection in the instant
messaging conversation user interface to switch to the game in
progress.
Id. at 13:18–43.
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D. PRIOR ART AND ASSERTED GROUNDS
Petitioner asserts the following grounds of unpatentability. Pet. 1–2.
Claims Challenged 35 U.S.C. §1 References/Basis
1, 4–6, 8, 9, 12–14 § 103 Galli,2 Crane,3 Miyaji4
II. ANALYSIS
A. LEVEL OF SKILL IN THE ART
Petitioner asserts that a skilled artisan “would have possessed at least
a bachelor’s degree in software engineering, computer science, electrical
engineering, [or] computer engineering with at least two years of experience
in the design and implementation of messaging systems and user interfaces,
including user interfaces for messaging systems (or equivalent degree or
experience).” Pet. 4. Patent Owner does not contest this or offer its own
formulation for a skilled artisan. We agree with and adopt Petitioner’s
proposal because it is consistent with the ’250 patent, as well as the
problems and solutions in the prior art of record. See Daiichi Sankyo Co.,
Ltd. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007).
B. CLAIM CONSTRUCTION
Neither party proposes any claim terms for construction. Pet. 8; PO
Resp. 4. We agree with the parties that no express claim construction is

1 The Leahy-Smith America Invents Act (“AIA”) amended 35 U.S.C. § 103.
See Pub. L. No. 112-29, 125 Stat. 284, 285–88 (2011). As the application
that issued as the ’049 patent was filed before the effective date of the
relevant amendments, the pre-AIA version of § 103 applies.
2 U.S. Pat. App. Pub. No. 2005/0086309 A1 (pub. Apr. 21, 2005) (Ex. 1003,
“Galli”).
3 PCT Pub. No. WO01/31476 A1 (pub. May 3, 2001) (Ex. 1004, “Crane”).
4 U.S. Pat. App. Pub. No. 2006/0116205 A1 (pub. June 1, 2006) (Ex. 1005,
“Miyaji”).
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necessary to determine whether Petitioner has shown sufficiently that any of
the challenged claims are unpatentable. See Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(explaining that it is only necessary to “construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’”
(quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
(Fed. Cir. 1999)).
C. ASSERTED PRIOR ART
1. Galli (Ex. 1003)
Galli discloses “a framework that allows a number of software
application agents, called IMLets, to be stacked on top of an instant
messenger application.” Ex. 1003 ¶ 20. Galli’s framework “enables the
user to seamless[ly] bring a local application into the instant messaging
session.” Id. ¶ 19. Galli’s Figure 5A is reproduced below.

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Figure 5A illustrates an exemplary contacts list, along with IMLets
associated with particular contacts. Id. ¶ 60. The icons to the right of the
contacts correspond to the IMLets. Id.
2. Crane (Ex. 1004)
Crane discloses “a method and system for providing a turn-based
game and, more particularly, a turn-based game to be played by
communicat[ing] over a network.” Ex. 1004, 1:5–6. According to Crane,
“after each player has played a move, they are allowed to communicate their
moves directly to one another.” Id. at 7:6–8. Game moves are transmitted
as game packets between players over a network. Id. at 7:21–23.
3. Miyaji (Ex. 1005)
Miyaji describes “an operating program of a multiple match-up type
network game, which is performed through communication networks.”
Ex. 1005 ¶ 2. Miyaji’s Figure 4 is reproduced below.

Figure 4 illustrates a match list. Id. ¶ 59. In Figure 4, “YET” identifies a
game in which it is the user’s turn to move, and “MOVE” identifies a game
in which it is the opponent’s turn to move. Id. at ¶¶ 66–67.
D. OBVIOUSNESS ANALYSIS
Petitioner asserts that claims 1, 4–6, 8, 9, and 12–14 would have been
obvious over Galli, Crane, and Miyaji. Pet. 3. Based on Petitioner’s
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analysis and as explained below, we find Petitioner has not made the
requisite showing that claims 1, 4–6, 8, 9, and 12–14 would have been
obvious over Galli, Crane, and Miyaji.
1. Petitioner’s Proffered Combination
Petitioner relies on Galli for disclosing allowing a third party
application to use an IM system to communicate, and on Crane for
disclosing playing a turn-based game over a network. See Pet. 8–10.
Specifically, Petitioner explains, Galli discloses the claimed integration of
third-party applications with an IM system by “stacking one or more
‘software agents,’ which Galli also refers to as ‘IMLets,’ on top of the IM
application that creates the IM session between two end users.” Id. at 10
(citing Ex. 1003 ¶¶ 20, 21, 36, 50, Abstr.). Petitioner further explains that
Galli discloses the key feature of the challenged claims –
allowing a third party application to use an IM system to
communicate. Although Galli does not in any way limit the types
of programs that can have an IMLet, it does not provide a specific
example of a third party game application. Petitioner has
therefore cited Galli in combination with Crane and Miyaji,
which disclose systems for playing turn-based games (such as
chess and checkers) over a computer network.
Id. at 9–10.
Petitioner next explains, with support from its declarant, Dr.
Chatterjee, and the prior art, that a skilled artisan would have been motivated
to integrate Crane’s turn-based game application as an IMLet in Galli’s
system because “the user experience in IM systems is enriched by the ability
to bring additional, non-IM applications into an instant messaging session.”
Id. at 26 (citing Ex. 1002 ¶ 61; Ex. 1003 ¶ 17). “The combination would,”
Petitioner notes, “have predictably resulted in the inclusion, on Galli’s
contact list, of an icon or other visual cue for the game application in
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Crane,” and “[t]he icon or other visual cue would enable the user to activate
the game application.” Id. at 22. Petitioner explains further that adding non-
IM applications like games improves conventional IM systems “because a
user of an IM system would no longer be constrained to ‘text messages’ or
other forms of traditional IM content.” Id. at 26. In addition, according to
Petitioner, “as Galli expressly suggests, the contact list is a natural and
advantageous place to display the availability of shared applications because
‘spatial association’ can be used to clearly inform the user of the contact list
as to which applications can be used with which contacts.” Id. at 27 (citing
Ex. 1002 ¶ 62).
Petitioner relies on Miyaji for teaching “a ‘match list’ that identifies
game play and games in progress.” Id. at 22 (citing Ex. 1005 ¶¶ 6, 10, 19,
20, 66). Petitioner explains that incorporating Miyaji’s match list
functionality into Galli’s IM contact list would have been obvious to
“provide useful information about the current state of an ongoing game,”
particularly given that “turn-based game play may take place over hours or
days.” Id. at 28 (citing Ex. 1002 ¶ 64 Ex. 1005, Fig. 14). Petitioner
provides the following mock-up:
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Id. at 24. According to Petitioner, the above mock-up shows an example of
how the contact list in Galli could be adapted with an icon for the game
application in Crane, along with Miyaji’s match list functionality.
2. “identifying game play in the contact list”
Independent claims 1 and 9 require “identifying game play in the
contact list.” Petitioner asserts that the combined teachings of Galli and
Miyaji suggest identifying game play in the contact list because “Galli
discloses a contact list for an instant messaging application,” while
Miyaji discloses a “‘match list’ that identifies game play and games in
progress.” Pet. 18, 22. Petitioner explains that “a person of ordinary skill in
the art would have understood that displaying the additional ‘match list’
information in the contact list could provide useful information about the
current state of an ongoing game,” particularly given that “turn-based game
play may take place over hours or days.” Id. at 28. Petitioner goes on to
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explain that a skilled artisan “would also have recognized the analogous
nature of the IMLet icon in Galli and the match list entries in Miyaji as both
provide a selectable means to activate application functionality —
functionality that is associated with communication with another user.” Id.
at 28–29. In addition, according to Petitioner’s expert, “a person of ordinary
skill would have been further motivated to provide a visual cue for games
already in progress (to the extent there are any between the user of the
contact list and her contacts) in addition to identifying the game application
itself. This is beneficial because not only would the user be informed of the
availability of particular ongoing games to be played, the user is also
provided with an easy way to initiate the game application directly to the
particular state of an ongoing game.” Ex. 1003 ¶ 64. Finally, Petitioner
asserts that a person skilled in the art would have been motivated to
“spatially associate[ ]” Mayaji’s game play identification “with their
respective contacts,” in light of Galli’s teaching that it is desirable to
spatially associate IMLet icons with contacts in a contact list. Id. at 29; see
Ex. 1003 ¶ 41 (explaining that “[t]o maximize the users’ IM experience . . .
the user can conveniently associate one or more IMLets with a certain
contact in his friend-list or buddy list”).
Patent Owner argues Petitioner’s obviousness challenge is deficient
because it does not provide an adequate motivation to combine Galli’s and
Miyaji’s teachings. PO Resp. 19–25. For the reasons outlined below, we
agree with Patent Owner that Petitioner’s rationale is deficient.
Although Galli and Miyaji separately disclose a contact list and
identifying game play, the challenged claims require more than just those
two separate features. Instead, the claims require a specific spatial
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relationship between the contact list and identifying game play—i.e.,
identifying game play in a contact list. Neither Galli nor Miyaji has that
feature, and Petitioner does not adequately explain why one skilled in the art
would have combined the references’ separate identifying-game-play and
contact-list teachings to arrive at identifying game play in a contact list, as
claimed. Three of Petitioner’s proffered reasons for combining Galli’s
contact list and Miyaji’s game play identification—providing useful
information about the current state of an ongoing game, proving a selectable
means to activate application functionality, and providing a visual cue for
games in progress—explain why a skilled artisan would want Miyaji’s game
play information in general, but do not adequately explain why it would
have been obvious to include game play information specifically in a contact
list. Petitioner’s other reason for combining Galli and Miyaji—spatially
associating game play identification with a user’s contacts—might justify
displaying game play information along with individual users, but again
does not adequately explain why a skilled artisan would have found it
obvious to include game play information in a contact list, as the challenged
claims require. Moreover, we conclude that Galli’s teaching of “spatially
associating” the IMLet icon with the name of a contact (see Ex. 1003 ¶ 41)
is insufficient to teach or suggest adding an entirely different type of
information––updating game play––to Galli’s contact list. Given this
deficiency, we find that Petitioner has not produced the required “articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Claims 4–6, 8, and 12–14 depend ultimately from either claim 1 or
claim 9. Petitioner’s analysis for these claims does not remedy the
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deficiencies explained above for claims 1 and 9. Therefore, Petitioner has
not met its burden to show that claims 4–6, 8, and 12–14 would have been
obvious over the asserted prior art.
III. CONCLUSION
We have reviewed the Petition, Patent Owner Response, Petitioner
Reply, and Patent Owner Sur-Reply. We have considered all of the
evidence and arguments presented by Petitioner and Patent Owner, and have
weighed and assessed the entirety of the evidence as a whole.
For the reasons above, we determine, on this record, that Petitioner
has not demonstrated by a preponderance of evidence that claims 1, 4–6, 8,
9, and 12–14 of the ’250 patent are unpatentable over Galli, Crane, and
Miyaji.

IV. ORDER
It is hereby:
ORDERED that Petitioner has not shown that claims 1, 4–6, 8, 9, and
12–14 of the ’250 patent are unpatentable under 35 U.S.C. § 103(a) as
obvious over Galli, Crane, and Miyaji; and
FURTHER ORDERED that this Decision is final, and a party to this
proceeding seeking judicial review of the Decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
11, 12 103 Galli, Crane,
Miyaji
1, 4–6, 8, 9,
12–14
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PETITIONER:
Heidi Keefe
Andrew Mace
Mark R. Weinstein
Yuan Liang
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com
mweinstein@cooley.com
yliang@cooley.com

PATENT OWNER:
Jim Glass
Sam Stake
Ognijen Zivojnovic
John McKee
QUINN EMANUEL URQUHART & SULLIVAN, LLP
jimglass@quinnemanuel.com
samstake@quinnemanuel.com
ogizivojnovic@quinnemanuel.com
johnmckee@quinnemaunuel.com