BlackBerry Limited

Patent Trials and Appeals Board

Jul 13, 2020

IPR2020-00392 (P.T.A.B. Jul. 13, 2020)

Trials@uspto.gov Paper 8
571-272-7822 Date: July 13, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SNAP INC.,
Petitioner,

v.

BLACKBERRY LIMITED,
Patent Owner.
____________

IPR2020-00392
Patent 8,676,929 B2
____________

Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314
Denying Petitioner’s Motion for Joinder
37 C.F.R. § 42.122(b)

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Snap Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–
319 to institute an inter partes review of claims 1, 5, 8–10, 13, 16 (“the
Challenged Claims”) of U.S. Patent No. 8,676,929 B2, issued on March 18,
2014 (Ex. 1001, “the ’929 patent”). Paper 1 (“Pet.”). Petitioner also filed a
Motion for Joinder to join IPR2019-00940. Paper 3 (“Mot.”). BlackBerry
Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim.
Resp.”). We have jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. §
42.4(a).
To institute an inter partes review, we must determine that the
information presented in the Petition shows “a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” 35 U.S.C. § 314(a). Having considered both the Petition and
the Preliminary Response, we exercise our delegated discretion, under
35 U.S.C. § 314, to deny the Petition in this proceeding. Accordingly, we do
not institute an inter partes review. Because we deny institution of the
Petition, we also deny Petitioner’s Motion for Joinder.

I. BACKGROUND
A. The ʼ929 Patent (Ex. 1001)
The ʼ929 patent is directed to a “System and Method for Pushing
Information to a Mobile Device.” Ex. 1001, code (54). The ’929 patent
claims priority through a series of continuation applications to Provisional
Application No. 60/307,265, filed on July 23, 2001. Id. at codes (63), (60).
The “invention relates to pushing information to a mobile handheld
communication device,” through the use of “an information source, a
wireless network, and a proxy content server.” Id. at 1:22–28, 51–53.
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The Abstract describes detecting “[a] triggering event,” such that
“[w]hen the information relevant to the detected triggering event comprises
content information, a meta tag is inserted to the content information.” Id. at
code (57). Further, “[t]he meta tag relates to display of specific one or more
advertisements with the content information,” and “[t]he content information
that includes the meta tag is transmitted to the mobile device.” Id.
The Specification describes storing information received from an
information source in a “proxy content server” that sorts the information into
a “plurality of channels based on pre-defined information categories.” Id. at
1:55–60. In addition, “the proxy content server . . . automatically transmits
information from a selected channel over the wireless network to the mobile
device.” Id. at 1:58-61. “Proxy Content Server 18 stores received
information 12 to a particular channel 21 based on user specific information
categories.” Id. at 4:33–35. These concepts are illustrated in Figure 8,
reproduced below.

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Figure 8 of the ’929 patent represents a flow diagram illustrating an
exemplary method of pushing information to a mobile device based on a
triggering event.
As depicted in Figure 8, information is pushed to the mobile device based on
a “triggering event.” One example of a triggering event is a timer firing,
controlled by the Proxy Content Server. Id. at 13:24–27. Examples of
significant time intervals that might trigger a timer are lunchtime,
suppertime, and other significant times of the day. Id. at 13:27–31. If a
triggering event is detected, Proxy Content Server 18 determines if any of
the information categories assigned to channel 21 are relevant to the
triggering event. Id. at 13:36–39. If the Proxy Content Server determines
that the triggering event is relevant to information in a channel, the Proxy
Content Server then determines the type of information. Id. at 13:36–47. If
it is advertising information, it is passed on to the mobile device; if it is
content information, then meta tags are added. Id. at 13:47–51. The ’929
patent provides one example of meta tags as “embedded control sequences
that the Proxy Content Server 18 has inserted to indicate when advertising
should be inserted.” Id. at 8:32–34.
The Specification further describes how the Proxy Content Server
determines whether to insert meta tags describing advertising information in
the instance of content information. Id. at 11:66–12:16. “Once this insertion
[of the meta tags] is completed the data package is sent to the mobile device
. . . .” Id. This ensures “that the mobile device user has a consistent and
transparent experience of receiving both information content and advertising
content.” Id. at 3:1–4. On the mobile device, Channel Viewer and Selector
45 displays combined advertising and content information to the user. Id. at
8:29–31 (the Channel Viewer and Selector “presents the content information
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51A, 51B to the user and monitors the information for meta-tags within the
content.”), 8:44–47 (the Channel Viewer and Selector “uses the advertising
tag to retrieve the corresponding advertising information and inserts it into
the exact space indicated by the meta tag”).
B. Illustrative Claim
Claim 1, reproduced below, is illustrative of the claims at issue:
1. A method for pushing information to a mobile device, the
method comprising:
detecting a triggering event comprising a time triggering event;
determining, by a server, information relevant to the detected
triggering event from among information stored in one of a
plurality of memory location channels, wherein the information
is stored in the one of the plurality of memory location channels
based on a category of the information matching a pre-defined
category of the one of the plurality of memory location
channels;
when the information relevant to the detected triggering event
comprises content information, inserting to the content
information, by the server, a meta tag for one or more
advertisements to be displayed with the content information,
wherein the meta tag identifies the one or more advertisements
and advertisement display requirements, and wherein the one or
more advertisements are selected based on the detected
triggering event; and
transmitting the content information that includes the meta tag
to the mobile device.
Ex. 1001, 14:11–31. While claim 1 covers a method for pushing
information to a mobile device, independent claim 9 (also challenged)
is directed to the server that pushes the information. Id. at 14:58–
15:10.
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C. Related Proceedings
According to the parties, the following matters are related proceedings
involving the ’929 patent. Pet. 1; Paper 6, 2.
i. BlackBerry Ltd. v. Snap, Inc., No. 2:18-cv-02693 (C.D. Cal. Nov. 15,
2019)
ii. BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844
(C.D. Cal.)
iii. Facebook, Inc. et al., v. Blackberry Limited, IPR2019-00940
iv. Snap, Inc. v. BlackBerry Limited, IPR2019-00829.
D. References
Petitioner relies on the following references:
Langseth, US Patent No. 6,671,715 B1, issued Dec. 30, 2003 (Ex.
1003, “Langseth”);
Excerpts from Stephen Walther, Sams Teach Yourself E-Commerce
Programming with ASP in 21 Days (2000) (Ex. 1004, “Walther”);
Excerpts from Robbin Zeff et al., Advertising on the Internet (2nd ed.
1999) (Ex. 1005, “Zeff”);
Excerpts from Anthony T. Mann, Microsoft SQL Server 7 for
Dummies (1998) (Ex. 1006, “Mann”);
Gilhuly, WO 01/22669 A1, published Mar. 29, 2001 (Ex. 1019,
“Gilhuly”); and,
U.S. Patent No. 7,406,697 B2, filed Dec. 13, 2000, issued July 29,
2008 (Ex. 1020, “Laux”).

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E. Grounds Asserted
Petitioner challenges claims 1, 5, 8–10, 13, 16 of the ʼ929 patent on
the following grounds (Pet. 3):
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 5, 8–10, 13, 16 103(a)
1 Langseth, Walther, Zeff, Mann
1, 5, 8 103(a) Langseth, Walther, Zeff, Mann,
Gilhuly
9, 10, 13, 16 103(a) Langseth, Walther, Zeff, Mann,
Laux

II. ANALYSIS
A petition must show how the challenged claims are unpatentable
under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4) (2019).
Petitioner bears the burden of demonstrating a reasonable likelihood that
Petitioner would prevail with respect to at least one challenged claim for a
petition to be granted. 35 U.S.C. § 314(a) (2018).
Patent Owner argues that we should exercise discretion to deny the
Petition in the interests of fairness and efficiency. See Prelim. Resp. 1–9.
As explained in detail below, we agree with Patent Owner.
A. Legal Standards
Under § 314(a), we have discretion to deny institution of an inter
partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140
(2016) (“[T]he agency’s decision to deny a petition is a matter committed to

1 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the application from which the ’351 patent issued was filed
before that date, our citations to Title 35 are to the pre-AIA version of § 103.
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the Patent Office’s discretion.”); SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348,
1356 (2018) (“[Section] 314(a) invests the Director with discretion on the
question whether to institute review . . . .” (emphasis omitted)); Harmonic
Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
permitted, but never compelled, to institute an IPR proceeding.”). In
exercising that discretion, the Board may consider the advanced state of a
related district court proceeding, among other considerations, as a “factor
that weighs in favor of denying the Petition under § 314(a).” NHK Spring
Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept.
12, 2018) (precedential); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11
at 5‒6 (PTAB Mar. 20, 2020) (precedential) (“the Fintiv Order”).
In deciding whether to institute inter partes review, we consider the
guidance in the Patent Trial and Appeal Board Consolidated Trial Practice
Guide of November 2019 (“Consolidated Trial Practice Guide”), which
states:
Based on the Board’s experience, one petition should be
sufficient to challenge the claims of a patent in most situations.
Two or more petitions filed against the same patent at or about
the same time . . . may place a substantial and unnecessary burden
on the Board and the patent owner and could raise fairness,
timing, and efficiency concerns.
Consolidated Trial Practice Guide, 59 (Nov. 2019), available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=.
The precedential Fintiv Order identifies several factors to be
considered in analyzing § 314(a) issues, with the goal of balancing
efficiency, fairness, and patent quality. See Fintiv Order, Paper 11 at 5–6.
These factors include: 1) whether a stay exists or is likely to be granted if a
proceeding is instituted; 2) proximity of the court’s trial date to the Board’s
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projected statutory deadline; 3) investment in the parallel proceeding by the
court and parties; 4) overlap between issues raised in the petition and in the
parallel proceeding; 5) whether the petitioner and the defendant in the
parallel proceeding are the same party; and 6) other circumstances and
considerations that impact the Board’s exercise of discretion, including the
merits. Id.
B. Procedural Background
On March 25, 2019, Petitioner filed a request for inter partes review
of claims 1–5, 8–13, and 16 of the ’929 patent. IPR2019-00829, Paper 1.
On October 1, 2019, we considered the merits of the petition in IPR2019-
00829 (“Snap’s first petition”) and determined that Petitioner has not shown
a reasonable likelihood that it would prevail in establishing the
unpatentability of the challenged claims on any ground of unpatentability
asserted in the Petition. Snap, Inc., IPR2019-00829, Paper 7 at 20.
BlackBerry first sued Petitioner for infringing the ’929 patent on April
3, 2018. On October 1, 2019, the United States District Court for the
Central District of California issued a final order finding claims 1, 9, and 16
of the ’929 patent unpatentable pursuant to 35 U.S.C. § 101. Ex. 1021, 19,
24. The district court entered final judgment in favor of Petitioner (Snap) as
well as Facebook, Inc. on those claims on November 15, 2019. Ex. 2002.
The district court’s final judgment is currently on appeal to the United States
Court of Appeals for the Federal Circuit. Mot. 2 (“BlackBerry has appealed
this judgment to the U.S. Court of Appeals for the Federal Circuit against
both Snap and Facebook. 2:18-cv-0293, Dkt. 120; 2:18-cv-01844, Dkt.
498.”); see also Blackberry Ltd. v. Snap, Inc., No. 20-1258 (Fed. Cir. filed
Dec. 17, 2019).
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On December 4, 2019, we issued a decision instituting review of
claims 1, 5, 8–10, 13, 16 of the ’929 patent in a proceeding brought by
Facebook, Inc., Instagram, LLC, and WhatsApp Inc. Facebook, Inc. v.
Blackberry Ltd., IPR2019-00940 (Paper 13). The Facebook petition in
IPR2019-00940 challenged the same claims that Petitioner challenges in the
current proceeding. See Paper 3, 3 (Motion for Joinder). When compared to
Petitioner’s first petition, “Facebook’s petition contained entirely different
grounds and prior art references than Snap’s first petition.” Id. at 2.
Petitioner has also filed a Motion for Joinder to join IPR2019-00940. Id. at
1.
On December 18, 2019, Patent Owner filed a “Disclaimer in Patent
Under 37 CFR 1.321(a).” IPR2019-00940, Ex. 2003. In this filing to the
United States Patent and Trademark Office, Patent Owner disclaimed claims
5, 8, and 13 of the ’929 patent. Id.
The current Petition was filed on January 3, 2020. Pet. 75–77. This
Petition introduces identical arguments and the same grounds raised in
Facebook’s petition (IPR2019-00940). Mot. 4.
C. Analysis for Discretionary Denial
Although we examine whether to exercise discretion in light of the
precedential decisions noted above, the unique background of this
proceeding does not fit squarely into a typical situation. For example, the
Fintiv factors examine whether we should deny institution based on the
advanced status of an underlying district court case. In this instance, the
district court case has concluded. Further, all but one of the Challenged
Claims not disclaimed have been held to be invalid by the district court
pursuant to 35 U.S.C. § 101. See Exs. 2002, 1021. Only dependent claim
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10, which is not even asserted against Petitioner in the parallel proceeding,
has not been disclaimed or found to be unpaintable. Prelim. Resp. 2,
At the outset, Petitioner seeks to join IPR2019-00940, but that does
not obligate us to institute in this proceeding without first considering
whether to exercise discretion. The statutory provision governing joinder in
inter partes review proceedings is 35 U.S.C. § 315(c), which reads:
If the Director institutes an inter partes review, the
Director, in his or her discretion, may join as a party to that inter
partes review any person who properly files a petition under
section 311 that the Director, after receiving a preliminary
response under section 313 or the expiration of the time for filing
such a response, determines warrants the institution of an inter
partes review under section 314.
Two clauses within 35 U.S.C. § 315(c) are the source of discretion to deny
joinder. The first states “the Director, in his or her discretion, may join as a
party.” Thus, joinder is not required, but remains discretionary. Second, the
statute requires an additional step. Acting under delegated authority from
the Director, we first determine whether the petition warrants the institution
of an inter partes review under § 314. Id. (“the Director, after receiving a
preliminary response under section 313 . . . determines warrants the
institution of an inter partes review under section 314”). The statute allows
for a patent owner preliminary response, and we read 35 U.S.C. § 315(c) as
requiring us to consider all of patent owner’s arguments, including those
related to discretionary denial under section 314(a).
The unique circumstances of this case persuade us to exercise
discretion and not institute review. The district court entered final judgment
on November 15, 2019. Ex. 2002. Claims 1, 9, and 16 of the ’929 Patent
were held to be unpatentable pursuant to 35 U.S.C. § 101. Id.; Ex. 1021.
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Patent Owner disclaimed claims 5, 8, and 13 of the ’929 patent on December
18, 2019. Petitioner then filed the current Petition on January 3, 2020. At
the point when the Petition was filed, all but one of the Challenged Claims
had either been disclaimed or found to be unpatentable subject matter in a
final district court decision.
The Fintiv factors provide support for exercising discretion not to
institute this Petition. See Fintiv Order, Paper 11 at 5–6. The district court
case cannot be stayed because it has concluded. We would endeavor to meet
our statutory deadline in December 2020, one year after the district court
issued final judgment. The parties’ and district court’s investment in the
district court case was sufficient to already reach a final adjudication. Now,
the parties are involved in a Federal Circuit appeal that may or may not
affirm the district court’s determinations. Petitioner and the defendant in the
district court case are also the same party. These factors favor exercising
discretion.
The issues do not necessarily overlap between the petition and the
parallel proceeding because the district court reached final judgment based
on 35 U.S.C. § 101, which is not before us. We also weigh the potential
burdens, and joining Patent Owner to an already existing proceeding would
not increase the burden for Patent Owner or for the Board. These factors
favor not exercising discretion and instituting review.
The General Plastic factors also provide guidance for exercising our
discretion. See General Plastic Industrial Co., Ltd. v. Canon Kabushiki
Kaisha, IPR2016-01357, Paper 19, 15–16 (PTAB Sept. 6, 2017)
(precedential). In our precedential decision in General Plastic, we
articulated a non-exhaustive list of factors to be considered in evaluating
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whether to exercise discretion, under 35 U.S.C. § 314(a), to deny a petition
that challenges a patent that was previously challenged before the Board.
These factors are:
1. whether the same petitioner previously filed a petition directed to the
same claims of the same patent;
2. whether at the time of filing of the first petition the petitioner knew of
the prior art asserted in the second petition or should have known of
it;
3. whether at the time of filing of the second petition the petitioner
already received the patent owner’s preliminary response to the first
petition or received the Board’s decision on whether to institute
review in the first petition;
4. the length of time that elapsed between the time the petitioner learned
of the prior art asserted in the second petition and the filing of the
second petition;
5. whether the petitioner provides adequate explanation for the time
elapsed between the filings of multiple petitions directed to the same
claims of the same patent;
6. the finite resources of the Board; and
7. the requirement under 35 U.S.C. § 316(a)(11) to issue a final
determination not later than 1 year after the date on which the Director
notices institution of review.
Id. at 16.
General Plastic Factors 1–4
As noted above, Petitioner filed IPR2019-00829 on March 25, 2019,
which was already near the end of Petitioner’s statutory period. We denied
institution on the merits on October 1, 2019. The Challenged Claims were
part of this prior petition. Petitioner’s second petition, the current Petition,
was filed on January 3, 2020. At that time, Petitioner had already received
the Patent Owner’s Preliminary Response in IPR2019-00829 as well as our
decision denying institution.
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Petitioner knew of the prior art asserted in the current Petition at least
as of April 6, 2019 – the date Facebook filed its petition in IPR2019-00940.
Prelim. Resp. 3; Ex. 2001. Thus, Petitioner waited at least nine months after
learning of the asserted prior art to bring the second petition. These factors
favor exercising our discretion to deny institution.
General Plastic Factors 5–7
Petitioner’s explanation for the time elapsed between the filings of
multiple petitions directed to nearly the same claims of the same patent
consists of the following:
Petitioner is also unaware of any basis under § 314(a) for
the Board to decline to consider this Petition. As discussed in
section I.B., Facebook previously filed an IPR petition
challenging the ’929 patent on April 6, 2019. (Ex. 1022). Snap
obtained Facebook’s petition, after it was filed and publicly
available, from the Patent Office. Snap’s petition is a
substantively identical copy of Facebook’s ’929 petition. (See
Ex. 1022).
Pet. 3. Petitioner does not address why we should institute a petition
challenging claims that have already been disclaimed or found unpatentable
by a district court. Petitioner also does not address the delay in bringing the
current Petition even though Petitioner was aware of the prior art for at least
nine months. The facts of this proceeding are unique, and Petitioner has not
explained adequately why we should not exercise our discretion to deny this
Petition.
As noted above, the resources of the Board would not be strained
because Petitioner seeks to join the Facebook proceeding. See Paper 3,
(“[T]he proposed joinder will neither unduly complicate the Facebook
proceeding nor delay its schedule.”). Similarly, allowing the Petition would
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not impact our ability to issue a final decision within one year as required by
35 U.S.C. § 316(a)(11). The decision whether to exercise discretion to deny
institution is based on “a balanced assessment of all relevant circumstances
in the case, including the merits.” Consolidated Trial Practice Guide, 58
(citing General Plastic, Paper 19 at 15). As we determined in the Facebook
decision to institute (Facebook, Inc., IPR2019-00940, Paper 13), we did not
find the merits to be flawed, and, in fact, found the merits compelling
enough to institute. All of these factors favor institution.
Weighing the totality of the record before us, we determine that
exercising our discretion, under 35 U.S.C. § 314, to deny the Petition in this
proceeding is the proper outcome. As noted above, several factors weigh in
favor of institution. We are most persuaded, however, by all the factors
favoring exercising our discretion, including the advanced phase of the
litigation. Despite knowing of the prior art for some time, Petitioner delayed
filing the Petition until after all of the Challenged Claims (except dependent
claim 10) had either been disclaimed or found to be unpatentable subject
matter in a final district court decision. Claim 10 is not at issue in the
district court case.
III. CONCLUSION
Although we are guided by our precedent in Fintiv and General
Plastic, we are unaware of prior decisions addressing a scenario where a
district court has issued final judgment holding the Challenged Claims
unpatentable pursuant to 35 U.S.C. § 101. Under the circumstances
presented here, we do not consider it an efficient use of Board resources to
institute an inter partes review where all but one of the remaining
Challenged Claims have already been adjudicated by an Article III court.
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Petitioner had one opportunity to challenge the ’929 patent and that petition
(IPR2019-00829) was denied. Although Petitioner knew of the asserted
prior art for at least nine months, Petitioner delayed filing the current
Petition until after Patent Owner filed a disclaimer and the district court
issued its final judgment. Instituting inter partes review now would defeat
the objective of being “a timely, cost effective alternative to litigation,”
since litigation already concluded. See 77 F. Reg. 48680-01 (Aug. 14, 2012)
(emphasis added). Petitioner does not address any of these issues.
Petitioner chose to adjudicate fully its case in district court and under the
unique circumstances before us, we see no reason why an additional inter
partes review is warranted.
For the foregoing reasons, we exercise our delegated discretion, under
35 U.S.C. § 314, to deny the Petition in this proceeding. Because we deny
institution of the Petition, we also deny Petitioner’s Motion for Joinder.
IV. ORDER
For the foregoing reasons, it is hereby:
ORDERED that the Petition is denied, and no trial is instituted; and,
FURTHER ORDERED that Petitioner’s Motion for Joinder (Paper 3)
is denied.
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PETITIONER:

Yar R. Chaikovsky
David Okano
PAUL HASTINGS LLP
yarchaikovsky@paulhastings.com
davidokano@paulhastings.com

PATENT OWNER:

James M. Glass
Ognjen Zivojnovic
Sam Stake
John McKee
QUINN EMANUEL URQUHART & SULLIVAN LLP
jimglass@quinnemanuel.com
ogizivojnovic@quinnemanuel.com
samstake@quinnemanuel.com
johnmckee@quinnemanuel.com