`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BLACKBERRY LTD.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2017-00912
`U.S. Patent No. 8,745,149
`
`––––––––––––––––––
`
`DECLARATION OF DR. GEORGE T. LIGLER
`
`Patent Owner, Ex. 2007, page Cover
`Google LLC v. BlackBerry Ltd., IPR2017-00912
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`TABLE OF CONTENTS
`
`Petitioner’s Exhibits Considered .............................................................................. iii
`
`Patent Owner’s ExhibitS Considered ...................................................................... iii
`
`I.
`
`Introduction ...................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Engagement ........................................................................................... 1
`
`Background and Qualifications ............................................................. 2
`
`List of Materials Considered/Reviewed ................................................ 5
`
`II.
`
`Legal Standards for Patentability .................................................................... 6
`
`A. Anticipation ........................................................................................... 7
`
`B.
`
`Obviousness ........................................................................................... 8
`
`III. The ‘149 Patent ................................................................................................ 9
`
`A. Overview of the ‘149 Patent .................................................................. 9
`
`B.
`
`C.
`
`Priority Date and Relevant Prosecution History ................................. 11
`
`Person of Ordinary Skill in the Art ..................................................... 14
`
`IV. Claim Construction ........................................................................................ 16
`
`V. Graham Does Not Render Obvious Any Claim of the ‘149 Patent .............. 17
`
`A. Overview of Graham ........................................................................... 17
`
`B.
`
`C.
`
`Graham Does Not Disclose or Suggest Displaying a “Conversation of
`Instant Messages” ................................................................................ 22
`
`Graham Does Not Disclose the Final Step/Element of the ‘149
`Patent’s Independent Claims if a Claim Interpretation of Claim 1
`where the Term “Automatically” Modifies “Displaying” is Correctly
`Applied ................................................................................................ 26
`
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`VI. Graham in View of Deshpande Cannot Remedy the “Conversation of Instant
`Messages” Deficiency in Graham ................................................................. 30
`
`VII. Graham in View of Toshio Does Not Render Obvious Any of the
`Challenged Claims ......................................................................................... 32
`
`A. Overview of Toshio ............................................................................. 33
`
`B.
`
`The Combination of Graham in view of Toshio to Reach the
`Challenged Claims Would Not Be Obvious ....................................... 35
`
`VIII. Graham in View of Milton Does Not Render Obvious Any of the
`Challenged Claims ......................................................................................... 36
`
`A. Overview of Milton ............................................................................. 36
`
`B. Milton Is Non-Analogous Art to the ’149 Patent ................................ 39
`
`C.
`
`The Combination of Graham in view of Milton to Reach the
`Challenged Claims Would Not Be Obvious ....................................... 41
`
`IX. Graham and MacPhail Do Not Render Obvious Claims 8 and 16 of the ‘149
`Patent ............................................................................................................. 42
`
`
`
`
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`Patent Owner, Ex. 2007, page ii
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`PETITIONER’S EXHIBITS CONSIDERED
`
`Exhibit Description
`No.
`1001 U.S. Patent No. 8,745,149
`1002 Declaration of Dr. Dan R. Olsen Jr.
`1003 CV of Dr. Dan R. Olsen Jr.
`1004 File History of U.S. Patent No. 8,745,149
`1005 U.S. Patent No. 7,167,703 (“Graham”)
`1006 U.S. Patent No. 5,631,949 (“Milton”)
`1007
`JP Patent Application No. H03-89639 (“Toshio”)
`1008 U.S. Patent Publication No. 2003/0039340 (“Deshpande”)
`1009 U.S. Patent No. 6,661,434 (“MacPhail”)
`1010 File History of U.S. Patent No. 9,385,973
`1011 BlackBerry’s Opposition to Motion to Dismiss in BlackBerry LTD.
`v. BLU Prods., Inc., Case No. 1:16-cv-23535 (S.D. Fla.)
`1013 Caroline Rose et al., “Inside Macintosh Volume 1” (1985)
`1014 U.S. Patent No. 8,554,859
`
`
`
`PATENT OWNER’S EXHIBITS CONSIDERED
`
`Exhibit Description
`No.
`2001 U.S. Patent No. 7,181,497 to Appelman et al.
`2002 U.S. Patent No. 7,219,109 to Lapuyade et al.
`2003 The American Heritage College Dictionary (4th Ed. 2004) (Excerpt)
`2005 CV of Dr. George Ligler
`2006 Deposition Transcript of Dr. Daniel R. Olsen, Jr. (Nov. 17, 2017)
`2007 Declaration of Dr. George T. Ligler
`
`Patent Owner, Ex. 2007, page iii
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`I, Dr. George T. Ligler, hereby declare as follows:
`
`I.
`
`Introduction
`A. Engagement
`
`1.
`
`I have been retained on behalf of Patent Owner Blackberry, Ltd.
`
`(“Blackberry”) to offer statements and opinions generally regarding the novelty
`
`and understanding of a person of ordinary skill in the art (“POSA”) in the industry
`
`as it relates to U.S. Patent No. 8,745,149 (“the ’149 patent”), which is entitled
`
`“Handheld Electronic Device and Associated Method Providing Time Data in a
`
`Messaging Environment.” I understand that Petitioner Google (“Petitioner”) has
`
`challenged claims 1-17 of the ’149 patent as unpatentable over certain prior art. I
`
`have been asked provide my opinion and analysis of the various references and
`
`opinions advanced in the Declaration of Dr. Dan R. Olsen, Jr., which I understand
`
`to be Exhibit 1002 to these proceedings (“Olsen Declaration”).
`
`2.
`
`I have personal knowledge of the facts and opinions set forth in this
`
`declaration, and believe them to be true. If called upon to do so, I would testify
`
`competently thereto. I have been warned that willful false statements and the like
`
`are punishable by fine or imprisonment, or both.
`
`3.
`
`I am being compensated for my time at the rate of $600 per hour for
`
`my work in connection with this matter. I am being reimbursed for reasonable and
`
`customary expenses associated with my work in this investigation. This
`
`Patent Owner, Ex. 2007, page 1
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`compensation is not dependent in any way on the contents of this Declaration, the
`
`substance of any further opinions or testimony that I may provide or the ultimate
`
`outcome of this matter.
`
`B.
`
`4.
`
`Background and Qualifications
`
`I am self-employed as the sole proprietor of GTL Associates. I
`
`provide consulting services primarily related to systems engineering of computer
`
`systems, both hardware and software, and telecommunications. “Systems
`
`engineering” is the engineering that it takes to put together a computer system,
`
`starting from requirements through design, implementation and fielding. Since I
`
`began GTL Associates in 1988, I have worked with 42 clients in the United States,
`
`Europe and Asia. I have also served on a pro bono basis both (1) on five
`
`panels/committees formed by the National Academies of Sciences, Engineering,
`
`and Medicine to advise the Government on issues related to computer system
`
`technology, design and implementation and, (2) at the request of then-Secretary of
`
`Commerce Gutierrez, on a 2008 Expert Panel related to technology
`
`implementation for the 2010 Census.
`
`5.
`
`I earned a Bachelor’s degree in Mathematics (summa cum laude) from
`
`Furman University in 1971, and Master of Science (M.Sc.) and Doctorate (D.Phil.)
`
`degrees in Computer Science from Oxford University in 1973 and 1975,
`
`respectively. My studies at Oxford were supported by a Rhodes Scholarship. My
`
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`doctoral dissertation was directed to the design of computer programming
`
`languages.
`
`6.
`
`I have forty-one years of professional experience in the design and
`
`development of hardware and software for computer and telecommunications
`
`systems (as well as the design and development of those systems in their entirety)
`
`for a wide variety of applications. These computer systems vary from embedded
`
`real-time microprocessor-based application-specific systems to color graphics
`
`monitors and display generators for industrial control applications to data
`
`communication systems employing cellular telephones to physiological signal
`
`monitoring systems such as pulse oximeters to personal-computer based systems to
`
`major national and international data communications networks. Additionally, I
`
`have reviewed the software and/or hardware for many products, ranging from
`
`operating systems and browsers to cellular phones and base stations and network
`
`middleware.
`
`7.
`
`I have been involved in the research, development, specification,
`
`and/or assessment of a number of systems involving presentation of graphical
`
`images and user interfaces on displays (e.g., graphical user interfaces and data
`
`applications for cellular telephones and personal computers; specialized displays
`
`for air traffic control towers; avionics systems for aeronautical flight management,
`
`navigation, telecommunications, and surveillance; color raster scan monitors and
`
`Patent Owner, Ex. 2007, page 3
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`display generators for industrial and military control applications; image
`
`processing systems; and artificial intelligence-based systems for pattern
`
`recognition in infrared images). As a specific example, during the 1990s I worked
`
`with a major cellular carrier on cellular data applications for the trucking industry.
`
`This involved, among other things, providing a user interface on a cellular
`
`telephone.
`
`8.
`
`In February 2017, I was elected to membership in the National
`
`Academy of Engineering (NAE) and am a member of the Academy’s Section on
`
`Special Fields and Interdisciplinary Engineering. NAE membership is “one of the
`
`highest professional honors accorded an engineer. Members have distinguished
`
`themselves in business and academic management, in technical positions, as
`
`university faculty, and as leaders in government and private engineering
`
`organizations. Members are elected to NAE membership by their peers (current
`
`NAE members).” (https://www.nae.edu/MembersSection.aspx) Additionally, I am
`
`a Life Senior Member of the Institute for Electrical and Electronics Engineers
`
`(IEEE), and a member of the IEEE Computer Society, the Association for
`
`Computing Machinery (ACM), the Institute of Navigation, and the American
`
`Association of Rhodes Scholars.
`
`9.
`
`I have authored or co-authored twenty-one technical publications in
`
`several fields, including articles relating to computer graphics, computer
`
`Patent Owner, Ex. 2007, page 4
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`programming languages, computer software development methodologies, and
`
`computer/computer system architecture. I have also co-authored five reports of the
`
`National Academies of Sciences, Engineering and Medicine and been both a leader
`
`and major contributor to the development of six major national/international
`
`standards in the aviation industry for navigation and surveillance systems on
`
`aircraft as well as on the ground.
`
`10. A copy of my resume is provided as Exhibit 2005, along with a list of
`
`my publications. My resume lists a number of major awards related to my work in
`
`interdisciplinary computer system engineering for which I have been a recipient or
`
`co-recipient.
`
`11. For the purposes of this Declaration, I have assumed that the priority
`
`date of the ’149 patent is September 19, 2003. Well before September 19, 2003,
`
`my level of skill in the art was at least that of a POSA, as discussed above. I am
`
`qualified to provide opinions concerning what a POSA would have known and
`
`understood at that time, and my analysis and conclusions herein are from the
`
`perspective of a POSA as of September 19, 2003.
`
`C. List of Materials Considered/Reviewed
`
`12. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this report, those listed in
`
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`the exhibit lists included at the beginning of this report, BlackBerry’s Patent
`
`Owner Preliminary Response, and the Board’s Institution Decision in this
`
`proceeding.
`
`13. This report represents only those opinions I have formed to date. I
`
`reserve the right to revise, supplement, and/or amend my opinions stated herein
`
`based on any new information and on my continuing analysis of the materials
`
`already provided.
`
`II. Legal Standards for Patentability
`
`14. Certain basic legal principles have been explained to me by counsel
`
`for Patent Owner. These legal standards, as they were explained to me, are
`
`described below.
`
`15.
`
`I understand that for an invention claimed in a patent to be found
`
`patentable, it must be, among other things, new and not obvious from what was
`
`known before the invention was made. I understand the information that is used to
`
`evaluate whether an invention is new and not obvious is generally referred to as
`
`“prior art” and can include, for example, patents and printed publications.
`
`16.
`
`I understand that in this proceeding Petitioner Google has the burden
`
`of proving that the claims of the ’149 Patent are unpatentable over the prior art by
`
`a preponderance of the evidence. I understand that “a preponderance of the
`
`evidence” is evidence sufficient to show that a fact is more likely true than it is not.
`
`Patent Owner, Ex. 2007, page 6
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`17.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. The prior art can be shown to “anticipate” the claim or it
`
`can be shown to have made the claim “obvious.”
`
`A. Anticipation
`
`18.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim.
`
`19.
`
`I understand that claim limitations that are not expressly described in
`
`a prior art reference may still be there if they are “inherent” to the thing or process
`
`being described in the prior art.
`
`20.
`
`I understand that it can be acceptable to consider evidence other than
`
`the information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that document.
`
`21.
`
`I understand that to be anticipatory, a reference must not only
`
`explicitly or inherently disclose every claimed feature, but those features must also
`
`be “arranged as in the claim.” Differences between the prior art reference and a
`
`claimed invention, however slight, invoke the question of obviousness, not
`
`anticipation.
`
`Patent Owner, Ex. 2007, page 7
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`B. Obviousness
`
`22.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made. I understand that in determining whether a patent claim is
`
`obvious, one must consider the following four factors: (i) the scope and content of
`
`the prior art, (ii) the differences between the prior art and the claims at issue, (iii)
`
`the knowledge of a person of ordinary skill in the pertinent art; and (iv) objective
`
`factors indicating obviousness or non-obviousness, if present (such as commercial
`
`success or industry praise).
`
`23.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date of the patent claim.
`
`24.
`
`I understand that the Supreme Court has rejected a rigid approach to
`
`determining the question of obviousness. I understand that while there is no
`
`requirement to identify a “teaching, suggestion, or motivation to combine” known
`
`elements to establish obviousness, it still is necessary to identify a reason that
`
`would have prompted a person of ordinary skill in the art to combine the known
`
`elements.
`
`25.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`Patent Owner, Ex. 2007, page 8
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`more prior art references discourages or leads away from the line of inquiry
`
`disclosed in the reference(s). My understanding of the doctrine of teaching away
`
`requires a clear indication that the modification should not be attempted (e.g.,
`
`because it would not work or statements that the modification should not be made).
`
`III. The ‘149 Patent
`A. Overview of the ‘149 Patent
`
`26. The ‘149 patent describes providing improved “time data regarding
`
`certain aspects of a messaging conversation on a handheld electronic device are
`
`made available to a user.” (Ex. 1001, 2:10-12). In the specification and claims of
`
`the patent, the messaging “conversation” is one of “instant messaging,” “which
`
`enables a first device to send a message on a more or less instantaneous basis to a
`
`second device.” (Ex. 1001, 1:39-48) Time data for instant messages can be
`
`provided, for example, “in situations where an interruption has occurred during a
`
`messaging conversation. (Ex. 1001, 2:12-14).
`
`27. As shown in Figure 10, the ‘149 patent describes smart time stamps
`
`for instant messages that can be depicted in an instant messaging conversation and
`
`“provide additional information depending upon the prevailing circumstances”
`
`(Ex. 1001, 7:37-40):
`
`
`
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`
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`28.
`
` Time stamp 478, depicted as “less than one minute ago,” “could be
`
`configured to be an active time stamp, meaning that it would change as time
`
`progressed. For instance, the time stamp 478 could progressively change from
`
`saying ‘less than one minute ago’ to saying ‘one minute ago’, ‘two minutes ago’,
`
`‘forty-five minutes ago’, and the like as time progressed.” (Ex. 1001, 7:59-64).
`
`Additionally, “responsive to detecting the transmission of a message, the handheld
`
`electronic device may be configured to substantially immediately output a time
`
`stamp such as ‘less than a minute ago.’ After one minute the time stamp may be
`
`altered to say ‘one minute ago’, and the like.” (Ex. 1001, 15-22)
`
`29.
`
`In my opinion, the above citations are clear disclosure of
`
`automatically changing the value of a time stamp of a message in an instant
`
`messaging conversation from a first value to a second value. Moreover, the first
`
`value for the time stamp is taught to be displayed until the value of the time stamp
`
`is changed to the second value, and at that point the displayed value of the time
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`stamp is automatically changed to the second value. No manual intervention in this
`
`process of displaying different time stamps for an instant message in an instant
`
`messaging conversation as time progresses is taught or needed.
`
`30. These time stamps can also revert from displaying relative times to
`
`displaying absolute times after the expiration of a given time duration, such as
`
`changing, at 3:54 p.m., from “fifty-nine minutes ago” to “2:54 p.m.” (Ex. 1001,
`
`7:64-8:5)
`
`31.
`
`Independent claims 1, 9, and 17 recite a method, an electronic device,
`
`and a non-transitory computer readable medium related to the above disclosures.
`
`In my analysis, I treat Claim 1 as representative:
`
`A method of displaying an instant messaging conversation on a
`1.
`display of an electronic device, the method comprising:
`
`displaying a conversation of instant messages;
`
`displaying a first time information for an instant message in the
`conversation in response to a first input; and
`
`automatically changing the first time information for the instant
`message to a second time information as time progresses and
`displaying the second time information instead of the first time
`information.
`
`B.
`
`Priority Date and Relevant Prosecution History
`
`32. The ‘149 patent claims priority to provisional patent application No.
`
`60/504,379, filed on September 13, 2003. The Olsen Declaration uses “mid-to-late
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`2003” as the timeframe used in his analysis (Ex. 1002, ¶ 14), and I will use that
`
`timeframe as well in this Declaration.
`
`33. The Olsen Declaration does not discuss the prosecution history of the
`
`‘149 patent. Although Dr. Olsen has indicated that he reviewed the prosecution
`
`history of the ‘149 patent (Ex. 1002, ¶ 10), he did not recall at his deposition which
`
`portions he had reviewed (Transcript of the November 17, 2017 Deposition of
`
`Daniel R. Olsen (Ex. 2006) at 57:17- 58:8).
`
`34. The primary reference relied upon by the Examiner was U.S. Patent
`
`No. 7,181,497 to Appelman et al. (Ex. 2001). This patent issued from a
`
`continuation of U.S. Patent Application 09/404,757, the same patent application
`
`used as the priority document in Appelman et al.’s European Patent Application
`
`WO 01/24036 (Exhibit 1012, “Appelman”). Appelman is the base reference
`
`relied upon by Dr. Olsen in the combinations of prior art used in the Olsen
`
`Declaration with regard to Dr. Olsen’s opinions of invalidity of claims 1-17 of the
`
`‘149 patent. At his deposition, Dr. Olsen testified that he was not aware whether
`
`any prior art with Appelman as the lead named inventor was at issue during the
`
`prosecution of the ‘149 patent (Ex. 2006, 58:9-59:2).
`
`35.
`
`In fact, Appelman’s ‘497 patent was used by the Examiner in his
`
`initial rejections of the pending claims (Ex. 1004, 245-247), in combination with
`
`U.S. Patent No. 7,219,109 to Lapuyade (Ex. 2002, “Lapuyade”). The combination
`
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`with Lapuyade, which discloses the ability for a user to be prompted to change, via
`
`manual selection, the displayed time zone in, e.g., an electronic calendar (e.g., Ex.
`
`2002, Figure 7), was used by the Examiner in light of the Examiner’s conclusion
`
`that Appelman did not disclose either of the final two limitations of claim 1 as
`
`originally filed: “changing the first time information for the instant message to a
`
`second time information as time progresses” or “displaying the second time
`
`information in response to a second input.” (Ex. 1004, 245).
`
`36.
`
`In response to the Examiner’s initial rejection of the claims, applicant
`
`Blackberry amended the claims to combine the final two steps of original claim 1
`
`into a single step while reciting that that the resulting step happens automatically,
`
`rather than a portion of the step happening “in response to a second input.” (Ex.
`
`1004, 233).
`
`37.
`
`In response to Blackberry’s argument, the Examiner maintained an
`
`obviousness rejection of the pending (amended) claims using Appelman ‘497 in
`
`view of Lapuyade. In response to Blackberry’s argument that Lapuyade’s user
`
`selection prompt did not render obvious “automatically changing…as time
`
`progress and displaying,” as recited in the amended claims, the Examiner argued
`
`that these recitations would have been obvious in view of the “knowledge
`
`generally available to one of the ordinary skill in the art.” (Ex. 1004, 214-215).
`
`Blackberry filed an appeal brief which argued that “[t]he Examiner must provide a
`
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`factual basis for each of the claimed features of a rejected claim,” (Ex. 1004, 68)
`
`and that Lapuyade only “shows a prompt allowing the user to select an option to
`
`change to a new time zone.” (Ex. 1004, 70). Blackberry further argued that it was
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`“unclear…how such a feature would suggest automatically changing time
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`information” in the context of the pending claims (id.) The Examiner allowed the
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`then-pending claims “based on applicant’s Arguments in the Appeal Brief…” (Ex.
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`1004, 18).
`
`C.
`
`38.
`
`Person of Ordinary Skill in the Art
`
`I understand that with regard to discussions of patent validity, a patent
`
`claim must be analyzed from the perspective of a POSA at the time of the
`
`invention.
`
`39.
`
`I understand that, in ascertaining the appropriate level of ordinary skill
`
`in a field of art, several factors should be considered, including (1) the types of
`
`problems encountered in the art; (2) the prior art solutions to those problems; (3)
`
`the rapidity with which innovations are made; (4) the sophistication of the
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`technology; and (5) the educational level of active workers in the field of the
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`patent.
`
`40.
`
`I further understand that a POSA is not a specific real individual, but
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`rather is a hypothetical individual having the qualities reflected by the factors
`
`above.
`
`Patent Owner, Ex. 2007, page 14
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`41. Having considered these factors, in my opinion, on or before
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`September 19, 2003, a POSA in the field of the ’149 patent would likely have had
`
`(1) at least a bachelor’s degree in computer science, electrical engineering, or the
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`equivalent and (2) at least two years of experience in researching, designing,
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`and/or developing user interfaces for handheld devices such as cellular telephones
`
`or personal digital assistants (PDAs). More education can supplement practical
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`experience, and vice-versa.
`
`42. The above opinion differs from the definition of POSA given in the
`
`Olsen Declaration (Ex. 1002, ¶¶ 13-14) with regard to the field in which the POSA
`
`would have had experience. In my opinion, the relevant field is graphical user
`
`interfaces for handheld devices such as cellular telephones or personal digital
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`assistants (PDAs) (rather than graphical user interfaces generally) because the ’149
`
`patent is specifically directed to graphical user interfaces on handheld
`
`communications devices. The ‘149 patent states that the field of the invention
`
`“relates generally to handheld electronic devices and, more particularly, to a
`
`handheld electronic device and a method for providing information representative
`
`of the times of certain communications in a messaging service.” (Ex. 1001, 1:20-
`
`24)
`
`Patent Owner, Ex. 2007, page 15
`Google LLC v. BlackBerry Ltd., IPR2017-00912
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`IV. Claim Construction
`
`43.
`
`I understand that in an inter partes review proceeding of an unexpired
`
`patent the claims of the patent are to be given their broadest reasonable
`
`interpretation in light of the patent specification. I also understand that, under the
`
`broadest reasonable interpretation standard, the claim terms must be evaluated
`
`using the ordinary meaning of the words being used in those claims from the
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`perspective of a person of ordinary skill in the art in light of the specification.
`
`44.
`
`I understand that the ’149 patent is not expired, so the claims must be
`
`given the broadest reasonable interpretation consistent with the specification.
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`Accordingly, in formulating my opinions, I have applied such a broadest
`
`reasonable interpretation to the claims of the ’149 patent as I perceive a person of
`
`ordinary skill in the art would have understood them at the time of the earliest
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`priority date of the ’149 patent, after reading the ’149 patent specification and
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`prosecution file history.
`
`45.
`
`I have been asked to assume that the construction of “automatically
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`chang[ing] the first time information for the instant message to a second time
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`information as time progresses and display the second time information instead of
`
`the first time information,” which appears in all of the challenged claims, requires
`
`that both “changing” and “displaying” occur automatically and are not manually
`
`initiated. As discussed above (see ¶ 29, §§III.A-B), based on my review of the
`
`Patent Owner, Ex. 2007, page 16
`Google LLC v. BlackBerry Ltd., IPR2017-00912
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`’149 patent’s claims, specification, and prosecution history, I believe that this
`
`construction is consistent with the ’149 patent’s specification and prosecution
`
`history as understood by a POSA.
`
`V. Graham Does Not Render Obvious Any Claim of the ‘149 Patent
`
`46. The Olsen Declaration states Dr. Olsen’s opinion that Graham
`
`discloses or suggests the features of claims 1, 5, 7, 9, 13, 15, and 17. (Ex. 1002,
`
`¶¶ 35, 35-72) For the reasons given below, in my opinion, Graham does not and
`
`cannot render the claims of the ‘149 patent obvious at least because Graham does
`
`not disclose or suggest “displaying a conversation of instant messages.”
`
`47. Additionally, in my opinion, Graham does not disclose the final
`
`step/element of the ‘149 patent’s independent claims if a claim interpretation of
`
`claim 1 where the term “automatically” modifies “displaying” is correctly applied.
`
`A. Overview of Graham
`
`48. The Olsen Declaration contains an overview of Graham which is
`
`slightly more than one page long (Ex. 1002, ¶¶ 24-25) and which does not include
`
`aspects of Graham which, in my opinion, are important to understanding the
`
`Graham disclosure in the context of the ‘149 patent.
`
`49. Graham is directed toward facilitating non-verbal communication
`
`between users of wireless mobile devices using image messages. Graham’s
`
`processes may also be performed to form a mixed media message. (Ex. 1005,
`
`Patent Owner, Ex. 2007, page 17
`Google LLC v. BlackBerry Ltd., IPR2017-00912
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`Abstract) Hence Graham discloses two major embodiments, one for image
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`messages and one for mixed media messages that contain images. Figure 6 of
`
`Graham depicts a schematic diagram illustrating an exemplary embodiment of a
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`mobile device arrange in a received image message mode for Graham’s image
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`messages:
`
`
`
`(Ex. 1005, Fig. 6)
`
`50.
`
`In Figure 6, each image message is depicted as one row of the display
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`502’, with each message including four images and indicating the identity of the
`
`other user that sent the message. (Ex. 1005, 10:21-28). As can be readily seen,
`
`Patent Owner, Ex. 2007, page 18
`Google LLC v. BlackBerry Ltd., IPR2017-00912
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`IPR2017-00912 (U.S. Patent No. 8,745,149)
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`Decl. of George T. Ligler
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`display area 502’