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`IPR2019-00942
`U.S. Patent No. 8,677,250
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners
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`v.
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`BLACKBERRY LIMITED
`Patent Owner
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`Case IPR2019-00942
`U.S. Patent No. 8,677,250
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`PETITIONERS’ REPLY
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`Table of Contents
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`Page
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`B.
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`I.
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`V.
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`THE INSTITUTED GROUNDS RENDER OBVIOUS “ENABLING
`A GAME APPLICATION… TO UTILIZE A CONTACT LIST FOR
`AN INSTANT MESSAGING APPLICATION… BY IDENTIFYING
`GAME PLAY IN THE CONTACT LIST.” ................................................... 1
`A.
`The Challenged Claims Do Not Require that a Game
`Application Directly Utilize an IM Application’s Contact List ........... 2
`The Combination of Galli, Crane, and Miyaji Render Obvious
`the Requirement of Enabling A Game Application to Utilize a
`Contact List for an Instant Messaging Application ............................. 9
`II. AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN
`MOTIVATED TO ADD MIYAJI’S GAME STATUS
`INFORMATION TO GALLI’S CONTACT LIST. ..................................... 11
`III. PATENT OWNER’S ARGUMENTS ABOUT CRANE’S INSTANT
`MESSAGING EMBODIMENT ARE IRRELEVANT. .............................. 14
`IV. PATENT OWNER’S ARGUMENT ABOUT DISPLAY OF AN
`INSTANT MESSAGE “INDICATIVE OF GAME PROGRESS”
`SHOULD BE REJECTED. .......................................................................... 18
`PATENT OWNER’S ARGUMENTS ABOUT IRRELEVANT
`TECHNOLOGICAL DISTINCTIONS DO NOT OVERCOME
`OBVIOUSNESS ........................................................................................... 20
`VI. PATENT OWNER’S ARGUMENTS ABOUT DEPENDENT
`CLAIMS 6 AND 14 MISINTERPRET THE CLAIM LANGUAGE.......... 22
`VII. CONCLUSION ............................................................................................. 25
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`IPR2019-00942
`U.S. Patent No. 8,677,250
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`Facebook,
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`Inc.,
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`Instagram, LLC and WhatsApp
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`Inc.
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`(collectively
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`“Petitioner”) respectfully submit the following Reply in support of the Petition for
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`Inter Partes Review:
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`I.
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`THE INSTITUTED GROUNDS RENDER OBVIOUS “ENABLING A
`GAME APPLICATION… TO UTILIZE A CONTACT LIST FOR AN
`INSTANT MESSAGING APPLICATION… BY IDENTIFYING GAME
`PLAY IN THE CONTACT LIST.”
`Patent Owner argues that the combination of Galli, Crane and Miyaji does not
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`render obvious the step of “enabling a game application… to utilize a contact list for
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`an instant messaging application… by identifying game play in the contact list.”
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`(Response at 16-18.) But Patent Owner’s argument rests on an unsupported
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`assumption that the claims of the ’250 patent require the game application to directly
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`utilize the contact list of an instant messaging (IM) application, rather than using a
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`software interface that sits between the game application and the IM application.
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`For example, Patent Owner contends that under the combination of Galli,
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`Crane, and Miyaji, a game application would “require the use of Galli’s custom-
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`coded IMLets to allow users to interact with those applications from the contact list.”
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`(Response at 16.) Patent Owner explains that under the proposed combination,
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`“Galli’s IMLets—and not the applications—are the only software that interface with
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`the contact list.” (Id. at 17.) In other words, according to Patent Owner, “no ‘game
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`application’ is ever enabled to utilize a contact list—at most, there is only a
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`U.S. Patent No. 8,677,250
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`middleware IMLet that is enabled to utilize a contact list.” (Id.)1 But the assumption
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`that flows throughout Patent Owner’s arguments – that the challenged claims require
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`that the game application directly utilize the contact list without use of an
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`intermediary software interface such as the IMLets of Galli – is unsupported. As
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`explained below, the claims impose no such requirement.
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`A. The Challenged Claims Do Not Require that a Game Application
`Directly Utilize an IM Application’s Contact List
`As noted, the claim limitation in question recites “enabling a game application
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`on the electronic device to utilize a contact list for an instant messaging application
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`for playing games with contacts in the contact list by identifying game play in the
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`contact list.” (’250, Claim 1[a].) The plain language thus makes clear that
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`“identifying game play in the contact list” is how the game application “utilize[s]
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`a contact list for an instant messaging application.” Nothing in the claim requires
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`that the game application “directly” utilize the IM application’s contact list. The
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`claim similarly does not require that the game application itself identify “game play
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`in the contact list” – this is performed by the IM application as discussed below.
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`If the claims actually required a game application to directly utilize the contact
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`list of an IM application, as Patent Owner appears to suggest, one would expect the
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`1 Except as otherwise noted, all underlining in quotations was added by Petitioner.
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`U.S. Patent No. 8,677,250
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`written description to provide some explanation of how such utilization is
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`accomplished. But the written description provides no such explanation.
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`This was confirmed by the deposition testimony of Patent Owner’s expert,
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`who appears to have walked away from any assertion that the game application must
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`directly utilize the IM application’s contact list. Patent Owner’s expert was
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`repeatedly asked at deposition if he could identify portions in the ’250 patent that
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`describe enabling a game application to utilize a contact list for an IM application.
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`Patent Owner’s expert could not identify a single specific passage. (Ex. 1020, 36:8-
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`46:22.) He instead testified that a skilled artisan “would expect to architect a system
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`with application interfaces and, you know, a messaging system, whatever you need
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`to accomplish that communication with the different parts of the program.” (Id.,
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`38:7-14.) But he could not identify any disclosure in the written description of any
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`such application interfaces, messaging system, or other mechanism. (Id. 40:4-
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`45:11.) He instead reiterated that a person of ordinary skill in the art “would be able
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`to devise an application program, interfaces and protocols to actually be able to
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`accomplish that,” and testified that an ordinarily skilled artisan would have had
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`many different ways of doing so. (Id., 45:9-11; id., 45:14-46:21.)
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`Patent Owner’s expert thus identified “application interfaces,” “a messaging
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`system,” “an application program, interfaces, and protocols,” as examples of how a
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`game application could utilize a contact list for an IM application. This is significant
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`U.S. Patent No. 8,677,250
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`because none of those examples would have involved the game application directly
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`utilizing the IM application’s contact list. Each of his examples would have
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`provided – at most – a way in which a game application could indirectly utilize the
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`contact list of an IM application, through an intermediary software interface between
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`the game application and the IM application. (Ex. 1019, ¶¶11, 14.)
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`This raises a threshold question – has Patent Owner walked away from its
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`apparent position that the claim requires that the game application directly utilize the
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`IM application’s contact list, without use of an intermediate software interface?
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`Because if the claims of the ’250 patent permit the game application to use
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`“application interfaces,” a “messaging system,” or an “application program” to meet
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`the claim limitation, as testified by Patent Owner’s expert, then the claim should not
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`exclude the IMLets in Galli that likewise provide application interface functionality.
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`Petitioner is unaware of any difference between the examples identified by Patent
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`Owner’s expert and the IMLets in Galli that would justify different treatment.
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`The fact that the ’250 patent itself discloses no mechanism for carrying out
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`this function likely reflects the fact that “[a] patent need not teach, and preferably
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`omits, what is well known in the art.” Spectra–Physics, Inc. v. Coherent, Inc., 827
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`F.2d 1524, 1534 (Fed. Cir. 1987). Both sides’ experts agree that creating an interface
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`between a game application and an IM application to carry out the claim limitation
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`would have fallen well within the capabilities of an ordinarily skilled artisan. (Ex.
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`1019, ¶22; Ex. 1020, 44:23-46:21, 37:25-38:14.) This absence of disclosure in the
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`written description suggests that the applicants had no intention of excluding these
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`well-known techniques – none of which involving the game application directly
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`utilizing the contact list of an IM application – from the scope of the claims.
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`Petitioner’s expert also reviewed the written description and, like Patent
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`Owner’s expert, could not identify any passages describing how a “game
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`application” is enabled to utilize the contact list for an IM application. (Ex. 1019,
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`¶¶16-18.) The disclosures in the ’250 patent relating to the claimed “game
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`application,” if anything, refute any requirement of direct utilization.
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`For example, Figure 10 and its accompanying textual description in the ’250
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`patent appear to provide the only attempt to depict the relationship between the game
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`applications and the IM application:
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`U.S. Patent No. 8,677,250
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`(’250. Fig. 10 (color highlighting added).) Figure 10 above shows the IM game
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`applications 1012 (in yellow), but as shown, there are no arrows or other markers
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`indicating any connection to or communication between those game applications
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`and other components. The figure shows “CONTACTS” 1006, which depicts the
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`contacts list. (’250, 8:3-5 (“Components 1000 comprise… contacts list 1006….”).)
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`Beneath the contacts list (at right) is “CURRENT GAMES” 1010, but despite its
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`name, that box does not represent the game applications – it merely represents
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`contact list entries for current games. (’250, 8:3-7 (“Components 1000 comprise,
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`U.S. Patent No. 8,677,250
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`broadly … contact list entries for current games 1010….”).) Under “CURRENT
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`GAMES” is “Game in Progress” 1014 (in green), which represents the game in
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`progress data associated with the contact list entry. (’250, e.g., 8:18-21.) As noted,
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`Figure 10 shows no connection between the game applications 1012 (in yellow) and
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`the contact list entries for current games 1010, or the game in progress data 1014 (in
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`green) – or any other component of the system.
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`The patent’s other descriptions of this claim limitation are exceedingly
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`cursory. They recite nothing more than the end result of identifying game play in
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`the contact list, with no accompanying description of what (if anything) the game
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`application did to cause that to occur. (’250, e.g., 10:10-13, 9:33-37, 9:51-53.)
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`Nothing in the written description discloses communication between the game
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`application and the contact list of the IM application – let alone supports a narrow
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`requirement that the game application directly utilize the contact list of an IM
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`application without any intermediary software interface. (Ex. 1019, ¶¶17-21.)
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`The specification suggests just the opposite by explaining that “[g]ame
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`applications may be implemented in the Java™ language and receive support from
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`a Java-oriented operating system on device 202.” (’250, 8:28-30.) The Java
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`language implements a “sandbox” security model that would prohibit a game
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`application from directly accessing and manipulating the memory of a separate IM
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`application. (Ex. 1019, ¶¶19-20.) As explained by Dr. Chatterjee, an ordinarily
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`skilled artisan would have understood that in order for a game application written in
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`Java to utilize a contact list for an IM application, “an intermediate interface or
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`software layer (such as ‘middleware’ or an Application Programming Interface
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`(API)) would be needed to allow orderly sharing of information between these two
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`applications.” (Id., ¶20.) Accordingly, if the claim were required the game
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`application to directly utilize the contact list of an IM application, it would exclude
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`game applications written in the Java language. (Id.)
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`Finally, such a narrow position would be inconsistent with Patent Owner’s
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`positions in the underlying infringement litigation. In seeking a finding that
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`Petitioner infringes the ’250 patent based on an accused IM gaming product similar
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`in some respects to the Galli and Crane combination, Patent Owner told the district
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`court that the claim does not require that the game application directly access the
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`contact list. (See Ex. 1022, at 7:13-16 (“At bottom, Defendants’ argument boils
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`down to the unsupported assertion that the game application must directly access the
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`Chats list in order to result in the appearance of the visual identifier identifying game
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`play. But, this overly restrictive reading of the claim is untenable.”) (bold and italics
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`in original).) Patent Owner further explained that “[a]ll the claim requires is for the
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`‘game application’ to ‘utilize’ the ‘contact list’ by ‘identifying game play in the
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`contact list.’” (Id. at 6:2-4.) Patent Owner argued that this requirement could be
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`demonstrated by simply pointing to screenshots in the accused product showing that
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`U.S. Patent No. 8,677,250
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`information relating to game play ultimately wound up in the alleged contact list.
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`(Id. at 6:4-20.) “This alone demonstrates infringement,” according to Patent Owner.
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`(Id. at 6:19-20.) Thus, Patent Owner’s representations in the litigation provide
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`further support for rejecting the narrow interpretation suggested in its Response.
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`B.
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`The Combination of Galli, Crane, and Miyaji Render Obvious the
`Requirement of Enabling A Game Application to Utilize a Contact
`List for an Instant Messaging Application
`The Petition explained in detail how this claim limitation was satisfied by the
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`combined teachings of Galli, Crane, and Miyaji. Petitioner explained that it would
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`have been obvious to an ordinarily skilled artisan “to create an IMLet for the game
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`application in Crane and register it with Galli’s system,” which “would have
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`predictably resulted in an icon or other visual cue for the game application being
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`included on Galli’s contact list.” (Ex. 1002, ¶53; Petition at 26.) Petitioner further
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`explained, applying the teachings of Miyaji, that the contact list in Galli would have
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`been further adapted to identify game play. (Petition at 23-25, Ex. 1002, ¶56.)
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`The Petition provided an explanation of how a game application “utilizes a
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`contact list for an instant messaging application… by identifying game play in the
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`contact list,” that was more detailed than the ’250 patent itself. The Petition showed
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`how straightforward it would have been to display the current status of the game in
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`progress in the Galli contact list – it would have amounted to displaying a single line
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`of text (e.g. from Figure 4 of Miyaji, e.g., “MOVE (3) 00:22/7 MOVES” or “YET
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`(4) 00:15/5 MOVES”) in a corresponding entry in the Galli contact list. (Petition,
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`at 23-25; Ex. 1019, ¶23.) As noted, creating a software interface between the game
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`and IM applications to do so would have fallen well within the capabilities of a
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`skilled artisan. (Ex. 1019, ¶22; Ex. 1020, 44:23-46:21, 37:25-38:14.) Patent Owner
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`does not suggest that a skilled artisan would have had any difficulty in building a
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`system according to the teachings of the prior art, and does not dispute Petitioner’s
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`evidence that the combination could have been implemented using routine and
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`conventional techniques with at least a reasonable expectation of success. (Ex. 1002,
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`¶¶60, 65.) As explained, the claims properly understood do not require direct
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`utilization of the IM application’s contact list by the game application.
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`Finally, even if the claimed “game application” had to directly utilize the IM
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`application’s contact list (which it does not), this would not avoid a finding of
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`obviousness. A person of ordinary skill in the art would also have regarded the
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`combination of the game in Crane and its associated IMLet in Galli as the “game
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`application” in applying the teachings of the prior art. An IMLet in Galli is not a
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`generic piece of middleware or application interface software – it would have been
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`created specifically for the game in Crane and essential to facilitating game play
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`using the Galli IM system. (Ex. 1002, ¶53; Ex. 1019, ¶14 n.2.) Accordingly, it
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`would have been natural to regard the “game application” as including both the game
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`software in Crane and its associated IMLet. The ’250 patent itself acknowledges
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`that “it is sometimes difficult to make bright-line distinctions between components”
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`of the IM system and game applications 1012. (’250, 8:51-55.) Although Patent
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`Owner argues that the IMLet in Galli does not by itself qualify as the claimed game
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`application, Patent Owner does not address whether the IMLet could be part of the
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`game application. (Response at 17 n.1.) Here, there is no reason to make bright-
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`line distinctions between the game software and its custom IMLet; together, they
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`satisfy even the narrowest interpretation suggested by Patent Owner.
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`II. AN ORDINARILY SKILLED ARTISAN WOULD HAVE BEEN
`MOTIVATED TO ADD MIYAJI’S GAME STATUS INFORMATION
`TO GALLI’S CONTACT LIST.
`Patent Owner next argues that a person of ordinary skill in the art would not
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`have been motivated to adapt the Galli contact list to include the game status
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`information disclosed in Miyaji. (Response at 19-25.) But Patent Owner has not
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`directly addressed the multiple motivations to combine identified in the Petition.
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`The Petition explained that adapting Galli’s contact list to display game status
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`information from Miyaji “could provide useful information about the current state
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`of an ongoing game.” (Petition at 28 (citing Ex. 1002, ¶64).) This would have been
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`particularly valuable because “turn-based game play may take place over hours or
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`days.” (Id.) Miyaji explains that in a turn-based game, “a client has to wait for a
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`long time until one game ends because the game does not proceed until an opponent
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`player does not move even when the client moves.” (Miyaji, Ex. 1005, ¶0006.)
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`Patent Owner nevertheless argues that Galli’s contact list and Miyaji’s match
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`list “serve dissimilar purposes and solve distinct problems in the art.” (Response at
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`20.) This argument rests on the fact that the “match list” in Miyaji does not expressly
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`show contact information, but Patent Owner overlooks the many ways in which the
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`Miyaji match list and the Galli contact list are complementary. This is clear from
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`the match list shown in Figure 4 of Miyaji:
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`(Miyaji, Ex. 1005, Fig. 4.) The match list in Figure 4 shows eight games (each in a
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`different stage), and as both sides’ experts agree, each these games could have been
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`with a different player. (Ex. 1020, 27:14-28:2; Ex. 1019, ¶25.) Figure 4 does not
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`expressly show contact information of the other players, but each item in the match
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`list represents a particular set of communications (a game in progress) with those
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`players. And similar to the contact list in Galli, the user in Miyaji can select any of
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`the items in the list to activate application functionality. (Petition at 14-15 (citing
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`Miyaji, Ex. 1005, ¶0066); Petition at 28-29; Ex. 1002, ¶65.) The “match list” of
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`Miyaji shares key similarities with the contact list in Galli – both in terms of its
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`purpose in facilitating communication with other users and in its selection/activation
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`features – to make Miyaji’s teachings combinable with Galli. (Ex. 1019, ¶25.)
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`Patent Owner attacks the Galli reference individually, arguing that the display
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`of status information “would ‘provide useful information’ for any application and,
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`yet, none of the other applications disclosed in Galli shows indications of progress
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`in the contact list.” (Response at 21.) This argument fails because “[a] finding of
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`obviousness... cannot be overcome ‘by attacking references individually where the
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`rejection is based upon the teachings of a combination of references.’” Bradium
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`Techs. LLC v. Iancu, 923 F.3d 1032, 1050 (Fed. Cir. 2019). Petitioner did not cite
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`Galli alone for this limitation, but in combination with Miyaji.
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`Patent Owner also overlooks factors particular to game applications that
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`would have motivated an ordinarily skilled artisan to adapt the Galli contact list to
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`include game status information from Miyaji. The exemplary activity in Galli
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`discussed extensively in Patent Owner’s Response – viewing a video – represents a
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`passive activity that takes place over a limited period of time. (Ex. 1019, ¶¶26-27.)
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`Turn-based games are different. As explained in the Petition, these games depend
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`on back-and-forth communications between players, over a potentially extended
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`time period (with the game effectively frozen until a player makes the next move).
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`(Miyaji, Ex. 1005, ¶0006; Petition at 28; Ex. 1002, ¶64; Ex. 1019, ¶26.) Game status
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`information would thus have beneficially provided a visual indicator that a long-
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`awaited game move from the other player has finally arrived, or reminded the user
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`that it is her turn to make the next move. (Ex. 1019, ¶27.)
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`III. PATENT OWNER’S ARGUMENTS ABOUT CRANE’S INSTANT
`MESSAGING EMBODIMENT ARE IRRELEVANT.
`Patent Owner next argues that a person of ordinary skill in the art would not
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`have been motivated to combine Galli and Crane. Patent Owner focuses on the
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`details of the instant messaging (IM) embodiment in Crane, arguing that Crane “uses
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`an instant messaging protocol to transmit game moves, but those moves are never
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`displayed in an instant messaging user interface.” (Response at 27.)
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`This argument represents yet another attempt to overcome obviousness “‘by
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`attacking references individually where the rejection is based upon the teachings of
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`a combination of references.’” Bradium Techs. LLC, 923 F.3d at 1050. The Petition
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`clearly explained that, under the combination of Galli and Crane, the instant
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`messaging functionality of Galli that would have been used to transmit game
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`messages and display game-related messages in the instant messaging user interface.
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`(See, e.g., Petition at 32 (“Under the combination of Crane and Galli, the game
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`messages in Crane are sent as instant messaging messages via the game application’s
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`IMLet, pursuant to the teachings of Galli.”), id., at 33-34, Ex. 1002, ¶¶75, 77, 81.)
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`In fact, Patent Owner does not dispute any aspect of Petitioner’s analysis with
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`respect to the claim limitations reciting the preparation of game messages during a
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`game in progress, and the transmission of those game messages using an instant
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`messaging system. (’250, claim 1[b]-[c], 9[b]-[c]; Petition at 29-33.)
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`The Petition mentioned the instant messaging embodiment in Crane merely to
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`observe that it works “in the same way” as the email embodiment. (Petition, at 35-
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`36; Ex. 1002, ¶¶82-83.) The Petition never suggested that the particular IM
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`networking implementation in Crane would have been utilized. This would have
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`made little sense considering that the base reference Galli already provides a far
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`more detailed and comprehensive description of the framework for sending,
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`receiving and displaying instant messages. (Ex. 1019, ¶¶30, 35.)
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`But even if the technical details of Crane’s IM embodiment were relevant,
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`they are not inconsistent with the proposed combination with Galli. Crane’s
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`description of the IM embodiment merely discloses an alternative way of physically
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`transporting game packets between players – using instant messaging instead of
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`email – and does not suggest differences in how game packets are actually presented
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`to the user. (Crane, Ex. 1004, 19:6-23.) Patent Owner relies heavily on the
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`underlined portion of the following passage on page 19 of Crane:
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`The instant messaging works in the same way as the email
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`communication but instead of addressing the outgoing emails from the
`mail server to the other players’ email addresses (for the first two
`moves), the game packets are sent directly between the IP addresses of
`the players while they are online and the game is running.
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`(Crane, Ex. 1004, 19:19-23 (underlining added).) Nothing in this passage suggests
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`that game packets sent through instant messaging “are never displayed in an instant
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`messaging user interface,” as Patent Owner argues. (Response at 27.)
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`The statement in Crane that game packets are sent “directly between the IP
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`addresses of the players” merely specifies that the IM embodiment uses a peer-to-
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`peer network arrangement in which game packets can be sent from one player to
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`another, rather than indirectly through an intermediary mail server. (Ex. 1019, ¶32.)
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`The distinction merely reflects changes in the way the game packets are physically
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`transported, not how those game packets are presented to the user through the user
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`interface. (Id.) The lack of differences from the user’s perspective is further
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`reflected by the fact that, except for this difference in physical transport of game
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`packets, “[t]he instant messaging works in the same way as the email
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`communication,” as Crane confirms. (Crane. Ex. 1004, 19:19.) Patent Owner’s
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`assumption that the IM embodiment in Crane bypasses the user interface of the IM
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`application rests on speculation and lacks evidentiary support.
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`There is similarly no support for Patent Owner’s argument that “in the IM
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`embodiment [of Crane], the game packets are not sent as attachments to a delivered
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`instant message but, instead, are sent directly to the game over TCP/IP via a player’s
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`IP address.” (Response at 28 (emphasis in original).) Nothing in Crane suggests
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`that the message attachment technique described for email is limited to the email
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`embodiment. Patent Owner’s argument cannot be reconciled with the fact that Crane
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`repeatedly describes the alternative embodiment as using instant messaging. (Crane,
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`Ex. 1004, 19:6-22.) The rudimentary transmission of packets over TCP/IP between
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`two applications is not “instant messaging.” (Ex. 1019, ¶33.) As Patent Owner’s
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`expert concedes, “TCP/IP, of course, is not an IM protocol.” (Ex. 2003, ¶52.) Crane
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`would not have described its alternative embodiment as an “instant messaging”
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`embodiment if, as Patent Owner argues, the embodiment bypasses the instant
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`messaging system by direct transmission through TCP/IP. (Ex. 1019, ¶33.)
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`But again, even if there was some merit to this argument, it would still amount
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`to nothing more than an attempt to overcome obviousness “by attacking references
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`individually where the rejection is based upon the teachings of a combination of
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`references.” Bradium Techs. LLC, 923 F.3d at 1050. Under the combination of
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`Crane with Galli, as noted, the details of Crane’s IM system would have been
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`irrelevant. This is because the game packets in Crane would have been sent as
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`attachments to instant messages using the IM system of Galli. (Petition at 32; Ex.
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`1002, ¶75; Ex. 1019, ¶35.) Galli itself confirms that conventional IM systems
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`allowed files to be attached to instant messages, much the same way as email
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`messages can include attachments. (Galli, Ex. 1003, ¶0013 (“Another example is
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`MSN Messenger, which… includes a number of functional links such as… ‘send a
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`file or photo’….”), ¶0014 (“Another example is Yahoo! Messenger, which…
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`includes a number of functional links such as ‘send a file’….”).) Both parties’
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`experts agree that conventional IM systems allowed users to attach a file to an IM
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`message. (Ex. 1020, 62:15-21, Ex. 1019, ¶34.) Petitioner also explained in detail
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`the reasons why “it would have been obvious to implement the combination of Galli
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`and Crane such that the game packet is a clickable in the same way as the email
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`attachment embodiment in Crane.” (Ex. 1002, ¶83; Petition at 36-37.) Patent Owner
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`does not specifically address any of those reasons.
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`IV. PATENT OWNER’S ARGUMENT ABOUT DISPLAY OF AN
`INSTANT MESSAGE “INDICATIVE OF GAME PROGRESS”
`SHOULD BE REJECTED.
`Patent Owner next recycles its pre-institution argument that the combination
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`would not render obvious display at least one instant message “indicative of game
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`progress” because, according to Patent Owner, “there has been no ‘progress’ in a
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`user’s local game application when an attachment arrives—indeed, the game does
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`not even process a game packet attachment until after a user manually accesses that
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`attachment.” (Response at 33 (emphasis in original).) The Board correctly rejected
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`this argument in its Institution Decision. (Decision at 13.)
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`Patent Owner identifies nothing in the claim language or written description
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`suggesting that the game application must “process” the game message before the
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`display of the instant message. The claim merely requires displaying an instant
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`message “indicative of game progress.” The receipt of a message that includes a
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`game packet from Crane is “indicative of game progress” because it indicates that a
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`player has made a move in the game. (Petition at 33; Ex. 1002, ¶81.)
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`This is also consistent with the ’250 patent, which likewise does not suggest
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`any processing of a game move when the instant message arrives. This is readily
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`observed by the annotated version of Figure 5B from Patent Owner’s response:
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`(Response, at 26 (annotations added by Patent Owner); Ex. 2003, ¶84) As shown,
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`Patent Owner’s annotated version of Figure 5B above identifies the short message,
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`“NEW MOVE RECEIVED,” as an “instant message… indicative of a game in
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`progress,” even though it provides no information about the actual move. Patent
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`Owner’s expert agreed. (Ex. 1020, 47:7-48:5.)
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`Nothing the ’250 patent suggests that the underlying move from “Mike” in
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`Figure 5B was processed in any way when the instant message was displayed – and
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`considering the fact that no data about the move is displayed, there would be no
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`reason to believe any processing had occurred. As Patent Owner’s expert explained,
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`when “NEW MOVE RECEIVED” comes in, “that’s really just an instant message
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`coming in at this stage.” (Ex. 1020, 47:7-14.) In fact, it is undisputed that processing
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`a game move is the responsibility of the game application, which might not even be
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`running at the time the message “indicative of game progress” arrives and is
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`displayed. (Ex. 1020, 55:23-56:2, 56:19-58:24; Ex. 1019, ¶39.)
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`V.
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`IRRELEVANT
`PATENT OWNER’S ARGUMENTS ABOUT
`TECHNOLOGICAL DISTINCTIONS DO NOT OVERCOME
`OBVIOUSNESS
`Part V.F of the Patent Owner Response attempts to seize on immaterial
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`technological differences between Galli, Crane, and Miyaji, to argue against the
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`combination. These arguments are unpersuasive.
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`For example, Patent Owner argues that “the three prior art references all use
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`different networking protocols,” but does not explain how these differences would
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`have been material to a person of ordinary skill in the art. (Response at 36.) All of
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`those protocols rest atop standard TCP/IP or Internet protocols, and any differences
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`in p
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