Facebook Inc v. BlackBerry Ltd

1. Case Identification

• Case #: IPR2019-00942
• Patent #: 8,677,250
• Filed: April 6, 2019
• Petitioner(s): Facebook, Inc., Instagram, LLC and WhatsApp Inc.
• Patent Owner(s): BlackBerry Limited
• Challenged Claims: 1, 4-6, 8, 9, 12-14

2. Patent Overview

• Title: System and Method for Switching Between an Instant Messaging Conversation and a Game in Progress
• Brief Description: The ’250 patent describes integrating a game application with an instant messaging (IM) application, specifically disclosing a user interface that facilitates switching between an IM conversation and a game in progress with a contact from the user's contact list.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4-6, 8, 9, and 12-14 are obvious over Galli in view of Crane and Miyaji.

• Prior Art Relied Upon: Galli (Application # 2005/0086309), Crane (WO 01/31476), and Miyaji (Application # 2006/0116205).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the combination of these three references teaches every limitation of the challenged claims.
    • Galli disclosed a foundational framework for integrating third-party applications into an IM system. This framework used middleware called "IMLets" that could be represented by a visual cue (e.g., an icon) spatially associated with a user in the IM contact list, allowing a user to launch the third-party application directly from the contact list.
    • Crane taught a turn-based game application played over a network where game moves are communicated between players using an IM protocol. Crane’s game messages were sent as "game packets" containing game progress data and a "GameId" to identify the specific game. These game packets could appear as clickable objects within a communication interface to launch or switch to the game.
    • Miyaji addressed the management of multiple concurrent turn-based games by disclosing a "match list" interface. This list displayed the status of ongoing games (e.g., indicating whose turn it is) and allowed a user to select an entry to display the game interface for the selected match.
    • Petitioner asserted that implementing Crane’s turn-based game as an "IMLet" within Galli’s framework would meet most limitations of claim 1. This would result in a game application utilizing an IM contact list. Further incorporating the teachings of Miyaji would involve adding game status indicators (like Miyaji's "match list") to the entries in Galli's contact list, thereby identifying game play in the contact list. Selecting such an entry would switch the user to the game interface, as taught by all three references. Dependent claims were also allegedly taught; for example, claim 6’s limitation of maintaining game progress data is met by Crane’s disclosure of storing game packets that can be used to resume a game.
  • Motivation to Combine:
    • A POSITA would combine Galli and Crane because Galli provided a generic, broadly applicable framework for integrating any third-party application to enrich the IM user experience. Crane taught a specific type of application (a game) that already leveraged IM for communication, making it an obvious and desirable candidate for integration into Galli's system to centralize functionality.
    • A POSITA would be further motivated to incorporate Miyaji’s teachings to improve the user experience of the combined Galli/Crane system. For turn-based games that may occur over long periods, displaying the game's current state directly in the contact list, as taught by Miyaji, would provide valuable, at-a-glance information and a seamless way for users to manage and re-engage with multiple ongoing games. The selectable list items in Miyaji are functionally analogous to the selectable "IMLet" icons in Galli, suggesting an intuitive path for combination.
  • Expectation of Success: Petitioner argued that a POSITA would have had a high expectation of success. The combination involved the integration of known user interface elements and software modules (an IM system, a game application, and a status list) using only routine and conventional computer programming techniques common at the time.

4. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1, 4-6, 8, 9, and 12-14 of the ’250 patent as unpatentable.