Claims for Displaying Message Timing Data Found Patent Ineligible

Last week, the U.S. District Court for the Central District of California ruled that claims related to providing time data for messages communicated between electronic devices in a messaging conversation are patent ineligible under 35 U.S.C. § 101.

Back in March, BlackBerry Limited ("BlackBerry") filed suit against Facebook, Inc., WhatsApp, Inc., Instagram, Inc., and Instagram, LLC (collectively, "Facebook Defendants"), alleging infringement of nine patents.  BlackBerry then sued Snap, Inc. ("Snap") a month later alleging infringement of six of those nine patents.  The Defendants in each of these suits each moved to dismiss their respective cases.  Snap moved on the basis that each of the six asserted patents are patent-ineligible.  The Facebook Defendants moved on the basis that four of the nine asserted patents in that suit are patent-ineligible.  The Court's ruling addressed seven of the nine patents, three of which were common between the two suits.  In particular, the Court granted Snap's motion with prejudice as to the independent claims of asserted U.S. Patent No. 8,301,713 (the '713 patent) and otherwise denied all other motions, including Snap's movement with respect to the dependent claims of the '713 patent.  This post addresses only the ruling on the '713 patent.

The '713 patent is directed to handheld electronic devices and providing information related to timing of messages (e.g., instant messages) in a messaging conversation.  The patent describes how handheld electronic devices have limited space for displaying information, which can make it difficult to provide a user with various time data related to the user's conversations.  The patent particularly aims to provide time data in scenarios where there are gaps between messages in a conversation.  For example, User 1 may send a message to User 2, but User 2 may not respond to the message immediately.  In this scenario, the patent purports to have User 1's electronic device determine that a predetermined duration of time (e.g., ten minutes) has elapsed since User 1's message was sent and that no other messaging has occurred since User 1's message was sent.  If after this duration elapses User 1's device detects an input, such as a message that User 1 is preparing to send to resume the conversation, the device will display a time at which the input occurred.  The patent describes other timing aspects of the conversation that can be provided as well, some or all of which can be provided to the user upon specific request.

Representative claim 1 of the '713 patent is shown below.  The other independent claims recite similar language.

1.  A method of operating an electronic device, the method comprising:
    outputting an electronic conversation comprising a plurality of indications, each indication being representative of at least a portion of a corresponding messaging communication between the electronic device and a second electronic device;
    identifying a first messaging communication between the electronic device and the second electronic device occurring at a first time, the first messaging communication having a corresponding first indication representative of at least a portion of the first messaging communication and which is one of the plurality of indications;
    determining that a predetermined duration of time has elapsed since the first time without additional communication between the electronic device and the second electronic device during that duration of time;
    detecting an input to the electronic device following said identifying and determining steps, said input occurring at a second time; and
    responsive to said detecting an input, outputting in the electronic conversation, a time stamp representative of the second time.

With respect to Alice step one, Snap argued that the '713 patent is directed to the abstract idea of time stamping, which Snap noted is an "utterly unremarkable idea that has been practiced manually for centuries."  (Snap also pointed out that BlackBerry's complaint itself acknowledges that time stamping electronic messaging was already well-known.)  In addition, Snap argued that time stamping communications after a predetermined duration is well-known, and that the '713 patent provided no limitations of what the duration would be.  Finally, Snap noted that, although the '713 patent describes how the purported invention was useful for saving space on devices with small screens, the asserted claims were not limited to devices with small screens.

In response, BlackBerry asserted that its invention "mak[es] a specific improvement to the way that time stamp information is displayed in an electronic conversation on a computer, specifically by displaying a timestamp when the user is most likely to be interested in one, rather than never displaying a timestamp (which under-informs users) and displaying a timestamp with each message (which unduly takes up valuable real estate and annoys users)" (emphasis in original).  BlackBerry also argued that the provisional patent leading to the '713 patent demonstrated that the '713 patent claims were directed to optimizing instant messaging for devices with small screens.

Despite BlackBerry's opposition, the Court pointed out that the '713 patent doesn't provide any information that specifically defines how or where to display a timestamp.  The Court also agreed with Snap (and BlackBerry effectively conceded) that the '713 patent did not limit what the predetermined duration of time could be, and thus the duration could be anything.  Thus, the language of claim 1 was broad enough to encompass embodiments in which no improvements to timestamping messages were provided.  As the Court noted, the Federal Circuit has previously found that use of a rule alone does not necessarily make a set of claims non-abstract.  Here, the "predetermined duration of time" aspect of the claim, while a rule, hardly qualified as a rule to elevate the claim into the realm of patent-eligibility.  At best, BlackBerry characterized the claims as only inserting a time stamp when there is a "break" in the conversations, but the claims still do not address specific lengths of the break.  The Court concluded that the independent claims were directed to the abstract idea of "displaying a timestamp based on the rule of whether a predetermined duration of time has passed."

The Court then went on to briefly discuss Alice step two.  The Court stating that, in contrast to BlackBerry's assertion that selective timing -- namely, the "predetermined duration of time" aspect of the claim -- was an inventive concept, this aspect was part of the abstract idea itself, and thus is not considered in performing the step two analysis.  The Court also noted the presence of "generic computer elements" in the independent claims.

Although Snap asserted in its motion that the independent claims are representative of all claims of the '713 patent, the Court was not ready to doom the dependent claims, finding that Snap did not meet its burden of patent ineligibility with respect to those claims.  Still, it is hard to see the dependent claims surviving.  (Concepts covered by the dependent claims define the claimed "input" as a "resumption message" resuming the conversation, display the resumption message, and display the time stamp between the resumption message and the previous message in the conversation.)

BlackBerry Ltd. v. Facebook, Inc. (C.D. Cal. 2018)
In Chambers – Final Ruling on Facebook Defendant's Motion to Dismiss by District Judge Wu