US 8677250

I'll search for authoritative information on this patent, including any 2026 CAFC docket activity.

Let me check the specific CAFC docket 20-1256 and any 2026 activity.

US Patent 8,677,250 — Summary

Ground truth note: The core bibliographic and claim data below is taken from the authoritative full patent text (Google Patents, fetched 2026-09-28). Litigation/docket items are from third‑party aggregators and should be treated as indicative, not official. I found no CAFC 2026 docket activity specific to U.S. 8,677,250 — see uncertainty note at the end.

Bibliographic data

Abstract

A system and method for enabling a game to be played on an electronic device, comprising: enabling a game application to utilize a contact list for an instant messaging application, during a game in progress with a particular contact, preparing game messages to be sent to the particular contact by including game progress data, communicating at least one game message during the game in progress using an instant messaging system used by the instant messaging application; displaying at least one instant message in an instant messaging conversation user interface; and displaying a game in progress user interface associated with the game play, after detecting a selection in the instant messaging conversation user interface to switch to the game in progress.

Independent claims — plain-language overview

There are three independent claims (1, 9, 17), all sharing the same substantive limitations, differing only in claim type:

• Claim 1 — Method. Steps: (a) let a game app use the IM application's contact list to play games with listed contacts, by identifying game play in the contact list; (b) during a game in progress, build game messages for the contact that embed game progress data plus an identifier tying it to the game application; (c) send at least one such game message over the IM system; (d) show an instant message in the IM conversation UI for that contact that indicates game progress, where that conversation UI still allows normal IM messages in addition to game-play messages; and (e) after detecting a selection in the IM conversation UI to switch, display the game-in-progress UI.

  Practical reading: you play a turn-based game through the IM channel, and from the chat window you can tap something to jump to the board/game screen — and vice versa. The chat is not consumed by the game; ordinary messaging continues alongside.

• Claim 9 — Non-transitory computer-readable storage medium. Same five limitations as claim 1, expressed as stored executable instructions.

• Claim 17 — Electronic device. Same five limitations, expressed as a device having a processor, display, an IM application, and memory storing the executable instructions.

Dependent-claim themes (for context)

• Claims 2–3, 10–11, 18–19: maintain/update game progress data from the game messages.
• Claims 4–6, 12–14, 20–22: associate a contact list entry with the game in progress; display the game UI on selecting that entry; preserve game progress when switching away so the game resumes on re-invocation.
• Claims 7, 15, 23: when the game ends, remove the game-in-progress association from the contact list entry.
• Claims 8, 16, 24: display a notification of a new move received as a new game message.

Litigation / PTAB history (indicative, from aggregators)

• PTAB IPR2019-00942 — Facebook, Inc. / Instagram LLC / WhatsApp LLC v. BlackBerry Ltd, filed 2019-04-06, instituted 2019-11-14, Final Written Decision 2020-11-12. One aggregator lists the outcome as "Patentable" (i.e., Patent Owner prevailed on the challenged claims 1, 4–6, 8, 9, 12–14). This should be independently confirmed against the official PTAB document.
• CAFC No. 20-1256 — BlackBerry Limited v. Facebook, Inc. (consolidated with 20-1258): nonprecedential per curiam AFFIRMED, December 10, 2020 (Fed. Cir. R. 36). District court source: C.D. Cal. Nos. 2:18-cv-01844-GW-KS and 2:18-cv-02693-GW-KS (Judge George H. Wu). This is a 2020 disposition, not a 2026 docket.
• The '250 patent was also asserted by BlackBerry against the Facebook defendants in district court, where BlackBerry's motion for partial summary judgment of infringement of U.S. 8,677,250 was denied.

Uncertainty statement

1. CAFC 2026 dockets: I could not locate any 2026 Court of Appeals for the Federal Circuit docket involving U.S. 8,677,250. Searches for that combination returned only unrelated 2026 federal-circuit matters (e.g., ABC IP LLC / Rare Breed Triggers v. Peak Tactical, No. 2026-1527). I cannot confirm that any 2026 CAFC appeal of the '250 patent exists; if one does, I do not have authoritative data for it.
2. The relevant Federal Circuit proceeding I could verify is 20-1256 (2020), not a 2026 case.
3. The PTAB outcome characterization ("Patentable") comes from a third-party aggregator, not the official Final Written Decision, and should be verified.
4. Current assignee/chain-of-title (Malikie Innovations Ltd via OT Patent Escrow) and the adjusted 2027-01-27 expiration are per the patent source's records, which themselves disclaim legal conclusions.

I'll research litigation involving US patent 8677250 using several sources. Let me run multiple searches in parallel.

Let me dig deeper into the specific cases and their statuses.

Litigation Involving U.S. Patent No. 8,677,250 ("the '250 patent")

Title: System and method for switching between an instant messaging conversation and a game in progress
Original assignee: BlackBerry Ltd / Research In Motion Limited. Current assignee (per Google Patents): Malikie Innovations Ltd.
Priority date: 2006-09-29; continuation of Ser. No. 11/537,047 (now U.S. Pat. No. 7,861,175); issued 2014-03-18.

I was able to identify one district-court infringement case, one related PTAB inter partes review, and one related Federal Circuit appeal in the same litigation family. Details below, with the important caveat that the '250 claims were one part of a much larger multi-patent campaign, and the parties' ultimate resolution closed the case by dismissal rather than by a final merits judgment on the '250 patent itself.

1. District Court Infringement Litigation

Note: The '250 patent was asserted only against the Facebook Defendants in this family. The related BlackBerry campaigns against Snap (2:18-cv-02693) and Twitter (2:19-cv-01444), which were consolidated/coordinated with the Facebook case, involved overlapping but different patent sets; I did not find confirmation that the '250 patent was asserted against Snap or Twitter.

2. PTAB Inter Partes Review

The FWD's "Related Proceedings" section identified the parallel district court case (BlackBerry Ltd. v. Facebook, Inc., Case No. 2:18-cv-01844-GW-KS) and numerous companion IPRs (IPR2019-00516, -00528, -00706, -00787, -00899, -00923, -00924, -00925, -00940, -00941), reflecting the co-pending multi-patent dispute.

3. Court of Appeals for the Federal Circuit

Important caveat: The Google Patents family/litigation data links Appeal No. 20-1256 to the '250 patent family. However, the underlying partial final judgment on appeal (Dkt. 491) adjudicated the invalidity of U.S. Pat. Nos. 8,296,351 and 8,676,929 under 35 U.S.C. § 101 — not the '250 patent's validity. So the Rule 36 affirmance is properly attributed to the '351 and '929 patents. I would not represent that the Federal Circuit rendered a merits decision on the '250 patent on that appeal. I could not confirm a separate Federal Circuit appeal specifically of the IPR2019-00942 Final Written Decision.

Summary

• District court: BlackBerry Limited v. Facebook, Inc., WhatsApp Inc., Instagram LLC, No. 2:18-cv-01844-GW-KS (C.D. Cal.), filed March 6, 2018 — '250 patent asserted; BlackBerry's partial-SMJ motion on '250 infringement denied; ultimately all remaining claims dismissed with prejudice (Feb. 2021).
• PTAB: IPR2019-00942, Facebook, Inc. v. BlackBerry Limited — FWD Nov. 12, 2020; challenged '250 claims upheld (not proven unpatentable).
• CAFC: No. 2020-1256 — affirmed (Rule 36, Dec. 10, 2020), but on the '351/'929 invalidity judgment, not the '250 patent.
• Other known litigation on the '250 patent specifically: none identified beyond the BlackBerry v. Facebook campaign.

Confidence / limitations

• The filings and dockets cited are from secondary aggregators (CourtListener, Justia, PacerMonitor, Docket Alarm, Unified Patents portal), which I could not independently reconcile line-by-line against PACER/PTAB primary records in this session; some searches were truncated by a step limit.
• I could not definitively determine whether the district court ever entered a merits validity or infringement ruling specifically on the '250 patent; the case ended in a stipulated dismissal before any such final judgment.
• The parties' settlement/license details (which likely drove the Feb. 2021 dismissal) are not public in the sources retrieved, so I cannot state the precise business resolution.
• If you need exactness for a filing or opinion, verify Count numbers, exact docket-entry dates, and the IPR FWD paper number directly in PACER and the USPTO PTAB (PTAB E2E / Patent Trial and Appeal Board End-to-End) and the CAFC docket for 2020-1256.

PTAB / AIA Trial Proceedings — US 8,677,250

⚠️ CONTRADICTION FLAG (read first). The structured "PTAB proceedings on file" block supplied in this prompt states that "The USPTO ODP API returns no AIA trial proceedings for this patent as of the most recent ingest," with a default posture of "no PTAB activity on file." That block is wrong for this patent. Web search returns a fully documented, terminated IPR — IPR2019-00942 — with an institution decision, an oral hearing, and a Final Written Decision. The ODP ingest is incomplete/stale for this patent. I am treating the documented proceeding as real and treating the ODP "zero results" as an ingest gap, per the instruction to prefer live-source results over the structured block when they conflict. The previously generated Patent summary section in this prompt independently flagged the same proceeding, so this analysis builds on that rather than repeating it.

Proceedings overview

One AIA trial proceeding on file — IPR2019-00942 (Facebook/Instagram/WhatsApp v. BlackBerry), terminated by Final Written Decision on 2020-11-12 in which the Board found the Petitioner failed to prove any challenged claim unpatentable: 0 claims canceled, 7 challenged claims sustained (1, 4–6, 8, 9, 12–14), 0 settled, 0 institution denials, 0 active. The bottom line for a defendant today is unfavorable — this is a hardened patent, not a dead one. Claims 1 and 9 (the two independent claims) survived a fully instituted § 103 attack on the merits, so an IPR-based defense must now clear an estoppel wall built by the Facebook defendants and find art the Board has not already rejected.

IPR2019-00942 — Facebook, Inc. / Instagram, Inc. / WhatsApp LLC v. BlackBerry Limited

• Type: Inter Partes Review (AIA, 35 U.S.C. §§ 311–319). Tech Center 2100, Art Unit 2142.
• Filed: 2019-04-06 (one day after the April 2018–2019 service window associated with the parallel C.D. Cal. campaign; Petitioner's § 315(b) one-year clock was satisfied — see the § 42.104(a) standing certifications in the sibling petitions of the same campaign).
• Status: Final Written Decision (terminated 2020-11-12). Plain-English gloss: trial completed, no claims canceled, Petitioner lost on the merits.
• Judge panel: Aaron W. Moore, Garth D. Baer, Jacqueline T. Harlow, Miriam L. Quinn (APJs). Aggregate petitioner-institution rate for this panel is high (Moore ~71%, Baer ~70%, Quinn ~53%, Harlow ~56% per Unified Patents judge statistics), which makes the loss on the merits more, not less, significant for a future defendant.
• Petition grounds: A single ground under 35 U.S.C. § 103 — claims 1, 4–6, 8, 9, and 12–14 obvious over Galli (US 2005/0086309) in view of Crane (WO 01/31476) and Miyaji (US 2006/0116205). No § 102 anticipation ground was instituted as a separate ground; no § 112 ground. Petitioner's theory: Galli supplied an IM framework with "IMLets" represented by an icon spatially associated with a contact in an IM contact list; Crane supplied a turn-based game over an IM protocol with "game packets" carrying a "GameId"; Miyaji supplied a "match list" of concurrent games with turn status and select-to-open behavior.
• Institution decision: Instituted on all challenged claims and all grounds — 2019-11-14 (Paper 11, "Dec. Inst."). The panel's reasoning is reported as a straightforward § 314(a) reasonable-likelihood finding, with no discretionary § 314(a) Fintiv/General Plastic denial (notable, given that a parallel district court case — BlackBerry Ltd. v. Facebook, Inc., No. 2:18-cv-01844-GW-KS (C.D. Cal.) — was well advanced by then). The panel also authorized an unusual amount of pre-institution paper: a Petitioner Reply (Paper 7) and a Patent Owner Sur-Reply (Paper 10) before institution.
• Final Written Decision (2020-11-12): Petitioner failed on every challenged claim. The operative sentence, quoted verbatim: "For the reasons set forth below, we find Petitioner has not shown by a preponderance of evidence that claims 1, 4–6, 8, 9, and 12–14 of the '250 patent are unpatentable."
  • Claim-level verdict:
    • Independent claim 1 — NOT shown unpatentable (sustained).
    • Independent claim 9 — NOT shown unpatentable (sustained).
    • Dependent claims 4, 5, 6, 8, 12, 13, 14 — NOT shown unpatentable (sustained).
    • Canceled: none.
    • Untested by this IPR: claims 2, 3, 7, 10, 11, 15–24. (Note: claim 7 was listed among the FWD's related-matter recitation of challenged-claim groupings in the earlier summary, but the FWD's operative challenged-claim set per the reproduced decision text is 1, 4–6, 8, 9, 12–14, and the outcome sentence is confined to that set. Do not represent claims 2, 3, 7, 10, 11, or 15–24 as adjudicated — the FWD did not reach them.)
  • Reasoning (short): The panel adopted Petitioner's POSITA formulation (bachelor's in software/computer/electrical engineering + ~2 years messaging-UI experience, uncontested by Patent Owner) and then found the combination insufficient. The Board's claim-construction discussion states it needed to construe only what was necessary to resolve the material dispute, and it stopped short of finding that Galli+Crane+Miyaji taught the ordered combination — in particular the claimed requirement that an instant message in the IM conversation UI itself be "indicative of game progress" while that same conversation UI still permits non-game instant messages, followed by a switch from the conversation UI to the game-in-progress UI. That is precisely limitation cluster 1(d)–1(e) as recited in claim 1 — i.e., the "click-through from chat to board, with the chat surviving as a chat" hook. Petitioner's mapping treated Crane's clickable game packets and Galli's IMLet icon as satisfying that cluster; the Board did not buy it.
  • ⚠️ Source caveat: The full FWD text was not retrievable from a first-party USPTO PDF in this session. The quoted outcome sentence and the claim lists above are reproduced consistently across (a) a third-party reproduction of the decision, (b) the Unified Patents PTAB portal case list, and (c) the Ex Parte PTAB AI-Lab docket record (status "Final Written Decision," outcome "Patentable"). The claim-level list is consistent across all three; the "Patentable" characterization is a third-party label, not the Board's own language. Verify the Paper number and the ORDER paragraph against PTAB E2E before quoting the FWD in a filing.
• Settlement / termination: None. This was a merits termination, not a § 42.71 / settlement termination. No adverse judgment, no disclaimer, no motion to amend.
• Appeal: I found no evidence that the IPR2019-00942 FWD was appealed to the Federal Circuit. That is significant and slightly counterintuitive: the losing petitioner (Facebook/Instagram/WhatsApp) would normally appeal an adverse FWD, and none appears in the record surfaced here. Two important non-appeals to disambiguate:
  1. CAFC No. 20-1256 (BlackBerry Limited v. Facebook, Inc., consolidated with 20-1258) is NOT an appeal of this FWD. It is the appeal of the district court's Rule 54(b) final judgment invalidating U.S. 8,296,351 and U.S. 8,676,929 under § 101 (C.D. Cal. Nos. 2:18-cv-01844-GW-KS and 2:18-cv-02693-GW-KS, Judge George H. Wu). It was affirmed without opinion under Fed. Cir. R. 36 on 2020-12-10. The '250 patent was not the subject of that Rule 54(b) judgment.
  2. The district court denied BlackBerry's motion for partial summary judgment of infringement of the '250 patent (C.D. Cal. Dkt. 247; order at Dkt. 468/491, 2019-10-01). Separately, the Facebook defendants moved for § 101 summary judgment against the '250 claims (C.D. Cal. Dkt. 540-1, filed 2020-01-08, arguing correspondence-gaming abstractness), and BlackBerry cross-moved for no-invalidity on the '250 over the Nintendo DS + PictoChat system art (Dkt. 536-1, filed 2020-01-08). I could not verify the final disposition of the '250 § 101 motion from the sources retrieved, and I will not guess at it. Anyone relying on the '250's current vitality must pull the C.D. Cal. docket for the face of that ruling.
  • Link: CAFC 20-1256 is available via CourtListener; the C.D. Cal. docket is at https://www.courtlistener.com/docket/[6325420](/patent/6325420)/blackberry-limited-v-facebook-inc/.
• Defensive value: Low — this proceeding is a liability, not an asset, for a defendant. Claims 1 and 9 emerged intact from a fully litigated § 103 trial, and the panel had already found the Petitioner's merits case "compelling enough to institute" (the Board's own words in the companion Snap joinder denial, IPR2019-00942-adjacent docket). An IPR petition against claims 1/9 must therefore (i) avoid the Galli–Crane–Miyaji combination (which is now a known loser in this exact panel configuration), and (ii) assume the Patent Owner will lead with a "the Board already rejected this theory" narrative in its POPR.

Strategic summary

Claim status map. Of the '250's 24 claims: claims 1, 4, 5, 6, 8, 9, 12, 13, and 14 are SUSTAINED — adjudicated not-unpatentable on the only ground the Board ever considered. Claims 2, 3, 7, 10, 11, and 15–24 are UNTESTED — no AIA tribunal has ever ruled on them. Zero claims are CANCELED. This is the opposite of the "troll with a dead patent" posture: it is a patent whose two independent claims were tested by a well-resourced petitioner (Facebook, with Cooley LLP and Quinn Emanuel in the campaign) and survived. Note also that the family contains two continuation siblings — US 9,266,024 and US 9,272,210, both also titled "IM contact list entry as a game in progress designate" and both claiming priority to the same 2006-09-29 date. A defendant should assume those siblings were drafted to cover variations of the same disclosure and check whether they are being asserted; the '942 FWD's claim construction of "identifying game play in the contact list" may read across.

Estoppel landscape. Under 35 U.S.C. § 315(e)(1)–(2), the IPR2019-00942 petitioners — Facebook, Inc., Instagram, Inc. (and Instagram, LLC), and WhatsApp LLC — and their real parties in interest and privies are estopped, in any subsequent IPR/PGR and in any civil action or ITC proceeding, from asserting any ground they raised or reasonably could have raised in that IPR. Practically, that kills the Galli + Crane + Miyaji combination and any obviously-available variation on it for those entities. It does not estop anyone else: a new defendant is not bound by Facebook's estoppel and can petition freely. For a defendant currently being asserted against, the available-art space is therefore wide open — but the Board has now signaled how it reads the "instant message indicative of game progress" + "switch from conversation UI" pair, and any new petition must attack that limitation cluster head-on rather than treat it as an afterthought as the Facebook petition apparently did. Also note the district court funnel: the Facebook defendants ran Nintendo DS with PictoChat as a system-art reference against the '250 in C.D. Cal., and BlackBerry moved for SJ of no-invalidity on the ground that the reference's prior-art status could not be established. A well-advised new defendant would want to know how that came out before spending on the same Nintendo/PictoChat theory. The '250 is also subject to a § 315(b) trap for anyone served long ago in an earlier campaign.

Pattern signals. This was not a defensive-aggregator challenge. The "Petitioner: Unified Patents PTAB Data" string on the Google Patents page is a dataset attribution/licence notice for Unified Patents' compilation of PTAB data — Unified Patents is not the petitioner in IPR2019-00942; the real petitioner is the Facebook/Instagram/WhatsApp group, with BlackBerry (Research In Motion) as Patent Owner. Do not let that string mislead you into thinking a defensive aggregator has already softened this patent. Instead, the pattern is a coordinated operating-company campaign: the same Facebook-family petitioner filed a large coordinated wave against BlackBerry's IM portfolio in early-to-mid 2019 — the FWD's own "Related Proceedings" list names IPR2019-00516, -00528, -00706, -00787, -00899, -00923, -00924, -00925, -00940, and -00941 alongside -00942. IPR2019-00942 is the only one of those directed at the '250 patent (no second, follow-on petition against the '250 was filed — a "second bite" petition would have faced General Plastic and, after 2020-11-12, the FWD itself). On the Patent Owner side, BlackBerry litigated the campaign aggressively: it opposed institution with a full preliminary response plus authorized reply/sur-reply, filed a full response and sur-reply in the trial, and (per the district court docket) pressed its own § 101 and SJ motions in parallel. There is no evidence of a successful PTAB appeal by either side on the '250.

One cross-reference caveat. The previously generated Patent summary in this prompt states that IPR2019-00942 was filed by "Facebook, Inc. / Instagram LLC / WhatsApp LLC," instituted 2019-11-14, with FWD 2020-11-12 — consistent with what I found. It also characterizes the outcome as "Patentable" — that is a third-party aggregator label, and I repeat the caution: quote the Board's own ORDER language, not the label.

Recommended next steps

If you are a defendant and the Patent Owner is asserting this patent

• Do not build a defense on the assumption that the '250 has been invalidated. It has not. The controlling disposition language, to be quoted from the FWD's ORDER (Paper 40 series, 2020-11-12), is: "we find Petitioner has not shown by a preponderance of evidence that claims 1, 4–6, 8, 9, and 12–14 of the '250 patent are unpatentable." Pull the FWD from PTAB E2E (case IPR2019-00942, https://ptacts.uspto.gov/ptab/) and from the PTAB's public decisions page before relying on any third-party reproduction, including the one in this analysis.
• Section 282 invalidity in district court remains fully available — the FWD gives the Patent Owner res judicata-adjacent ammunition but no issue-preclusive benefit against a non-privy defendant. Under Google LLC v. Hammond Development Int'l (Fed. Cir. 2022), a defendant who was not a party or privy is not bound by the Board's validity finding in a later civil action — so forum-shopping an invalidity theory into a jury remains live.
• Section 101 is the most promising non-IPR attack. The Facebook defendants framed the '250 as the abstract idea of "correspondence gaming" ("chess by mail") implemented with generic IM components, citing Alice, TLI Communications, and Trading Technologies (C.D. Cal. Dkt. 540-1 at 32–35). Because the FWD did not address § 101 (the Board has no § 101 jurisdiction in IPR), that attack is completely un-estopped and untested by the Board. Get the C.D. Cal. ruling on Docket 540 first so you know whether Judge Wu already rejected it.
• If you are a new party to the '250 dispute and want to file an IPR, note the § 315(b) one-year bar runs from service of a complaint alleging infringement of the '250 — check your service date first. Then distinguish Galli/Crane/Miyaji on the "instant message indicative of game progress" + "conversation UI enables additional non-game instant messages" + "selection in the conversation UI to switch" trio, which is where Facebook lost.
• Check the siblings: US 9,266,024 and US 9,272,210 (both filed 2012-09-13, same priority date) — confirm whether either has been asserted and whether it has faced its own IPR. A clean sibling with untested claims is a different defensive problem than the '250.

If you are looking for active proceedings

There are none. IPR2019-00942 terminated on 2020-11-12; its statutory appeal window (37 C.F.R. § 90.3, 63 days from the FWD) closed in January 2021, and I found no Federal Circuit appeal of the '250 FWD. There is no pending institution deadline, no scheduled oral hearing, and no FWD due date for this patent. The only live Federal Circuit matter in the family tree — CAFC 20-1256, decided 2020-12-10 under Rule 36 — concerns the '351 and '929 patents, not the '250.

If the "no PTAB activity on file" default applies to your system

It does not apply here. Do not rely on the ODP-derived zero-result block for this patent. The absence of records is an ODP ingest artifact, not a signal. What the real absence of IPR activity on claims 2, 3, 7, 10, 11, and 15–24 does tell you: those claims have never been tested at the Board, and if a demand letter or complaint asserts them, they are the soft underbelly of the family — contingent in drafting, dependent on claim 1's sustained limitations, and with no Board record whatsoever.

Source links for the specific opinions and records cited

• IPR2019-00942 case record (filing 2019-04-06, institution 2019-11-14, FWD 2020-11-12, status "Final Written Decision") — Unified Patents PTAB portal case list: https://portal.unifiedpatents.com/ptab/caselist?judges.panel=Jacqueline+T.+Harlow
• IPR2019-00942 docket / panel composition (Moore, Baer, Quinn, Harlow) — Docket Alarm: https://www.docketalarm.com/cases/PTAB/IPR2019-00942/Facebook_Inc._v._BlackBerry_Limited/
• IPR2019-00942 claim list and "Patentable" outcome label (third-party) — Ex Parte PTAB AI-Lab: https://ai-lab.exparte.com/case/ptab/IPR2019-00942/facebook-inc-v-blackberry-ltd
• Grounds detail (Galli US 2005/0086309; Crane WO 01/31476; Miyaji US 2006/0116205; § 103; claims 1, 4–6, 8, 9, 12–14) — petition analysis, same AI-Lab record: https://ai-lab-cl-prod.azurewebsites.net/case/ptab/IPR2019-00942/doc/summary/2
• FWD outcome sentence and claim list (reproduction — verify against PTAB E2E) — https://stockhouse.com/companies/bullboard?symbol=t.bb&threadid=31946597
• Parallel C.D. Cal. litigation docket, incl. BlackBerry's MSJ of infringement of the '250 (Dkt. 247) and the denial — CourtListener: https://www.courtlistener.com/docket/6325420/blackberry-limited-v-facebook-inc/
• Facebook defendants' § 101 motion against the '250 (Dkt. 540-1, 2020-01-08) — https://www.courtlistener.com/docket/[6325420/540](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=6325420-0540)/1/blackberry-limited-v-facebook-inc/
• BlackBerry's no-invalidity MSJ on the '250 (Nintendo DS/PictoChat) (Dkt. 536-1, 2020-01-08) — https://www.courtlistener.com/docket/[6325420/536](https://assignmentcenter.uspto.gov/search/patent/reelFrameDetail?reelFrame=6325420-0536)/1/blackberry-limited-v-facebook-inc/
• Official PTAB E2E portal (for the FWD itself and the ORDER paragraph) — https://ptacts.uspto.gov/ptab/

Verification checklist before you rely on this in a filing

1. Pull the IPR2019-00942 FWD PDF from PTAB E2E and confirm: (a) the challenged-claim set is exactly 1, 4–6, 8, 9, 12–14; (b) the ORDER paragraph cancels no claims; (c) the FWD's date is 2020-11-12; and (d) the panel is Moore, Baer, Harlow, Quinn.
2. Confirm no Federal Circuit appeal of that FWD was docketed between 2020-11-13 and 2021-02-15 (63 days plus service).
3. Confirm there is no second IPR on the '250 filed by any party (including a General Plastic-era follow-on) that the ODP block and my searches both missed.
4. Pull the C.D. Cal. ruling on Docket 540 to learn the outcome of the § 101 motion against the '250.
5. Verify the sibling patents US 9,266,024 and US 9,272,210 have not themselves been IPR'd, and check whether the Malikie/OT Patent Escrow assignee chain has asserted them anywhere new.

Caveat on every procedural date and paper number above: the FWD text, its paper numbers, and the panel's internal reasoning were not retrieved from a first-party USPTO PDF in this session. Items marked as third-party-derived must be confirmed against PTAB E2E before being quoted. Nothing in this analysis should be treated as verified claim-level adjudication for claims 2, 3, 7, 10, 11, or 15–24 — the Board did not reach them.

I'll research the assignment record for US 8,677,250 through USPTO Assignment Center and cross-reference sources.

I have strong leads on reel/frame numbers. Let me pin down the correspondents of record and remaining reel/frame entries.

Assignment & Ownership Reconstruction — US 8,677,250

Method note: I could not open the USPTO Assignment Center UI directly in this session (https://assignmentcenter.uspto.gov/ / https://assignment.uspto.gov/patent/index.html); the reel/frame values below are reconstructed from (a) the authoritative Google Patents legal-events record in the patent text, (b) a PTAB § 3.73(c) chain‑of‑title statement covering a companion BlackBerry patent that shares the same bulk reels, and (c) the recorded PSA exhibits in BlackBerry's FY2023 Form 10‑K. Where a reel/frame is directly confirmed for this patent, I say so; where it is inferred from a companion patent, I flag it. Verify each at the Assignment Center search page before relying on it.

Inventors

Unusual-pattern check: All four are named on the original 2010‑12‑09 inventor→RIM assignment, so this was an employer-owned work product from the outset — not a case of inventors retaining or later selling rights. The 2018‑02‑27 confirmatory assignments (one per inventor) recorded ~5 weeks before BlackBerry's March 2018 Facebook complaint are a chain‑of‑title cleanup ahead of litigation, not a departure/divestiture signal. I cannot determine from available records whether any inventor left RIM within 12 months of the 2006‑09‑29 priority filing; no source in this session establishes departure dates, so I make no call.

Original assignee

Research In Motion Limited (renamed BlackBerry Limited effective 2013‑07‑09; NYSE/TSX: BB). RIM/BlackBerry was — and BlackBerry Limited still is — an operating company: handheld devices, the BlackBerry OS, BlackBerry Enterprise Server, and BlackBerry Messenger (BBM), a presence-and-instant-messaging client whose contact-list UI is the direct subject matter of this family. BlackBerry exited the handset business (device manufacturing licensed to TCL/others in 2016–2020; handset rights ended ~2022) and now operates as a cybersecurity/IoT software company. Current status: operating, publicly traded — not acquired, dissolved, or in bankruptcy.

• Product-embodying check: BlackBerry indisputably shipped an IM contact-list product (BBM). I cannot confirm from the records reviewed that BlackBerry shipped a product specifically embodying the game-in-progress claim features, and the '250 patent was never reduced to a litigated infringement judgment (see the previously generated litigation summary: partial‑SMJ of infringement denied, case dismissed Feb 2021).

Assignment timeline

All dates executed/recorded as surfaced; reel/frame confidence flagged.

• 2006‑09‑29 (priority) / application filed 2010‑12‑07 as continuation of Ser. No. 11/537,047 (now US 7,861,175).

• 2010‑12‑09 (recorded) — Reel/frame not confirmed

  • Conveyance: Assignment of assignors' interest
  • Assignor: Fahmy, Samer; Klassen, Gerhard Dietrich; Wormald, Christopher R.; Zinn, Ronald Scott
  • Assignee: RESEARCH IN MOTION LIMITED
  • Correspondent: not captured in available records (RIM's in‑house patent department / outside US prosecution counsel; the RIM prosecution correspondence of this era routed through portfolioprosecution@rim.com and outside IP counsel, but I cannot name a recorded correspondent)
  • Context: original inventor assignment to the employer (formality recordation during prosecution of the continuation).

• 2013‑07‑09 (executed) / recorded 2013–2014 — Reel 037861/0215 (observed in INPADOC for a companion BlackBerry patent; not independently confirmed for '250)

  • Conveyance: Change of Name
  • Assignor: RESEARCH IN MOTION LIMITED
  • Assignee: BLACKBERRY LIMITED
  • Correspondent: BlackBerry legal department (not captured)
  • Context: internal reorg / change of name only (RIM→BlackBerry brand rename; no change in beneficial ownership). Note the same rename was separately recorded on the trademark side at Reel 5112/0971.

• 2018‑02‑27 (recorded) — four separate records, reel/frame not confirmed

  • Conveyance: Assignment of assignors' interest (confirmatory)
  • Assignors: WORMALD, CHRISTOPHER; KLASSEN, GARY (name discrepancy — see above); FAHMY, SAMER; ZINN, R. SCOTTE
  • Assignee: RESEARCH IN MOTION LIMITED (note: filed under the pre‑2013 corporate name even though the entity had been BlackBerry Limited since 2013)
  • Correspondent: not captured
  • Context: chain‑of‑title cleanup, immediately pre‑litigation — recorded ~5 weeks before BlackBerry filed its C.D. Cal. complaint against Facebook (2018‑03‑06). Not a divestiture.

• 2023‑04‑27 (recorded); PSA executed 2023‑03‑20 — Reel 063471/0474 ✅ (reel confirmed for this patent by the Google Patents corrective‑assignment entry referencing "REEL 063471 FRAME 0474")

  • Conveyance: Assignment of assignor's interest (bulk patent sale, Project Bullet)
  • Assignor: BLACKBERRY LIMITED (and transferring affiliate BlackBerry Corporation)
  • Assignee: OT PATENT ESCROW, LLC (200 West Madison, 37th Floor, Chicago, IL 60606)
  • Correspondent: Richard J. Botos, Reg. No. 32,016 — Botos Churchill IP Law LLP, 430 Mountain Ave., Suite 401, New Providence, NJ 07974 (signed the associated § 3.73(c) chain statement dated 2023‑12‑27 under Customer No. 89653; treat as likely correspondent pending cover‑sheet confirmation)
  • Context: transfer‑to‑asserter (first leg) via an escrow conduit — the ~33,000‑asset BlackBerry portfolio sale for $170M closing payment + $30M deferred + back‑end royalties.

• 2023‑06‑16 (recorded) — Reel 064015/0001 ✅ (reel confirmed for this patent by the Google Patents corrective entry: "PREVIOUSLY RECORDED AT REEL: 064015 FRAME: 0001")

  • Conveyance: Assignment (nunc pro tunc, effective as of the PSA date)
  • Assignor: OT PATENT ESCROW, LLC
  • Assignee: MALIKIE INNOVATIONS LIMITED (The Glasshouses GH2, 92 Georges Street Lower, Dun Laoghaire, Dublin A96 VR66, Ireland)
  • Correspondent: Botos (Botos Churchill IP Law LLP) — recurring across this chain (flag: same firm also appears as counsel on ~586 BlackBerry files, so recurrence here reflects the transferor's counsel handling recordation, not an NPE‑only attorney)
  • Context: transfer‑to‑asserter (second leg) — conveyance from the escrow conduit to the Irish monetization entity.

• 2023‑06‑19 (recorded) — Reel 064066/0001 (observed in the companion‑patent chain‑of‑title statement; strongly likely but not independently confirmed for '250)

  • Conveyance: Assignment (nunc pro tunc)
  • Assignor: BLACKBERRY LIMITED
  • Assignee: MALIKIE INNOVATIONS LIMITED
  • Correspondent: Botos Churchill IP Law LLP (per chain statement)
  • Context: belt‑and‑suspenders direct deed naming Malikie as assignee to cure the escrow/transfer timing.

• 2023‑09‑05 (recorded) — Reels 064806/0669 and/or 064807/0001 (observed in companion chain‑of‑title; not independently confirmed for '250)

  • Conveyance: Corrective Assignment (x2) — one correcting the BlackBerry→OT Patent Escrow cover sheet ("remove 12817157" from Reel 063471/0474); one correcting the application‑number listing on Reel 064015/0001
  • Assignors: BlackBerry Limited; OT Patent Escrow, LLC (respectively)
  • Assignees: OT Patent Escrow, LLC; Malikie Innovations Limited (respectively)
  • Correspondent: Botos Churchill IP Law LLP
  • Context: administrative correction within the same 2023 cascade.

No security agreement, license, merger, or release is recorded against this patent in the sources reviewed. If such a record exists, it would need PACER/Assignment Center confirmation.

Timeline diagram

timeline
    title Ownership of US 8677250
    2006 : Priority date Sep 29
    2010 : Continuation filed Dec 7
         : Inventors assign to Research In Motion
    2013 : RIM renamed BlackBerry Limited
    2014 : Patent issued Mar 18
    2018 : Confirmatory inventor assignments
         : BlackBerry sues Facebook
    2020 : PTAB upholds challenged claims
    2023 : BlackBerry assigns to OT Patent Escrow
         : OT Escrow assigns to Malikie Innovations
         : BlackBerry nunc pro tunc to Malikie
         : Corrective assignments recorded

NPE / troll-pattern signals

1. Shell-entity transfer — PRESENT. BlackBerry Limited (operating) → OT PATENT ESCROW, LLC (Reel 063471/0474, 2023‑04‑27) → MALIKIE INNOVATIONS LIMITED (Reel 064015/0001, 2023‑06‑16). OT Patent Escrow, LLC is a single‑purpose Chicago escrow/conduit entity (200 West Madison, 37th Fl.), and Malikie Innovations Ltd is a licensing‑only Irish entity operated by Key Patent Innovations Ltd — publicly described by IAM as an NPE running a "monetisation programme." The name suffix pattern (Escrow / Innovations) plus the absence of any product business is corroborated by Malikie's own litigation activity, not naming alone.

2. Known asserter in the chain — PRESENT (with caveat). Malikie Innovations / Key Patent Innovations is an active monetization plaintiff: it sued Acer, ASUSTeK and D‑Link in Texas (2024) and asserted the portfolio against Xiaomi in Germany and India (see Fifth Cir. No. 25‑40802, filed 2026‑06‑30, addressing Malikie's § 1782 subpoena to BlackBerry). It is not on the classic NPE lists enumerated in the task (Acacia, Marathon, IV, Wi‑LAN, etc.), so I classify it as a newly surfaced high‑frequency asserter rather than a listed one.

3. Repeat correspondent across the chain — PRESENT (moderate). Richard J. Botos, Reg. No. 32,016, Botos Churchill IP Law LLP appears on the 2023 chain‑of‑title documentation for the OT Escrow/Malikie transfers (signed 2023‑12‑27 under Customer No. 89653). Precision caveat: his firm also has a large BlackBerry prosecution practice (~586 applications), so Botos most plausibly acted as the transferor‑side recordation counsel; the recurrence is real but is not, by itself, evidence of a single lawyer operating multiple mock‑unrelated shells.

4. Cascading transfers — PRESENT. Four recordation events inside ~5 months (2023‑04‑27, 2023‑06‑16, 2023‑06‑19, 2023‑09‑05) moving the same asset BlackBerry → OT Patent Escrow → Malikie, plus a direct BlackBerry → Malikie deed and two corrective assignments. The PSA itself confirms a single coordinated transaction among BlackBerry, OT Escrow, Malikie and Key Patent Innovations.

5. Pre-litigation transfer — PRESENT (mixed character). Two distinct events: (i) the 2018‑02‑27 confirmatory inventor assignments recorded ~5 weeks before the 2018‑03‑06 Facebook complaint (standing/chain cleanup ahead of suit); and (ii) the 2023 transfer to Malikie, which preceded Malikie's own assertion campaigns against handset/gaming targets. Neither is a naked pre‑suit flips for venue, but both are consistent with assertion‑enabling timing.

6. Bankruptcy fire-sale — NOT PRESENT (as bankruptcy). BlackBerry did not file Chapter 7/11. The 2023 sale is, however, a distressed divestiture: BlackBerry monetized a ~33,000‑asset portfolio after exiting handsets. I note the character but do not score the bankruptcy signal.

7. Privateering — PRESENT. The PSA grants BlackBerry a continuing economic stake — an 8%/16%/30%/50% tiered royalty on Malikie's net profits, capped at ~$700M escalating 4%/yr, plus a freedom‑to‑operate license and designated delegate‑licensing rights — while Malikie asserts the portfolio against third parties, including BlackBerry's competitors. Operating‑company‑funded NPE assertion with retained upside is the textbook privateering structure.

8. Defensive aggregator — NOT PRESENT. The chain terminates at Malikie Innovations Limited, an active litigating NPE; it is not held by RPX, AST, LOT, Unified Patents, or OIN.

Verdict

NPE — high confidence.

The chain is a documented operating‑company → escrow‑LLC → licensing‑LLC transfer (BlackBerry Limited → OT Patent Escrow, LLC at Reel 063471/0474, recorded 2023‑04‑27; OT Patent Escrow, LLC → Malikie Innovations Limited at Reel 064015/0001, recorded 2023‑06‑16), consummated under a PSA (executed 2023‑03‑20, filed as an exhibit to BlackBerry's FY2023 Form 10‑K) that names Key Patent Innovations as sponsor and leaves BlackBerry a tiered royalty back‑end. Malikie is an Irish non‑practicing entity that has since sued handset and electronics makers (Acer, ASUSTeK, D‑Link in Texas; Xiaomi in Germany/India). At least three strong signals are present — shell‑entity transfer, transfer‑to‑known‑asserter, and privateering — with cascading‑transfer and pre‑litigation timing as corroboration.

Verification links:

• USPTO Assignment Center (search by patent number): https://assignmentcenter.uspto.gov/
• Legacy Assignment Search: https://assignment.uspto.gov/patent/index.html
• BlackBerry FY2023 Form 10‑K, Patent Sale Agreement (Exhibit, via OT Investigis): https://otp.investis.com/clients/us/blackberry_inc/SEC/sec-show.aspx?Type=page&FilingId=16535452-[561887](/patent/561887)-[805233](/patent/805233)&CIK=0001070235&Index=20000

Open items to resolve at the Assignment Center: (1) exact reel/frame and correspondent of record for the 2010‑12‑09 inventor assignment and the 2018‑02‑27 confirmatory assignments; (2) the recorded correspondent on the 063471/0474 and 064015/0001 cover sheets (Botos is inferred from the § 3.73(c) statement, not read off the assignment cover sheet); (3) whether reel 064066/0001 and the 2023‑09‑05 corrective reels name '250 as a property; (4) any unrecorded/licensed encumbrances the PSA carried forward.

I'll research the prior art cited against US 8,677,250, starting with its official USPTO records and citation lists.

The general searches returned mostly unrelated PCT search reports. Let me target the patent's actual front-page "References Cited" and the IPR2019-00942 grounds, which identify the art actually used against these claims.

I now have the IPR grounds and a partial front-page reference list. Let me pull the complete "References Cited" list for US 8,677,250 from the patent's full-text sources.

I hit the tool-step limit mid-research. I'll report what I verified and flag precisely where my data is incomplete rather than fill gaps by inference.

Prior Art for US 8,677,250 — Examiner‑Cited References and IPR‑Asserted Art

Ground truth = the authoritative patent text you supplied. Two important framing points before the tables:

1. Anticipation vs. the record. Your task asks which reference "potentially anticipates under 35 U.S.C. § 102." On the actual record I could retrieve, no reference was ever asserted as a § 102 anticipation reference against the '250 claims. The art was applied only in a § 103 obviousness combination (IPR2019‑00942, Ground 1). I therefore cannot honestly label any single reference as an anticipatory reference; I can only identify which claims each reference was mapped to, and note which are the closest single‑reference candidates. I say this explicitly rather than manufacturing § 102 hits.
2. Priority date gate. The '250 patent's effective priority date is 2006‑09‑29 (continuation of Ser. No. 11/537,047, now US 7,861,175). Any listed reference published after 2006‑09‑29 only qualifies as prior art if its own filing date predates that date (pre‑AIA § 102(e)/(a) analysis). Several examiner‑cited documents in the list below carry 2007–2008 publication dates and must be checked against their filing dates. The pre‑AIA version of § 103 applied (per the Board's footnote in the IPR).

A. Prior art actually applied against the '250 claims — IPR2019‑00942, Ground 1

Source: PTAB IPR2019‑00942, Facebook, Inc. v. BlackBerry Limited; Ground 1 challenged claims 1, 4–6, 8, 9, and 12–14 as obvious over the following three references.

Petitioner's theory: implement Crane's turn‑based game as an "IMLet" in Galli's IM framework, then add Miyaji's game‑status/match‑list indicators to Galli's contact‑list entries. Outcome: Petitioner failed — the Board found the challenged claims were not shown unpatentable (Final Written Decision, Nov. 12, 2020). The Board/PO reasoning specifically faulted the art for (i) not disclosing a game application (vs. the IM application) utilizing the contact list, and (ii) not disclosing "displaying at least one instant message in an instant messaging conversation user interface … indicative of game progress" — the exact limitation your claim 1/9/17 recites.

Note on § 102: Galli (2005), Crane (2001) and Miyaji (2006) are the only references I could confirm were substantively applied against these claims. Each pre‑dates the 2006‑09‑29 priority date, so each is available as prior art — but none was used alone, and none was contended to anticipate.

B. Examiner‑cited references on the '250 front page ("(56) References Cited")

Retrieved from a secondary rendering of the patent front page (FreePatentsOnline). This list is partial — see the completeness caveat in the uncertainty section. Publication dates are as listed; "applies to which claims" reflects the subject matter most relevant to the '250 claims, not an examiner‑asserted § 102 rejection.

U.S. patents

U.S. patent application publications

C. § 102 assessment (honest bottom line)

Uncertainty and verification notes (read before relying on this)

1. Completeness of the "(56)" list. I retrieved the examiner‑cited list from a secondary rendering (FreePatentsOnline) and it appears truncated to roughly the 2006–2008 entries — I did not obtain the full official front page directly from USPTO Patent Public Search / PatentCenter, and I did not retrieve the foreign patent documents or non‑patent literature cited on the '250 front page. There are very likely additional U.S. patents/applications and foreign documents I am missing.
2. § 102 vs. § 103. Because the examiner's citations appear as background/combined art and the only substantive challenge (IPR) was a § 103 combination that failed, treat all "claims potentially implicated" entries in Section B as subject‑matter correspondence, not examiner‑asserted § 102 rejections. Do not represent that any of them anticipated a claim.
3. Date gating. For every reference published after 2006‑09‑29 (most of the Section B list), prior‑art status depends on its filing date, which I did not verify for each entry. Confirm filing dates (and any provisional priority) before asserting § 102 availability.
4. IPR outcome. The IPR2019‑00942 Final Written Decision date (Nov. 12, 2020) and the "claims upheld / not shown unpatentable" outcome are from the IPR record snippets I retrieved (Patent Owner's sur‑reply and the grounds summary); confirm the exact paper number and text against PTAB E2E before citing.
5. Consistency with prior sections. This is consistent with the earlier litigation summary (same IPR number, claims, and outcome). No contradiction found — but note the earlier summary attributed "Patentable" to a third‑party aggregator; here the Board's language ("has not shown by a preponderance … unpatentable") corroborates that characterization.
6. Not verified in this session (step limit): the full USPTO "References Cited" PDF (front page), the foreign‑document citations, and each reference's filing date. If you need exactness, pull these directly from PatentCenter / Patent Public Search for US 12/962,405 and the PTAB E2E record for IPR2019‑00942 (Exhibits 1003, 1004, 1005 = Galli, Crane, Miyaji).

I'll research the prior art landscape for this patent and identify references that can be combined under § 103.

Let me pull the specific primary references from the IPR record and hunt for art that discloses the "indicative of game progress" limitation.

I hit the tool-call limit mid-research, so I'll write this up from what I retrieved. One note first: the prompt says "use the results from the Prior Art section of this page," but no separate Prior Art section was included in what was transmitted to me. The "Previously generated sections" contain a Patent summary and a Litigation summary only. I have therefore reconstructed the prior-art set from (a) the references cited on the face of the '250 patent itself (from the FreePatentsOnline/patentimages listings), and (b) the references actually litigated in IPR2019-00942. I flag any point where I could not verify a citation directly. (Also a minor housekeeping flag: the system header says today is 2026‑09‑28 while the task header says April 26, 2026 — I've used neither date substantively.)

Obviousness Analysis — U.S. Patent 8,677,250 under 35 U.S.C. § 103

0. Governing framework and one threshold point

The '250 patent issued from application 12/962,405, filed December 7, 2010, as a continuation of Ser. No. 11/537,047 (filed Sept. 29, 2006, now U.S. 7,861,175). Because the application was filed before March 16, 2013, pre‑AIA § 102/§ 103 governs. That matters a great deal for the analysis:

• Pre‑AIA § 102(e) makes a U.S. patent or published application prior art as of its own filing date, not its publication or issue date. This pulls in a large body of 2003–2005‑filed AOL/Microsoft gaming-plus-IM art (e.g., US 7,818,749 filed 2004‑12‑21; US 7,240,093; US 7,288,028; US 7,311,608) that would otherwise post‑date the '250's 2006‑09‑29 priority date.
• KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) permits combination where the references are from the same field, address the same problem, or where the combination is "the product of ordinary creativity," provided there is an articulated reason with a rational underpinning.

Important posture: the same three-reference combination I analyze first (Galli + Crane + Miyaji) was actually presented to the PTAB in IPR2019-00942, and the Final Written Decision (Nov. 12, 2020) held the challenged claims (1, 4–6, 8, 9, 12–14) not shown unpatentable. My job here is analytical, not to relitigate that outcome — so I present the combination, its motivations, and the weaknesses the Board credited, and then identify alternative/additional references that would strengthen or cure the deficiencies.

1. Claim 1 decomposed into limitations to be met

Claims 9 and 17 are the same five limitations to L6 expressed as a CRM and a device.

2. Reference library

(I could not verify exact filing dates/paragraph cites for Crane, Miyaji, Pelkey, Shea, Danieli‑'608 and Rodriquez within this session; the dates above for Fish and Galli are corroborated by the retrieved documents. Treat any §102(e) reliance as requiring a citation‑date check.)

3. Combination 1 — Galli + Crane + Miyaji (the combination actually litigated)

3.1 Mapping

3.2 Articulated motivations to combine (Petitioner's theory)

1. Same field, same problem, predictable result (KSR). Galli expressly offers a generic framework for bringing any third‑party application into an IM session, and states that associating an agent's icon with a contact in the buddy list is desirable to "maximize the users' IM experience." A turn‑based game is a textbook candidate: it is a third‑party application that already communicates over a network, so integrating it as an IMLet is the natural application of Galli's stated purpose.
2. Miyaji's match list solves a known problem of turn‑based play. Because turn‑based games "may take place over hours or days," surfacing which games are in progress and whose turn it is directly in the contact list gives at‑a‑glance status and a one‑click path back into the game — an improvement to the Galli/Crane user experience that the art itself motivates.
3. Functional equivalence of the selectable elements. Galli's IMLet icon and Miyaji's match‑list entries are both selectable affordances attached to a person that launch an application. Substituting/merging them is a predictable use of a known UI element for its known function.
4. Reasonable expectation of success. All three references are software/UI references; combining them requires only conventional programming of an IM client, a game module, and a status list — no new hardware or uncertain science.

3.3 The weaknesses that defeated this combination (and would defeat it again)

The Board's Final Written Decision credited Patent Owner's arguments. These are real analytical gaps, not formalism:

• L2 — "a game application…utilize[s] a contact list." In Galli it is the IM application that owns and renders the contact list; the IMLets are, on the Board's reading, middleware that neither sends to nor receives from the contact list. Nothing in Galli shows a game application itself utilizing the contact list "by identifying game play in the contact list." Miyaji's match list is a separate list. The asserted motivation ("it would be useful") was held too generic to bridge that gap, citing PersonalWeb Techs. v. Apple and In re NuVasive.
• L5 — "displaying at least one instant message in an IM conversation UI…indicative of game progress." This is the combination's hardest failure. The Board found the proposed combination yields, at best, a single link for launching the game — an availability cue — not a message indicative of game progress inside the conversation UI. Crane's own disclosure routes game packets to the game application, not into the chat transcript; Patent Owner argued (and the Board accepted) that Crane's email and IM embodiments alike never display game packets in an IM conversation UI. Petitioner's late "the packets would be sent as attachments" argument was both procedurally waived and substantively off‑point.
• Claim 6 / 14 — "maintaining the game progress data upon switching away…to enable…resum[ption]." Galli's ICON is described as representing a passive activity; Miyaji's games are active. And Crane stores only "outdated" game packets, not maintained progress state that supports resumption after an intervening move.
• Different purposes / different systems. Galli shows availability of applications; Miyaji tracks existing games. Different protocols/proprietary systems among Galli, Crane and Miyaji were argued to point away from combination.

Net assessment of Combination 1: legally articulable, and the motivation arguments are reasonable — but on this record it fails on L2 and (especially) L5, and it is weak on claim 6. Anyone re‑running this combination should expect the same two failure points.

4. Combination 2 — Miyaji + Microsoft/IM‑Games (EP 1 475 939 / US 2004/0224772), optionally + Galli — the stronger ground

This combination attacks the combination‑1 failure points directly and, in my view, is the most promising § 103 theory.

Motivations to combine:

• Microsoft and Miyaji solve the same problem in the same field. Microsoft explicitly recognizes that "a single user may participate in two or more game sessions simultaneously" and that games may be paused and resumed — the exact fact pattern that motivates Miyaji's match list for tracking multiple ongoing games. Adding Miyaji's status list to Microsoft's IM+game window is the direct, predictable design choice.
• Microsoft and Crane are the same technology (networked turn‑based games using IM transport) — Microsoft's own text notes that game results "may be provided to the users in real time," and it embeds the game in the IM session; Crane's game‑packet/GameId scheme is an implementation detail of that same idea.
• Galli supplies the contact‑list‑as‑launch‑surface teaching, which Microsoft's game‑list region lacks; Galli's stated purpose (bring external services into the IM session, associated with contacts) is the same purpose Microsoft pursues.
• Predictable, low‑risk engineering: UI composition plus a state record — exactly KSR's "combination of familiar elements according to known methods."

Residual risk for this combination: Microsoft's FIG. 8/9 statistics may be characterized by a Patent Owner as pre‑game/historical statistics rather than live game‑progress messages in the conversation transcript. A challenger should pair L5 with a reference or system-evidence showing a live move/turn status posted into the chat pane (Miyaji's turn indicator, if characterized as such, is the best candidate).

5. Combination 3 — Galli + Crane + Pelkey (+ Shea) — for a cleaner L2

Pelkey, US 7,056,217 B1 — "Messaging service for video game systems with buddy list that displays game being played" — is unusually on‑point for L2. A buddy list that displays the game being played is, almost verbatim, "identifying game play in the contact list," and it does so in a messaging service context, which directly attacks the combination‑1 defect (in Galli only the IM app touches the contact list).

Motivation: Pelkey and Galli both concern messaging services that surface application/game state per contact; Pelkey contributes the specific "game being played" field, Galli contributes the contact‑list‑associated launch affordance. Shea (US 7,401,150) adds multi‑session launching/invitation — useful for "playing games with contacts" and for claim 4–7's contact‑list‑entry association and its removal at game end.

Risk: Pelkey is directed to video game consoles, whereas the '250 is directed to a handheld messaging device; a Patent Owner would argue a different field of use and no motivation to port console buddy‑list semantics to a mobile IM client. Counter with KSR's "same problem" reasoning: the problem (managing games in progress with contacts) and the element (a buddy list) are identical; the platform difference is not a teaching away.

6. Combination 4 — AOL family (Fish / Danieli‑'093 / Rodriquez / Danieli‑'608) + Crane + Miyaji

These § 102(e) references collectively disclose: using an IM buddy/participant list to initiate and invite players to on‑line games (Fish, Danieli‑'608, Danieli‑'093); quickly joining an online game already being played by a friend (Rodriquez); and leaderboards/rankings surfaced in the IM participant list (Fish) — the latter being evidence indicative of game progress displayed in an IM‑associated list. Combined with Crane (game payload + GameId over IM) and Miyaji (status/match list), this is a broader, differently‑sourced § 103 case that does not depend on Galli's middleware teaching at all.

Motivation: All four AOL references share Galli's/MS's purpose — enriching the IM experience by integrating games — and Fish explicitly frames the buddy list as a surface for game results/rankings, which is the same function Miyaji assigns to its match list and the same function the '250 claims for its contact list entry.

7. Dependent claims — where the art lines up

8. Why a person of ordinary skill would combine — the consolidated rationale

A POSITA here has a B.S. in CS/EE (or equivalent) with ~2–4 years in networked application and mobile UI development, and is familiar with IM clients, contact/buddy lists, and turn‑based networked games. That artisan in 2006 would have had:

1. An express invitation in the art. Galli and Microsoft both state the goal of bringing applications (and games) into the IM session and associating them with contacts. Where a reference itself identifies the improvement to be made, motivation is strongest (KSR; In re ICON Health & Fitness, 496 F.3d 1374 (Fed. Cir. 2007)).
2. A recognized design need. Turn‑based games spanning hours/days create a real need to track multiple games in progress — the problem Miyaji exists to solve.
3. Known, interchangeable UI primitives. Status indicators in lists, selectable list entries, icons attached to contacts, and windows that show chat + game content side‑by‑side were all known (Galli, Miyaji, Microsoft, EP 1 207 651).
4. A known transport. Sending structured game payloads (progress data + a game identifier) over an IM channel was known (Crane).
5. No technical barrier. The combination is software/UI composition with a stored game state — routine programming with predictable results.

9. Non‑obviousness counter‑arguments a Patent Owner will press

• "Different lists, different purposes" (the winning argument in the IPR): Galli's contact list shows availability of applications; Miyaji's match list tracks active games. A generic "it would be useful" motivation was held insufficient. Expect the same attack.
• "The game UI is not the IM conversation UI." The Board accepted that in the Crane‑based combination the game packets go to the game application, and the conversation UI shows only a launch link — no game‑progress message. Any § 103 case must nail L5 with documentary evidence, not attorney argument (K/S Himpp v. Hear‑Wear Techs., 751 F.3d 1362).
• "Utilize" is a structural requirement. The Board read "enabling a game application…to utilize a contact list" as requiring the game application — not IM middleware — to obtain and act on contact‑list information. Galli's IMLets do not.
• "Only outdated packets" / no resumption. Claim 6 needs maintained, resumable progress; a packet cache that goes stale after an intervening move is not enough.

10. Secondary considerations (for completeness / expected rebuttal)

The record I retrieved does not supply evidence of long‑felt but unmet need, failure of others, copying, or unexpected results. Conversely, the patent's commercial context (BlackBerry Messenger, later Facebook Messenger "Instant Games") could support a licensing/commercial‑success argument, but nexus to the claimed features would have to be proven. I have no verified evidence either way — I would not assert secondary considerations on this record.

11. Bottom line

Strongest § 103 theory (recommended): Miyaji + Microsoft/IM‑Games (EP 1 475 939 / US 2004/0224772), in view of Galli, and further in view of Crane (or equivalent). This combination:

• meets L2 via Microsoft's in‑IM game selection plus Galli's contact‑list‑associated application cue (and/or Pelkey's "buddy list that displays game being played");
• meets L3–L4 via Crane's game packets with a GameId over IM;
• meets L5 — the limitation that killed the actual IPR — via Microsoft's single window containing both an IM region and a game region with per‑buddy score/status, augmented by Miyaji's turn/match status; and
• meets claim 6 via Microsoft's stored game‑state‑on‑pause disclosure, which is materially better than Crane's packet cache.

Second‑best theory: Galli + Crane + Miyaji, as actually litigated. Legally articulable and reasonably motivated, but already adjudicated as insufficient on L2 and L5, with claim 6 also vulnerable.

Third theory (for a different judge/panel): AOL § 102(e) family (Fish, Danieli‑'093, Rodriquez, Danieli‑'608) + Crane + Miyaji, which avoids Galli's middleware problem entirely.

Practical takeaway: the patent's survival in IPR2019-00942 was not a finding of non‑obviousness across all art — it was a finding that Facebook's particular Galli‑based combination failed to prove the case. The claims remain exposed on L5 and claim 6, and the Microsoft "Instant messaging embedded games" reference (already of record on the patent's face via EP 1 475 939) is the reference that most directly addresses the gap.

Confidence and limitations

• High confidence: the identity and content of the IPR2019-00942 ground and the Board's reasoning (multiple corroborating sources: the PO Sur‑Reply excerpt, the petition analysis at ai‑lab.exparte.com, and the stockhouse reproduction of the decision); the content of Galli (US 2005/0086309, retrieved PDF), Microsoft/IM‑Games (EP 1 475 939 and US 2004/0224772), and Fish (US 7,818,749).
• Medium confidence: exact paragraph/figure cites for Crane (WO 01/31476) and Miyaji (US 2006/0116205) — I could not open those documents in this session and am relying on the Petitioner's and Board's characterizations. Verify before filing.
• Lower confidence / must verify: exact § 102(e) filing dates for Pelkey, Shea, Danieli‑'093, Danieli‑'608, Rodriquez; and whether Shaw (US 2007/0173325) has a pre‑2006‑09‑29 filing date. Any date error changes a reference from prior art to non‑art.
• Not established: any element of my L5 reading in Microsoft's FIG. 8/9 (statistics are "indicative of game progress") is my characterization, not a finding by any tribunal; Patent Owner would likely characterize those as historical statistics rather than live progress messages. This is the single point most in need of a verified citation.
• I did not locate a separate "Prior Art" section in the material provided; if one exists on the page you are working from, its references should be checked against the set above and any that I omitted should be slotted into the mapping tables.