Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 1 of 48
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
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`Plaintiff,
`
`v.
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`ZIPIT WIRELESS, INC.,
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`
`
`
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`APPLE INC.,
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`
`
`
`Defendant.
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`
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`
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`Civil Action No. ____________
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`
`JURY TRIAL DEMANDED
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`
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`
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`
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`COMPLAINT FOR PATENT INFRINGEMENT
`Plaintiff, Zipit Wireless, Inc., for its Complaint against Defendant Apple Inc.,
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`alleges as follows:
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`INTRODUCTION
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`1.
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`This is an action for patent infringement arising under the patent laws
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`of the United States, Title 35, United States Code.
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`
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`THE PARTIES
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`2.
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`Plaintiff, Zipit Wireless, Inc. (hereinafter “Zipit”) is a Delaware
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`Corporation with a principal place of business located at 101 North Main Street,
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`Suite 201, Greenville, South Carolina 29601.
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`
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`1
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`
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF GEORGIA
`ATLANTA DIVISION
`
`Plaintiff,
`
`v.
`
`
`ZIPIT WIRELESS, INC.,
`
`
`
`
`
`APPLE INC.,
`
`
`
`
`Defendant.
`
`
`
`
`
`Civil Action No. ____________
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`COMPLAINT FOR PATENT INFRINGEMENT
`Plaintiff, Zipit Wireless, Inc., for its Complaint against Defendant Apple Inc.,
`
`alleges as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action for patent infringement arising under the patent laws
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`of the United States, Title 35, United States Code.
`
`
`
`THE PARTIES
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`2.
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`Plaintiff, Zipit Wireless, Inc. (hereinafter “Zipit”) is a Delaware
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`Corporation with a principal place of business located at 101 North Main Street,
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`Suite 201, Greenville, South Carolina 29601.
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`1
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`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 2 of 48
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`3.
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`On information and belief, Defendant Apple Inc. is a California
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`Corporation with a principal place of business at 1 Infinite Loop, Cupertino,
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`California 95014. On information and belief, Apple maintains regular and
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`established places of business in Georgia, including the following locations listed
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`on Apple’s website www.apple.com/retail (1) Apple Lenox Square, 3393
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`Peachtree Road NE, Atlanta, GA 30326, (2) Apple Avalon, 8130 Avalon
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`Boulevard, Alpharetta, GA 30009 and (3) Apple Perimeter, 4400 Ashford
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`Dunwoody Road, Atlanta, GA 30346,. On information and belief, Defendant
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`Apple Inc. may be served through its registered agent C T Corporation, 289 South
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`Culver Street, Lawrenceville, Georgia 30046-4805.
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`JURISDICTION
`This Court has subject matter jurisdiction over all causes of action set
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`4.
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`forth herein pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises
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`under the patent laws of the United States, Title 35, United States Code, including 35
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`U.S.C. §271 et seq.
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`5.
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`Defendant is in the business of supplying instant messaging devices,
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`such as smartphones, in and throughout the United States, including in this State
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`and in this judicial district.
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`6.
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`This Court may properly exercise personal jurisdiction over
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`Defendant.
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`7.
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`Defendant has solicited business in this State, transacted business
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`within this State and attempted to derive financial benefit from residents of this
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`State, including benefits directly related to the instant patent infringement cause of
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`action set forth herein.
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`8.
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`Defendant has made, used, sold, offered for sale, and/or imported
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`instant messaging devices or wireless mobile communications devices, such as
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`smartphones, in this judicial district and/or has placed such phones into the stream
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`of commerce with the knowledge and intent that such phones have been offered for
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`sale, sold, and/or used in this State and this judicial district. On information and
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`belief, Defendant’s customers in this State have purchased and used and continue
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`to purchase and use Defendant’s products.
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`9.
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`At the time of filing of this Complaint, Defendant’s smartphones are
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`available for purchase by consumers in this State, including within this judicial
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`district.
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`10. This Court has personal jurisdiction over Defendant because: (i)
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`Defendant has and continues to intentionally sell products and methods, including the
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`infringing methods, to customers in this State; (ii) Defendant has and continues to
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`intentionally instruct customers and potential customers in this State with respect to
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`how to use the products and methods that Defendant sells to customers in this State;
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`(iii) Defendant knows and has known its products and methods, including the
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`infringing methods, have and continue to be sold and marketed in this State; (iv)
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`Defendant knows and has known that its manufactured products and methods will
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`enter the United States of America and this State; (v) Defendant has and continues to
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`target customers and potential customers in this State to buy and/or use Defendant’s
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`products and methods, including the infringing methods; (vi) Defendant has and
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`continues to provide advice to customers in this State; (vii) it has been and continues
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`to be foreseeable that Defendant’s products and methods, including the infringing
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`methods, would enter this State; (viii) Defendant has and continues to market to
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`citizens of this State through its website; (ix) Defendant has and continues to provide
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`services to citizens of this State through its website; (x) Defendant derives substantial
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`revenue from this State; (xi) this State has and continues to be part of Defendant’s
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`established distribution channels; (xii) the assertion of personal jurisdiction over
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`Defendant is reasonable and fair; (xiii) and this State has an interest in this matter due
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`to the presence of Defendant’s products and methods, including the infringing
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`methods, in this State.
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`11. Venue is this district is proper pursuant to 28 U.S.C. §1331, §1338,
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`§1391, and §1400 at least because Defendant has a regular and established place of
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`business in this judicial district and Defendant has committed acts of infringement in
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`this judicial district.
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`BACKGROUND
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`Zipit’s Technology
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`12. Zipit has and continues to offer for sale Wi-Fi based instant
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`messaging solutions. Zipit’s first product, the Zipit Wireless Messenger:
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`was introduced in 2004 and was sold through major retailers including Target, Best
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`Buy, Radio Shack, and Amazon and received press coverage in the Chicago Tribune,
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`the New York Times, and many media outlets.
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`13.
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`In 2007, Zipit introduced its second-generation Wi-Fi based instant
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`messaging device known as “Z2”:
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`14.
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`In 2011, Zipit launched an enterprise messaging solution in
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`conjunction with a major U.S. cellular carrier and is actively selling this solution
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`into healthcare, hospitality, ems, manufacturing, utility, and government accounts.
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`Zipit’s solution has been deployed in over 250 enterprise customers across the U.S.
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`and Zipit’s customer base continues to grow monthly.
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`Zipit’s Awards And Notoriety
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`15.
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`In 2005, Time Magazine awarded Zipit’s first Wi-Fi instant messaging
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`device (“Zippy”) Time’s “The Most Amazing Inventions of 2005” Award:
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`To determine the award winners, Time Magazine “spent more than six months
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`surveying fields as diverse as electronics, aeronautics, medical technology, sports
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`equipment, toys, clothing and food looking for the newest-and most inspired-ideas
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`of the year.”
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`16. Zipit’s “Zippy” instant messaging device also won an award from
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`iParenting Media in 2006.
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`17. Zipit’s “Zippy” Wi-Fi instant messaging device also received praise
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`and acclaim in media across the United States and the World in at least the
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`Chicago Tribune “Zipit is king of messengers” (March 3, 2005); the New York
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`Times “Making an Easy Task, Instant Messaging, Even Easier.” (March 10, 2005);
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`the New York Times “Making an Easy Task, Instant Messaging, Even Easier.”
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`(March 21, 2005) (Online Edition); the Austin American-Statesman “Gadgets: …
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`Instant messaging with no extra charges” (March 21, 2005); ABC12.com “Zipit
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`Wireless Messenger” (Aug. 15, 2005); ABC12.com “Zipit Wireless Messenger”
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`(Aug. 22, 2005); The Greenville News (Dec. 5, 2004); Parade “a brilliant little
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`device” (April 24, 2005); Univision.com; ym.com “What’s Hot: March 15, 2005”
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`(March 17, 2005); Gizmodo “Perfect for the IM addict” (July 19, 2005); Gizmodo
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`“Teacher’s Worst Nightmare - Aeronix ZipIt” (Sept. 29, 2005); HeraldToday.com
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`(“Zipit rules wireless messenging world”) (March 10, 2005); HUB: Digital Living
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`(March 2005); New York Daily News “Hot, hotter, hottest: The Definitive guide to
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`who and what is sexy right now” “Gadgets” (April 3, 2005); and the St. Petersburg
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`Times “2005 Annual Gadget Guide From Apple to Zipit” “For the good times”
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`(Nov. 28, 2005).
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`18. Zipit’s second version of its Wi-Fi instant messaging device, “Z2,”
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`also was widely praised and acclaimed. In 2007, PC Magazine awarded Zipit’s
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`“Z2” the “Winner” of its “Best of Show” award at the Digital Life show in the
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`category of “Portable Gear.” Zipit’s “Z2” also won another award from iParenting
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`Media in 2008.
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`19. Zipit’s “Z2” Wi-Fi instant messaging device, also was praised in at
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`least the following media sources: PC Magazine DigitalLife 2007 “Best of Show”
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`(Sept. 28, 2007); DigitalLife’s “Best of Show Award” (Oct. 2, 2007); 2013
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`iParenting Media Awards – Winner – Zipit Wireless Messenger 2 (April 30, 2008);
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`2014, Video – Z2 Highlight Reel (The Today Show; USA Today; Associated Press
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`Article; The Washington Post; The Boston Globe; Houston Chronicle; The
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`Philadelphia Inquirer; The Kansas City Star; The Miami Herald; San Francisco
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`Chronicle; Orlando Sentinel; Rocky Mountain News; ABC Television Channel 7;
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`CNN Television; FOX News FOX & Friends; The New York Times; Pittsburgh
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`Post-Gazette; MTV Television; Yahoo! Tech; CNET; eva; The Montel Williams
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`Television Show; NBC Channel 5; LINUX Journal; WNN Wi-Fi News; Digital
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`Tech News’; Wireless Week; electronista; I40 News; Best stuff; FOX & Friends
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`(2015); The Montel Williams Show (Dec. 6, 2006; WABC – New York Channel 7
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`(Dec. 17, 2006); FOX Business (March 19, 2008); The Today Show (Jan. 6, 2008);
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`MTV; The Detroit News – “In our opinion - Zipit Z2 perfect for kids” (June 30,
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`2008); the Akron Beacon, Ohio.com (April 14, 2008); the Arizona Star (April 3,
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`2008); the BaltimoreSun.com (April 17, 2008); The Record NorthJersey.com
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`“Kids and their parents will love the Z2 messaging device” (April 12, 2008);
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`TheStreet.com “Instant Messaging With Mass Appeal” (Dec. 7, 2007); Digital Life
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`“Digital Life Announces the DigitalLife Innovators Class of 2007” (Sept. 24,
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`2007); E-Gear “Is Anybody Out There” (April 9, 2008); Gizmodo “Zipit Z2
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`Wireless Messenger Lets Teens IM For Free” (Nov. 7, 2007); GoErie.com “ Txt all
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`d tym” “IM friends without tying up computer” (April 11, 2008);
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`CBS4Denver.com “One of the best products for teens, tweens and their parents”
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`(2007); InfoSyncWorld.com “Zipit Z2 Wireless Messenger sends IMs without PC
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`or phone” “it has a dedicated smiley button, which we have never seen before, but
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`now we want on our Treo :-)” (Nov. 7, 2007); InsignifacantThoughts.com (Sept.
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`28, 2007); KansasCity.com “Better Messages” (Dec. 6, 2007); LinuxDevices.com
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`(Nov. 9, 2007); MiamiHerald.com (Oct. 18, 2007); ny1.com (Sept. 27, 2007);
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`NYTimes.com (Oct. 4, 2007); PCMag.com.br (Sept. 28, 2007);
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`PC.Watch.Impress.co.JP (Dec. 9, 2007); Yahoo! News (Sept. 27, 2007); Register
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`Hardware UK (Nov. 7, 2007); SlashGear.com (Sept. 27, 2007); StarTelegram.com
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`“High-tech hobbies” (Oct. 14, 2007); the Minneapolis StarTribune.com (Oct. 8,
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`2007); DailyHerald.com (June 23, 2008); The Gazette Canada.com (Oct. 11,
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`2007); TheStreet.com “Instant Messenger With Mass Appeal” “a must-have for
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`travelers” (Dec. 7 2007); TimeforKids.com (Nov. 26, 2007); Twice.com (Sept. 27,
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`2007); ABCNews.com (Nov. 2, 2007); ABCNews: The Ultimate Gift Guide (Nov.
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`8, 2007); Adweek Magazine “Top 10 Trends of 2007” (Dec. 17, 2007);
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`BlogStuff.com (Nov. 26, 2007); Blog-SciFi.com (Sept. 27, 2007); Brighthand.com
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`(Sept. 30, 2007); CBS Tech Toys Review (Oct. 16, 2007); and The Charlotte
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`Observer Charlotte.com (Oct. 21, 2007).
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`Wi-Fi Instant Messaging Devices With Emoticons Drive Purchasing Decisions
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`20. Prior to the existence of Wi-Fi instant messaging, carriers typically
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`charged up to $0.20 per text, or $20.00 per month for unlimited texting. Thanks to
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`Wi-Fi based instant messaging, however, consumers no longer had to pay for
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`individual instant messages or monthly service plans. As a result, by 2016, it was
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`estimated that consumers saved $54 billion through the use of Wi-Fi instant
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`messaging instead of from SMS-based instant messaging.
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`21.
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`Instant messaging has been and continues to be the single most
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`important smartphone feature. Indeed, many potential customers are unlikely to
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`purchase a smartphone that is not able to generate an instant message comprising
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`an emoji/graphical symbol (, ) that is sent over Wi-Fi.
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`22. Using a handheld device, such as a smartphone, to send instant
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`messages that contain emojis is a major and growing form of communication
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`among an incredibly large demographic. Indeed, this is reflected by Oxford
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`Dictionary’s “word” of the year for 2015, which was the “face with tears of joy”
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`emoji:
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`Oxford Dictionary selected the emoji as its “word” of the year because the emoji
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`was “the ‘word’ that best reflected the ethos, mood, and preoccupations of 2015.” It
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`is further reflected by the creation of “World Emoji Day,” which is held annually on
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`July 17.
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`ZIPIT’S PATENTS
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`23. The United States Patent and Trademark Office awarded Zipit two
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`patents on its highly acclaimed “Instant Messaging Terminal Adapted For Wi-Fi
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`Access Points,” U.S. Patent No. 7,292,870 and U.S. Patent No. 7, 894,837.
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`Zipit’s U.S. Patent No. 7,292,870
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`24. On November 6, 2007, the United States Patent and Trademark Office
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`duly and legally issued United States Patent No. 7,292,870, entitled “Instant
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`Messaging Terminal Adapted For WI-FI Access Points.” A true and correct copy
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`of U.S. Patent No. 7,292,870 is attached hereto as Exhibit “A.”
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`25. Zipit is the owner, by assignment, of all right, title, and interest in and
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`to U.S. Patent No. 7,292,870 (hereinafter the “ʼ870 Patent”), including the right to
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`sue for past, present, and future patent infringement, and to collect past, present,
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`and future damages.
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`26. The ʼ870 patent complies with the Patent Act, including 35 U.S.C.
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`§101, 35 U.S.C. §102, 35 U.S.C. § 103, and 35 U.S.C. §112.
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`27. On July 16, 2013, the Patent Office issued a Certificate of Correction
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`for the ʼ870 patent. Exhibit “B.”
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`28. Each and every claim of the ʼ870 patent is valid and enforceable.
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`29. The ʼ870 patent and its claims are entitled to the benefit of the date
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`upon which Zipit filed its provisional patent application 60/532,000, which was
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`filed on December 24, 2003.
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`30. As the invention(s) claimed in the ʼ870 patent were conceived no later
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`than April 2003, the claims of the ʼ870 patent are further entitled to a priority date
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`of no later than April 2003.
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`IPR2014-01507
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`31. On March 30, 2015, the Patent Trial and Appeal Board (“PTAB”) of
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`the United States Patent and Trademark Office instituted an Inter Partes Review
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`(“IPR”) of the ʼ870 patent.
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`32. On June 22, 2015, Zipit filed its “Patent Owner’s Response Under 37
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`C.F.R. § 42.120.”
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`33. On March 29, 2016, the PTAB issued a Final Decision that confirmed
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`the patentability of all claims of the ʼ870 Patent in IPR2014-01507.
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`34. All papers and pleadings filed with the PTAB for IPR2014-01507 are
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`part of the prosecution history of the ʼ870 Patent. Due to their size and volume,
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`the papers and pleadings filed with the PTAB for IPR2014-01507 are incorporated
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`herein by reference.
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`IPR2019-01567
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`35. On August 30, 2019, Google LLC et al. filed a Petition For Inter
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`Partes Review of the ʼ870 Patent, IPR2019-01567.
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`36. On March 9, 2020, the PTAB instituted IPR of the ʼ870 Patent.
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`37. On June 2, 2020, Zipit filed a Response to the Petition, requesting the
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`PTAB to deny the Petition.
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`38. All papers and pleadings filed with the PTAB for IPR2019-01567 are
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`part of the prosecution history of the ʼ870 Patent. Due to their size and volume,
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`the papers and pleadings filed with the PTAB for IPR2019-01567 are incorporated
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`herein by reference.
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`No Claim Of Zipit’s ’870 Patent Is Abstract
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`39. The claims of the ʼ870 Patent are focused on an advance over the prior
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`art such that their character as a whole is not directed to excluded subject matter,
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`such as an abstract idea, or any other subject matter excluded under 35 U.S.C.
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`§101. For example, the claims of the ʼ870 patent are directed to improvements in
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`computer functionality.
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`40. The PTAB determined that the combinations claimed in the claims of
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`the ʼ870 Patent were novel and nonobvious, as did the Patent Office during its
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`initial review of the claims.
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`41. The advancement claimed in the claims of the ʼ870 Patent includes,
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`inter alia, an instant messaging terminal and method that includes a housing, a
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`display mounted in the housing, a data entry device that affords the generation of
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`textual characters and graphical symbols, a wireless Internet protocol
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`communications module, a wireless transceiver, and a control module that includes
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`a processor for executing an application program to implement instant messaging
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`and session protocols for a conversation. Such a claimed combination does not
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`exist in the prior art. Such a combination was not well-understood, routine, or
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`conventional. And such a combination constitutes a tangible, specific, concrete
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`invention. The claimed combination also improved the operation of computer
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`functionality, overcoming various failures with existing computing devices as
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`discussed in the Background of the Invention and the Summary of the Invention.
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`42. For example, providing the claimed combination in a handheld
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`terminal (as opposed to a desktop, laptop, or PDA requiring external peripheral
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`data entry and/or display devices) represented a significant advance in computer
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`functionality, including allowing both textual characters and graphical symbols to
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`be entered/generated using a data entry device integrated into the handheld
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`terminal. This avoided the need for a platform to support the data entry device
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`during data entry. Furthermore, the claimed data entry device for
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`generating/entering textual characters and graphical symbols improved the
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`efficiency of computing devices by allowing graphical symbols to be directly
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`entered by a user, avoiding the need for the computing device to translate a
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`sequence of textual characters into a graphical symbol prior to displaying and
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`sending the graphical symbol.
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`43. The advancement claimed in the claims of the ʼ870 Patent further
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`includes, inter alia, an instant messaging terminal and method that, after loss of a
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`network connection, automatically searches for a new connection and displays the
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`conversation histories that were active when the network connection was lost.
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`Such a claimed combination does not exist in the prior art. Such a combination
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`was not well-understood, routine, or conventional. And such a combination
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`constitutes a tangible, specific, concrete invention. Indeed, such functionality
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`would have run counter to the state of the art due to concerns about the impact on
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`battery life. This claimed capability represented a significant advance in computer
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`functionality. For example, the claimed capability does not depend on user
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`instruction to locate a connection after connection loss. Moreover, the claimed
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`capability of displaying active conversation histories for active conversations
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`terminated by loss of network connection improves upon the state of the art, in
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`which such conversation histories were typically lost upon termination of the
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`user’s network connection.
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`44. The advancement claimed in the claims of the ʼ870 Patent further
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`includes, inter alia, an instant messaging terminal and method that includes a
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`plurality of keys for graphical symbols, each graphical symbol key including
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`indicia identifying the graphical symbol generated by depressing the key bearing
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`the indicia. Such a claimed combination does not exist in the prior art. Such a
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`combination was not well-understood, routine, or conventional. And such a
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`combination constitutes a tangible, specific, concrete invention. This claimed
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`feature also relates to the improvement in the efficiency of computing devices
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`discussed above allowing graphical symbols to be directly entered by a user,
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`avoiding the need for the computing device to translate a sequence of textual
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`characters into a graphical symbol prior to displaying and sending the graphical
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`symbol.
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`45. The advancement claimed in the claims of the ʼ870 Patent further
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`includes, inter alia, an instant messaging terminal and method that includes at least
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`one programmable key associated with a set of characters corresponding to a
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`graphical symbol supported by an instant messaging service provider. Such a
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`claimed combination does not exist in the prior art. Such a combination was not
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`well-understood, routine, or conventional. And such a combination constitutes a
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`tangible, specific, concrete invention. This claimed feature also relates to the
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`improvement in the efficiency of computing devices discussed above allowing
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`graphical symbols to be directly entered by a user, avoiding the need for the
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`computing device to translate a sequence of textual characters into a graphical
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`symbol prior to displaying and sending the graphical symbol.
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`46. The advancement claimed in the claims of the ʼ870 Patent further
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`includes, inter alia, an instant messaging terminal and method that includes a
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`control module that stores a profile containing network settings for a network
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`communicating with the communications module and the wireless transceiver
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`through an access point. Such a claimed combination does not exist in the prior
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`art. Such a combination was not well-understood, routine, or conventional. And
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`such a combination constitutes a tangible, specific, concrete invention. This
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`claimed capability further improves computer operation because it permits, for
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`example, the handheld terminal to connect automatically to a network
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`corresponding to a stored profile without user intervention. See Exhibit “A,” ʼ870
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`Patent at 5:20-31.
`
`47. The advancement claimed in the claims of the ʼ870 Patent further
`
`includes, inter alia, an instant messaging terminal and method that includes a
`
`control module that includes an audio player for generating sound from a
`
`downloaded file. Such a claimed combination does not exist in the prior art. Such
`
`a combination was not well-understood, routine, or conventional. And such a
`
`combination constitutes a tangible, specific, concrete invention. Moreover, the
`
`provision of this capability in the claimed handheld terminal improved the
`
`operation of existing handheld terminals by, for example, allowing users to listen
`
`to music while exchanging instant messages (including generating/entering textual
`
`characters and graphical symbols using the data entry device) using a single
`
`handheld terminal.
`
`48. The advancement claimed in the claims of the ʼ870 Patent further
`
`includes, inter alia, an instant messaging terminal and method that includes a
`
`control module that generates sound from files received from an Internet radio
`
`
`
`19
`
`
`
`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 20 of 48
`
`station through a wireless, Internet protocol access point. Such a claimed
`
`combination does not exist in the prior art. Such a combination was not well-
`
`understood, routine, or conventional. And such a combination constitutes a
`
`tangible, specific, concrete invention. The provision of this capability in the
`
`claimed handheld terminal improved the operation of existing handheld terminals
`
`by, for example, allowing users to listen to sound files from an Internet radio
`
`station while exchanging instant messages (including generating/entering textual
`
`characters and graphical symbols using the data entry device) using a single
`
`handheld terminal.
`
`The Inventions Claimed In The ’870 Patent Were Not
`Well-Understood, Routine, Or Conventional
`
`
`
`49. Prior to Zipit’s invention, instant messaging primarily transpired with
`
`desktop computers.
`
`50. Prior to Zipit’s invention, text messages were sent over a carrier’s
`
`cellular network using SMS. Users sending and receiving text messages typically
`
`were charged for each text, including at rates of $0.20/text or $20/month.
`
`51. Zipit’s technology allowed instant messaging by a handheld instant
`
`messaging terminal using Wi-Fi, avoiding the expense of texting and the need to
`
`share a desktop computer for instant messaging.
`
`
`
`20
`
`
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`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 21 of 48
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`52. Zipit’s patented and claimed technology allowed mobile handheld
`
`devices to directly connect to a Wi-Fi access point without using an intermediate
`
`protocol in order to send instant messages comprising an emoji/graphical symbol
`
`(, ) over Wi-Fi, instead of the cellular network.
`
`53. No claims of the ʼ870 Patent are unpatentable under §103. In
`
`addition, the patentability of the claims of the ʼ870 Patent is confirmed by the
`
`overwhelming evidence of widespread acclaim and industry praise that Patentee’s
`
`“Zippy” and “Z2” devices received. Due to the several awards, newspaper stories,
`
`television stories, and online articles regarding Zipit’s “Zippy” and “Z2” devices,
`
`including for example: (i) Time Magazine’s “The Most Amazing Inventions of
`
`2005” Award, which was awarded to Zipit Wireless, Inc. for its “Zippy” device,
`
`(ii) the 2005 Chicago Tribune article, which declares that “Zipit Is King Of
`
`Messengers,” and (iii) PC Magazine’s “Winner” of its 2007 “Best of Show” award
`
`in the category of “Portable Gear,” which was awarded to Zipit for its “Z2” device,
`
`received widespread acclaim.
`
`54. A nexus exists between Zipit’s “Zippy” device and the claims of the
`
`ʼ870 Patent.
`
`55. A nexus also exists between Zipit’s acclaimed “Z2” device and the
`
`claims of the ʼ870 Patent.
`
`
`
`21
`
`
`
`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 22 of 48
`
`Zipit’s U.S. Patent No. 7,894,837 Patent
`
`56. On February 22, 2011, the United States Patent and Trademark Office
`
`duly and legally issued United States Patent No. 7,894,837, entitled “Instant
`
`Messaging Terminal Adapted For Wireless Communication Access Points.” A
`
`true and correct copy of U.S. Patent No. 7,894,837 is attached hereto as Exhibit
`
`“C.”
`
`57. Zipit is the owner, by assignment, of all right, title, and interest in and
`
`to U.S. Patent No. 7,894,837 (hereinafter the “ʼ837 Patent”), including the right to
`
`sue for past, present, and future patent infringement, and to collect past, present,
`
`and future damages.
`
`58. The ʼ837 Patent complies with the Patent Act, including 35 U.S.C.
`
`§101, 35 U.S.C. §102, 35 U.S.C. § 103, and 35 U.S.C. §112.
`
`59. Each and every claim of the ʼ837 Patent is valid and enforceable.
`
`60. The ʼ837 patent and its claims are entitled to the benefit of the filing
`
`date of the ʼ870 patent (May 14, 2004) and also the date upon which Zipit filed its
`
`provisional patent application (December 23, 2003).
`
`61. As the invention(s) claimed in the ʼ837 patent were conceived no later
`
`than April 2003, the claims of the ʼ837 patent are further entitled to a priority date
`
`of no later than April 2003.
`
`
`
`22
`
`
`
`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 23 of 48
`
`IPR2014-01506
`
`62. On March 30, 2015, the PTAB instituted an IPR of the ʼ837 patent.
`
`63. On June 22, 2015, Zipit filed its “Patent Owner’s Response Under 37
`
`C.F.R. §42.120.”
`
`64. On March 29, 2016, the PTAB issued a Final Decision that confirmed
`
`the patentability of all claims of the ʼ837 Patent in IPR2014-01506.
`
`65. All papers and pleadings filed with the PTAB for IPR2014-01506 are
`
`part of the prosecution history of the ʼ837 Patent. Due to their size and volume,
`
`the papers and pleadings filed with the PTAB for IPR2014-01506 are incorporated
`
`by reference.
`
`IPR2019-01568
`
`66. On August 30, 2019, Google LLC et al. filed a Petition For Inter
`
`Partes Review of the ʼ837 Patent, IPR2019-01568.
`
`67. On June 2, 2020, Zipit filed a Response to the Petition, requesting the
`
`PTAB to deny the Petition.
`
`68. All papers and pleadings filed with the PTAB for IPR2019-01568 are
`
`part of the prosecution history of the ʼ837 Patent. Due to their size and volume,
`
`the papers and pleadings filed with the PTAB for IPR2019-01568 are incorporated
`
`by reference.
`
`
`
`23
`
`
`
`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 24 of 48
`
`Zipit’s ’837 Patent Is Not Abstract
`
`69. The claims of the ʼ837 Patent are focused on an advance over the
`
`prior art such that their character as a whole is not directed to excluded subject
`
`matter, such as an abstract idea, or any other subject matter excluded under 35
`
`U.S.C. §101.
`
`70.
`
`In fact, the PTAB determined that the combinations claimed in the
`
`claims of the ʼ837 Patent were novel and nonobvious, as did the Patent Office
`
`during its initial review of the claims.
`
`71. The advancement claimed in the claims of the ʼ837 Patent includes,
`
`inter alia, an instant messaging terminal and method that includes a housing, a
`
`display mounted in the housing, a data entry device that affords the generation of
`
`textual characters and graphical symbols, a wireless Internet protocol
`
`communications module, a wireless transceiver, and a control module that includes
`
`a processor for executing an application program to implement instant messaging
`
`and session protocols for a conversation. Such a claimed combination does not
`
`exist in the prior art. Such a combination was not well-understood, routine, or
`
`conventional. And such a combination constitutes a tangible, specific, concrete
`
`invention. The claimed combination also improved the operation of computer
`
`
`
`24
`
`
`
`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 25 of 48
`
`functionality, overcoming various failures with existing computing devices as
`
`discussed in the Background of the Invention and the Summary of the Invention.
`
`72. For example, providing the claimed combination in a handheld
`
`terminal (as opposed to a desktop, laptop, or PDA requiring external peripheral
`
`data entry and/or display devices) represented a significant advance in computer
`
`functionality, including generation of both textual characters and graphical
`
`symbols using a data entry device integrated into the handheld terminal. This
`
`avoided the need for a platform to support the data entry device during data entry.
`
`Furthermore, the claimed data entry device for generating textual characters and
`
`graphical symbols improved the efficiency of computing devices by allowing
`
`graphical symbols to be directly entered by a user, avoiding the need for the
`
`computing device to translate a sequence of textual characters into a graphical
`
`symbol prior to displaying and sending the graphical symbol.
`
`73. The advancement claimed in the claims of the ʼ837 patent further
`
`includes, inter alia, an instant messaging terminal and method that includes a
`
`housing, a display mounted in the housing, a data entry device that affords the
`
`generation of textual characters and graphical symbols, a wireless Internet protocol
`
`communications module, a wireless transceiver, and a control module that includes
`
`a processor for executing an application program to implement at least one instant
`
`
`
`25
`
`
`
`Case 1:20-cv-02488-ELR Document 1 Filed 06/11/20 Page 26 of 48
`
`messaging protocol for generation of instant messaging data messages that are
`
`compatible with an instant messaging service. Such a
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