Case 2:20-cv-01494-KM-JBC Document 1 Filed 02/12/20 Page 1 of 53 PageID: 1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF NEW JERSEY
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`Civil Action No. ____________
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`JURY TRIAL DEMANDED
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`ZIPIT WIRELESS, INC.,
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`LG ELECTRONICS U.S.A., INC.
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`Plaintiff,
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`v.
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`Defendant.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff, Zipit Wireless, Inc., for its Complaint against Defendant LG Electronics U.S.A.,
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`Inc., 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 of the
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`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 Corporation with a
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`principal place of business located at 101 North Main Street, Suite 201, Greenville, South Carolina
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`29601.
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`3.
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`On information and belief, Defendant LG Electronics U.S.A., Inc. (“LGEUS”) is a
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`Delaware Corporation with its principal place of business at 910 Sylvan Avenue, Englewood
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`Cliffs, New Jersey, 07632.
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`4.
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`On July 23, 2018, Zipit sued LGEUS’s parent company, LG Electronics, Inc.
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`(“LGEKR”), in the District of South Carolina for infringement of U.S. Patent No. 7,292,870 and
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`U.S. Patent No. 7,894,837. LGEKR moved to dismiss Zipit’s complaint for lack of personal
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`jurisdiction or, alternatively, to transfer the case to the Northern District of California (despite
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`having no offices there). The South Carolina court denied LGEKR’s motions without prejudice,
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`granting LGEKR leave to refile its motion after the parties conducted jurisdictional discovery.
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`In its reply brief in support of its motion, LGEKR stated that LGEUS is the “true defendant in
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`this case,” and that New Jersey is a proper venue given that LGEUS is headquartered in this
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`District. Zipit Wireless, Inc. v. LG Electronics, Inc., No. 6:18-cv-02016-JMC (D.S.C.), Dkt. 46
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`at 8 n.4.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over all causes of action set forth herein
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the
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`United States, Title 35, United States Code, including 35 U.S.C. §271 et seq.
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`6.
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`LGEUS is in the business of supplying instant messaging devices, such as
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`smartphones, in the United States.
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`7.
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`LGEUS has solicited business in the State of New Jersey, transacted business
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`within the State of New Jersey and attempted to derive financial benefit from residents of the
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`State of New Jersey, including benefits directly related to the instant patent infringement cause
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`of action set forth herein.
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`8.
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`LGEUS has made, used, sold, offered for sale, and/or imported mobile phones
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`and/or has placed such phones into the stream of commerce, which phones have been offered for
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`sale, sold, and/or used in the State of New Jersey and this judicial district.
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`9.
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`At the time of filing of this Complaint, LGEUS’s smartphones are available for
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`purchase by consumers in the State of New Jersey, including within this judicial district.
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`10.
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`On information and belief, LGEUS has made, used, sold, offered for sale, and/or
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`imported wireless mobile communication devices that are alleged herein to infringe one or more
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`of the patents set forth herein, and/or has placed such devices into the stream of commerce,
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`which devices have been made, offered for sale, sold, and/or used in the State of New Jersey and
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`within this judicial district.
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`11.
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`LGEUS sells products in this judicial district that are accused of infringement in
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`this Complaint.
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`12.
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`LGEUS is subject to personal jurisdiction in the State of New Jersey and in this
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`judicial district.
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`13.
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`LGEUS is subject to personal jurisdiction in the State of New Jersey by virtue of
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`the fact that its headquarters and its principal place of business are located in the State of New
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`Jersey. LGEUS is also subject to personal jurisdiction under the provisions of the New Jersey
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`Long Arm Statute by virtue of the fact that, upon information and belief, LGEUS has availed
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`itself of the privilege of conducting and soliciting business within this State, including engaging
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`in at least some of the infringing activities in this State, as well as by others acting as LGEUS’s
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`agents and/or representatives, such that it would be reasonable for this Court to exercise
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`jurisdiction consistent with principles underlying the U.S. Constitution, and the exercise of
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`jurisdiction by this Court would not offend traditional notions of fair play and substantial justice.
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`14.
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`On information and belief, LGEUS has also established minimum contacts with
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`this judicial district and regularly transacts and does business within this district, including
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`advertising, promoting and selling products over the Internet, through intermediaries,
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`representatives and/or agents located within this judicial district, that infringe Plaintiff Zipit’s
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`patents, which products are then sold and/or shipped directly to citizens residing within this State
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`and in this judicial district. Upon further information and belief, LGEUS has purposefully
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`directed activities at citizens of this State including those located within this judicial district.
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`15.
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`On information and belief, LGEUS has purposefully and voluntarily placed its
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`products into the stream of commerce with the expectation that they will be purchased and used
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`by customers located in the State of New Jersey. On information and belief, LGEUS’s
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`customers in the State of New Jersey have purchased and used and continue to purchase and use
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`LGEUS’s products.
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`16.
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`This Court has personal jurisdiction over Defendant under the long arm statute of the
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`State of New Jersey because: (i) Defendant has and continues to intentionally sell products and
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`methods, including the infringing methods, to customers in New Jersey; (ii) Defendant has and
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`continues to intentionally instruct customers and potential customers in New Jersey with respect to
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`how to use the products and methods that Defendant sells to customers in New Jersey; (iii)
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`Defendant knows and has known its products and methods, including the infringing methods, have
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`and continue to be sold and marketed in New Jersey; (iv) Defendant knows and has known that its
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`manufactured products and methods will enter the United States of America and the State of New
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`Jersey; (v) Defendant has and continues to target customers and potential customers in New Jersey
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`to buy and/or use Defendant’s products and methods, including the infringing methods; (vi)
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`Defendant has and continues to provide advice to customers in New Jersey; (vii) it has been and
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`continues to be foreseeable that Defendant’s products and methods, including the infringing
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`methods, would enter the State New Jersey; (viii) Defendant has and continues to market to citizens
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`of New Jersey through its website www.lg.com/us, which is copyrighted 2009-2020 by LG
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`Electronics; (ix) Defendant has and continues to provide services to citizens of New Jersey through
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`its through website; (x) Defendant derives substantial revenue from New Jersey; (xi) New Jersey
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`has and continues to be part of Defendant’s established distribution channels; (xii) the assertion of
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`personal jurisdiction over Defendant is reasonable and fair; (xiii) and the State of New Jersey has an
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`interest in this matter due to the presence of Defendant’s products and methods, including the
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`infringing methods, in the State of New Jersey.
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`17.
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`This Court also has personal jurisdiction over Defendant as: (i) Defendant maintains
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`a regular and established place of business, its headquarters, in the State of New Jersey; (ii)
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`Defendant transacts business in the State of New Jersey; (iii) Defendant maintains regular and
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`systematic business contacts with the State of New Jersey and within this judicial district and
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`division; (iv) Defendant purposely, regularly, and continuously conducts business in the State of
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`New Jersey and within this judicial district and division; (v) Defendant knowingly places its
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`infringing products in the stream of commerce knowing, expecting, and intending for its infringing
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`products to be offered for sale, sold, purchased, and used by residents of State of New Jersey and
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`within this judicial district and division; (vi) Defendant knowingly places its infringing products in
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`the stream of commerce knowing, expecting, and intending for materials supporting it infringing
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`products, such as user manuals and product support literature, to be offered for sale, sold, purchased,
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`and used by residents of State of New Jersey and within this judicial district and division; (vii)
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`Defendant purposefully directs its activities at residents of the State of New Jersey; (viii) the cause
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`of action set forth herein arises out of or relates to the Defendant’s activities in the State of New
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`Jersey; and (ix) the exercise of jurisdiction over Defendant will not offend the traditional notions of
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`fair play and substantial justice.
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`18.
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`Venue is proper in this judicial district and division pursuant to 28 U.S.C. §1331,
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`§1338(a), and §1400(b) at least because Defendant has committed acts of infringement and has a
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`regular and established place of business in the District of New Jersey.
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`BACKGROUND
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`Zipit’s Technology
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`19.
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`Zipit has and continues to offer for sale Wi-Fi based instant messaging solutions.
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`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 Buy, Radio
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`Shack, and Amazon and received press coverage in the Chicago Tribune, the New York Times,
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`and many media outlets, as shown in Exhibit “G.”
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`20.
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`In 2007, Zipit introduced its second-generation Wi-Fi based instant messaging
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`device known as “Z2”:
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`21.
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`In 2011, Zipit launched an enterprise messaging solution in conjunction with a
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`major U.S. cellular carrier and is actively selling this solution into healthcare, hospitality, ems,
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`manufacturing, utility, and government accounts. Zipit’s solution has been deployed in over 250
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`enterprise customers across the U.S. and Zipit’s customer base continues to grow monthly.
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`Zipit’s Awards And Notoriety
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`22.
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`In 2005, Time Magazine awarded Zipit’s first Wi-Fi instant messaging device
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`(“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 surveying fields
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`as diverse as electronics, aeronautics, medical technology, sports equipment, toys, clothing and
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`food looking for the newest-and most inspired-ideas of the year.” Exhibit “G.”
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`23.
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`Zipit’s “Zippy” instant messaging device also won an award from iParenting
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`Media in 2006. Exhibit “G.”
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`24.
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`Zipit’s “Zippy” Wi-Fi instant messaging device also received praise and acclaim
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`in media across the United States and the World in at least the Chicago Tribune “Zipit is king of
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`messengers” (March 3, 2005); the New York Times “Making an Easy Task, Instant Messaging,
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`Even Easier.” (March 10, 2005); the New York Times “Making an Easy Task, Instant
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`Messaging, Even Easier.” (March 21, 2005) (Online Edition); the Austin American-Statesman
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`“Gadgets: … 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” (Aug. 22,
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`2005); The Greenville News (Dec. 5, 2004); Parade “a brilliant little device” (April 24, 2005);
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`Univision.com; ym.com “What’s Hot: March 15, 2005” (March 17, 2005); Gizmodo “Perfect for
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`the IM addict” (July 19, 2005); Gizmodo “Teacher’s Worst Nightmare - Aeronix ZipIt” (Sept.
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`29, 2005); HeraldToday.com (“Zipit rules wireless messenging world”) (March 10, 2005); HUB:
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`Digital Living (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 Times “2005
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`Annual Gadget Guide From Apple to Zipit” “For the good times” (Nov. 28, 2005). Exhibit “G.”
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`25.
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`Zipit’s second version of its Wi-Fi instant messaging device, “Z2,” also was
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`widely praised and acclaimed. In 2007, PC Magazine awarded Zipit’s “Z2” the “Winner” of its
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`“Best of Show” award at the Digital Life show in the category of “Portable Gear.” Zipit’s “Z2”
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`also won another award from iParenting Media in 2008. Exhibit “G.”
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`26.
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`Zipit’s “Z2” Wi-Fi instant messaging device, also was praised in at least the
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`following media sources: PC Magazine DigitalLife 2007 “Best of Show” (Sept. 28, 2007);
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`DigitalLife’s “Best of Show Award” (Oct. 2, 2007); 2013 iParenting Media Awards – Winner –
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`Zipit Wireless Messenger 2 (April 30, 2008); 2014, Video – Z2 Highlight Reel (The Today
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`Show; USA Today; Associated Press Article; The Washington Post; The Boston Globe; Houston
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`Chronicle; The 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; CNN
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`Television; FOX News FOX & Friends; The New York Times; Pittsburgh Post-Gazette; MTV
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`Television; Yahoo! Tech; CNET; eva; The Montel Williams Television Show; NBC Channel 5;
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`LINUX Journal; WNN Wi-Fi News; Digital Tech News’; Wireless Week; electronista; I40
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`News; Best stuff; FOX & Friends (2015); The Montel Williams Show (Dec. 6, 2006; WABC –
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`New York Channel 7 (Dec. 17, 2006); FOX Business (March 19, 2008); The Today Show (Jan.
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`6, 2008); MTV; The Detroit News – “In our opinion - Zipit Z2 perfect for kids” (June 30, 2008);
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`the Akron Beacon, Ohio.com (April 14, 2008); the Arizona Star (April 3, 2008); the
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`BaltimoreSun.com (April 17, 2008); The Record NorthJersey.com “Kids and their parents will
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`love the Z2 messaging device” (April 12, 2008); TheStreet.com “Instant Messaging With Mass
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`Appeal” (Dec. 7, 2007); Digital Life “Digital Life Announces the Digital Life Innovators Class
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`of 2007” (Sept. 24, 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 d tym” “IM
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`friends without tying up computer” (April 11, 2008); CBS4Denver.com “One of the best
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`products for teens, tweens and their parents” (2007); InfoSyncWorld.com “Zipit Z2 Wireless
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`Messenger sends IMs without PC or phone” “it has a dedicated smiley button, which we have
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`never seen before, but now we want on our Treo :-)” (Nov. 7, 2007); InsignifacantThoughts.com
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`(Sept. 28, 2007); KansasCity.com “Better Messages” (Dec. 6, 2007); LinuxDevices.com (Nov. 9,
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`2007); MiamiHerald.com (Oct. 18, 2007); ny1.com (Sept. 27, 2007); NYTimes.com (Oct. 4,
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`2007); PCMag.com.br (Sept. 28, 2007); PC.Watch.Impress.co.JP (Dec. 9, 2007); Yahoo! News
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`(Sept. 27, 2007); Register Hardware UK (Nov. 7, 2007); SlashGear.com (Sept. 27, 2007);
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`StarTelegram.com “High-tech hobbies” (Oct. 14, 2007); the Minneapolis StarTribune.com (Oct.
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`8, 2007); DailyHerald.com (June 23, 2008); The Gazette Canada.com (Oct. 11, 2007);
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`TheStreet.com “Instant Messenger With Mass Appeal” “a must-have for travelers” (Dec. 7
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`2007); TimeforKids.com (Nov. 26, 2007); Twice.com (Sept. 27, 2007); ABCNews.com (Nov. 2,
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`2007); ABCNews: The Ultimate Gift Guide (Nov. 8, 2007); Adweek Magazine “Top 10 Trends
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`of 2007” (Dec. 17, 2007); BlogStuff.com (Nov. 26, 2007); Blog-SciFi.com (Sept. 27, 2007);
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`Brighthand.com (Sept. 30, 2007); CBS Tech Toys Review (Oct. 16, 2007); and The Charlotte
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`Observer Charlotte.com (Oct. 21, 2007). Exhibit “G.”
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`Wi-Fi Instant Messaging Devices With Emoticons Drive Purchasing Decisions
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`27.
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`Prior to the existence of Wi-Fi instant messaging, carriers typically charged up to
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`$0.20 per text, or $20.00 per month for unlimited texting. Thanks to Wi-Fi based instant
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`messaging, however, consumers no longer had to pay for individual instant messages or monthly
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`service plans. As a result, by 2016, it was estimated that consumers saved $54 billion
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`($54,000,000,000) through the use of Wi-Fi instant messaging instead of from SMS-based
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`instant messaging.
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`28.
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`Instant messaging has been and continues to be the single most important
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`smartphone feature. Indeed, many potential customers are unlikely to purchase a smartphone
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`that is not able to generate an instant message comprising an emoji / graphical symbol (J, L)
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`that is sent over Wi-Fi.
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`29.
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`Using a handheld device, such as a smartphone, to send instant messages that
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`contain emojis is a major and growing form of communication among an incredibly large
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`demographic. Indeed, this is reflected by Oxford Dictionary’s “word” of the year for 2015,
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`which was the “face with tears of joy” emoji:
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`Oxford Dictionary selected the emoji as its “word” of the year because the emoji was “the ‘word’
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`that best reflected the ethos, mood, and preoccupations of 2015.” It is further reflected by the
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`creation of “World Emoji Day,” which is held annually on July 17.
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`ZIPIT’S PATENTS
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`30.
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`The United States Patent and Trademark Office awarded Zipit two patents on its
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`highly acclaimed “Instant Messaging Terminal Adapted For Wi-Fi Access Points,” U.S. Patent
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`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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`31.
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`On November 6, 2007, the United States Patent and Trademark Office duly and
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`legally issued United States Patent No. 7,292,870, entitled “Instant Messaging Terminal Adapted
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`For WI-FI Access Points.” A true and correct copy of U.S. Patent No. 7,292,870 is attached
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`hereto as Exhibit “A.”
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`32.
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`Zipit is the owner, by assignment, of all right, title, and interest in and to U.S.
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`Patent No. 7,292,870 (hereinafter the “ʼ870 Patent”), including the right to sue for past, present,
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`and future patent infringement, and to collect past, present, and future damages.
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`33.
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`The ʼ870 patent complies with the Patent Act, including 35 U.S.C. §101, 35
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`U.S.C. §102, 35 U.S.C. § 103, and 35 U.S.C. §112. Exhibit “B.”
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`34.
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`On July 16, 2013, the Patent Office issued a Certificate of Correction for the ʼ870
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`patent. Exhibit “C.”
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`35.
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`36.
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`Each and every claim of the ʼ870 patent is valid and enforceable.
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`The ʼ870 patent and its claims are entitled to the benefit of the date upon which
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`Zipit filed its provisional patent application 60/532,000, which was filed on December 24, 2003.
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` Exhibit “D.”
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`37.
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`As the invention(s) claimed in the ʼ870 patent were conceived no later than April
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`2003, the claims of the ʼ870 patent are further entitled to a priority date of no later than April
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`2003.
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`IPR2014-01507
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`38.
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`On March 30, 2015, the Patent Trial and Appeal Board (“PTAB”) of the United
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`States Patent and Trademark Office instituted an Inter Partes Review (“IPR”) of the ʼ870 patent.
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`39.
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`On June 22, 2015, Zipit filed its “Patent Owner’s Response Under 37 C.F.R. §
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`42.120.” Exhibit “E.”
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`40.
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`On March 29, 2016, the PTAB issued a Final Decision that confirmed the
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`patentability of all claims of the ʼ870 Patent in IPR2014-01507. Exhibit “F.”
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`41.
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`All papers and pleadings filed with the PTAB for IPR2014-01507 are part of the
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`prosecution history of the ʼ870 Patent. Due to their size and volume, the papers and pleadings
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`filed with the PTAB for IPR2014-01507 are incorporated herein by reference.
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`IPR2019-01567
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`42.
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`On August 30, 2019, Defendant filed a Petition For Inter Partes Review of the
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`ʼ870 Patent.
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`43.
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`On December 10, 2019, Zipit filed a Preliminary Response to Defendant’s
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`Petition, requesting the PTAB to deny Defendant’s Petition. Exhibit “V,” 870 POPR.
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`44.
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`On information and belief, the PTAB should issue its Institution Decision
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`regarding Defendant’s Petition in March 2020.
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`No Claim Of Zipit’s ’870 Patent Is Abstract
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`45.
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`The claims of the ʼ870 Patent are focused on an advance over the prior art such
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`that their character as a whole is not directed to excluded subject matter, such as an abstract idea,
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`or any other subject matter excluded under 35 U.S.C. §101. For example, the claims of the ʼ870
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`patent are directed to improvements in computer functionality.
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`46.
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`The PTAB determined that the combinations claimed in the claims of the ʼ870
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`Patent were novel and nonobvious, as did the Patent Office during its initial review of the claims.
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`See, e.g., Exhibit “B” and Exhibit “F.”
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`47.
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`The advancement claimed in the claims of the ʼ870 Patent includes, inter alia, an
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`instant messaging terminal and method that includes a housing, a display mounted in the
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`housing, a data entry device that affords the generation of textual characters and graphical
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`symbols, a wireless Internet protocol communications module, a wireless transceiver, and a
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`control module that includes a processor for executing an application program to implement
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`instant messaging and session protocols for a conversation. Such a claimed combination does
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`not exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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` And such a combination constitutes a tangible, specific, concrete invention. The claimed
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`combination also improved the operation of computer functionality, overcoming various failures
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`with existing computing devices as discussed in the Background of the Invention and the
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`Summary of the Invention.
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`48.
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`For example, providing the claimed combination in a handheld terminal (as
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`opposed to a desktop, laptop, or PDA requiring external peripheral data entry and/or display
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`devices) represented a significant advance in computer functionality, including allowing both
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`textual characters and graphical symbols to be entered/generated using a data entry device
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`integrated into the handheld terminal. This avoided the need for a platform to support the data
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`entry device during data entry. Furthermore, the claimed data entry device for
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`generating/entering textual characters and graphical symbols improved the efficiency of
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`computing devices by allowing graphical symbols to be directly entered by a user, avoiding the
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`need for the 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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`49.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that, after loss of a network connection,
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`automatically searches for a new connection and displays the conversation histories that were
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`active when the network connection was lost. Such a claimed combination does not exist in the
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`prior art. Such a combination was not well-understood, routine, or conventional. And such a
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`combination constitutes a tangible, specific, concrete invention. Indeed, such functionality
`
`would have run counter to the state of the art due to concerns about the impact of battery life.
`
`This claimed capability represented a significant advance in computer functionality. For
`
`example, the claimed capability does not depend on user instruction to locate a connection after
`
`connection loss. Moreover, the claimed capability of displaying active conversation histories for
`
`active conversations terminated by loss of network connection improves upon the state of the art,
`
`in which such conversation histories were typically lost upon termination of the user’s network
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`connection.
`
`50.
`
`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
`
`alia, an instant messaging terminal and method that includes a plurality of keys for graphical
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`symbols, each graphical symbol key including indicia identifying the graphical symbol generated
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`by depressing the key bearing the indicia. 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. This claimed feature also relates
`
`to the improvement in the efficiency of computing devices discussed above 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.
`
`51.
`
`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
`
`alia, an instant messaging terminal and method that includes at least one programmable key
`
`associated with a set of characters corresponding to a graphical symbol supported by an instant
`
`messaging service provider. 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. This claimed feature also relates to the
`
`improvement in the efficiency of computing devices discussed above 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.
`
`52.
`
`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 stores a
`
`profile containing network settings for a network communicating with the communications
`
`module and the wireless transceiver through an access point. Such a claimed combination does
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`Case 2:20-cv-01494-KM-JBC Document 1 Filed 02/12/20 Page 17 of 53 PageID: 17
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`not exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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` And such a combination constitutes a tangible, specific, concrete invention. This claimed
`
`capability further improves computer operation because it permits, for example, the handheld
`
`terminal to connect automatically to a network corresponding to a store profile without user
`
`intervention. See Exhibit “A,” ʼ870 Patent at 5:20-31.
`
`53.
`
`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.
`
`54.
`
`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 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
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`Case 2:20-cv-01494-KM-JBC Document 1 Filed 02/12/20 Page 18 of 53 PageID: 18
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`(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
`
`55.
`
`Prior to Zipit’s invention, instant messaging primarily transpired with desktop
`
`
`
`computers.
`
`56.
`
`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.
`
`57.
`
`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.
`
`58.
`
`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 (J, L) over Wi-Fi, instead of the
`
`cellular network.
`
`59.
`
`No claims of the ʼ870 Patent are unpatentable under §103. See, e.g., Exhibit “B”
`
`and Exhibit “F.” In addition, the patentability of the claims of the ʼ870 Patent is confirmed by
`
`the overwhelming evidence of widespread acclaim 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
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`Case 2:20-cv-01494-KM-JBC Document 1 Filed 02/12/20 Page 19 of 53 PageID: 19
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`“Zippy” device, (ii) the 2005 Chicago Tribune article, which declares that “Zipit Is King Of
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`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, Zipit’s patented
`
`“Zippy” and “Z2” devices received widespread acclaim. Exhibit “G.”
`
`60.
`
`A nexus exists between Zipit’s “Zippy” device and the claims of the ʼ870 Patent.
`
`Exhibits “E,” “G,” and “V.”
`
`61.
`
`A nexus also exists between Zipit’s acclaimed “Z2” device and the claims of the
`
`ʼ870 Patent. Exhibits “E,” “G,” and “V.”
`
`Zipit’s U.S. Patent No. 7,894,837 Patent
`
`62.
`
`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 “H.”
`
`63.
`
`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.
`
`64.
`
`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. Exhibit “I.”
`
`65.
`
`66.
`
`Each and every claim of the ʼ837 Patent is valid and enforceable.
`
`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). Exhibit “D.”
`
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`Case 2