`Tel: 571-272-7822
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`Paper 50
`Entered: March 29, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`BLACKBERRY CORP. and BLACKBERRY LTD.,
`Petitioner,
`
`v.
`
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2014-01506
`Patent 7,894,837 B2
`_______________
`
`
`
`Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
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`I. INTRODUCTION
`A. Background
`Blackberry Corp. and Blackberry Ltd. (collectively, “Petitioner”) filed a
`Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–5, 10–17,
`and 20 of U.S. Patent No. 7,894,837 B2 (Ex. 1001, “the ’837 patent”). See 35
`U.S.C. § 311. Patent Owner, ZIPT Wireless, Inc. did not file a Preliminary
`Response. Pursuant to 35 U.S.C. § 314, in our Decision to Institute (Paper 6,
`“Dec.”), we instituted this proceeding as to claims 1–5, 10–17, and 20 of the ’837
`patent. Dec. 9.
`Patent Owner filed a Patent Owner Response (Paper 10, “PO Resp.”) and
`Petitioner filed a Reply (Paper 14, “Reply”). We authorized Patent Owner to file a
`Sur-Reply to allegations raised by Petitioner’s Reply. Patent Owner’s Sur-Reply
`was filed on November 6, 2015 (Paper 25, “Sur-Reply”). Petitioner subsequently
`withdrew portions of its Reply. Paper 38.
`Petitioner filed a motion to exclude evidence (Paper 34, “Pet. Mot. Excl.”),
`Patent Owner filed an opposition (Paper 41, “PO Opp. Excl.”) to which Petitioner
`filed a reply (Paper 45, “Pet. Reply Excl.”). Similarly, Patent Owner filed a
`motion to exclude Petitioner’s evidence (Paper 37, “PO Mot. Excl.”), Petitioner
`filed an opposition (Paper 42, “Pet. Opp. Excl.”) to which Patent Owner filed a
`reply (Paper 47, “PO Reply Excl.”).
`An oral hearing in this matter was held on Dec. 7, 2015 (Paper 49, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
`issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that
`follow, Petitioner has not demonstrated by a preponderance of the evidence that
`claims 1–5, 10–17, and 20 of the ’837 patent are unpatentable.
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`B. Related Matters
`Petitioner states that the ’837 patent has been asserted in Zipit Wireless Inc.
`v. BlackBerry Ltd., No. 6:13-cv-2959-JMC (D.S.C. 2013). Pet. 1. In addition,
`Petitioner has filed petitions challenging the patentability of certain claims in U.S.
`Patent Nos. 7,292,870 (IPR2014-01507); 8,086,678 (IPR2014-01508); and
`8,190,694 (IPR2014-01509).
`C. The ’837 Patent
`The ʼ837 patent relates to a handheld instant messaging (“IM”) device.
`Ex. 1001, 1:16–18. The ’837 patent discloses an IM terminal that includes a
`display and a data entry device integrated in a housing for the IM terminal. Id. at
`4:25–28. The data entry device allows entry of graphical symbols (such as
`emoticons supported by an IM service provider) or textual characters via dedicated
`or programmable keys, a Wi-Fi communications module for communicating
`messages with a Wi-Fi access point, and a control module for coordinating
`authorization to coupling the IM terminal to a local network using a wireless
`access point and for controlling the IM conversation session. Id. at 4:28–35, 4:36–
`55, Figs. 12a and 12b.
`Figures 12a and 12b are provided below.
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`Figures 12a and 12b show user interface screens that associate emoticon pictorial
`images with programmable keys. Id. at 9:27–28. Figures 12a and 12b show
`screens used in the emoticon selection procedure. Figure 12a identifies keys of
`keyboard 68 (not shown) that are associated with selected emoticons. Figure 12b
`shows a screen that instructs the user to use the “<” and “>” keys on either side of
`the displayed symbol to change the graphical symbol that is associated with a
`programmable key, e.g. PF2. Id. at 16:1–8.
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`The handheld terminal of the ’837 patent manages multiple IM
`conversations over Internet protocol (“IP”) through different IM service providers.
`Id. at 5:16–63, Abstract. The device generates a buddy list of contacts associated
`with each IM service provider and displays conversation windows for each buddy
`with whom the user is engaged in active conversation. Id. at 5:16–35. The device
`detects signals from local wireless access points, prioritizes the access points
`according to their signal strength, and selects the one having the strongest signal
`for local network access. Id. at 4:56–62.
`D. Illustrative Claims
`Illustrative independent claims 1 and 11 (Ex. 1001, 23:20–24:55–25:8) are
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`reproduced below:
`1. A handheld instant messaging terminal comprising:
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`a handheld terminal housing;
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`a data entry device integrated in the terminal
`housing, the data entry device being configured to
`generate textual characters and graphical symbols in
`response to actuation of the data entry device;
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`a display mounted in the terminal housing to display
`textual characters and graphical symbols including the
`textual characters and graphical symbols generated by the
`data entry device;
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`an Internet protocol communications module
`located within the handheld terminal housing to generate
`data messages in an Internet protocol;
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`a wireless transceiver mounted within the handheld
`terminal housing and coupled to the Internet protocol
`communications module
`to generate wireless data
`messages that include the data messages in the Internet
`protocol, the wireless transceiver radiates the wireless data
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`messages from an antenna coupled to the wireless
`transceiver; and
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`a control module located within the handheld
`terminal housing and coupled to the Internet protocol
`communications module, the control module including at
`least one processor that executes an application program
`to implement at least one instant messaging protocol for
`generation of instant messaging (IM) data messages that
`are compatible with an instant messaging service, the
`control module providing the IM data messages that are
`compatible with an instant messaging service to the
`Internet protocol communications module to enable the
`IM data messages to be communicated during at least one
`conversation session
`through
`the Internet protocol
`communications module and the wireless transceiver.
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`11. A method for managing wireless network access
`and instant messaging through a wireless access point with
`a handheld instant messaging terminal comprising:
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`generating textual characters and graphical symbols
`in response to manipulation of keys on a data entry device
`of a handheld instant messaging terminal;
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`displaying the generated textual characters and
`graphical symbols on a display of the handheld instant
`messaging terminal;
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`generating data messages with the generated textual
`characters and graphical symbols in accordance with at
`least one instant messaging protocol that is compatible
`with an instant messaging service;
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`wirelessly transmitting the generated data messages
`to a wireless network access point through an Internet
`protocol communications module and wireless transceiver
`in the handheld instant messaging terminal; and
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`controlling a conversation session in accordance
`with the at least one instant messaging protocol being
`implemented with a control module located within the
`handheld instant messaging terminal.
`E. The Asserted Grounds
`We instituted trial on the grounds alleging that claims 1–4, 10–15, and 17
`are unpatentable under 35 U.S.C. § 102(b) as anticipated by TOSHIBA POCKET PC
`e740 USER’S MANUAL (2002) (Ex. 1004, “e740 User’s Manual”); claims 5 and 16
`are unpatentable under 35 U.S.C. § 103(a) as obvious over the e740 User’s Manual
`and IM+ MULTI-SYSTEM MOBILE INSTANT MESSENGER FOR NOKIA 7650/3650,
`VERSION 2.18 (2002) (Ex. 1005, “Nokia IM+”); and claims 1–5, 10–17, and 20 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over the e740 User’s Manual
`and Michael Morrison, SPECIAL EDITION: USING POCKET PC 2002 (2002) (Ex.
`1008, “Morrison”). Dec. 9.
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`II. ANALYSIS
`A. Objections to Patent Owner’s Declarant
`Petitioner raised substantive objections to the credentials, qualifications and
`veracity of Patent Owner’s declarant, Dr. Alon Konchitsky. We address these
`allegations and objections below.
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`1. Dr. Konchitsky’s Ph.D. Credentials
`Petitioner asserts that Patent Owner’s declarant, Dr. Alon Konchitsky, did
`not receive a genuine Ph.D. from Bournemouth University and, as a result, Dr.
`Konchitsky’s testimony is entitled to no weight. Reply 1. Patent Owner responds
`that Dr. Konchitsky received an electrical engineering Ph.D. degree from
`Bournemouth University Extension in Israel, Campus of Ramat Gan College, and
`submits that several documents including Dr. Konchitsky’s Ph.D. diploma and
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`Ph.D. payment receipts corroborate Dr. Konchitsky’s Ph.D. Sur-Reply 1–3;
`Exs. 1059–1060. In his declaration, Dr. Konchitsky provides that he
`“unequivocally state[s] – under penalty of perjury – that I did in fact receive my
`Ph.D. in electrical engineering from the Bournemouth University Extension in
`Israel, Campus of Ramat Gan College.” Ex. 2082 ¶ 17.
`We note first that the parties do not dispute that Dr. Konchitsky is qualified
`to provide his expert opinion on the subject matter of the ’837 patent even without
`considering his Ph.D. from Bournemouth University. Sur-Reply 13–15; Tr. 4:14–
`22, 21:1–15. Petitioner concedes that Dr. Konchitsky “worked at Nokia. He
`worked at a company that was purchased by Intel. To be able to testify about
`emoticons and parental controls on devices he meets the low threshold under the
`federal rules for providing expert testimony.” Tr. 4:21–24. Accordingly, the
`circumstances surrounding Dr. Konchitsky’s Ph.D. credentials go to the weight of
`his testimony rather than admissibility.
`Further, we do not find that Petitioner has demonstrated sufficiently that Dr.
`Konchitsky’s testimony should be afforded diminished weight because Dr.
`Konchitsky falsified his Ph.D. from Bournemouth University Extension through
`Ramat Gan College in Israel. Petitioner concedes that
`[t]he sur-reply shows that it’s possible that Konchitsky did
`receive a degree from either Ramat Gan or the extension
`at Ramat Gan. That was not an authorized diploma, had
`nothing to do with the Bournemouth University. And
`whether or not he knew that or was unwittingly duped into
`believing that he was getting a genuine Bournemouth
`University diploma, in the time allotted in IPR and our
`resources, there’s just not enough time and money
`available to prove that circumstantial case whether he
`knew that his diploma was not genuine.
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`Tr. 5:14–22. Additionally, Petitioner has withdrawn all its allegations that Dr.
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`Konchitsky himself engaged in any act of forgery or perjury with respect to his
`Ph.D. Ex. 2106; Tr. 4:11–23, 6:13–8:2. This is not to say that there is sufficient
`evidence to establish whether Dr. Konchitsky’s Ph.D. is genuine. However, as
`Petitioner argues, the issue is one of Dr. Konchitsky’s veracity and credibility. Tr.
`7:7–17. Thus, while it may be possible Dr. Konchitsky’s Ph.D. is not genuine,
`Petitioner has not shown that Dr. Konchitsky engaged in any wrongdoing in
`obtaining his Ph.D. or representing that he obtained a Ph.D. from Bournemouth
`University Extension in Israel. Thus, we do not diminish the weight of Dr.
`Konchitsky’s on this basis.
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`2. Dr. Konchitsky’s Masters Credentials
`Petitioner further argues that Dr. Konchitsky’s mischaracterization of his
`Master’s degree from Bournemouth University (Tr. 6:15–23) demonstrates Dr.
`Konchitsky’s lack of credibility and diminishes the weight of his testimony (see id.
`at 9:7–14). Petitioner does not dispute Dr. Konchitsky received a Master’s degree
`from Bournemouth University. Tr. 13:9–15. Rather, Petitioner asserts that Dr.
`Konchitsky has embellished his Master’s degree in tourism and hospitality
`management by describing it as a degree in “management and business.” Id. at
`5:23–25.
`Dr. Konchitsky and Patent Owner do not dispute that Dr. Konchitsky’s
`curriculum vitae does not state that his Master’s degree was issued in “Tourism
`and Hospitality Management.” Ex. 2082 ¶ 94; see Tr. 21:5–7. Dr. Konchitsky
`asserts that he believes his CV is accurate because his
`Master’s thesis was focused on computers and computer
`science, and how personal computers could best be
`integrated into a hotel’s business. This field, where I was
`forecasting the trend in a particular vertical industry, is
`part of Information Technology in graduate business
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`studies, which is a subcategory of the school of
`management.
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`Ex. 2082 ¶ 94. While the argument may be made that Dr. Konchitsky’s description
`of his Master’s degree is merely harmless embellishment or an artful rewording
`having the same effective meaning, we find that Dr. Konchitsky, nevertheless,
`incorrectly described his Master’s degree and misrepresented his credentials to the
`Board. Further, that Dr. Konchitsky may be qualified to testify based on his
`undergraduate degrees and experience, as asserted by Patent Owner (Tr. 21:16–5),
`does not mitigate Dr. Konchitsky’s misrepresentation of his credentials nor
`preclude us from appropriately weighing his testimony in light of such
`misrepresentation. We expect all parties and individuals involved in proceedings
`before the Board to “have a duty of candor and good faith to the Office during the
`course of a proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the
`sentiment that “[e]ven the slightest accommodation of deceit or a lack of candor in
`any material respect quickly erodes the validity of the process. As soon as the
`process falters in that respect, the people are then justified in abandoning support
`for the system in favor of one where honesty is preeminent.” United States v.
`Shaffer Equip. Co., 11 F.3d 450, 457 (4th Cir. 1993). Therefore, we will consider
`Dr. Konchitsky’s statements regarding his Master’s degree in affording his
`testimony the appropriate weight.
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`3. Dr. Konchitsky’s Translation of Mr. Cohen’s Statement
`Petitioner further argues that the circumstances of Dr. Konchitsky’s
`incorrect translation of Mr. Cohen’s Statement (Ex. 2092), submitted to support his
`Ph.D. from Bournemouth University Extension through Ramat Gan College in
`Israel, demonstrate a lack of credibility and reliability. Pet. Mot. Exclude 4;
`Ex. 1061. In particular, Petitioner argues that the incorrect English translation of
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`Mr. Cohen’s Statement includes the phrase “[d]uring the time period 1999-2002,
`the Extension offered a doctoral program in communication systems in electrical
`engineering,” for which the Hebrew counterpart does not appear in the original
`Hebrew version. Ex. 2092, 2.
`At the Oral Hearing, counsel for Patent Owner indicated that it relied on Dr.
`Konchitsky for the translation of all documents in his supplemental declaration
`(Ex. 2082). Tr. 13:22–14:11. Counsel for Patent Owner further represented that
`there was a “mismatching problem between the drafts” that resulted in the
`submission of an English version that did not match the statement in Hebrew. Id.
`at 14:16–21. Patent Owner’s counsel stated that
`we have now obtained a declaration from Dr. Konchitsky
`that explains how the error occurred. And we also have a
`certified translation and have obtained a corrected, if you
`will, Exhibit 2092 from Mr. Cohen that matches the
`English version. And in short, just like I said Friday
`during the call, Dr. Konchitsky says it was a mismatching
`problem between the drafts that were discussed and
`exchanged with Mr. Cohen. He apparently mixed up the
`English translation with the Hebrew version. We don’t, of
`course, speak Hebrew, so we couldn't catch the mistake
`ourselves.
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`Id. at 14:12–21. Patent Owner did not provide a certified translation of Exhibit
`2092 at the time of filing as it was required to do per 37 C.F.R. § 42.63(b).
`We find that “mismatching” situation could have been avoided if a proper
`certified translation of Exhibit 2092 had been completed and submitted as required
`by Rule 42.63. In addition to the incorrect and misleading translation, we note that
`Patent Owner’s reliance on Dr. Konchitsky’s self-translated evidence strongly
`undermines the credibility of the facts submitted in support of Konchitsky’s Ph.D.
`credentials. Although we do not dismiss Dr. Konchitsky’s testimony on this
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`basis,1 the misleading translation proffered by Patent Owner erodes the foundation
`of Dr. Konchitsky’s declaration and the weight we grant his testimony, and
`undermines the foundation of our trial process.
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`With these considerations in mind, we now turn to the construction of
`certain claim terms.
`B. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given their
`broadest reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
`F.3d 1268, 1278–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly
`approved the broadest reasonable interpretation standard in enacting the AIA” and
`“the standard was properly adopted by PTO regulation.”), cert. granted sub nom.
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under the
`broadest reasonable construction standard, claim terms are given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the art, in
`the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994).
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`1 Petitioner has requested authorization to file a motions for sanctions based on Dr.
`Konchitsky’s translation of Exhibit 2092. Specifically, at the Oral Hearing,
`Petitioner requested reimbursement for the cost of obtaining certified translations
`of Exhibits 2087, 2091, and 2092. Tr. 9:13–16. On February 12, 2016, by email
`correspondence to the Board, the parties informed us that Patent Owner “has fully
`reimbursed Petitioner for the cost of obtaining certified translations of Exhibits
`2087, 2091, and 2092.” Ex. 3001. Accordingly, we treat Petitioner’s request to
`file a motion for sanctions as moot.
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`1. “graphical symbol”
`Petitioner did not propose a construction of the claim term “graphical
`symbol” as recited in the challenged claims. See Pet. 9–10. Instead, the Petition
`equated a graphical symbol to “emoticons.” Pet. 5 (citing Ex. 1001, 4:36–55,
`Figs. 12a and 12b). Our Decision did not determine a broadest reasonable
`interpretation for the claim term.
`Patent Owner contends that the broadest reasonable interpretation by a
`person of ordinary skill in the art in light of the specification is that “graphical
`symbols,” are “graphical emoticons” and not individual textual characters or such
`characters combined to form text emoticons. PO Reply 5. Patent Owner argues
`that contrary to Petitioner’s contention, there is no applicable plain and ordinary
`meaning. Tr. 61:1–6. Patent Owner further argues that Petitioner fails to provide
`evidence that the cited prior art teaches or suggests graphical emoticons. Instead,
`Patent Owner contends that the Petitioner’s evidence “merely discloses individual
`‘textual characters,’ such as ‘:’, ‘-‘, ‘)’, ‘$’, ‘=’, and ‘&’” and fails to show “any
`combination of textual characters that ‘generate’ a ‘graphical symbol.’” PO Reply
`5–6.
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`In support of “graphical symbol” being construed as graphical emoticon,
`Patent Owner cites the ’837 patent’s reference to Ex. 2003, Miller, U.S. Patent
`No. 6,629,793 (“the ’793 patent”), which discloses a specialized graphical
`emoticon keyboard designed to support instant messaging that resolves
`textual/graphical data entry issues for regular sized keyboards. PO Resp. 6; see
`Ex. 1001, 2:66–3:5. Patent Owner argues that the ’793 patent expressly states that
`“emoticon can be a text emoticon, such as the smiley face : ) or it can be a graphic
`emoticon.” Id.; Ex. 2003, 1:37–38; see also Ex. 2003, 9:50–54 (“An emoticon can
`also be a graphic such as the emoticon faces shown in section the pull-down menu
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`606 of FIG. 6 below. As an example, Table 7 below shows a commonly known
`list of text emoticons.”); 13:33–36 (stating that “displaying a text emoticon in the
`dominant display window in step 820, displaying a graphic emoticon in the
`dominant display window in step 822”); 13:54–57 (stating that “the application
`114 uses the character map described in Table 9 and determines that a particular
`graphic emoticon, such as those shown in pull-down menu 606 of FIG. 6,”);
`14:51–52 (“a text emoticon or a graphic emoticon.”). Patent Owner relies on Ex.
`2003 as referenced in the background of the ’837 patent along with the Declaration
`of Dr. Konchitsky, Ex. 2007, to establish that Miller supports a distinction in the
`art between emoticons made of known textual characters (such as an ampersand, or
`parentheses) and graphical emoticons, represented by pictorial smiley faces. PO
`Resp. 6–8 (citing Ex. 2003, Figs. 2, 3 and 6).
`The ’837 patent states that
`Emoticons are graphical symbols intended to convey
`emotional aspects of a message. For example, one instant
`messaging service may require the typing of the following
`characters :-) to generate the symbol , while another
`instant messaging service may only require the typing of
`:) to generate the symbol , which is typically known as
`the smiley face.
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`Ex. 1001, 3:34–39. Based on this passage and numerous references throughout the
`’837 Specification, Patent Owner contends that the generation of a “symbol” from
`typed characters indicates that emoticons represented by symbols such as the “”
`are the “graphical symbols” as recited in the claims. PO Resp. 8–9 (citing
`Ex. 1001, 4:36–55, 6:49–67, 8:2–7, 8:17–20, 16:1–10, 17:47–18:13, 18:35–48,
`19:13–27, Figs. 2, 12a, and 12b).
`Patent Owner also argues that the express statement that graphical symbols
`can be entered by using emoticon keys or programmable keys further supports the
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`contention that graphical symbols are graphical emoticons. PO Resp. 9–11 (citing
`Ex. 1001, 16:1–10, 18:1–7, Figs. 12a and 12b). In sum, Patent Owner contends
`that the ’837 patent Specification and claims distinguish between textual characters
`and graphical symbols, e.g. “,” which are generated from typed characters, e.g.
`“:-).” PO Resp. 12–19.
`Petitioner does not dispute that emoticons, such as , are “graphical
`symbols,” but contends that “graphical symbols” are not limited to such emoticons
`and can include emoticons of typed textual characters. Reply 12. In rebuttal to
`Patent Owner’s contentions, Petitioner argues that the ’837 patent does not
`expressly equate “graphical symbol” with “graphical emoticon,” nor does it
`distinguish textual characters from graphical symbols. Reply 12–20. Furthermore,
`Petitioner asserts that the patentee did not act as its own lexicographer. Petitioner
`argues that its Declarant, Dr. Brody, and Petition relied on the plain and ordinary
`meaning of the term “graphical symbol.” Reply 21; Tr. 31:3–6 (Petitioner’s
`counsel stated that “[t]he petitioner's construction for graphical symbols is that that
`term should be given its plain and ordinary meaning. That was something that was
`explained by Dr. Brody in his declaration, Exhibit 1003.”); see also Deposition of
`Alon Konchitsky, Ph.D., Ex. 1021, 69:6–24 (Konchitsky stating that the plain and
`ordinary meaning of graphical symbol is graphical emoticon).
`Petitioner further asserts that Patent Owner’s construction unreasonably
`narrows the construction of “graphical symbols” based on misreading passages of
`the ’837 patent and reliance on the Miller patent that is not incorporated by
`reference. Reply 12–20. Petitioner’s construction relies on its Declarant’s
`testimony that the broadest reasonable interpretations of “textual characters” and
`“graphical symbols” is their plain and ordinary meaning. Reply 20–21; Ex. 1003
`¶ 27 (stating that “the broadest reasonable interpretation of the claim terms of the
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`‘837 patent is generally consistent with the terms’ ordinary and customary
`meaning, as a PHOSITA would have understood them”).
`Based on the full record and consideration of the parties’ arguments and
`evidence, we determine that the broadest reasonable interpretation of the term
`“graphical symbols,” as would be understood by one of ordinary skill in the art, in
`the context of the entire disclosure is “graphical emoticon.” See Ex. 1001, 3:37–
`39, 4:36–55, 6:49–67, 8:17–20, 16:1–10, 17:47–18:13, Figs. 12a and 12b. We
`agree with Patent Owner that the Specification of the ’837 patent shows “symbols”
`being generated by textual characters. PO Resp. 14–15 (citing Ex. 1001 3:34–44,
`4:40–55). Specifically, the ’837 patent refers to characters generating graphical
`symbols where symbols are pictorial representations, e.g. , indicates to a person
`of ordinary skill in the art that symbols (and graphical symbols) are distinct from
`the textual characters used to generate them. Ex. 1001 3:34–44, 4:40–55. Thus,
`we are not persuaded by Petitioner’s argument or the testimony of their Declarant
`that the ’837 patent Specification does not distinguish between characters and
`symbols. Reply 12–13. We find that the Specification of the ’837 patent showing
`combination of textual characters that are used to generate “graphical symbols”
`across different messaging services further supports the distinctions between
`textual characters and graphical symbols. See Ex. 1001, 6:64–67; 8:2–7, Tables 1–
`4.
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`We are similarly not persuaded by Petitioner’s argument that unreasonably
`broadens “graphical symbols.” Reply 13–15. Petitioner’s Declarant testimony
`asserts that “[w]hether a character is textual or graphical depends on the context in
`which it is used.” Reply 16. However, Petitioner’s argument ignores the context
`in which the terms “textual characters” and “graphical symbols” are used in the
`Specification and claims of the ’837 patent. Indeed, the claims themselves support
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`a distinction between textual characters and graphical symbols. The claims refer to
`a “device being configured to generate textual characters and graphical symbols”
`and a “terminal housing to display textual characters and graphical symbols
`including the textual characters and graphical symbols generated by the . . .
`device” (claim 1); “generating textual characters and graphical symbols” and
`“displaying the generated textual characters and graphical symbols” (claim 11);
`“parsing textual characters and graphical symbols” and “confirming the entered
`characters are compatible with the instant messaging service” (claim 19).
`Moreover, claim 2 recites that “a set of characters corresponding to a graphical
`symbol supported by an instant messaging service” in reference to the graphical
`symbol keys supported by the Specification. Finally, claim 13 recites “a character
`sequence that represents the graphical symbol.” The claims in light of the
`Specification of the ’837 patent support the determination that “graphical symbols”
`refer to “graphical emoticons” and not the string of textual characters that may
`represent the graphical emoticon.
`We are also persuaded by Patent Owner’s argument that the ’837 patent
`Specification shows that “graphical symbols” are entered using emoticon keys or
`programmable keys, while textual characters are entered by typing on a keyboard.
`PO Resp. 15–16 (citing Ex. 1001, 18:1–4, Fig. 2). The ’837 patent distinguishes
`the symbols shown in Figure 2, which include characters such as “$” from
`“graphical symbols” entered by an emoticon or programmable key. Ex. 1001,
`18:1–4, Fig. 2. This distinction contradicts Petitioner’s description of “graphical
`symbols” being disclosed in the e740 User’s Manual by characters such as “$” and
`“=”. Pet. 23.
`We note that Petitioner fails to cite any persuasive intrinsic evidence that
`supports its contention regarding the plain and ordinary meaning of the term
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`“graphical symbols.” Petitioner’s argument is based on extrinsic declaration
`testimony. We find unavailing Petitioner’s argument that “a [person of ordinary
`skill in the art] would know that characters such as a colon, dash, and closed
`parentheses are flexible in their usage and not strictly categorized as ‘textual’ or
`‘graphical’” and refutes the usage of the term “graphical symbol” in the
`Specification and claims of the ’837 patent. Reply 20 (citing Ex. 2006, 84:2, 89:–
`18, 170:17–171:25,180:3–14). Petitioner’s reliance on general knowledge of an
`ordinarily skilled artisan broadens the term “graphical symbol” in a manner that
`disregards the context and usage of the term. Petitioner’s arguments regarding the
`alleged flexible usage of textual and graphical symbols to a person of ordinary skill
`in the art (PO Resp. 20) and reliance on the plain and ordinary meaning of the term
`(PO Resp. 21) do not yield the conclusion that “the broadest reasonable
`interpretation of the term ‘graphical symbols’ includes more than just emoticons”
`(Tr. 97:10–11). See also Ex. 2006, 182:17–25 (Petitioner’s Declarant stating that
`“a person having ordinary skill in the art would understand, that graphical symbols,
`emoticons, can be displayed as combinations of text characters, as combinations of
`text characters and graphical symbols, and as pictorial signals.”). Accordingly,
`based on the intrinsic evidence before us, we are not persuaded by Petitioner that
`“graphical symbols” as recited in the claims encompasses combinations of
`characters.
`Finally, we disagree with Petitioner’s assertion that the ’793 patent as cited
`in the ’837 patent, is not useful because it was not incorporated by reference into
`the Specification of the ’837 patent. Reply 20. The ’793 patent is expressly
`referenced in the Background section of the ’837 patent, and akin to the file history
`of a patent, is intrinsic evidence that may be useful in construing claim terms. See
`Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003) (stating that
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`“[Federal Circuit] cases [] establish that prior art cited in a patent or cited in the
`prosecution history of the patent constitutes intrinsic evidence” and citing cases
`establishing same); Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d
`1042, 1045 (Fed. Cir. 2000) (noting “[w]hen prior art that sheds light on the
`meaning of a term is cited by the patentee, it can have particular value as a guide to
`the proper construction of the term, because it may indicate . . . the meaning of the
`term to persons skilled in the art”). Based on the full record, we find that the ’793
`patent as referenced in the ’837 patent Specification supports the determination
`that a person of ordinary skill in the art would understand that “graphical symbol”
`in light of the ’837 patent Specification is a “graphical emoticon” and is distinct
`from a “textual emoticon.”
`With respect to extrinsic evidence, we note that neither party has cited a
`dictionary or treatise defining the terms textual character or graphical symbol as
`recited in the challenged claims. See PO Resp. 29 n.9 (noting that the term
`“graphical symbols” does not appear in the 2003 editions of Merriam-Webster’s
`Dictionary or Newton’s Computer Dictionary). After consider