throbber
DOCKET NO: 435785US
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PATENT: 7,894,837
`
`INVENTOR: HEREDIA ET AL.
`
`TITLE: INSTANT MESSAGING TERMINAL
`ADAPTED FOR WIRELESS
`COMMUNICATION ACCESS POINTS
`
`TRIAL NO.: UNASSIGNED
`
`DECLARATION OF DR. ARTHUR T. BRODY
`
`1.
`
`I, Dr. Arthur T. Brody, make this declaration on behalf of BlackBerry
`
`Corp. (“BlackBerry” or “Petitioner”) in connection with the petition for inter
`
`partes review of U.S. Patent No. 7,894,837 (“the ‘837 patent,” attached as Exhibit
`
`1001 to the petition). I am over 21 years of age and otherwise competent to make
`
`this declaration. Although I am being compensated for my time in preparing this
`
`declaration, the opinions herein are my own, and I have no stake in the outcome of
`
`the inter partes review proceeding.
`
`I.
`
`QUALIFICATIONS
`Attachment A to this declaration is my curriculum vitae. As shown in
`
`2.
`
`my curriculum vitae, I have over thirty years of experience in the
`
`telecommunications and audio/video-related industries. This experience includes
`
`performing or managing systems engineering, marketing and sales, new product
`
`1
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`BLACKBERRY EX. 1003, pg. 1
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`

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`development, corporate strategy consulting, product management, and competitive
`
`assessment functions. Much of this experience is in the area of video technologies
`
`and wireless networking. Some relevant projects in the 1999-2005 timeframe
`
`include:
`
` Working with Columbia University in evaluating research for
`
`commercial potential from the electrical engineering and computer
`
`science departments, including:
`o networking architectures for the backhaul portion of the radio
`
`access network;
`o server systems for multimedia delivery;
`o “Internet” protocols including IP, RTP, RTSP and SIP for
`
`multimedia sessions; and
`o electronics improvements as applied to cell phones.
`
` Working with other major corporations and research organizations in
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`reviewing technologies and patents portfolios for commercial
`
`applications including:
`o audio player technology; and
`o server systems for multimedia delivery.
`
` Serving as Chief Marketing Officer for SIPComm, Inc., a start-up
`
`focused on commercializing communications products based on SIP.
`
`2
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`BLACKBERRY EX. 1003, pg. 2
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`

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` Working with wireless vendors on engineering and network operations
`
`tools for wireless technology.
`
` Authoring technology/market reports for Insight Research on VoIP and
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`IP-based applications including instant messaging.
`
`3.
`
`I have used my education and years of experience working in the
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`telecommunications, networking and audio/video-related industries, and my
`
`understanding of the knowledge, creativity and experience of a person having
`
`ordinary skill in the art in forming the opinions expressed in this report.
`
`II. MATERIALS CONSIDERED
`
`4.
`
`I have read the ‘837 patent and its prosecution history. I have also
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`reviewed the Toshiba Pocket PC e740 User’s Manual (“e740 User’s Manual,”
`
`attached as Exhibit 1004 to the petition); the IM+ Multi-system Mobile Instant
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`Messenger for Nokia 7650/3650 Version 2.18 (“Nokia 7650 IM+ Manual,”
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`attached as Exhibit 1005 to the petition); Special Edition: Using Pocket PC 2002
`
`(“Morrison,” excerpts attached as Exhibit 1008 to the petition); Exhibit B to Patent
`
`Owner’s Infringement Contentions dated May 2, 2014 in Zipit Wireless Inc. v.
`
`BlackBerry Limited et al., C.A. No. 6:13-cv-2959-JMC (D.S.C.) (attached as
`
`Exhibit 1009 to the petition); IM+ Review for Pocket PC dated November 5, 2003
`
`(attached as Exhibit 1010 to the petition); archived screenshots showing lists of
`
`emoticons used with various instant messaging programs, including MSN
`
`3
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`BLACKBERRY EX. 1003, pg. 3
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`

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`Messenger (attached as Exhibit 1011 to the petition); article entitled “Anytime,
`
`Anywhere” published on March 31, 2003 in the Wall Street Journal (attached as
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`Exhibit 1012 to the petition); and the Verizon LTE White Paper entitled “LTE: The
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`Future of Mobile Broadband Technology” (attached as Exhibit 1013 to the
`
`petition).
`
`III. UNDERSTANDING OF THE LAW
`
`5.
`
`For the purposes of this declaration, I have been informed about
`
`certain aspects of patent law that are relevant to my analysis and opinions, as set
`
`forth in this section of my declaration.
`
`A.
`
`6.
`
`A Person Having Ordinary Skill in the Art
`
`I understand that the disclosures of patents and prior art references are
`
`to be viewed from the perspective of a person having ordinary skill in the art at the
`
`time of the alleged invention (“PHOSITA”). Unless I state otherwise, I provide
`
`my opinions herein from the viewpoint of a PHOSITA at the earliest alleged
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`priority date for the ‘837 patent, which I have been informed is December 24,
`
`2003.
`
`7.
`
`The ‘837 patent relates to devices and methods for instant messaging
`
`(“IM”) from a handheld terminal accessing a wireless network.
`
`8.
`
`In determining whom a PHOSITA would be, I considered the ‘837
`
`patent, the types of problems encountered in accessing wireless networks and
`
`4
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`BLACKBERRY EX. 1003, pg. 4
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`communication protocols used for real-time communications, the prior art
`
`solutions to those problems, the rapid pace of innovation in the fields of wireless
`
`networks and communication protocols used for real-time communications, the
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`sophistication of wireless networks and communication protocols used for real-
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`time communications, and the educational level of workers active in the field.
`
`Based on these factors, I have concluded that a PHOSITA would have an
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`accredited bachelor’s degree in computer science, electrical engineering, or a
`
`related discipline that included coverage of wireless communications and the use
`
`of communication protocols used for real-time communications, and also at least
`
`two years of industry experience. In lieu of specific academic training, a
`
`PHOSITA may draw upon appropriate industry experience to meet the foregoing
`
`requirements. Given my extensive industry experience, I exceed the requirements
`
`needed to be a PHOSITA.
`
`B.
`
`9.
`
`Claim Construction
`
`I understand that “claim construction” is the process of determining a
`
`patent claim’s meaning. I also have been informed and understand that the proper
`
`construction of a claim term is the meaning that a PHOSITA would have given to
`
`that term.
`
`5
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`BLACKBERRY EX. 1003, pg. 5
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`

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`10.
`
`I understand that claims in inter partes review proceedings are to be
`
`given their broadest reasonable interpretation in light of the specification, which is
`
`what I have done when performing my analysis in this declaration.
`
`C.
`
`11.
`
`Anticipation
`
`I understand that a patent claim is unpatentable as anticipated if a
`
`person having ordinary kill in the art (“PHOSITA”) would have understood a
`
`single prior art reference to teach every limitation of the claim. The disclosure in a
`
`reference does not have to be in the same words as the claim, but all of the
`
`requirements of the claim must be described in enough detail, or necessarily
`
`implied by or inherent in the reference, to enable a PHOSITA looking at the
`
`reference to make and use at least one embodiment of the claimed invention.
`
`D.
`
`12.
`
`Obviousness
`
`I understand that a patent claim is unpatentable as obvious if the
`
`subject matter of the claim as a whole would have been obvious to a PHOSITA as
`
`of the time of the invention at issue. I understand that the following factors must
`
`be evaluated to determine whether the claimed subject matter is obvious: (1) the
`
`scope and content of the prior art; (2) the difference or differences, if any, between
`
`the scope of the claim of the patent under consideration and the scope of the prior
`
`art; and (3) the level of ordinary skill in the art at the time the patent was filed.
`
`6
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`BLACKBERRY EX. 1003, pg. 6
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`

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`13.
`
`I understand that prior art references can be combined to reject a claim
`
`under 35 U.S.C. § 103 when there was an apparent reason for one of ordinary skill
`
`in the art, at the time of the invention, to combine the references, which includes,
`
`but is not limited to: (A) identifying a teaching, suggestion, or motivation to
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`combine prior art references; (B) combining prior art methods according to known
`
`methods to yield predictable results; (C) substituting one known element for
`
`another to obtain predictable results; (D) using a known technique to improve a
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`similar device in the same way; (E) applying a known technique to a known device
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`ready for improvement to yield predictable results; (F) trying a finite number of
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`identified, predictable potential solutions, with a reasonable expectation of success;
`
`or (G) identifying that known work in one field of endeavor may prompt variations
`
`of it for use in either the same field or a different one based on design incentives or
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`other market forces if the variations are predictable to one of ordinary skill in the
`
`art.
`
`14. Moreover, I have been informed and I understand that so-called
`
`objective indicia of non-obviousness (also known as “secondary considerations”)
`
`like the following are also to be considered when assessing obviousness: (1)
`
`commercial success; (2) long-felt but unresolved needs; (3) copying of the
`
`invention by others in the field; (4) initial expressions of disbelief by experts in the
`
`field; (5) failure of others to solve the problem that the inventor solved; and (6)
`
`7
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`BLACKBERRY EX. 1003, pg. 7
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`

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`unexpected results. I also understand that evidence of objective indicia of non-
`
`obviousness must be commensurate in scope with the claimed subject matter. I am
`
`not aware of any objective indicia of non-obviousness for the ‘837 patent.
`
`IV. BACKGROUND ON THE STATE OF THE ART
`
`A.
`
`Brief Overview of Wireless Internet Access Pre-December 2003
`
`15. Before December 2003, the Institute of Electrical and Electronics
`
`Engineers (“IEEE”) had released several versions of its 802.11 wireless
`
`communications standard commonly known as “Wi-Fi.” The 802.11 standards
`
`available at that time had a maximum data rate of 54 Megabits per second (see Ex.
`
`1012 at 4), much faster than the cellular data rate maximum of just 700 Kilobits
`
`per second in 2003. (See Ex. 1013 at 7, 12.) In 2002, over 19 million Wi-Fi
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`devices were purchased by both businesses and home users, with home user
`
`purchases growing 160 percent. (Ex. 1012 at 2.) Even public hot-spots were
`
`growing rapidly, from 6,000 in 2002 to an expected 24,000 in 2003. (Id.).
`
`B.
`
`16.
`
`Pocket PCs
`
`The term “Pocket PC” is the name of an operating system developed
`
`by Microsoft, evolving from the Windows CE operating system made available in
`
`1996. The hardware I describe below running the Pocket PC operating system is
`
`also referred to as a Pocket PC.
`
`8
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`BLACKBERRY EX. 1003, pg. 8
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`

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`17.
`
`Exhibit 1008 provides an overview of the typical hardware in Pocket
`
`PCs in 2002. (See Ex. 1008 at 24-39). It identifies the major hardware
`
`components of the Pocket PC:
`
`Following are the major hardware components that drive a
`typical Pocket PC:
`
` Microprocessor
`
` Memory
`
` Power
`
` Display
`
` Stylus
`
` I/O Ports
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` Multimedia hardware
`
`(Id. at 24.)
`
`18. Both wireline and wireless connectivity is provided by Pocket PCs. A
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`USB port provides wireline connectivity. (Id. at 33.) A modem expansion module
`
`can also provide wireline connectivity. (Id. at 115.) Wireless connectivity is
`
`provided by an infrared port (Id. at 33) and may also be provided via Wi-Fi. The
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`Wi-Fi capability can be built into the Pocket PC or provided through an expansion
`
`device or adaptor (e.g., a CF or PC card). (Id. at 115.)
`
`19.
`
`The Pocket PC can run a variety of programs that can be used for
`
`surfing the World Wide Web, productivity management, email, entertainment and
`
`9
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`BLACKBERRY EX. 1003, pg. 9
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`

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`instant messaging. For surfing the World Wide Web, productivity management,
`
`email and instant messaging, the Pocket PC runs programs similar to those
`
`programs provided by Microsoft that run on PCs with the Windows operating
`
`system. For example:
`
` Surfing the Web – Pocket Internet Explorer (Id. at 176)
`
` Word processing – Pocket Word (Id. at 278)
`
` Spreadsheets – Pocket Excel (Id. at 300)
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` Email – Pocket Outlook (Id. at 226)
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` Entertainment – Windows Media Player (Id. at 434)
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` Instant messaging – MSN Messenger (Id. at 162)
`
`20.
`
`The Pocket PC could also run programs not provided by Microsoft.
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`For example, the Pocket PC would run AOL Instant Messenger (“AIM”) and
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`Yahoo! Messenger. (Id. at 169.)
`
`C.
`
`21.
`
`Instant Messaging
`
`Instant messaging (“IM”) is the communication of messages between
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`users in real-time. As e-mail messages can be queued in servers for several
`
`seconds or even minutes, IM is more interactive than email. Typical IM
`
`applications have a contact or buddy list that shows which of your buddies/contacts
`
`are online. (Id. at 164, 170.)
`
`10
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`BLACKBERRY EX. 1003, pg. 10
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`

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`(Id. at 164.)
`
`22. More than one application can be used simultaneously on a Pocket PC
`
`because the Pocket PC operating system is multi-tasking. (See Ex. 1004 at 11-2.)
`
`The Pocket PC comes with MSN Messenger. (Ex. 1008 at 162.) Other IM
`
`programs can be downloaded to run on the Pocket PC. See ¶ Error! Reference
`
`source not found.20 supra. The user can run both MSN Messenger and the other
`
`IM programs (e.g., Yahoo! Messenger or AIM) at the same time.
`
`23.
`
`IM messages use a combination of textual characters and graphical
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`symbols for communications. Graphical symbols may be single graphical or text
`
`elements used for pictorial meaning, or combinations of graphical or text elements
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`(e.g., “$”, “=”, “:-)”, “;-D”). In addition, combinations of symbols called
`
`“emoticons” are used as part of standard IM applications, including MSN
`
`Messenger. (See Ex. 1011.) The textual characters and graphical symbols are
`
`entered into a window that shows the conversation:
`
`11
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`BLACKBERRY EX. 1003, pg. 11
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`

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`(Ex. 1008 at 164.)
`
`D.
`
`Implications for Review of the ‘837 Patent
`
`24. As summarized above, widespread wireless Internet access was a
`
`reality in 2003. By this time, high-end PDAs such as Pocket PCs, running a
`
`scaled-down version of Microsoft Windows, had already entered the mobile device
`
`landscape to take maximum advantage of the proliferation of Wi-Fi and wireless
`
`networking. Various publications and manuals describe how the Pocket PC
`
`platform was enabling users to perform a variety of tasks away from their desktop
`
`PCs, including running productivity applications (e.g., Microsoft Word and Excel),
`
`browse the Internet wirelessly, connect to corporate networks, check e-mail, play
`
`digital music, and carry out IM conversations. Moreover, the Pocket PC was
`
`compatible with multiple IM service providers, providing a unified buddy list and
`
`generating data messages containing graphical symbols in addition to textual
`
`characters. This evidence indicates that the IM device and methods of use claimed
`
`12
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`BLACKBERRY EX. 1003, pg. 12
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`

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`in the ‘837 patent are not inventive, novel or non-obvious; rather, they are the
`
`expected result of well-known and well-understood wireless networking and IM
`
`concepts that were commonly available to practitioners before December 2003.
`
`25.
`
`In particular, all of the following elements described by the ‘837
`
`patent would have been well known to persons of ordinary skill in the art prior to
`
`December 2003:
`
` Entry and display of textual characters and graphical symbols
`
` Generating data messages sent using the Internet protocol and
`
`accessing a network wirelessly to send those messages
`
` Generating data messages compatible with multiple IM service
`
`providers and accessing a network wirelessly to send those messages
`
` A buddy list identifying contacts coupled to different IM service
`
`providers
`
` Playing music while carrying out an IM conversation
`
`V.
`
`THE ‘837 PATENT
`
`26.
`
`The ‘837 patent is directed to a handheld IM device. (Ex. 1001 at
`
`1:16-18, Abstract.) In particular, the ‘837 patent relates to a handheld terminal that
`
`manages multiple IM conversations in 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
`
`13
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`BLACKBERRY EX. 1003, pg. 13
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`

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`windows for each buddy with whom the user is engaged in active conversation.
`
`(Id. at 5:16-35.) Further, 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.) The
`
`device contains keys for both text and graphical symbols, the latter being
`
`programmable so that a user may define a set of characters corresponding to a
`
`graphical symbol (e.g., emoticons) supported by an IM service provider. (Id. at
`
`4:36-55, Figs. 12a and 12b.)
`
`VI. CLAIM CONSTRUCTION
`
`27.
`
`In comparing the claims of the ‘837 patent to the known prior art, I
`
`have carefully considered the ‘837 patent and its file history based upon my
`
`experience and knowledge in the relevant field. In my opinion, the broadest
`
`reasonable interpretation of the claim terms of the ‘837 patent is generally
`
`consistent with the terms’ ordinary and customary meaning, as a PHOSITA would
`
`have understood them. That said, for purposes of this proceeding, I have applied
`
`the following constructions when analyzing the prior art and the claims:
`
`28. Communications Module: The term “communications module” refers
`
`to hardware (e.g., processor) and/or software components. This construction is
`
`consistent with the ‘837 patent’s teaching that the communications module is not
`
`necessarily a hardware component, but is an “implement[ed]” component. (Id. at
`
`14
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`BLACKBERRY EX. 1003, pg. 14
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`

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`11:15-18.) This construction is also consistent with Patent Owner’s infringement
`
`contentions in concurrent litigation. (Ex. 1009 at 2, 3, 15.)
`
`29. Coupled: The term “coupled” refers to an indirect or operative (e.g.,
`
`non-physical) connection. This construction is consistent with the ‘837 patent’s
`
`teaching that the terminal is “coupled” to an IM service or WAN through an access
`
`point. (Ex. 1001 at 16:18-20; 22:8-12; see also claim 5 (reciting “buddies coupled
`
`to each instant messaging service.”)) This construction is also consistent with
`
`Patent Owner’s infringement contentions in concurrent litigation. (Ex. 1009 at 3,
`
`5, 9, 10.)
`
`VII. DESCRIPTION OF THE PRIOR ART
`
`A.
`
`30.
`
`Overview of what the e740 User’s Manual Teaches
`
`The e740 User’s Manual describes the Toshiba Pocket PC e740
`
`device. Among other things, the reference describes the Pocket PC’s hardware,
`
`provides an overview of the factory-installed programs on the device, and explains
`
`how the device connects to a network or the Internet. (Ex. 1004 at 1-2.)
`
`31.
`
`The e740 is a wireless, handheld device with a touch screen display.
`
`(Id. at 2-1, 12-5.) Information is entered on the device using, e.g., a soft keyboard
`
`on touch screen to type text, or writing or drawing pictures directly on the touch
`
`screen using a stylus. (Id. at 2-24 to 2-30.) Both text and graphical symbols (e.g.,
`
`15
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`BLACKBERRY EX. 1003, pg. 15
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`

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`“$”, “=”, “:-)”, “;-D”) can be entered on the input panel of the touch screen. (Id. at
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`2-1, 2-24 to 2-32, 5-5 to 5-6.)
`
`32.
`
`The e740 contains an Intel Xscale PXA250 processor that runs
`
`Windows Pocket PC 2002 software. (Id. at 12-5.) The processor is coupled to,
`
`and interfaces according to Internet protocol settings with, an IEEE 802.11b
`
`wireless local area network (“WLAN”) adaptor (also called a wireless transceiver)
`
`that connects the device wirelessly to nearby access points. (Id. at 8-1 to 8-6, A-1
`
`to A-8.) The device can also connect to the Internet using a modem or Ethernet
`
`connection to an ISP. (Id. at 7-2 to 7-3.) Although not explicitly mentioned in the
`
`reference, the device necessarily includes an antenna coupled to the WLAN
`
`adaptor/transceiver. (See id. at 8-1 to 8-11, 12-5, A-1 to A-8.)
`
`33.
`
`The processor and software run MSN Messenger, a factory-installed
`
`IM program that implements an IM protocol for generation of IM data messages
`
`that are compatible with MSN Messenger Service. (Id. at 5-7 to 5-10.)
`
`Concurrently, the processor is in data communication with the WLAN adaptor.
`
`The processor provides the IM data messages to the WLAN adapter so that the
`
`messages can be communicated through the WLAN adapter during a conversation
`
`session. (Id. at 5-7 to 5-10, 2-32.) Additional third-party IM programs can be
`
`installed on the device. (Id. at 2-34 to 2-35.)
`
`16
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`BLACKBERRY EX. 1003, pg. 16
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`

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`34.
`
`In addition, the e740 includes Windows Media Player for playing
`
`digital audio and video files (id. at 5-11), as well as Pocket Internet Explorer for
`
`downloading programs and files from the Internet. (Id. at 2-21.)
`
`B.
`
`35.
`
`Overview of what the Nokia 7650 IM+ Manual Teaches
`
`The Nokia 7650 IM+ Manual describes a third-party program, IM+,
`
`that allows users to access multiple IM systems (MSN, AOL, ICQ) simultaneously.
`
`(Ex. 1005 at 2.) IM+ also provides the capability to send and receive Instant MMS
`
`(“IMMS”) messages to other IM+ clients on ICQ and AOL. (Id.) After
`
`connecting to each IM provider’s server, IM+ loads the client’s contacts and
`
`includes them in a single “common contact list.” (Id. at 7.)
`
`C.
`
`Overview of what Morrison Teaches
`
`36. Morrison provides a broad range of detailed information about the
`
`various capabilities of the Pocket PC 2002 operating system. For example,
`
`Morrison teaches “making the most of input methods,” including the soft
`
`keyboard, the Letter Recognizer, and the Block Recognizer. (Ex. 1008 at 83-92.)
`
`Morrison also teaches details about “communicating with MSN Messenger,” such
`
`as how several IM services are available for carrying out conversations with
`
`Pocket PCs. (Id. at 161-73.) Further, Morrison describes the many entertainment
`
`aspects of Pocket PCs, such as their ability to play downloaded digital music and
`
`video files, as well as streaming content. (Id. at 451.)
`
`17
`
`BLACKBERRY EX. 1003, pg. 17
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`

`

`VIII. CLAIMS 1-4, 10-15 AND 17 ARE ANTICIPATED BY THE e740
`USER’S MANUAL
`
`37. At the request of counsel, I have broken claims 1 and 11 into elements
`
`denoted [a], [b], [c], etc. to correspond to the discussion of the same elements in
`
`the Petition for inter partes review. Claims 1 and 11, as annotated, read as
`
`follows:
`
`1. A handheld instant messaging terminal comprising:
`[a] a handheld terminal housing;
`[b] 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;
`[c] 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;
`[d] an Internet protocol communications module located within the handheld
`terminal housing to generate data messages in an Internet protocol;
`[e] 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 messages
`from an antenna coupled to the wireless transceiver; and
`[f] a control module located within the handheld terminal housing and
`coupled to the Internet protocol communications module,
`[f1] the control module including at least one processor that executes an
`application program to implement at least one instant messaging protocol
`
`18
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`BLACKBERRY EX. 1003, pg. 18
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`

`

`for generation of instant messaging (IM) data messages that are
`compatible with an instant messaging service,
`[f2] 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.
`
`11. A method for managing wireless network access and instant messaging
`through a wireless access point with a handheld instant messaging
`terminal comprising:
`[a] generating textual characters and graphical symbols in response to
`manipulation of keys on a data entry device of a handheld instant
`messaging terminal;
`[b] displaying the generated textual characters and graphical symbols on a
`display of the handheld instant messaging terminal;
`[c] 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;
`[d] 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
`[e] 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.
`
`19
`
`BLACKBERRY EX. 1003, pg. 19
`
`

`

`A.
`
`38.
`
`Claim 1
`
`It is my opinion that claim 1 is anticipated by the e740 User’s Manual.
`
`My analysis of the limitations of claim 1 in connection with the disclosure of the
`
`e740 User’s Manual follows. At the request of counsel, I have annotated the claim
`
`elements [a], [b], [c], etc. to correspond to the discussion of the same elements in
`
`the Petition for inter partes review.
`
`1.
`
`Claim 1: Preamble
`
`39.
`
`The preamble of claim 1 recites “[a] handheld instant messaging
`
`terminal.” The e740 User’s Manual discloses a “Toshiba Pocket PC” that runs
`
`various programs, including MSN Messenger. (Ex. 1004 at 2-1, 2-21, 2-32 to 2-
`
`35, 5-7 to 5-10, 12-5.) Thus, the preamble of claim 1 is disclosed by the e740
`
`User’s Manual.
`
`2.
`
`Claim 1[a]-[c]: “a handheld terminal housing,” “a data
`entry device integrated in the terminal housing” and “a
`display”
`
`40.
`
`Element [a] of claim 1 recites “a handheld terminal housing.” The
`
`e740 User’s Manual discloses a touch screen display integrated into the terminal
`
`housing:
`
`20
`
`BLACKBERRY EX. 1003, pg. 20
`
`

`

`(Ex. 1004 at 2-1; see also 2-19, 12-5.) Thus, element 1[a] is disclosed.
`
`41.
`
`Element [b] of claim 1 recites “a data entry device integrated in the
`
`terminal housing … to generate textual characters and graphical symbols.” The
`
`e740 User’s Manual teaches “several options for entering new information” on the
`
`Toshiba Pocket PC, including “[u]s[ing] the input panel to enter typed text, either
`
`by using the soft keyboard or other input method,” and using a stylus to “[w]rite
`
`directly on the screen” or “[d]raw pictures on the screen”:
`
`21
`
`BLACKBERRY EX. 1003, pg. 21
`
`

`

`(Id. at 2-24; see also 2-1, 2-26 to 2-29, 2-32.)
`
`42.
`
`The device “anticipates the word you are typing or writing and
`
`displays it above the input panel.”
`
`(Id. at 2-25.)
`
`22
`
`BLACKBERRY EX. 1003, pg. 22
`
`

`

`43.
`
`“You can draw on the screen in the same way that you write on the
`
`screen.”
`
`(Id. at 2-30; see also 5-5.)
`
`44.
`
`Further, graphical symbols such as “$”, “=”, “:-)”, and “;-D” can be
`
`generated and displayed on the disclosed device.
`
`23
`
`BLACKBERRY EX. 1003, pg. 23
`
`

`

`(Id. at 5-6.)
`
`45.
`
`46.
`
`Thus, element 1[b] is disclosed by the e740 User’s Manual.
`
`Element [c] of claim 1 recites “a display mounted in the terminal
`
`housing to display textual characters and graphical symbols.” The e740 User’s
`
`Manual discloses a 3.5-inch “Reflective type Colour TFT LCD” mounted in the
`
`device, on which the entered text and graphical symbols are displayed. (Id. at 12-
`
`5; see also 2-24 to 2-30, 5-5.) Accordingly, element 1[c] is disclosed.
`
`3.
`
`Claim 1[d]: “an Internet protocol communications module
`… to generate data messages in an Internet protocol”
`
`47.
`
`Element [d] of claim 1 recites “an Internet protocol communications
`
`module located within the handheld terminal housing to generate data messages in
`
`an Internet protocol.” The e740 User’s Manual teaches Windows Pocket PC 2002
`
`24
`
`BLACKBERRY EX. 1003, pg. 24
`
`

`

`software running on an Intel Xscale PXA250 processor (id. at 12-5) that interfaces
`
`according to IP settings with a WLAN adaptor:
`
`(Id. at 8-1.)
`
`25
`
`BLACKBERRY EX. 1003, pg. 25
`
`

`

`(Id. at 8-2, emphasis added.)
`
`26
`
`BLACKBERRY EX. 1003, pg. 26
`
`

`

`(Id. at 8-3, emphasis added; see also 8-4 to 8-6, A-2, A-5 to A-6.)
`
`48.
`
`In addition, the e740 User’s Manual teaches that the disclosed device
`
`can “connect to the Internet” using either a modem or Ethernet connection to an
`
`ISP. (Id. 7-2 to 7-3.)
`
`49. A PHOSITA would have understood that the device described in the
`
`e740 User’s Manual generates data messages in an Internet protocol in order to
`
`attain “Internet connectivity” as described at 8-1. Thus, element 1[d] is disclosed.
`
`27
`
`BLACKBERRY EX. 1003, pg. 27
`
`

`

`4.
`
`Claim 1[e]: “a wireless transceiver”
`
`50.
`
`Element [e] of claim 1 recites “a wireless transceiver … coupled to
`
`the to the Internet protocol communications module to generate wireless data
`
`messages … [and] radiate[] the wireless data messages from an antenna coupled to
`
`the wireless transceiver.” The e740 User’s Manual discloses such a “wireless
`
`transceiver” by way of the Wi-Fi (IEEE 802.11b) WLAN adaptor mounted within
`
`the terminal housing and physically coupled to the IP communications module for
`
`communicating messages with a wireless, IP access point. (Id. at 8-1; see also 8-2
`
`to 8-11, 12-5, A-1 to A-8.) A PHOSITA would therefore have understood that the
`
`device described in the e740 User’s Manual has the capability to transmit and
`
`receive wireless data messages.
`
`51.
`
`The e740 User’s Manual implicitly discloses an antenna coupled to
`
`the wireless transceiver, as the disclosed device otherwise would be unable to
`
`communicate with wireless access points. (See id. at 8-1 to 8-11, 12-5, A-1 to A-
`
`8.) Accordingly, element 1[e] is disclosed.
`
`5.
`
`Claim 1[f]: “a control module … coupled to the Internet
`protocol communications 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”
`
`52.
`
`Element [f] of claim 1 recites “a control module located within the
`
`handheld terminal housing and coupled to the Internet protocol communications
`
`28
`
`BLACKBERRY EX. 1003, pg. 28
`
`

`

`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.”
`
`53.
`
`The claimed “control module” corresponds to the Intel Xscale
`
`PXA250 processor running software in the disclosed device. (Id. at 12-5.)
`
`Concurrently, the processor is operatively coupled to (e.g., in data communication
`
`with) the IP communications module. (Id.) Among the applications run by the
`
`processor is the MSN Messenger program, which implements an IM protocol for
`
`generation of IM data messages that are compatible with MSN Messenger Service:
`
`(Id. at 5-7.)
`
`29
`
`BLACKBERRY EX. 1003, pg. 29
`
`

`

`Working with Contacts
`
`The M5“ Messenger witdew shew: H! at your messenger emteets at a.
`ghnee, dhri'ded hie flnine and Net Dnlne categories- Frem this: 1«rie'mII'.
`whie {:mneeted. ya: can chat. send an e—IIFIEI'EII hbek the [:[H'Itflc'l fmn‘l
`[:hstfng with rm. er delete emtsets I'i'em rmr list using the pep—up
`menu-
`
`II E t-:l.'l']
`
`IE3
`
`~21 Randall (away)
`Hut Drline
`
`i Filth-5rd Bree-flir-
`1 Dar-Md Hodge-3n
`
`Properties Tents ‘LIIfiL-i
`
`IEI-II'III ”-I-HI-IILI 1-H? MI-uqflufl
`Send F‘Iflil {firflirwnudgrmchmht_._
`Huck
`
`Del-etc Contact
`
`Tapnnernmthflu‘tndat'.
`
`1'
`
`l'lihcil
`
`Milli-Ii
`
`hill.
`
`“F
`
`m”"""" "P
`
`"n
`
`(Id. at 5-8.)
`(Id. at 5-8.)
`
`Chatting with Contacts
`
`Tepseenteetnane teepen ametw'ndew. E1ter'1ru1rrnessage 'I1 the
`textentrjrareeatthe hettunef'fl'lesereeumertep lily-Tents enters
`preset message, and ten Sen-d. Te invite errether annex: in a mtflti—user
`[:I‘IeL In the Tunis manu, tap Inuit-esnd tap-the Emmet you wmtte mite.
`
`.--".-'_"1 h1'_--N Messenger
`
`IE lief:- @
`
`I'uu are chattlnn WILH: Adam
`
`(Id. at 5-9.)
`(Id. at 5-9.)
`
`30
`
`30
`
`BLACKBERRY EX. 1003, pg. 30
`
`BLACKBERRY EX. 1003, pg. 30
`
`

`

`(Id. at 5-10; see also 2-32.)
`
`54.
`
`The processor provides the IM data messages to the IP
`
`communications module so that the messages can be communicated during a
`
`conversation session through the IP communications module and wireless
`
`transceiver. (Id. at 5-10; see also 2-32.)
`
`55.
`
`Further, the e740 User’s Manual informs a PHOSITA that the device
`
`can be customized by installing additional software, such

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