throbber
IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF SOUTH CAROLINA
`GREENVILLE DIVISION
`
`Civil Action No. 6:13-cv-2959-JMC
`
`JURY TRIAL DEMANDED
`
`)))))))))))))
`
`ZIPIT WIRELESS INC.,
`
`Plaintiff,
`
`v.
`
`BLACKBERRY LIMITED f/k/a RESEARCH
`IN MOTION LIMITED and BLACKBERRY
`CORPORATION f/k/a RESEARCH IN
`MOTION CORPORATION,
`
`Defendants.
`
`EXPERT DECLARATION OF DR. ARTHUR T. BRODY
`
`I, Arthur T. Brody, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained as an expert witness on behalf of the Defendants
`
`BlackBerry Limited and BlackBerry Corporation (collectively, “BlackBerry”) in this case.
`
`In this declaration, I have been asked to provide opinions regarding issues that may relate
`
`to the Court’s construction of specific terms used in the claims of U.S. Patent Nos.
`
`7,292,870 (the “’870 patent”); 7,894,837 (the ‘837 patent”); 8,086,678 (the “’678
`
`patent”); and 8,190,694 (the “’694 patent”) (collectively, the “Patents-in-Suit”). I also
`
`have been asked to provide my opinion regarding the level of ordinary skill in the art at
`
`the time of the invention.
`
`2.
`
`I understand that I may later be asked to consider whether it is necessary
`
`to supplement or modify my opinions expressed in this report in light of evidence or
`
`ZIPIT EX. 2001, pg. 1
`
`

`

`information presented or provided by Plaintiff Zipit Wireless, Inc. (“Zipit”) or other
`
`information that may be discovered by BlackBerry.
`
`II.
`
`MY BACKGROUND, QUALIFICATIONS, AND COMPENSATION
`
`3.
`
`Attached as Appendix A to this declaration and incorporated by reference
`
`is my curriculum vitae. As shown in my curriculum vitae, I have thirty-plus years of
`
`experience in the telecommunications and audio/video-related industries. This experience
`
`includes performing or managing systems engineering, marketing and sales, new product
`
`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 of the projects relevant to this litigation in the 1999 – 2005
`
`timeframe include:
`
`(a)
`
`Worked with Columbia University in evaluating research for
`
`commercial potential from the electrical engineering and computer
`
`science departments including:
`
`(i)
`
`networking architectures for the backhaul portion of
`
`(ii)
`
`(iii)
`
`the radio access network;
`
`server systems for multimedia delivery;
`
`“Internet” protocols including IP, RTP, RTSP and
`
`SIP for multimedia sessions; and
`
`(iv)
`
`electronics improvements as applied to cell phones.
`
`(b) Worked with other major corporations and research organizations
`
`in reviewing technologies and patents portfolios for commercial
`
`applications including:
`
`(i)
`
`audio player technology; and
`
`-2-
`
`ZIPIT EX. 2001, pg. 2
`
`

`

`(ii)
`
`server systems for multimedia delivery.
`
`(c)
`
`Served as Chief Marketing Officer for SIPComm, Inc., a start-up
`
`focused on commercializing communications products based on
`
`SIP.
`
`(d) Worked with wireless vendors on engineering and network
`
`operations tools for wireless technology.
`
`(e)
`
`Authored technology/market reports for Insight Research on VoIP
`
`and IP based applications including Instant Messaging.
`
`4.
`
`I have used my education and years of experience working in the
`
`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 declaration.
`
`5.
`
`My compensation as an expert is in no way dependent upon the results of
`
`any investigations I undertake, the substance of any opinion I express, or the ultimate
`
`outcome of this case. I am the principal of A.T. Brody & Associates, Inc. I am
`
`compensated at the rate of $500 per hour for work done on this matter.
`
`III.
`
`LEGAL STANDARDS
`
`6.
`
`In this section, I describe my understanding of certain legal standards of
`
`claim construction that have been provided to me by BlackBerry’s attorneys. I am not an
`
`attorney, and my understanding about these legal standards comes from BlackBerry’s
`
`attorneys.
`
`-3-
`
`ZIPIT EX. 2001, pg. 3
`
`

`

`A.
`
`7.
`
`Person of Ordinary Skill in the Art
`
`I understand that the disclosure of the patents is to be viewed from the
`
`perspective of a person of ordinary skill in the art as of the filing dates of the applications
`
`leading up to the Patents-in-Suit.
`
`8.
`
`The application that issued as the ‘870 patent was filed on May 14, 2004.
`
`Zipit asserts that the ‘870 patent claims the benefit of a provisional application filed on
`
`December 24, 2003. The application that issued as the ‘837 patent was filed on October 5,
`
`2007. Zipit asserts that the ‘837 patent is a continuation of the ‘870 patent. Zipit also
`
`asserts that the ‘837 patent application claims the benefit of the provisional application
`
`filed on December 24, 2003. I have considered what qualifications a person of ordinary
`
`skill
`
`in the art would have held on December 24, 2003, but reserve the right
`
`to
`
`supplement or modify my opinions if Zipit’s assertions about the applications, their
`
`relationships, and their benefit dates are shown to be incorrect.
`
`9.
`
`The ‘870 patent and the ‘837 patent relate to systems and methods for
`
`instant messaging from a hand-held terminal accessing a wireless network.
`
`In
`
`determining whom a person of ordinary skill in the art would be, I considered the ‘870
`
`patent and the ‘837 patent, the types of problems encountered in accessing wireless
`
`networks and 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
`
`sophistication of wireless networks and communication protocols used for real-time
`
`communications, and the educational level of workers active in the field.
`
`10.
`
`Based on these factors, I have concluded that a person of ordinary skill in
`
`the art would have an accredited bachelor’s degree in computer science, electrical
`
`-4-
`
`ZIPIT EX. 2001, pg. 4
`
`

`

`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 wireless communications and the use of
`
`communication protocols used for real-time communications. In lieu of specific academic
`
`training, a person having ordinary skill in the art may draw upon appropriate industry
`
`experience to meet the requirements of a person of ordinary skill in the art.
`
`11.
`
`The application that issued as the ‘678 patent was filed on September 23,
`
`2008. Zipit asserts that the ‘678 patent claims the benefit of a provisional application
`
`filed on September 27, 2007. The application that issued as the ‘694 patent was filed on
`
`October 18, 2011. Zipit asserts that the ‘694 patent is a divisional application of the ‘678
`
`patent’s application. Zipit also asserts that the application for the ‘694 patent claims the
`
`benefit of the provisional application filed on September 27, 2007. I have considered
`
`what qualifications a person of ordinary skill in the art would have held on September 27,
`
`2007, but reserve the right to supplement or modify my opinions if Zipit’s assertions are
`
`shown to be incorrect.
`
`12.
`
`The ‘678 patent and the ‘694 patent relate to systems and methods for
`
`managing network communication devices using a remote regulation/support site. In
`
`determining whom a person of ordinary skill in the art would be, I considered the ‘678
`
`patent and the ‘694 patent, the types of problems encountered in remotely managing
`
`network communication devices, the prior art solutions to those problems, the rapid pace
`
`of innovation in the fields of network-based communication device management, and the
`
`educational level of workers active in the field.
`
`-5-
`
`ZIPIT EX. 2001, pg. 5
`
`

`

`13.
`
`Based on these factors, I have concluded that a person of ordinary skill in
`
`the art would have an accredited bachelor’s degree in computer science, electrical
`
`engineering, or a related discipline that included coverage of communication network
`
`management, and also at least two years of industry experience in communication
`
`network management. In lieu of specific academic training, a person having ordinary skill
`
`in the art may draw upon appropriate industry experience to meet the requirements of a
`
`person of ordinary skill in the art.
`
`14.
`
`Given my extensive industry experience I exceed the requirements needed
`
`to be a person of ordinary skill in the art in the technical fields relating to the ‘870, ‘837,
`
`‘678, and ‘694 patents during the relevant time periods. I am familiar with the knowledge,
`
`experience, and creativity of such a person during the relevant time period, and have
`
`applied that standard throughout this declaration.
`
`B.
`
`15.
`
`Claim Construction
`
`I am not an attorney, but have been informed by counsel as to the legal
`
`standards applied in claim construction.
`
`16.
`
`I have been informed by counsel that the purpose of claim construction is
`
`to determine the meaning of terms in the claims of the patents to a person of ordinary
`
`skill in the art as of the time of the invention.
`
`17.
`
`I understand that, in performing my analysis, I am to give each claim term
`
`its ordinary and customary meaning, which is the meaning that the term would have to a
`
`person of ordinary skill in the art in question at the time of the invention. I understand
`
`that a person of ordinary skill in the art is deemed to read the claim term not only in the
`
`context of the particular claim in which the disputed term appears, but in the context of
`
`the entire patent, including the specification.
`
`-6-
`
`ZIPIT EX. 2001, pg. 6
`
`

`

`18.
`
`I understand that,
`
`in addition to the words of
`
`the claim and the
`
`specification, a claim term is construed in view of the patent’s prosecution history, which
`
`consists of the complete record of the proceedings before the Patent and Trademark
`
`Office, and includes proceedings in other applications in the patent’s family, and also the
`
`prior art cited during the examination of the patent. I understand that, together, the claims,
`
`specifications, and prosecution histories of the patent and its family constitute the
`
`“intrinsic” evidence.
`
`19.
`
`I further understand that other, “extrinsic” evidence may be useful in claim
`
`construction analysis. I understand that examples of such “extrinsic” evidence are
`
`inventor testimony, dictionaries, and learned treatises, though I understand extrinsic
`
`evidence is given less weight than intrinsic evidence.
`
`20.
`
`I further understand that the rules of English grammar are to be used in
`
`construing patent claims.
`
`21.
`
`I further understand that a claim is indefinite if the claim, read in light of
`
`the specification delineating the patent, and the prosecution history, fails to inform, with
`
`reasonable certainty, those skilled in the art about the scope of the invention.
`
`IV. MATERIALS CONSIDERED
`
`22.
`
`A list of the documents and materials that I have considered in preparing
`
`this report is provided in Appendix B, attached to this report. To the extent not already
`
`reflected in Appendix B, I have reviewed all other documents discussed or cited in this
`
`report and reserve the right
`
`to make additional references to those documents at
`
`deposition, in preparation for the claim construction hearing, or at trial, as the need may
`
`arise.
`
`-7-
`
`ZIPIT EX. 2001, pg. 7
`
`

`

`23.
`
`I have reviewed the specifications for the ‘870 and ‘837 patent. They
`
`appear to be identical, with the exception of stating different benefit claims. I have used
`
`column and line numbers from the ‘870 specification throughout this opinion whenever
`
`referring to the “specification” of the ‘870 or ‘837 patent.
`
`24.
`
`Similarly, I have reviewed the specifications for the ‘678 and ‘694 patent.
`
`They too appear to be identical, with the exception of stating different benefit claims. I
`
`have used column and line numbers from the ‘678 specification throughout this opinion
`
`whenever referring to the “specification” of the ‘678 or ‘694 patent.
`
`25.
`
`I have not reviewed any Zipit Confidential or Zipit Highly Confidential
`
`material at any time before or during preparation of this opinion.
`
`VI. MY OPINIONS WITH RESPECT TO CONSTRUCTION OF SPECIFIC
`TERMS
`
`A.
`
`26.
`
`“handheld terminal”
`
`Zipit asks the Court to construe “handheld terminal.” This term appears in
`
`the ‘870 and ‘837 patents.
`
`27.
`
`I understand that BlackBerry proposes to give this term its plain and
`
`ordinary meaning.
`
`28.
`
`It is my opinion based upon the intrinsic evidence, extrinsic evidence, and
`
`knowledge of a person skilled in the art that BlackBerry’s position is correct.
`
`29.
`
`A person of ordinary skill in the art at the time of the invention claimed in
`
`the ‘870 and ‘837 patents would have given the term “handheld terminal” its plain and
`
`ordinary meaning. A person of ordinary skill in the art would determine whether a
`
`terminal was “handheld” in the same way that a layperson would, namely, by attempting
`
`to operate it while holding it in his hands or by imagining operating it while holding it in
`
`-8-
`
`ZIPIT EX. 2001, pg. 8
`
`

`

`his hands. A person of ordinary skill in the art would not give a special meaning to the
`
`term.
`
`30.
`
`Zipit proposes that the term be construed as “a terminal approximately the
`
`size of a cellular mobile phone.”
`
`31.
`
`32.
`
`Zipit’s construction is unsupported by the specification.
`
`A person of ordinary skill in the art would have no reason to associate the
`
`term “handheld terminal” exclusively with the size of cellular mobile phones, rather than
`
`the many other handheld devices in use at the time of the invention, including palmtop
`
`computers, PDAs, barcode scanners, video game devices, and other devices of varying
`
`sizes that can be operated while being held in a person’s hands.
`
`33.
`
`A person of ordinary skill in the art reading Zipit’s specification would
`
`understand the inventors’ use of the term “handheld terminal” to encompass all of the
`
`above devices. For example,
`
`the specification at 2:55-59 distinguishes “smaller
`
`communication devices, such as PDAs, palm computers, and two-way pagers” from
`
`“portable computers that require some form of luggage for transportation.” And at 4:8-12,
`
`the specification states, “What
`
`is needed is an instant messaging terminal
`
`that
`
`incorporates keys for facilitating instant messaging features without requiring a table or
`
`other platform structure for stability during data entry.” The plain and ordinary meaning
`
`of “handheld,” without construction, appropriately distinguishes the claimed devices
`
`from those which require luggage for transportation or a table for stability,
`
`34.
`
`A person of ordinary skill in the art reading Zipit’s specification would
`
`find no indication that Zipit intended to act as its own lexicographer and supply a special
`
`definition to the term “handheld terminal.”
`
`-9-
`
`ZIPIT EX. 2001, pg. 9
`
`

`

`35.
`
`In particular, a person of ordinary skill
`
`in the art
`
`reading Zipit’s
`
`specification would find no specific particular connection between the size of its claimed
`
`device and the size of a “cellular mobile phone.” The phrase “cellular mobile phone”
`
`appears nowhere in the specification of the patent, nor in their provisional application or
`
`file histories. The specification at 1:51-55 refers to “cellular telephones, two-way pagers,
`
`personal digital assistants (PDAs), and handheld computers” all as well-known
`
`“communication terminals for receiving textual and graphical messages.” Similarly, the
`
`provisional application in paragraph [0029] states that the claimed apparatus “when
`
`folded . . . may form a compact package approximately the size of a cellular phone or
`
`calculator or Personal Digital Assistant (PDA).” Zipit’s selection of cellular phones from
`
`these sets is arbitrary and unsupported by the specification. A person of ordinary skill in
`
`the art would understand a PDA or a handheld computer equally to be a “handheld”
`
`terminal.
`
`36.
`
`I am also familiar with Zipit’s Wireless Messenger device, which I
`
`understand Zipit has asserted as practicing the claims of the patent. That device has
`
`dimensions approximately 4.25 inches wide, 3.5 inches long, and .75 inches thick when
`
`closed, and extends to approximately 7 inches in length when opened. A person of
`
`ordinary skill in the art at the time of the invention would have found that device wider,
`
`thicker, and (when opened) longer than a mobile cellular telephone, as illustrated by the
`
`following images of a Zipit Wireless Messenger and an LG VX-4400, a mobile phone of
`
`a size typical for its time, available in early 2003.
`
`-10-
`
`ZIPIT EX. 2001, pg. 10
`
`

`

`
`
`
`
`-11-
`
`-11--11-
`
`
`
`ZIPIT EX. 2001, pg. 11ZIPIT EX. 2001, pg. 11
`
`ZIPIT EX. 2001, pg. 11
`
`

`

`37.
`
`Zipit’s proposed construction therefore contradicts its assertions in this
`
`case.
`
`38.
`
`For all of these reasons, I agree with BlackBerry’s proposal to give
`
`“handheld terminal” its plain and ordinary meaning.
`
`B.
`
`39.
`
`“housing”
`
`Zipit asks the Court to construe “housing.” This term appears in the ‘870
`
`and ‘837 patents.
`
`40.
`
`I understand that BlackBerry proposes to give “housing” its plain and
`
`ordinary meaning.
`
`41.
`
`It is my opinion based upon the intrinsic evidence, extrinsic evidence, and
`
`knowledge of a person skilled in the art that BlackBerry’s position is correct.
`
`42.
`
`A person of ordinary skill in the art at the time of the invention claimed in
`
`the ‘870 and ‘837 patents would have given the term “housing” its plain and ordinary
`
`meaning. A person of ordinary skill in the art would interpret term “housing” in the same
`
`way that a layperson would, namely, something that covers or protects mechanical parts,
`
`as in a case, enclosure, frame, or support.
`
`43.
`
`44.
`
`45.
`
`Zipit proposes that “housing” be construed as “[n]on-detachable casing.”
`
`Zipit’s construction is unsupported by the specification.
`
`A person of ordinary skill in the art would have no reason to interpret the
`
`term “housing” to exclude detachable casings.
`
`46.
`
`A person of ordinary skill in the art reading Zipit’s specification would
`
`find no indication that Zipit intended to act as its own lexicographer and supply a special
`
`definition to the term “housing.”
`
`-12-
`
`ZIPIT EX. 2001, pg. 12
`
`

`

`47.
`
`In particular, a person of ordinary skill
`
`in the art
`
`reading Zipit’s
`
`specification would find no disclosure related to a non-detachable casing. Moreover, the
`
`qualifier “detachable” appears nowhere in the specifications of the ‘870 and the ‘837
`
`patents or in their provisional applications or file histories. Therefore, a person of
`
`ordinary skill in the art would not interpret, nor would he or she be motivated to interpret,
`
`the term “housing” to be restricted to non-detachable housing.
`
`48.
`
`For all of these reasons, I agree with BlackBerry’s proposal to give this
`
`term its plain and ordinary meaning.
`
`C.
`
`49.
`
`“beacon”
`
`Zipit asks the Court to construe “beacon.” This term appears in the ‘870
`
`and ‘837 patents.
`
`50.
`
`I understand that BlackBerry proposes to construe “beacon” as “a signal
`
`from a device that indicates the proximity or location of the device or its readiness to
`
`perform a task.”
`
`51.
`
`It is my opinion based upon the intrinsic evidence, extrinsic evidence, and
`
`knowledge of a person skilled in the art that BlackBerry’s position is correct.
`
`52.
`
`A person of ordinary skill in the art at the time of the invention claimed in
`
`the ‘870 and ‘837 patents would have understood the term “beacon” to be a term of art. In
`
`my opinion, “Beacon Signals: What, Why, How, and Where?,” an article published in the
`
`IEEE Computer journal in October, 2001, accurately reflects the meaning a person of
`
`ordinary skill in the art would have given this term at the time of the invention: “a signal
`
`from a device that indicates the proximity or location of the device or its readiness to
`
`perform a task.” Specifically, the article indicates that “beacons are primarily radio,
`
`ultrasonic, optical, laser, or other types of signals that indicate the proximity or location
`
`-13-
`
`ZIPIT EX. 2001, pg. 13
`
`

`

`of a device or its readiness to perform a task. Beacon signals also carry several critical,
`
`constantly changing parameters such as power supply information, relative address,
`
`location, timestamp, signal strength, available bandwidth resources, temperature, and
`
`pressure.” (BB_ZIP0123189).
`
`53.
`
`The use of the term “beacon” throughout the specification is consistent
`
`with this understood definition. At 5:4-14 and 7:24-28, the specification describes that
`
`beacons are used to detect, identify and select from nearby access points. And at 10:41-43
`
`and 13:4-9, the specification describes that the beacon broadcasts network parameters
`
`which are parsed by the claimed device to determine the access point’s readiness to
`
`perform the task of connecting the device to a network.
`
`54.
`
`I understand that Zipit proposes to construe the term “beacon” as “A
`
`signal announcing the presence of Wi-Fi.”
`
`55.
`
`In my opinion, Zipit’s construction is unjustifiably limiting and fails to
`
`correspond to the intrinsic record.
`
`56.
`
`Zipit’s definition wholly fails to reflect
`
`that
`
`the term “beacon” has
`
`meaning outside the Wi-Fi context.
`
`57.
`
`In fact, as set forth in the October 2001 IEEE Computer article, a person
`
`of ordinary skill in the art would understand that beacons are used in such diverse areas
`
`as cellular networks, GPS systems, search and rescue tasks, mobile robotics, and location
`
`tracking.
`
`-14-
`
`ZIPIT EX. 2001, pg. 14
`
`

`

`58.
`
`A person of ordinary skill in the art would understand that a cellular
`
`network beacon could perform the functions of the “beacons” described and claimed in
`
`the patent specification. A person of ordinary skill in the art reviewing the intrinsic record
`
`would not find that the applicant had acted as a lexicographer and redefined the term
`
`“beacon” to exclude such cellular network beacons.
`
`59.
`
`A person of ordinary skill
`
`in the art,
`
`reviewing the applicant’s
`
`amendments to the ‘870 patent claims, would find no indication that the applicant
`
`intended to use the term “beacon” to indicate only “Wi-Fi” signals.
`
`60.
`
`Significantly, the system claims of the ‘870 patent originally recited a
`
`“Wi-Fi communications module” and “a control module for . . . coupling the instant
`
`messaging terminal to a local network corresponding to the Wi-Fi access point.” A
`
`dependent claim further recited that the control module could communicate with the
`
`-15-
`
`ZIPIT EX. 2001, pg. 15
`
`

`

`communications module to “determine whether any beacons have been detected in the
`
`area of the instant messaging terminal.”
`
`61.
`
`On November 3, 2006, the applicant amended these claims and removed
`
`the term “Wi-Fi,” instead claiming “a wireless, Internet protocol communications module
`
`coupled to a wireless transceiver,” and a control module that implements a conversation
`
`session “communicated by the wireless, Internet protocol communications module and
`
`wireless transceiver through the wireless, Internet protocol access point.” In view of the
`
`specification, a person of ordinary skill in the art would understand this amendment
`
`(replacing “Wi-Fi” with “wireless”) as an apparent attempt to increase claim scope. For
`
`example, at 12:35-43 the specification describes the wireless transceiver of the claimed
`
`device as “preferably implement[ing] one of the IEEE 802.11 standards, such as 802.11a,
`
`802.11 b, or 802.11g, although components supporting other short range communication
`
`standards for hot spots or other LANs may be used.” A person of ordinary skill in the art
`
`would understand 802.11a, 802.11b, and 802.11g to reflect “Wi-Fi” standards, but the
`
`word “wireless” as used herein to include these and other communication standards.
`
`62.
`
`Despite these attempts to broaden the claims, the applicant continued to
`
`refer to “beacons” alone in the dependent claims, including “detect[ing] a beacon being
`
`received by the wireless transceiver,” “prioritiz[ing] the detected beacons by strength of
`
`detected signal,” and “detect[ing] a beacon advertising its identifier.” From this, a person
`
`of ordinary skill in the art would infer that the applicant believed the term “beacon” was
`
`broad enough without amendment to cover not only “Wi-Fi” communications, but other
`
`“wireless” communications.
`
`-16-
`
`ZIPIT EX. 2001, pg. 16
`
`

`

`63.
`
`Similar amendments were made by the applicant on November 3, 2006, to
`
`remove the term “Wi-Fi” from the method claims of the ‘870 patent and replace it with
`
`the term “wireless,” (see claim 21), all the while maintaining claims discussing “beacons”
`
`(see claims 25-27).
`
`64.
`
`For all of these reasons, I agree with BlackBerry’s proposed construction
`
`for “beacon.”
`
`D.
`
`65.
`
`“graphical symbols”
`
`Zipit asks the Court to construe the term “graphical symbols.” This term
`
`appears in the ‘870 and ‘837 patents.
`
`66.
`
`I understand that BlackBerry proposes to give “graphical symbols” its
`
`plain and ordinary meaning.
`
`67.
`
`It is my opinion based upon the intrinsic evidence, extrinsic evidence, and
`
`knowledge of a person skilled in the art that BlackBerry’s position is correct.
`
`68.
`
`A person of ordinary skill in the art at the time of the invention claimed in
`
`the ‘870 and ‘837 patents would have given the term “graphical symbols” its plain and
`
`ordinary meaning. A person of ordinary skill
`
`in the art would interpret
`
`the term
`
`“graphical symbols” in the same way that a layperson would, namely, a symbol that has
`
`visual or pictorial meaning.
`
`69.
`
`Textual symbols (like the colon symbol (“:”), the minus sign (“-“), and the
`
`parenthesis (“)”) are used to convey meaning in writing or printing. These symbols can
`
`also be used or combined to convey pictorial meaning. For example, the colon, minus
`
`sign, and parenthesis can be use to represent a pair of eyes, a nose, and a smiling mouth.
`
`In this sense, each is a graphical symbol. Together, the three symbols form the familiar
`
`smiley face emoticon “:-)”, another graphical symbol.
`
`-17-
`
`ZIPIT EX. 2001, pg. 17
`
`

`

`70.
`
`Zipit proposes that
`
`the term “graphical symbols” be construed as
`
`“Emoticon symbols,” thereby excluding all other forms of “graphical symbols.”
`
`71.
`
`72.
`
`Zipit’s construction is unsupported by the specification.
`
`A person of ordinary skill in the art would have no reason to interpret the
`
`term “graphical symbols” to exclude symbols that are not Emoticons.
`
`73.
`
`A person of ordinary skill in the art reviewing the intrinsic evidence would
`
`understand the inventors’ use of the term “graphical symbols” to encompass more than
`
`just emoticon symbols, and to include other types of symbols that have visual or pictorial
`
`meaning. The specification at 3:26-27 discloses emoticons as a non-limiting embodiment
`
`of the claimed invention: “Emoticons are graphical symbols intended to convey
`
`emotional aspects of a message.” Moreover, a person of ordinary skill in the art would
`
`note that the term “emoticon” is used repeatedly throughout the specification, including
`
`in reference to “emoticon keys” and an “emoticon selection procedure.” A person of
`
`ordinary skill in the art would understand that the applicant knew what an emoticon was,
`
`and would have used the term “emoticon” in the claim if such a limited claim was
`
`intended.
`
`74.
`
`Therefore, a person of ordinary skill in the art would understand the term
`
`“graphical symbols” to be broader than Emoticon symbols.
`
`75.
`
`A person of ordinary skill in the art reading Zipit’s specification would
`
`find no indication that Zipit intended to act as its own lexicographer and supply a special
`
`definition to the term “graphical symbols.”
`
`76.
`
`For all of these reasons, I agree with BlackBerry’s proposal to give this
`
`term its plain and ordinary meaning.
`
`-18-
`
`ZIPIT EX. 2001, pg. 18
`
`

`

`E.
`
`77.
`
`“instant messaging terminal”
`
`BlackBerry asks the Court
`
`to construe the term “instant messaging
`
`terminal.” This term appears in the ‘870 and ‘837 patents.
`
`78.
`
`I understand that BlackBerry’s proposed construction of “instant
`
`messaging terminal” is “dedicated instant messaging terminal that is not primarily a cell
`
`phone or wireless e-mail communications device.”
`
`79.
`
`It is my opinion based upon the intrinsic evidence, extrinsic evidence, and
`
`knowledge of a person skilled in the art that BlackBerry’s position is correct.
`
`80.
`
`In my opinion, a person of ordinary skill in the art would not understand
`
`the term “instant messaging terminal” to have a standard or common definition at the
`
`time of the claimed invention, and would turn to the intrinsic evidence to understand the
`
`term.
`
`81.
`
`At the time of the purported invention of the ‘870 and ‘837 patents, a
`
`person of ordinary skill in the art would have been aware of many handheld devices that
`
`carried out instant messaging over wireless networks, including cellular phones like the
`
`Danger Hiptop / T-Mobile Sidekick (some of which could, among other features, send
`
`and receive SMS messages, and communicate in the AOL Instant Messaging protocol),
`
`and wireless e-mail communication devices (such as some BlackBerry devices which
`
`could, among other features, send and receive e-mail, and communicate by “PIN to PIN
`
`messaging”).
`
`82.
`
`Provisional application 60/532,000, whose benefit Zipit asserts is claimed
`
`by the ‘870 and ‘837 patents, plainly distinguishes these devices in its “Background of
`
`the Invention” section.
`
`-19-
`
`ZIPIT EX. 2001, pg. 19
`
`

`

`83.
`
`Paragraph [0002] states “Instant messaging has been incorporated in
`
`several products, including cell phones and pager-like devices which enable users to send
`
`and receive IM messages but only as an adjunct to the device's primary function which is
`
`in most cases a cell phone” (emphasis added).
`
`84.
`
`Paragraph [0004] states “Examples of existing IM-enabled products
`
`include TMobile's Sidekick platform. . . [.] It is primarily a cell phone based product
`
`with support for IM based on AOL's protocol but claiming to support other protocols in
`
`the future” (emphasis added).
`
`85.
`
`And paragraph [0005] states “Another example of existing IM-enabled
`
`products includes Research in Motion's Blackberry device[.] Blackberry is a wireless e-
`
`mail device which connects primarily to a corporate e-mail service but not exclusively, to
`
`provide wireless e-mail communications” (emphasis added).
`
`86.
`
`A person of ordinary skill
`
`in the art reading these passages would
`
`understand that Zipit used the terms “instant messaging terminal” to specifically
`
`distinguish the devices described in paragraphs [0002], [0004], and [0005] from the
`
`claimed dedicated device for instant messaging. In particular, the terms distinguish
`
`devices like the “T-Mobile Sidekick” which is “primarily a cell phone,” and
`
`contemporary BlackBerry Devices, which were “primarily . . . to provide wireless e-mail
`
`communications.”
`
`87.
`
`A person of ordinary skill in the art would also note that the provisional
`
`application includes an abstract which describes the claimed device as a “dedicated
`
`wireless instant messaging device.” A person of ordinary skill in the art would therefore
`
`conclude that Zipit had defined the term “instant messaging device” in accordance with
`
`-20-
`
`ZIPIT EX. 2001, pg. 20
`
`

`

`paragraphs [0002], [0004], and [0005] to distinguish devices whose primary uses are as
`
`cell phones or wireless e-mail communicators.
`
`88.
`
`The specification of the ‘870 patent refers to the claimed device as an
`
`“instant messaging terminal,” and also refers to the device disclosed in U.S. Patent No.
`
`6,665,173 as an “instant messaging terminal,” but otherwise does not provide any
`
`definition of the term that expands upon or differs from the definition applicant provided
`
`in provisional application 60/532,000.
`
`89.
`
`Reading the specification, a person of ordinary skill in the art would note
`
`that the device disclosed in Patent 6,665,173 is neither primarily a cell phone nor
`
`primarily an e-mail communication provider. A person of ordinary skill in the art would
`
`also note that
`
`the claimed device includes no provision for cell phone or e-mail
`
`communication, even though a person of ordinary skill in the art would understand that
`
`the hardware and software described in the specification could be easily modified to
`
`provide email communication.
`
`90.
`
`Zipit proposes the construction “a terminal approximately the size of a
`
`cellular mobile phone capable of sending and receiving instant messages.”
`
`91.
`
`In my opinion, Zipit’s construction contradicts its own use of this term in
`
`the intrinsic record.
`
`92.
`
`Zipit’s construction would read on all the devices that the provisional
`
`application distinguishes from its claimed invention, including the T-Mobil

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