Trials@uspto.gov
`571-272-7822
`
`Paper 38
`Date: March 9, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, LG ELECTRONICS, INC.,
`and LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`v.
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`
`IPR2019-01567
`Patent 7,292,870 B2
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
`JOHN D. HAMANN, Administrative Patent Judges.
`JEFFERSON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioners’ Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`Paper 38
`Date: March 9, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, LG ELECTRONICS, INC.,
`and LG ELECTRONICS U.S.A., INC.,
`Petitioners,
`v.
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`
`IPR2019-01567
`Patent 7,292,870 B2
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
`JOHN D. HAMANN, Administrative Patent Judges.
`JEFFERSON, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Petitioners’ Motion to Exclude
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2019-01567
`Patent 7,292,870 B2
`
`I.
`INTRODUCTION
`In this inter partes review, Petitioners Google LLC (“Google”) and
`LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”)
`(collectively, “Petitioners”) challenged claims 20, 21, and 24–30 of U.S.
`Patent No. 7,292,870 B2 (“the ’870 patent,” Ex. 1001) owned by Zipit
`Wireless, Inc. (“Patent Owner” or “Zipit”). Paper 2 (“Pet.” or “Petition”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
`arguments raised during the trial in this inter partes review. For the reasons
`discussed herein, we determine that Petitioners have shown by a
`preponderance of the evidence that claims 20, 21, and 24–30 are
`unpatentable.
`A. Procedural History
`Petitioners filed a Petition challenging claims 20, 21, and 24–30 of the
`’870 Patent (Pet. 3, 6–74), and Patent Owner filed a Preliminary Response
`(Paper 7). We instituted trial on all grounds of unpatentability. Paper 10
`(“Dec. on Inst.” or “Decision”), 32.
`Patent Owner filed a Response (Paper 16, “PO Resp.”), Petitioners
`filed a Reply (Paper 23, “Reply”), and Patent Owner filed a Sur-reply
`(Paper 26, “Sur-reply”). Petitioners filed a Motion to Exclude (Paper 30,
`“Pet. Mot.”), and Patent Owner filed an opposition (Paper 31, “PO Opp.”)
`thereto to which Petitioners replied (Paper 33).
`Petitioners submit the Declaration of Dr. Gregory Abowd (Ex. 1004,
`“Abowd Decl.”) and the Reply Declaration of Dr. Gregory Abowd
`(Ex. 1060) in support of the Petition and Reply. Patent Owner supports its
`Response and Sur-reply with the Declaration of Karl Ginter (Ex. 2017,
`“Ginter Decl.”) and the Declaration of Rafael Heredia (Ex. 2018).
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`IPR2019-01567
`Patent 7,292,870 B2
`Petitioners also submit the Deposition of Karl Ginter (Ex. 1058) and the
`Deposition of Mr. Heredia (Ex. 1059). Patent Owner submits the Deposition
`of Dr. Abowd (Ex. 2056).
`A combined oral hearing for this inter partes review and related case
`IPR2019-01568 was held on December 8, 2020, a transcript of which
`appears in the record in each case. Paper 37 (“Tr.”).
`B. Instituted Grounds
`Petitioners’ grounds rely on the following references. Dec. on Inst. 6;
`Pet. 3, 6–74.
`Name
`Van Dok
`
`Exhibit
`1005
`
`Zaner
`
`Chiu
`
`Saric
`
`Tracy
`
`Reference
`U.S. Patent App. Pub. No. 2004/0162877, filed
`Feb. 19, 2003 published Aug. 19, 2004
`U.S. Patent App. Pub. No. 2004/0041836, filed
`Aug. 28, 2002, published Mar. 4, 2004
`Sinivaara U.S. Patent App. Pub. No. 2004/0202141, filed
`Jan. 9, 2003, published Oct. 14, 2004
`U.S. Patent App. Pub. No. 2003/0204748, filed
`May 20, 2002, published Oct. 30, 2003
`Canadian Patent App. No. 2,363,978, filed
`Nov. 26, 2001, published May 26, 2003
`U.S. Patent App. Pub. No. 2003/0058223, filed
`Jan. 23, 2002, issued Mar. 27, 2003
`McCarthy U.S. Patent No. 7,328,242, filed Sep. 17, 2002,
`issued Feb. 5, 2008
`We instituted inter partes review of the challenged claims, claims 20,
`21, and 24–30, on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`20, 24–30
`103(a)1
`
`1006
`
`1007
`
`1008
`
`1009
`
`1012
`
`1023
`
`References/Basis
`Van Dok, Sinivaara, Chiu,
`McCarthy
`
`
`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’870 Patent has an
`
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`IPR2019-01567
`Patent 7,292,870 B2
`Claim(s) Challenged
`21
`
`21
`20, 21, 24–30
`21
`
`35 U.S.C. §
`103(a)
`
`103(a)
`103(a)
`103(a)
`
`References/Basis
`Van Dok, Sinivaara, Chiu,
`McCarthy, Tracy
`Van Dok, Sinivaara, Chiu,
`McCarthy, Saric
`Zaner, Sinivaara, Chiu, McCarthy
`Zaner, Sinivaara, Chiu, McCarthy,
`Saric
`
`Dec. on Inst. 6, 32.
`C. Real Parties in Interest
`Petitioners Google and LG assert they are the real parties-in-interest.
`Pet. ix.
`D. Related Matters
`The parties advise us that the ’870 patent was asserted against
`Petitioners in Zipit Wireless, Inc. v. LG Electronics Inc., Case No. 6-18-cv-
`02016 (D.S.C.). Pet. ix; Paper 4, 2. The ’870 patent was also the subject of
`IPR2014-01507 and was not shown to be unpatentable. See Blackberry
`Corp. v. Zipit Wireless, Inc., IPR2014-01507, Paper 50 (PTAB March 29,
`2016) (Final Written Decision) (“Blackberry IPR”).
`A related inter partes review of claims 11, 12, 14–16, and 20 of
`U.S. Patent No. 7,894,837 B2 (“the ’837 patent”), the child to the ’870
`patent, is addressed in Google LLC et al. v. Zipit Wireless, Inc., IPR2019-
`01568, Paper 9 (PTAB March 10, 2020) (“the 1568 IPR”).
`E. The ’870 Patent
`The ʼ870 patent relates to a handheld instant messaging (“IM”)
`device. Ex. 1001, 1:6–9. The ’870 patent discloses an IM terminal that
`
`
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of § 103.
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`IPR2019-01567
`Patent 7,292,870 B2
`includes a display and a data entry device integrated in a housing for the IM
`terminal. Id. at 4:38–41. 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 4:28–55, Figs. 12a, 12b.
`Figure 2, provided below, “shows an embodiment of an instant
`messaging terminal that operates in accordance with the principles of the
`present invention.” Id. at 9:41–43.
`
`
`Figure 2 shows terminal 50, display 54, and located on the bottom of the
`clamshell configuration 60 is data entry device 68, with QWERTY keyboard
`section 70, pre-programmed emoticon keys 74, and programmable emoticon
`keys 78. Id. at 9:40–42.
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`IPR2019-01567
`Patent 7,292,870 B2
`Figures 12a and 12b, provided below, show user interface screens that
`associate emoticon pictorial images with programmable keys. Id. at 10:6–7.
`
`
`
`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. Id. 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 16:62–17:5.
`The handheld terminal of the ’870 patent manages multiple IM
`conversations over Internet Protocol (“IP”) through different IM service
`providers. Id. at 5:32–6:15, code (57). 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 5:32–51. 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 5:4–11.
`
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`IPR2019-01567
`Patent 7,292,870 B2
`F. Illustrative Claims
`Challenged claim 20 is an independent claim. Challenged claims 21
`and 24–30 depend directly or indirectly from claim 20. Claims 20 and 21,
`reproduced below with bracketed lettering added, are illustrative.
`20. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`[A] entering textual characters and graphical symbols with
`a data entry device of a handheld terminal to form instant
`messages for delivery to an instant messaging service;
`[B] displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`[C] communicating instant messages with a wireless,
`Internet protocol access point, the instant messages being
`communicated with a communications module and wireless
`transceiver in the handheld terminal;
`[D] coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through the
`wireless, Internet protocol access point;
`[E]
`implementing
`instant messaging and sessions
`protocols to control a conversation session through the wireless,
`Internet protocol access point, the instant messaging and session
`protocols being implemented within the handheld instant
`messaging terminals;
`active
`for
`conversation histories
`[F] displaying
`conversations terminated by a loss of a network connection; and
`[G] automatically searching for wireless, Internet protocol
`network beacons after the conversation histories are displayed.
`
`21. The method of claim 20, the conversation session control
`further comprising:
`identifying a key on the data entry device with a graphical
`symbol that is generated by depressing the key.
`
`Ex. 1001, 26:41–27:2 (bracketed letters added).
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`Patent 7,292,870 B2
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`In an obviousness analysis, prior art references must be “considered
`together with the knowledge of one of ordinary skill in the pertinent art.” In
`re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
`F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account
`not only specific teachings of the reference but also the inferences which one
`skilled in the art would reasonably be expected to draw therefrom.” In re
`Preda, 401 F.2d 825, 826 (CCPA 1968). That is because an obviousness
`analysis “need not seek out precise teachings directed to the specific subject
`matter of the challenged claim, for a court can take account of the inferences
`and creative steps that a person of ordinary skill in the art would employ.”
`KSR, 550 U.S. at 418 (Fed. Cir. 2007) (emphasis added); In re Translogic
`Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007).
`Petitioners adopt Patent Owner’s level of skill in the art asserted in the
`Blackberry IPR, stating that:
`A [person of ordinary skill in the art] has an 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 [person of
`ordinary skill in the art] may draw upon appropriate industry
`experience to meet the foregoing requirements.
`Pet. 5 (citing Ex. 1038, 47 (Blackberry IPR Prelim. Resp.)). Patent Owner
`does not dispute the level of skill determination. In view of the full record,
`we adopt Petitioners’ articulation of the level of skill. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d
`1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
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`Patent 7,292,870 B2
`B. Claim Construction
`Because the Petition was filed after November 13, 2018, we construe
`the challenged claims by applying “the standard used in federal courts, in
`other words, the claim construction standard that would be used to construe
`the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
`Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].”2 Under
`Phillips, the words of a claim are generally given their “ordinary and
`customary meaning,” which is the meaning they would have to a person of
`ordinary skill in the art at the time of the invention, in light of the
`specification and prosecution history. See Phillips, 415 F.3d at 1312–13.
`Petitioners offer no proposed claim constructions, stating that claim
`terms are construed “in accordance with the ordinary and customary
`meaning as understood by a [person of ordinary skill in the art] and the
`patent’s prosecution history.” Pet. 5. Patent Owner argues the construction
`of several claim terms addressed below.
`1. “a data entry device of a handheld terminal” (claim 20)
`Claim 20’s preamble recites that it is directed to “[a] method for
`managing wireless network access and instant messaging through a wireless
`access point with a handheld instant messaging terminal.” Ex. 1001, 26:41–
`43. Patent Owner argues that the handheld aspect of the terminal is woven
`throughout the body of the claim (id. at 26:44–65) and discussed by Patent
`Owner in prosecution (Ex. 1002, 246–247), such that a person of ordinary
`skill in the art would understand from the intrinsic record that the claim
`
`
`2 See Changes to the Claim Construction Standard for Interpreting Claims in
`Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
`Reg. 51,340, 51,343 (amending 37 C.F.R. § 42.100(b) effective November
`13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
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`Patent 7,292,870 B2
`phrase “a data entry device of a handheld terminal” in claim 20 means “a
`data entry device integrated into the housing of a handheld terminal.”
`PO Resp. 4 (citing Ex. 2017 ¶¶ 24–30) (emphasis added). Patent Owner’s
`arguments from the prosecution history of the ’870 patent state that the
`application of “claim 21 requires that the data entry, data display, wireless,
`Internet protocol communications, and instant messaging and session
`protocol implementation, all be performed within a single handheld terminal
`housing.” Ex. 1002, 246; PO Resp. 2–3. Patent Owner emphasizes that all
`features must be performed within a single handheld terminal as a
`requirement for claim 20. PO Resp. 2–3.
`We are not persuaded by Petitioners’ proposed construction that
`inserts “integrated” into the preamble of claim 20. Patent Owner’s argument
`importing limitations from the Specification is improper and not supported
`by the intrinsic evidence. Comark Commc’ns Inc. v. Harris Corp., 156 F.3d
`1182, 1186–87 (Fed. Cir. 1998); Phillips, 415 F.3d at 1319–20. As
`Petitioners argue (Reply 4), the ’870 patent specifically claims and describes
`“a data entry device integrated in the terminal housing” in claim 1 of the
`’870 patent (Ex. 1001, 25:16), indicating that the Patent Owner knew how to
`specifically claim the “integrated” device. See Kara Tech. Inc. v.
`Stamps.com Inc., 582 F.3d 1341, 1347 (Fed. Cir. 2009).
`We are also not persuaded by Patent Owner’s citation to arguments
`and testimony regarding the prosecution history. See PO Resp. 3–4. Patent
`Owner’s arguments before the Office during prosecution to distinguish a
`reference (“Rucinski”) by claiming an “integrated data entry device” are not
`a clear disavowal of claim scope. Cont’l Circuits LLC v. Intel Corp., 915
`F.3d 788, 798 (Fed. Cir. 2019) (prosecution history disclaimer “must be
`clear and unambiguous, and constitute a clear disavowal of scope.”).
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`Patent 7,292,870 B2
`Indeed, the portions of the discussion Patent Owner cites are specific to the
`reference being distinguished during prosecution, Rucinski (Ex. 2053), and
`Patent Owner’s arguments there focus on the protocols and software
`execution in Rucinski as compared to claim 20. PO Resp. 3–4 (citing Ex.
`1002, 246–247). We agree with Petitioners (Reply 3–4) that Patent Owner’s
`argument to overcome the Rucinski art asserted that “Rucinski segregates
`the functions of data entry and display from the functions of wireless
`communication and protocol processing” and not that data entry was not
`integrated into an integrated housing. Ex. 1002, 246–247. Patent Owner’s
`evidence does not support that the data entry device is required to be
`integrated into the housing in claims 20 and 21 based on the intrinsic
`evidence. Accordingly, we give the term “a data entry device of a handheld
`terminal” its ordinary and customary meaning as a handheld terminal
`capable of data entry.
`2. “network connection” (claim 20)
`Claim 20[F] recites “displaying conversation histories for active
`conversations terminated by a loss of a network connection.” Ex. 1001,
`26:61–62. Patent Owner argues that “‘network connection’ . . . refers to the
`handheld instant messaging terminal’s connection to the local network
`recited earlier in the claim, through which the handheld terminal
`communicates instant messages.” PO Resp. 4–5 (citing Ex. 2017 ¶ 31).
`Following the various references to “networks” in claim 20, Patent Owner
`argues that “when claim 20 later refers to ‘a loss of network connection,’ the
`connection that was lost refers to a local network with a working connection
`to a wide area network to which the handheld terminal is wirelessly coupled
`via the wireless, Internet protocol access point.” PO Resp. 5 (citing
`Ex. 2017 ¶ 32). Patent Owner maintains that the Specification consistently
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`IPR2019-01567
`Patent 7,292,870 B2
`references the handheld terminal’s connection to the Wi-Fi network, and
`thus the network connection in claim 20 refers to a local network
`connection. Ex. 2017 ¶ 33; Ex. 1001, 9:53–59, 13:1–3; 14:12–14, 14:47–50.
`Claim 20 recites the term “network” in the preamble and limitation
`20D, 20F, and 20G. Claim 20 recites “a local network through the wireless,
`Internet protocol access point” in limitation 20D, “the loss of a network
`connection” in limitation 20F, and “Internet protocol network beacons” in
`limitation 20G. Each recitation of “network” in claim 20 is slightly
`different, referring to “managing wireless network access” in the preamble,
`to “local network through the wireless, Internet protocol access point” in
`limitation 20[D], and “searching for wireless, Internet protocol network
`beacons” in limitation 20[F]. Ex. 1001, 26:53–65. Patent Owner’s
`argument asserts that the active conversations terminated by a loss of a
`network connection in limitation 20F, refers back to the connection of the
`messaging terminal to a local network through the wireless, Internet protocol
`access point of limitation. PO Resp. 5–6.
`Patent Owner does not address how the proposed claim construction
`affects the application of the asserted prior art to limitations 20[F]. See PO
`Resp. 4–5; Sur-reply 10–13. Whether network loss refers to a local network
`or Internet protocol access point networks is not at issue in the analysis of
`limitations 20[F] and 20[G]. PO Resp. 11–13, 28; Sur-reply 10–13. See
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999). Accordingly, we determine that this term does not require
`construction.
`
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`3. ” entering textual characters and graphical symbols with a data
`entry device” (claim 20)
`The Blackberry IPR construed the term “graphical symbols” as
`distinct from the textual characters that represent graphical emoticons.
`Blackberry IPR 16 (applying the broadest reasonable construction in light of
`the specification). We determined that “[t]he’870 patent distinguishes the
`symbols shown in Figure 2 [of the ’870 patent], which include characters
`such as ’$’ from ‘graphical symbols’ entered by an emoticon or
`programmable key.” Id. (citing Ex. 1001, 18:47–48, Fig. 2). In the present
`case, we agree with Patent Owner that under a Phillips interpretation,
`claim 20 distinguishes between textual characters and graphical symbols in
`accordance with the ’870 Specification. See Prelim. Resp. 8–9; Ex. 1001,
`3:26–32, 4:50–5:3. Thus, we determined in the Decision on Institution in
`the present case that the meaning a person of ordinary skill in the art would
`have at the time of the invention, in light of the ’870 Specification, is that
`“graphical symbols” include “graphical emoticons” that differ from textual
`characters representing emoticons. We maintain that construction with
`respect to “graphical symbols” as recited in independent claim 20; we
`determine that “graphical symbols” refer to “graphical emoticons.”
`Our Decision on Institution also rejected Patent Owner’s construction
`that “entering textual characters and graphical symbols with a data entry
`device” means “enter[ing] using emoticon keys or programmable keys,
`while textual characters are entered by typing on a keyboard.” Dec. on Inst.
`14. For this Final Written Decision, we accord “entering textual characters
`and graphical symbols with a data entry device” its ordinary meaning in the
`context of the claims.
`
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`IPR2019-01567
`Patent 7,292,870 B2
`C. Obviousness of Claims 20 and 24–30 over Van Dok,
`Sinivaara, Chiu, and McCarthy – Ground 1
`Petitioners assert that claims 20 and 24–30 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Chiu, and McCarthy.
`Pet. 6–47. To support their contentions, Petitioners provide explanations as
`to how the prior art discloses each claim limitation and the motivations to
`combine the prior art teachings. Id. Petitioners also provide citations to the
`Abowd Declaration in support of their contentions. Ex. 1004 ¶¶ 52–263.
`The prior art is summarized below.
`1. Van Dok (Ex. 1005)
`Van Dok discloses a system providing “enhancements to a real-time
`communications user interface” that “add functionality and personality” in
`“instant messaging.” Ex. 1005, code (57), ¶ 3. Van Dok addresses
`shortcomings of traditional instant messaging through “automatic emoticon
`replacement.” Id. ¶¶ 7, 9, 56. Van Dok discloses that “[k]nown instant
`messaging implementations . . . fail to show a graphical representation [e.g.,
`] for a textually entered emoticon [e.g., ‘:)’] . . . until after a message is
`sent.” Id. ¶ 14. Van Dok teaches that when the user types a text sequence
`for an emoticon (e.g., “:)” for a smiley face emoticon), the system
`automatically interprets the text sequence and displays its graphical
`representation (e.g., ) in the “input box” of a “conversation window”
`before the message is sent, “allow[ing] the user composing the message to
`preview how the message will appear when received.” Id. ¶ 56. Figure 5A
`depicts the automatic emoticon replacement disclosed in Van Dok. Id. ¶ 26.
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`
`Van Dok states that Figure 5A illustrates
`instant messaging user interface 500, having conversation
`window 502, input box 504, and send button 506, both “Before”
`and “After” automatic emoticon replacement in accordance with
`the present invention. The user interface interprets, for example,
`the text sequence “:)” 510 automatically as the smiley face
`character 512, before a user selects the send button 506 for the
`instant message in input box 504. Among other things,
`replacement before sending the real-time message allows the
`user composing the message to preview how the message will
`appear when received. Of course, text sequence 510 is merely
`one example of many possible text sequences for potentially
`many different emoticons that may be available. Which text
`sequences correspond to which emoticons may be user
`configurable, including the ability to specify user defined
`emoticons.
`Id. ¶ 56.
`Van Dok also discusses use of “hand-held devices” and network
`computing environments and handheld device markup language (HDML)
`operating in wireless network environments. Id. ¶¶ 16, 66–69.
`2. Sinivaara (Ex. 1007)
`Sinivaara discloses a method for a “mobile terminal” to select an
`“access point in a wireless communication system.” Ex. 1007, code (57).
`Sinivaara teaches that
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`a group of mobile terminals in a cell utilize predetermined
`attributes which give an indication of the quality of service (QoS)
`currently experienced by the terminal, by collecting a set of such
`attributes and sending the set to the serving access point. The
`serving access point processes the attribute sets received from the
`mobile terminals and compiles a cell report on the basis of the
`sets. The cell report indicates the current overall quality of
`service in the cell. . . .
`The service report is then transmitted so that each mobile
`terminal in the neighborhood, which is about to select an access
`point, may receive it.
`Id. ¶¶ 16–17. Sinivaara describes WLAN in “infrastructure mode” is
`“preferably based on the IEEE 802.11 [Wi-Fi] standard for wireless local
`area networking” for a mobile terminal to use “beacon” information to select
`an access point to use. Id. ¶¶ 1–5, 15, 55, 56.
`3. Chiu (Ex. 1008)
` Chiu relates to techniques for accessing wireless networks.
`Ex. 1008, code (57). The wireless access techniques were “popular for
`providing communications among portable devices, such as . . . (PDAs),
`palmtop computers, . . . and the like” using a 802.11 (Wi-Fi) network
`connection. Id. ¶¶ 2, 3, 5, 9–20.
`4. McCarthy (Ex. 1023)
`McCarthy teaches improving upon “prior art messaging systems” such
`as “instant messaging” systems by allowing a user to “participate in the chat
`while not connected and . . . pick up in a past [messaging] discussion if they
`later rejoin the chat.” Ex. 1023, 1:24, 2:12–51, 2:66–3:17, 3:54–4:10.
`5. Analysis of Claim 20
`Petitioners assert that Van Dok, Sinivaara, Chiu, and McCarthy teach
`the limitations of claim 20 and its dependent claims 24–30. Pet. 16–47;
`Ex. 1004 ¶¶ 119–263. Petitioners assert that Van Dok’s instant messaging
`
`16
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`IPR2019-01567
`Patent 7,292,870 B2
`system runs on a hand-held wireless device, and would use the well-known
`wireless Internet access via access points including known wireless
`standards taught based on the common knowledge of a skilled artisan and
`express teachings of Sinivaara’s wireless Internet access. Pet. 11–13 (citing
`Ex. 1007 ¶¶ 3, 5–7, 55, 56, 66–69; Ex. 1004 ¶¶ 99–110). Petitioners also
`argue that in implementing the WLAN (wireless local area network) access
`of Van Dok and Sinivaara over known wireless networks, a person of skill in
`the art would have incorporated Chiu’s automated techniques for
`coordinating security key authentication, for access to WLAN (e.g., 802.11)
`as disclosed in Sinivaara. Id. at 12 (citing Ex. 1004 ¶¶ 111–114). Further,
`Petitioners assert that a skilled artisan would have been motivated to
`incorporate McCarthy’s techniques for handling IM conversations when
`network connectivity is lost, to “maintain communications in a persistent
`and virtual manner” into Van Dok wireless access device. See id. at 15
`(citing Ex. 1004 ¶¶ 115–117); Ex. 1023, 3:5–9, 3:64–4:2.
`In sum, Petitioners argue that a person of ordinary skill in the art
`would have been motivated to use the Van Dok system in combination with
`the known wireless and messaging systems of Sinivaara, Chiu, and
`McCarthy, such that Van Dok’s “hand-held device is implemented to use a
`wireless access point for WLAN Internet access per Sinivaara, to coordinate
`authentication for coupling to the WLAN through the access point per Chiu,
`and to maintain the display of IM conversation histories when the device
`loses network connectivity per McCarthy.” Pet. 16 (citing Ex. 1004 ¶ 118).
`Based on the full record, Petitioners present sufficient and persuasive
`evidence establishing a rationale to combine the asserted references. See id.
`at 10–16; Ex. 1004 ¶¶ 94–118.
`
`17
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`IPR2019-01567
`Patent 7,292,870 B2
`a) Claim 20 Preamble and Limitation 20[A]
`Petitioners establish sufficient evidence that the combination of Van
`Dok, Sinivaara, Chiu, and McCarthy discloses a “method for managing
`wireless network access and instant messaging through a wireless access
`point with a handheld instant messaging terminal.” Pet. 16–18; Ex. 1004
`¶¶ 119–128. Petitioners rely on the hand-held wireless computer system
`embodiment employing Van Dok’s software and the internet access via
`access point features of Sinivaara, Chiu, and McCarthy. Id.
`Petitioners also assert that Van Dok, Sinivaara, Chiu, and McCarthy
`discloses limitation 20[A], “entering textual characters and graphical
`symbols with a data entry device of a handheld terminal to form instant
`messages for delivery to an instant messaging service.” Pet. 18–22;
`Ex. 1004 ¶¶ 128–153; Ex. 1005 ¶¶ 6, 8, 14, 38–41, 45, 56, Figs 2A, 2B, 5A.
`Specifically, Petitioners cite the feature of automatic conversion of typed
`emoticons into the graphical emoticons. Pet. 18–22; Ex. 1005 ¶¶ 6, 8, 14,
`38–41, 45, 56, 69, Figs 2A, 2B, 5A.
`Patent Owner contends that Van Dok does not disclose “entering
`textual characters and graphical symbols with a data entry device” because
`the ’870 patent eliminates the need for users to type text sequences
`corresponding to graphical symbols and instead uses emoticon keys or
`programmable keys for data entry. PO Resp. 8–9; Ex. 2017 ¶ 48. Patent
`Owner argues that “[c]laim 20 expressly requires ‘entering . . . graphical
`symbols with a data entry device of a handheld terminal.’” PO Resp. 9
`(quoting Ex. 1001, 26:44–46) (second alteration in original). Thus, Patent
`Owner avers Van Dok “never discloses entering graphical symbols with a
`data entry device” and “only discloses entering textual characters with a data
`entry device” where Van Dok’s “software automatically replaces the user-
`
`18
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`IPR2019-01567
`Patent 7,292,870 B2
`entered textual characters.” Id. at 9–10; Ex. 2017 ¶¶ 49–50. Patent Owner
`argues that “claim 20 plainly requires that what the user enters—a graphical
`symbol—be the same thing that the system displays.” Sur-reply 3. In sum,
`Patent Owner’s argument is that claim 20 expressly requires the displayed
`graphical symbols be the same graphical symbols that were entered by the
`user’s keystrokes. Id. Patent Owner argues that claim 20 was expressly
`drafted to “focus on the embodiment in which graphical symbols were
`entered via the data entry device (rather than requiring the user to remember
`and enter a text string that is converted to a graphical symbol).” Id. at 4.
`Patent Owner’s arguments and evidence are not commensurate in
`scope with the ordinary meaning of “entering” and its usage in the
`Specification. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); Ex. 1001,
`19:18–20:14. We agree with Petitioners (Reply 2) that the ’870 patent
`describes the Van Dok entering technique in an embodiment, noting that
`“emoticons [that] cannot be assigned to the programmable keys . . . can be
`entered by depressing the standard key sequence.” Ex. 1001, 20:1–14;
`Pet. 19. Furthermore, the ’870 patent describes graphical emoticons that are
`entered by depressing key sequences in Tables 2–4. Ex. 1001, Tables 2–4;
`Ex. 1058, 67–69 (describing translation of typed text sequence into a graphic
`character). We do not agree that with Patent Owner that the “entering”
`limitation of claim 20[A] is limited to emoticon keys where the displayed
`graphical symbols are the same graphical symbols that were entered by the
`user’s keystrokes.
`The parties dispute whether claim 20 encompasses or excludes
`embodiments in the ’870 patent. See PO Resp. 8–9; Reply 2–3; Sur-reply 4–
`6. Petitioners assert that “[a]n interpretation that excludes a disclosed
`embodiment is ‘incorrect . . . absent probative evidence to the contrary.’”
`
`19
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`IPR2019-01567
`Patent 7,292,870 B2
`Reply 3 (quoting Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276–77 (Fed. Cir.
`2008)). Thus, Petitioners argue that Van Dok discloses the same method
`recited in claim 20 and found in the embodiment of the ’870 patent. Id.; see
`Ex. 1001, Tables 2–4; Ex. 1058, 67–69. In addition, Petitioners argue that
`Patent Owner’s Response ignores this embodiment, arguing instead that
`claim 20 is limited to direct entry of graphical emoticons. Reply 3.
`We agree with Petitioners that the ’870 patent states the invention
`supports “two sets of emoticons,” those “associated with the pre-
`programmed . . . or the programmable emoticon keys” and those “entered by
`depressing the standard key sequence.” Reply 2–3 (quoting Ex. 1001,
`19:18–20:14). Patent Owner’s textual n
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