Trials@uspto.gov
`571-272-7822
`
`Paper 39
`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.
`
`IPR2019-01568
`Patent 7,894,837 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 39
`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.
`
`IPR2019-01568
`Patent 7,894,837 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)
`
`
`
`
`
`
`
`IPR2019-01568
`Patent 7,894,837 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 11, 12, 14–16, and 20 of U.S.
`Patent No. 7,894,837 B2 (“the ’837 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 11, 12, 14–16, and 20 are
`unpatentable
`A. Procedural History
`Petitioners filed a Petition challenging claims 11, 12, 14–16, and 20 of
`the ’837 patent (Pet. 3, 7–73), and Patent Owner filed a Preliminary
`Response (Paper 6). We instituted trial on all grounds of unpatentability.
`Paper 9 (“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 31,
`“Pet. Mot.”), and Patent Owner filed an opposition (Paper 32, “PO Opp.”)
`thereto to which Petitioners replied (Paper 34).
`The Petition is supported by the Declaration of Dr. Gregory Abowd
`(Ex. 1004) and the Reply Declaration of Dr. Gregory Abowd (Ex. 1060).
`Patent Owner supports its response with the Declaration of Karl Ginter
`(Ex. 2017) and the Declaration of Rafael Heredia (Ex. 2018). Petitioners
`also submit the Deposition of Karl Ginter (Ex. 1058) and the Deposition of
`
`2
`
`
`
`Zaner
`
`Chiu
`
`Saric
`
`Capps
`
`Exhibit
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1025
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`IPR2019-01568
`Patent 7,894,837 B2
`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, 7–73.
`Name
`Van Dok
`
`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
`Werndorfer U.S. Patent App. Pub. No. 2004/0024822, filed
`Aug. 1, 2002, published Feb. 5, 2004
`U.S. Patent No. 7,519,667, filed Apr. 16, 2002,
`issued Apr. 14, 2009
`Petitioners assert that claims 11, 12, 14–16, and 20 would have been
`unpatentable based on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`11, 12, 14, 16
`103(a)1
`12
`103(a)
`
`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 ’837 Patent has an
`effective filing date prior to the effective date of the applicable AIA
`amendments, we refer to the pre-AIA versions of § 103.
`
`References/Basis
`Van Dok, Sinivaara, Werndorfer
`Van Dok, Sinivaara, Werndorfer,
`Saric
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`IPR2019-01568
`Patent 7,894,837 B2
`Claim(s) Challenged
`15
`
`35 U.S.C. §
`103(a)
`
`20
`11, 12, 14, 16
`12
`
`15
`
`20
`
`103(a)
`103(a)
`103(a)
`
`103(a)
`
`103(a)
`
`References/Basis
`Van Dok, Sinivaara, Werndorfer,
`Chiu
`Van Dok, Sinivaara, Werndorfer,
`Capps
`Zaner, Sinivaara, Werndorfer
`Zaner, Sinivaara, Werndorfer,
`Saric
`Zaner, Sinivaara, Werndorfer,
`Chiu
`Zaner, Sinivaara, Werndorfer,
`Capps
`
`Dec. on Inst. 6, 35.
`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 ’837 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 ’837 patent was also the subject of
`IPR2014-01506 and was not shown to be unpatentable. See Blackberry
`Corp. v. Zipit Wireless, Inc., IPR2014-01506, Paper 50 (PTAB Mar. 29,
`2016) (Final Written Decision) (“Blackberry ’837 IPR”).
`A related inter partes review of claims 20, 21, and 24–30 of U.S.
`Patent No. 7,292,870 B2 (“the ’870 patent”), the parent to the ’837 patent, is
`addressed in Google LLC et al. v. Zipit Wireless, Inc., IPR2019-01567
`Paper 10 (PTAB March 9, 2020) (“the 1567 IPR”).
`E. The ’837 Patent
`The ʼ837 patent relates to a handheld instant messaging (“IM”)
`device. Ex. 1001, 1:16–18. The ’837 patent discloses an IM terminal that
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`IPR2019-01568
`Patent 7,894,837 B2
`includes a display and a data entry device integrated in a housing for the IM
`terminal. Id. at 4:25–28. The data entry device allows entry of graphical
`symbols (such as emoticons supported by an IM service provider) or textual
`characters via dedicated or programmable keys, a Wi-Fi communications
`module for communicating messages with a Wi-Fi access point, and a
`control module for coordinating authorization to coupling the IM terminal to
`a local network using a wireless access point and for controlling the IM
`conversation session. Id. at 4:28–35, 4:36–55, Figs. 12a and 12b.
`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 8:62–65.
`
`
`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 11:10–15.
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`Patent 7,894,837 B2
`Figures 12a and 12b, provided below, show user interface screens that
`associate emoticon pictorial images with programmable keys. Id. at 9:27–
`28.
`
`
`
`Figures 12a and 12b show screens used in the emoticon selection procedure.
`Id. at 9:27–28. Figure 12a identifies keys of keyboard 68 (not shown) that
`are associated with selected emoticons. Figure 12b shows a screen that
`instructs the user to use the “<” and “>” keys on either side of the displayed
`symbol to change the graphical symbol that is associated with a
`programmable key, e.g., PF2. Id. at 16:1–8.
`The handheld terminal of the ’837 patent manages multiple IM
`conversations over Internet Protocol (“IP”) through different IM service
`providers. Id. at 5:16–63, 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. 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.
`
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`IPR2019-01568
`Patent 7,894,837 B2
`F. Illustrative Claims
`Challenged claim 11 is independent and claims 12, 14–16, and 20
`depend from claim 11. Illustrative claims 11 and 12 are reproduced below
`with bracketed lettering added.
`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.
`
`12. The method of claim 11, the conversation session control
`further comprising:
`[A] correlating a key on the data entry device with a
`graphical symbol in response to the key on the data entry device
`being depressed.
`
`Ex. 1001, 24:55–25:13 (bracketed letters added).
`
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`Patent 7,894,837 B2
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`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); 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 ’837 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. 6 (citing Ex. 1038, 48 (PO Resp. of the Blackberry ’837 IPR)). 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
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`Patent 7,894,837 B2
`F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
`1978).
`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. 5–7. Patent Owner argues the
`construction of several claim terms addressed below.
`1. “generating textual characters and graphical symbols in response
`to manipulation of keys on a data entry device” (claim 11)
`The Blackberry ’837 IPR construed the term “graphical symbols” as
`distinct from the textual characters that represent graphical emoticons.
`Blackberry ’837 IPR 16 (applying the broadest reasonable construction in
`light of the specification). We determined that “[t]he ’837 patent
`
`
`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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`IPR2019-01568
`Patent 7,894,837 B2
`distinguishes the symbols shown in Figure 2 [of the ’837 patent], which
`include characters such as ‘$’ from ‘graphical symbols’ entered by an
`emoticon or programmable key.” Id. at 17 (citing Ex. 1001, 18:1–4, Fig. 2).
`In the present case, we agree with Patent Owner that under Phillips claim 11
`distinguishes between textual characters and graphical symbols in
`accordance with the ’837 Specification. See PO Resp. 8–9; Ex. 1001, 3:26–
`32, 4:50–5:3. Thus, we are persuaded that the meaning a person of ordinary
`skill in the art would have at the time of the invention, in light of the ’837
`Specification, is that “graphical symbols” include “graphical emoticons” that
`differ from textual characters representing emoticons. We maintain that
`with respect to “graphical symbols” as recited in independent claim 11, we
`determine that “graphical symbols” refer to “graphical emoticons.”
`Our Decision on Institution further found that “entering textual
`characters and graphical symbols with a data entry device” is given its
`ordinary meaning in the context of the claims. Dec. on Inst. 12. We
`maintain this construction for this Final Written Decision. \
`2. “a data entry device of a handheld terminal” (claim 11)
`Claim 11’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, 24:55–
`57. Patent Owner argues that “a data entry device of a handheld terminal”
`recited in limitation 11[A] means “a data entry device integrated into the
`housing of a handheld terminal.” PO Resp. 10 (emphasis added). Patent
`Owner argues that the handheld aspect of the terminal is woven throughout
`the body of the claim (Ex. 1001, 24:54–25:8) and discussed by Patent Owner
`in prosecution of the parent ’870 patent (Ex. 2052, 10–11, 72–73), such that
`a person of ordinary skill in the art would understand from the intrinsic
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`Patent 7,894,837 B2
`record that the claim phrase “a data entry device of a handheld terminal” in
`claim 11 means “a data entry device integrated into the housing of a
`handheld terminal.” PO Resp. 2–11 (citing Ex. 2017 ¶¶ 24–30) (emphasis
`added). Patent Owner argues that the prosecution emphasizes that all
`features must be performed within a single handheld terminal as a
`requirement for claim 11. Id.
`We are not persuaded by Patent Owner’s proposed construction that
`inserts “integrated” into the “a data entry device” limitation of claim 11.
`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 v.
`AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005). As Petitioners argue
`(Reply 2), the ’837 patent specifically claims and describes “a data entry
`device integrated in the terminal housing” in claim 1 of the ’837 patent
`(Ex. 1001, 23:31), 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. 5–10. Patent
`Owner’s arguments before the Office during prosecution to distinguish a
`cited 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.”).
`Indeed, the portions of the discussion Patent Owner cites are specific to the
`reference being distinguished, Rucinski (Ex. 2052, 10–11, 72–73), and
`Patent Owner’s arguments focus on the protocols and software execution in
`
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`Patent 7,894,837 B2
`Rucinski as compared to claim 11. PO Resp. 3–4. We agree with
`Petitioners (Reply 2–4) 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, 117–119 (’837 file history) (discussing messaging
`protocols). Patent Owner’s evidence does not support that the data entry
`device is integrated into the terminal in claim 11 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.
`C. Obviousness of Claims 11, 12, 14, and 16 over Van Dok, Sinivaara,
`and Werndorfer – Ground 1
`Petitioners assert that claims 11, 12, 14, and 16 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, and Werndorfer.
`Pet. 7–37. To support their contentions, Petitioners provide explanations as
`to how the prior art allegedly 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
`¶¶ 102–190. 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.,
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`] 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.
`
`
`
`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.
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`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
`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.
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`4. Werndorfer (Ex. 1010)
`Werndorfer discloses a “unified instant messaging client platform”
`designed to address the “lack of interoperability between the different instant
`messaging services” in conventional IM systems. Ex. 1010 ¶¶ 47, 48.
`Werndorfer explains that a “basic principle[]” of IM is that “proprietary
`instant messaging client software” is required “to communicate with the
`specified instant messaging service.” Id. ¶¶ 8–9. For example, AOL’s
`Instant Messenger (“AIM®”) software “allows the client computers . . . to
`communicate with the AIM server using AOL’s proprietary instant
`messaging protocol.” Id. “Moreover, the client IM software and associated
`IM protocols required by each service . . . are not compatible.” Id. ¶ 10.
`Figure 2, below, depicts an instant messaging client architecture. Id.
`¶ 18.
`
`
`Figure 2 shows IM client platform 200 comprised of IM application
`portion 202, which contains standard IM functions used by each IM
`service 100, 108, 210 (e.g., a buddy list, user-defined online/offline
`parameters, and other universal IM features described below). Id. ¶ 48.
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`Users interact with the IM application 202 via IM graphical user interface
`201. Id. Werndorfer teaches interoperability with the different, normally
`incompatible, IM services, using IM service interface module 204, 206, 208,
`which is provided for each IM service 100, 108, and 210, respectively. Id.
`The IM service interface modules 204, 206, 208 provide service-specific
`features and communicate with the respective IM services 100, 108, 210
`using the IM protocol required by that service. Id.
`5. Analysis of Claim 11
`Petitioners assert that Van Dok’s instant messaging 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 skilled artisan and express teachings of
`Sinivaara’s wireless Internet access. Pet. 11–14 (citing Ex. 1007 ¶¶ 3, 5–7,
`55, 56, 66–69; Ex. 1004 ¶¶ 81–93). Petitioners also provide multiple
`rationales to combine the IM protocols implemented in Werndofer with the
`enhanced user interface and content improvements to traditional IM
`disclosed in Van Dok. Id. at 14–15. Further, Petitioners argue that “a POSA
`would have had multiple independent reasons to implement [Van Dok]’s IM
`transmissions via IM client software that generates instant messages
`formatted in accordance with an IM protocol compatible with the IM service
`[Van Dok] describes.” Id. at 15 (citing Ex. 1004 ¶ 98).
`In sum, Petitioners contend that “in view of Sinivaara’s and
`Werndorfer’s teachings, a POSA would have had multiple independent
`reasons to implement [Van Dok]’s IM device to generate messages in
`accordance with an IM protocol compatible with [Van Dok]’s IM service,
`and to wirelessly transmit those messages to a wireless access point for
`Internet transmission.” Pet. 17; see also Ex. 1004 ¶¶ 88–101. Based on the
`
`16
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`IPR2019-01568
`Patent 7,894,837 B2
`full record, Petitioners present sufficient and persuasive evidence
`establishing a rationale to combine the asserted references. See Pet. 11–17;
`Ex. 1003 ¶¶ 88–101.
`a) Claim 11 Preamble and Limitation 11[A]
`Petitioners establish sufficient evidence that Van Dok, Sinivaara, and
`Werndorfer disclose “[a] method for managing wireless network access and
`instant messaging through a wireless access point with a handheld instant
`messaging terminal.” Pet. 17–19; Ex. 1003 ¶¶ 105–113. Petitioners rely on
`the hand-held wireless computer system embodiment employing the Van
`Dok’s software and internet access via access point of Sinivaara. Pet. 17–
`19; Ex. 1003 ¶¶ 105–113.
`Petitioners also assert that Van Dok, Sinivaara, and Werndorfer
`disclose limitation 11[A], “generating textual characters and graphical
`symbols in response to manipulation of keys on a data entry device of a
`handheld instant messaging terminal.” Pet. 19–22; Ex. 1004 ¶¶ 114–129;
`Ex. 1005 ¶¶ 38, 39, Fig. 5A. Specifically, Petitioners cite the automatic
`conversion of typed emoticons into the graphical emoticons. Pet. 19–20;
`Ex. 1005 ¶¶ 38–41, Fig. 5A.
`Patent Owner argues that Van Dok is not directed toward a handheld
`terminal but instead is directed to a user interface. PO Resp. 10–11;
`Ex. 1005 ¶ 3. Thus Patent Owner argues that Van Dok does not disclose a
`device integrated into the housing of a handheld terminal as required in
`claim limitation 11[A]. PO Resp. 11; Ex. 2056, 65:1–66:14. Patent Owner
`argues that Van Dok “merely teaches data entry devices, such as a standard
`keyboard and a standard mouse, which are plugged into the device via an
`external port.” PO Resp. 11 (citing Ex. 1005, ¶ 72; Ex. 2017 ¶¶ 32–34).
`
`17
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`IPR2019-01568
`Patent 7,894,837 B2
`For the reasons discussed above, Patent Owner’s arguments are
`premised on a claim construction we did not find persuasive. Id. at 10–15.
`We agree with Petitioners, that Van Dok’s terminal shows a data entry
`(keyboard) device. Pet. 5–6; Ex. 1005 ¶ 69. Contrary to Patent Owner’s
`arguments that Van Dok never discloses a handheld data entry device or
`modification of Van Dok to include an integrated keyboard (PO Resp. 14–
`15), Petitioners provide sufficient evidence that Van Dok discloses a hand-
`held device embodiment (Ex. 1005 ¶ 69). Reply 4–6. Patent Owner’s
`arguments fail to address Petitioners’ reliance on the teachings of Van Dok
`as a whole, and focus instead on Van Dok’s alleged lack of express language
`describing the data entry device for the handheld terminal. PO Resp. 10–15.
`On the full record, we find that Petitioners have presented persuasive
`and sufficient evidence showing that a person of ordinary skill in the art
`would have understood Van Dok to include a keyboard or data entry method
`for a handheld terminal. See Pet. 20–21; Ex. 1004 ¶¶ 119–125.
`b) Limitations 11[B], 11[C], 11[D], and 11[E]
`Petitioners provide persuasive evidence and argument to show that
`Van Dok, Sinivaara, and Werndorfer teach the “displaying the generated
`textual characters and graphical symbols on a display of the handheld instant
`messaging terminal” limitation. Pet. 22–23; Ex. 1004 ¶¶ 130–131; Ex. 1005
`¶¶ 56, 69, 72, Fig. 5A. Patent Owner’s argument that Van Dok does not
`meet the display limitation of 11[B] is unavailing. Patent Owner’s assertion
`is unsupported by evidence and omits the context of Van Dok’s teachings
`that the interface can be used in various portable devices. PO Resp. 15 n.1;
`Reply 6.
`Petitioners also provide sufficient evidence and argument that Van
`Dok, Sinivaara, and Werndorfer teach limitation 11[C], “generating data
`
`18
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`IPR2019-01568
`Patent 7,894,837 B2
`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.” Pet. 23–25. Petitioners show that Van
`Dok and Sinivaara teaches instant messaging of text and graphical
`emoticons that person of ordinary skill in the art would have understood as a
`type of data. Id. at 23–24; Ex. 1004 ¶¶ 132–136. Further, Petitioners argue
`that Werndorfer illustrates the client device communicating directly with the
`IM service using the “Service-Specific Protocol” compatible with the IM
`service. Pet. 24–25; Ex. 1010, Fig. 2.
`With respect to limitation 11[D], Petitioners provide persuasive
`evidence and argument that Van Dok, Sinivaara, and Werndorfer teach the
`“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” limitation.
`Petitioners assert that “[a] [person of ordinary skill in the art] would have
`understood that the straightforward . . . way to implement [Van Dok’s]
`Internet instant messaging would have been to use the Internet protocol in
`transmitting the message data from the handheld terminal” by using
`conventional transmission of data in packets. Pet. 26–27. In addition
`Werndorfer expressly teaches the implementation transmission of TCP
`packets. Id. at 27; Ex. 1010 ¶ 103; Ex. 1004 ¶ 155.
`Finally, Petitioners assert that Van Dok, Sinivaara, and Werndorfer
`teach “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” as recited in claim 11.
`Pet. 29–31; Ex. 1004 ¶¶ 163–172. Petitioners explain that an ordinarily
`skilled artisan would have understood Van Dok’s messaging via computer-
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`IPR2019-01568
`Patent 7,894,837 B2
`executed program modules using a computer system and processing unit.
`Pet. 29–30. Specifically, Petitioners argue that
`A POSA [person of ordinary skill in the art] would have had
`reasons
`to
`implement
`[Van Dok]/Sinivaara/Werndorfer’s
`techniques (which include controlling conversation sessions in
`accordance with an IM protocol as discussed above) via program
`modules executed by VD’s disclosed processing unit. A POSA
`would have understood that was the typical and conventional
`way for a computer system to execute such program instructions.
`[Ex. 1003] Abowd ¶ 170. A POSA would have understood VD’s
`processing unit to be a “control module” located within the
`terminal as claimed. [Ex. 1004] Abowd ¶¶ 170–171.
`Pet. 30.
`We find Petitioners’ argument and evidence that Van Dok, Sinivaara,
`and Werndorfer teach the limitations of claim 11 persuasive on the full
`record before us.
`6. Analysis of Claim 12
`Claim 12 depends from claim 11, reciting that “the conversation
`session control” of claim 11[E] further comprises “correlating a key on the
`data entry device with a graphical symbol in response to the key on the data
`entry device being depressed.” Ex. 1001, 25:9–13. Petitioners argue that
`Van Dok discloses allowing a user to “assign . . . a specific keystroke
`value” to a desired “personalized emoticon” “so that it can be called upon
`readily in a real-time conversation.” Pet. 32 (citing Ex. 1005 ¶ 63)
`(alteration in original). Petitioners asser
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