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`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.
`
`
`Case IPR2019-01568
`Patent 7,894,837
`
`DECLARATION OF KARL GINTER IN SUPPORT OF
`PATENT OWNER’S RESPONSE
`
`
`
`
`

`

`Table of Contents
`INTRODUCTION ................................................................................................. 1
`I.
`II. RELEVANT LEGAL STANDARDS .................................................................. 2
`A. Obviousness ....................................................................................................... 2
`B. Independent and Dependent Claims .................................................................. 3
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................... 3
`IV. CLAIM CONSTRUCTION ............................................................................... 4
`A. Claim-Construction Standard............................................................................. 4
`B. “Generating . . . Graphical Symbols in Response to Manipulation of Keys on
`a Data Entry Device” ................................................................................................ 6
`C. “A data entry device of a handheld terminal”..................................................10
`V. OPINION REGARDING THE CITED ART .....................................................16
`A. Van Dok (Ex. 1005) .........................................................................................16
`1. VD’s Data Entry Devices Are Not “Handheld” ...........................................17
`2. VD Does Not Disclose the Recitations of Claim 12 ....................................21
`3. Saric ..............................................................................................................23
`B. Zaner (Exhibit 1006) ........................................................................................26
`1. Zaner does not disclose “entering . . . graphical symbols with a data entry
`device” .................................................................................................................26
`2. Zaner does not disclose “generating textual characters and graphical
`symbols in response to manipulation of keys on a data entry device” ...............29
`3. Zaner’s Data Entry Devices Are Not “Handheld”........................................36
`4. Zaner Does Not Disclose the Recitations of Claim 12 .................................39
`VI. SECONDARY CONSIDERATIONS .............................................................43
`VII. CONCLUSION ................................................................................................43
`
`
`Exhibit 2017: Declaration of Karl Ginter – Page i
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`I.
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`Case IPR2019-01568
` U.S. Patent No. 7,894,837
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`INTRODUCTION
`I have been retained by Zipit Wireless, Inc. (“Zipit” or “Patent
`1.
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`Owner”) as a technical expert in connection with the proceeding identified above. I
`
`submit this declaration in support of the Patent Owner’s Response to the Petition
`
`for Inter Partes Review of U.S. Patent No. 7,894,837. I have been retained to
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`provide a technical opinion concerning the ’837 patent with respect to the
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`challenges presented by the Petitioners.
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`2.
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`I am being compensated for my time working on this matter at my
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`customary hourly rate for consulting work of this nature. I have no personal stake
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`nor interest in the outcome of the present proceeding or in either party to this
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`proceeding.
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`3.
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`In forming my opinions stated in this declaration, I reviewed and am
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`familiar with U.S. Patent No. 7,894,837 (“the ’837 patent”). I understand that
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`Petitioners have requested Inter Partes Review of the ’837 patent in a petition dated
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`August 30, 2019. I have also reviewed the materials Petitioner cited in support of
`
`its petition, including the Declaration of Dr. Gregory Abowd (Ex. 1004).
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`4.
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`Information about my education and experience is provided in my CV
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`filed as Exhibit 2003 in this proceeding.
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`Exhibit 2017: Declaration of Karl Ginter – Page 1
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`II. RELEVANT LEGAL STANDARDS
`A. Obviousness
`I understand that Petitioners assert that the challenged claims of the
`5.
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`Case IPR2019-01568
` U.S. Patent No. 7,894,837
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`ʼ837 patent are invalid as being obvious under 35 U.S.C. § 103 in light of the prior
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`art. I understand that in an IPR, a claim may be invalid under § 103 if the
`
`Petitioners establish by a preponderance of the evidence that the invention as a
`
`whole would have been obvious to a skilled artisan at the time the invention was
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`made. I understand that it is not permissible to use hindsight or ex post reasoning in
`
`assessing whether a claimed invention is invalid for obviousness. For example, an
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`invention should not be considered in view of what a skilled artisan would know
`
`today, nor can it be reconstructed after the fact by reading into the prior art the
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`teachings of the invention at issue.
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`6.
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`I understand that obviousness cannot be proven merely by showing
`
`that an invention is a combination of elements that were previously known in the
`
`prior art. Rather, in an IPR, a patent challenger must further establish by a
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`preponderance of the evidence that there were apparent reasons that would have
`
`prompted a skilled artisan to have combined these known elements in the fashion
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`claimed by the patent. Such reasons might include, for example, teachings,
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`Exhibit 2017: Declaration of Karl Ginter – Page 2
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`suggestions, or motivations to combine that would have been apparent to a skilled
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`Case IPR2019-01568
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`artisan.
`
`B.
`7.
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`Independent and Dependent Claims
`I understand that a claim in dependent form shall be construed to
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`incorporate by reference all the limitations of the independent claim (and any
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`intervening claims) from which it depends. Therefore, I understand that to prove
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`that a dependent claim is invalid, a prior art reference or combination of references
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`must disclose each and every claim limitation of the dependent claim, in addition
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`to each and every limitation of the claims from which it depends.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`I understand that in previous proceedings involving this patent, Zipit
`8.
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`proposed that a person of ordinary skill in the art would have “an accredited
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`bachelor’s degree in computer science, electrical engineering, or a related
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`discipline that included coverage of wireless communications and the use of
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`communication protocols used for real-time communications, and at least two
`
`years of industry experience. In lieu of specific academic training, a [POSA] may
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`draw upon appropriate industry experience to meet the foregoing requirements.”
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`Petitioners’ expert adopted that definition for purposes of his declaration (Ex.
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`1004, Abowd Decl. at ¶ 26), and I do the same.
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`Exhibit 2017: Declaration of Karl Ginter – Page 3
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`9.
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`Based on my education and professional experience in the field of the
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`Case IPR2019-01568
` U.S. Patent No. 7,894,837
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`’837 patent, I am familiar with and able to testify regarding the abilities of one
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`having ordinary skill in the art as of April 2003 (when the provisional application
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`to which the ’837 patent claims priority was filed). And while my qualifications
`
`exceed those described above, I have rendered my opinions from the perspective of
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`a person having ordinary skill as of the time of the invention.
`
`IV. CLAIM CONSTRUCTION
`A. Claim-Construction Standard
`I have been informed and understand that claims are construed from
`10.
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`the perspective of a person of ordinary skill in the art (“skilled artisan”) at the time
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`of the claimed invention. I also understand that claims are construed in an Inter
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`Partes Review proceeding using the same claim-construction standard used by
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`federal courts in civil actions under 35 U.S.C. § 282(b) as articulated in Phillips v.
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`AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny.
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`11. Under this standard, “the Office will construe patent claims . . . by
`
`taking into account the claim language itself, the specification, the prosecution
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`history of the patent, and extrinsic evidence, among other things, as briefed by the
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`parties.” 83 Fed. Reg. 51340, 51343 (Oct. 11, 2018), available at
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`https://www.federalregister.gov/d/2018-22006/p-24.
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`Exhibit 2017: Declaration of Karl Ginter – Page 4
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`12. Under the Phillips standard, “The ‘words of a claim are generally
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`Case IPR2019-01568
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`given their ordinary and customary meaning,’ which is ‘the meaning that the term
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`would have to a person of ordinary skill in the art in question at the time of the
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`invention, i.e., as of the effective filing date of the patent application.’” 83 Fed.
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`Reg. at 51343 (quoting Phillips, 415 F.3d at 1312-13).
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`13.
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`I understand that Phillips stated that the specification is “the single
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`best guide to the meaning of a disputed term and . . . acts as a dictionary when it
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`expressly defines terms used in the claims or when it defines terms by
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`implication.” 83 Fed. Reg. at 51343 (quoting Phillips at 1321 (internal quotation
`
`marks omitted)).
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`14.
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`I also understand that Phillips stated that the prosecution history “is
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`another source of intrinsic evidence that can ‘inform the meaning of the claim
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`language by demonstrating how the inventor understood the invention and whether
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`the inventor limited the invention in the course of prosecution.’” However, “the
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`prosecution history ‘often lacks the clarity of the specification and thus is less
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`useful for claim construction purposes.’” 83 Fed. Reg. at 51343 (quoting Phillips at
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`1317).
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`15. Finally, I understand that “[e]xtrinsic evidence, such as expert
`
`testimony and dictionaries, may be useful in educating the court regarding the field
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`Exhibit 2017: Declaration of Karl Ginter – Page 5
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`of the invention or helping determine what a person of ordinary skill in the art
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`Case IPR2019-01568
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`would understand claim terms to mean.” 83 Fed. Reg. at 51343 (quoting Phillips at
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`1318-19). I also understand, however, that “extrinsic evidence in general is viewed
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`as less reliable than intrinsic evidence.” 83 Fed. Reg. at 51343 (quoting Phillips at
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`1318).
`
`B.
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`16.
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`“Generating . . . Graphical Symbols in Response to Manipulation
`of Keys on a Data Entry Device”
`I understand that in a prior IPR proceeding involving the ʼ837 patent,
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`the Board agreed with Zipit that “graphical symbols” are “graphical emoticons.”
`
`The Board specifically found “that symbols (and graphical symbols) are distinct
`
`from the textual characters used to generate them.” Exhibit 1039, 2014 Blackberry
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`IRP Final Decision at 16 (“the term ‘graphical symbols,’ as would be understood
`
`by one of ordinary skill in the art, in the context of the entire disclosure is
`
`‘graphical emoticon.’). Thus, the Board concluded that “[t]he claims in light of the
`
`specification of the ʼ837 patent support the determination that ‘graphical symbols’
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`means ‘graphical emoticons’ and not the string of textual characters that may
`
`represent the graphical emoticon.” Id. at 17 (“The claims in light of the
`
`Specification of the ʼ837 patent support the determination that ‘graphical symbols’
`
`refer to ‘graphical emoticons’ and not the string of textual characters that may
`
`represent the graphical emoticon.”).
`Exhibit 2017: Declaration of Karl Ginter – Page 6
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`17.
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`It is my opinion that the Board’s claim construction accurately reflects
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`how a person of ordinary skill in the art would have understood the claim in 2003
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`based on the express teaching of the ʼ837 patent.
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`18. The ʼ837 patent supports the Board’s previous determination that
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`“graphical symbols” as recited in claim 11 refers to “graphical emoticons” (e.g.,
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`), as distinct from textual emoticons like “:).” That a skilled artisan would have
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`recognized a distinction between textual emoticons and graphical emoticons is
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`evident from the prior art cited in the ʼ837 patent’s background. See Exhibit 1001,
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`ʼ837 Patent at 3:2-9 (citing U.S. Patent No. 6,629,793 (“Miller”)). Miller shows
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`that in 2003 a skilled artisan knew that there are two types of emoticons, “text
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`emoticons” and “graphic emoticons.”1 See Exhibit 2003, Miller at 1:37-38: “An
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`emoticon can be a text emoticon, such as the smiley face : ) or it can be a graphic
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`emoticon.”) In light of this background understanding in the art, a skilled artisan
`
`would understand “graphical symbols,” as recited in claim 11 of the ʼ837 patent to
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`refer specifically to “graphical emoticons,” such as , , and
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`.
`
`
`1 The Board also specifically found that the term “emoticon” is a generic term that
`includes at least two different type of emoticons, “textual emoticons”, such as “:)”,
`and “graphical emoticons”, such as . See Exhibit 1039, Final Decision at 19.
`Exhibit 2017: Declaration of Karl Ginter – Page 7
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`19. The Background of the specification expressly states that emoticons
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`represented by symbols, such as , , and
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`, are “graphical symbols.” See
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`Exhibit 1001, ʼ837 patent at 3:34-40 (emphasis added); see also id. at 4:36-55;
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`6:49-67; 8:2-7; 8:17-20; 16:1-10; 18:1-7; 18:36-49; 19:13-27; Fig. 2; Fig. 12A; and
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`Fig. 12B. As the Board recognized, the ʼ837 patent distinguishes between textual
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`characters and graphical symbols, thereby “indicat[ing] to a person of ordinary
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`skill in the art that symbols (and graphical symbols) are distinct from the textual
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`characters used to generate them.” Exhibit, 1039, 2014 FWD at 16 (citing Exhibit
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`1001, ʼ837 patent at 3:34-44; 4:40-55). Thus, according to the Board’s previous
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`holding, textual emoticons such as “:)” are not graphical symbols. This accurately
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`reflects how a person of ordinary skill in the art would have understood the term
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`“graphical symbols.”
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`20. The claims of the ʼ837 patent confirm that graphical symbols are
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`graphical emoticons and not a sequence of text characters. See Intri-Plex Techs.,
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`Inc. v. Saint-Gobain Perf. Plastics Rencol Ltd., Case IPR2014-00309, Document
`
`No. 83, Final Written Decision at 9 (“A claim construction analysis begins with,
`
`and is centered on, the claim language itself.”) (citation omitted). All of the claims
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`of the ʼ837 patent distinguish between “textual characters” and “graphical
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`symbols.” See Exhibit 1001, ʼ837 patent at claims 1-20. For example, independent
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`Exhibit 2017: Declaration of Karl Ginter – Page 8
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`claim 11 distinctly claims “textual characters” and “graphical symbols” as two
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`different things, separately reciting them three times:
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`11. A method for managing wireless network access and instant
`messaging through a wireless access point with a handheld instant
`messaging terminal comprising: generating textual characters and
`graphical symbols in response to manipulation of keys on a data
`entry device of a handheld instant messaging terminal; displaying the
`generated textual characters and graphical symbols on a display of
`the handheld instant messaging terminal; 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 . . .
`See Exhibit 1001, ʼ837 patent at claim 11 (emphasis added). Furthermore,
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`dependent claim 13 recites generating (for transmission) a text sequence
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`representing a graphical symbol in accordance with an instant messaging protocol.
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`Id. at claim 13. If textual characters or sequences like “:)” were themselves
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`graphical symbols, claim 13 would make no sense.
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`21.
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`In sum, the specification clearly supports the Board’s previous
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`construction that a person of ordinary skill in the art would understand “graphical
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`symbols” as “graphical emoticons,” such as , , and
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`.
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`Exhibit 2017: Declaration of Karl Ginter – Page 9
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`“A data entry device of a handheld terminal”
`C.
`22. Claim 11’s preamble indicates that it is directed to “[a] method for
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`managing wireless network access and instant messaging through a wireless access
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`point with a handheld instant messaging terminal.” Exhibit 1001, ʼ837 patent at
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`24:55-57 (emphasis added). The “handheld” aspect is woven throughout the claim,
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`appearing four times in the body of the claim (and also in the preamble). Id. at
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`24:54-5:8. The resulting handheld terminal recited in claim 11 thus includes a data
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`entry device, a display, an Internet protocol communications module, a wireless
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`transceiver, and a control module implementing an instant messaging protocol.
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`23. A person of ordinary skill in the art would understand that the
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`integration of all this hardware and functionality into a handheld terminal forms a
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`key component of claim 11. It also represented a significant achievement at the
`
`time the ʼ837 patent was filed. Thus, when claim 11 recites “a data entry device of
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`a handheld instant messaging terminal,” it requires that that the handheld terminal
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`include “a data entry device integrated into the housing of a handheld terminal.”
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`This becomes apparent even from the first paragraphs of the specification and is
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`reaffirmed throughout the description.
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`24. The ʼ837 patent’s Background section identifies the class of handheld
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`terminals that the claimed invention improves upon: “These terminals include
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`Exhibit 2017: Declaration of Karl Ginter – Page 10
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`cellular telephones, two-way pagers, personal digital assistants (PDAs), and
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`handheld computers, which are commonly known as palmtop computers.” Exhibit
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`1001, ʼ837 patent at 1:63-66. The ʼ837 patent distinguishes such handheld devices
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`from “portable computers that require some form of luggage for transportation.”
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`Id. at 2:64-66. Further, the specification criticizes handheld terminals requiring
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`plug-in keyboards and the like: “The smaller communication devices, such as
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`PDAs, palm computers, and two-way pagers, suffer from the textual/graphical data
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`entry issues discussed in U.S. Pat. No. 6,665,173.” Id. at 2:66-3:2. Such devices
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`require an external keyboard that “still requires a flat surface for support.” Id. at
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`3:7-9.
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`25.
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`In keeping with this critique of the existing state of the art, the ʼ837
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`patent’s Summary states that “[w]hat is needed is an instant messaging terminal
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`that incorporates keys for facilitating instant messaging features without requiring
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`a table or other platform structure for stability during data entry.” Id. at 4:15-18. In
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`the Summary, the inventors expressly state that this need in the art is met by
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`providing an instant-messaging terminal with an integrated housing:
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`The above limitations of previously known instant messaging
`terminals are overcome by an instant messaging terminal made in
`accordance with the principles of the present invention. The inventive
`instant messaging terminal includes . . . a data entry device integrated
`Exhibit 2017: Declaration of Karl Ginter – Page 11
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`in a housing for the instant messaging terminal, the data entry device
`being manipulated for entry of textual characters and graphical
`symbols.
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`Id. at 4:22-30. The next paragraph reiterates this point: “The data entry device that
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`is integrated in the instant messaging terminal housing includes keys for graphical
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`symbols, such as those typically seen in instant messages.” Id. at 4:56-58
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`(emphasis added).
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`26. This characterization of the claimed instant messaging terminal as
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`including an integrated data entry device is repeated throughout the specification.
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`Id. at 6:39-45 (“A method that may be used to implement the principles of the
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`present invention includes . . . manipulating a data entry device integrated in a
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`housing for the instant messaging terminal for entry of textual characters and
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`graphical symbols”); id. at 8:47-51 (“A system and method that operates in
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`accordance with the principles of the present invention provides an instant
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`messaging terminal that incorporates keys for facilitating instant messaging
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`features without requiring a table or other platform structure for stability during
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`data entry.”) (emphasis added); 6:49-52 (“[t]he integration of the data entry device
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`in the instant messaging terminal housing enables the textual characters and
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`Exhibit 2017: Declaration of Karl Ginter – Page 12
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`graphical symbols to be entered for instant messages without requiring platform
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`support for a foldout keyboard or the like”) (emphasis added).
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`27. While claim 11 does not expressly use the term “integrated,” a person
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`of ordinary skill in the art would understand that Patent Owner clearly and
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`unambiguously stated during prosecution of the parent application, which issued as
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`U.S. Patent No. 7,292,870, that issued claim 20 (application claim 21) requires that
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`the data entry device be integrated into the housing of the handheld instant
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`messaging terminal even though that claim likewise did not expressly use the word
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`“integrated.” In explaining how the claimed invention overcame a reference cited
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`by the Examiner, Patent Owner stated, “Specifically, [application] claim 21
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`requires that the data entry, data display, wireless, Internet protocol
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`communications, and instant messaging and session protocol implementation, all
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`be performed within a single handheld terminal housing.” Ex. 2052, ʼ870 File
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`History at 72, November 7, 2006 Response at 10-11. Patent Owner distinguished
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`the art on this basis:
`
`Accordingly, this process is capable of performing all tasks required
`for communicating instant messages with other persons, called
`buddies, who are using terminals coupled through an instant
`messaging service provider for communication with the handheld
`instant messaging terminal disclosed in Applicant's specification. The
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`Exhibit 2017: Declaration of Karl Ginter – Page 13
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`Rucinski reference discloses a process that is substantially different
`from the process performed in the handheld instant messaging
`terminal of claim 21. Rucinski discloses a handheld wireless device
`that operates as a user interface for entering and displaying data that is
`coupled to a computer through a base station so the computer can do
`the protocol processing for all of the wireless devices coupled to the
`computer. . . . The purpose of the wireless device in Rucinski is to
`enable a user to enter data and see messages displayed “in the same
`manner as if the user was sitting at his computer.”
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`Id. at 72-73.
`28. Patent Owner then again reiterated that the claimed handheld terminal
`
`includes, among other things, an integrated data entry device:
`
`Rucinski expressly teaches away from Applicants' invention, which is
`a process performed with a wireless handheld terminal that provides
`the protocol processing required for conversation session support with
`an instant messaging provider through a wireless, Internet protocol
`access point as well as the data entry and display functions. . . . As
`noted above, Rucinski segregates the functions of data entry and
`display from the functions of wireless communication and protocol
`processing. Therefore, the process disclosed in Rucinski does not
`teach or suggest data display, data entry, wireless, Internet protocol
`communications, and execution of an application program that
`implements instant messaging and session protocols for a
`conversation session in a single handheld terminal. For at least these
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`Exhibit 2017: Declaration of Karl Ginter – Page 14
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`reasons, claim 21 is patentable over all the references of record.
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`Id. at 73. Therefore, a person of ordinary skill in the art would understand that
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`Patent Owner unmistakably represented during prosecution that the data entry
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`device was integrated into the housing of the handheld terminal and relied on that
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`integration in distinguishing the prior art. Thus, the integrated data entry device
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`was an important distinguishing feature of the ʼ870 patent.
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`29. During the prosecution of the ʼ837 “child” patent applicant, Zipit
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`distinguished the cited prior art by pointing out that claim 11 “as a whole” was
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`patentable over Rucinski because claim 11 requires a method for generating data
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`messages in accordance with at least one instant messaging protocol that is
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`compatible with an instant messaging service and wirelessly transmitting the
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`generated data messages in a handheld terminal:
`
`Rucinski fails to disclose a method for wirelessly transmitting data messages
`that are generated in accordance with an instant messaging protocol using a
`wireless transceiver in a handheld instant messaging terminal. Instead,
`the wireless device 150 taught in Rucinski transmits data using an
`intermediate protocol (Rucinski ¶¶ 0015 and 0029 - 0031) that is
`incompatible with instant messaging protocols used by instant messaging
`services. Wireless device 150 can only communicate messages directly with
`the computing device 130 using the intermediate protocol. The wireless
`device 150 is incapable of communicating messages compatible with an
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`Exhibit 2017: Declaration of Karl Ginter – Page 15
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`instant messaging service. Thus, Rucinski fails to teach a method for
`generating data messages in accordance with at least one instant messaging
`protocol that is compatible with an instant messaging service and wirelessly
`transmitting the generated data messages in a handheld terminal as
`required by claim 11.
`
`
`Exhibit 1002, ʼ837 File History at 118-19, September 13, 2010 Response at 10-11
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`(emphasis added). Thus, as it did during the prosecution of claim 20 the “parent”
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`ʼ870 patent, a person of ordinary skill in the art would understand that Zipit
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`emphasized the elements of claim 11 “as a whole” to gain an allowance.
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`30.
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`In light of the intrinsic record’s teaching, it is my opinion that the
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`phrase “a data entry device of a handheld instant messaging terminal” in claim 11
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`means “a data entry device integrated into the housing of a handheld terminal.”
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`V. OPINION REGARDING THE CITED ART
`A. Van Dok (Ex. 1005)
`31. Van Dok (“VD”) teaches a “user interface” for real-time
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`communication. In other words, VD teaches a “computer program”, i.e. software.
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`Exhibit 1005, VD at ¶ [0003]. VD does not claim to have invented any hardware,
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`such as an instant messaging terminal. Nor did VD invent a data entry device, such
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`as a new keyboard or mouse.
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`Exhibit 2017: Declaration of Karl Ginter – Page 16
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`VD’s Data Entry Devices Are Not “Handheld”
`1.
`32. VD teaches a “user interface” for real-time communication, that is, a
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`“computer program” or software. Exhibit 1005, VD at ¶ [0003]. So, it is not
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`surprising that VD states that VD’s software may be written using “handheld
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`device markup language (HDML).” Exhibit 1005, VD at [0036]. It is also not
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`surprising that VD teaches that VD’s software “may be practiced in … hand-held
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`devices.” Exhibit 1005, VD at [0069].
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`33. VD, however, did not invent any new hardware, such as an instant
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`messaging terminal. Nor did VD did invent a new data entry device, such as a
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`keyboard or mouse. Instead, VD merely says that “[a] user may enter commands
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`and information into the computer 820 through keyboard 840, pointing device 842,
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`or other input devices (not shown)” and that these input devices are “connected”
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`“through a serial port interface 846,” “a parallel port, a game port or a universal
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`serial bus (USB)”:
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`Exhibit 2017: Declaration of Karl Ginter – Page 17
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`Exhibit 1005, VD at ¶ [0072].
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`34.
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`In other words, the only data entry devices VD discloses are
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`connected to a computer device through an external port. Id. VD nowhere teaches a
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`data entry device that is part of, or integrated into, the device itself. Thus, even if
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`VD’s “invention” (software) were “practiced in” a handheld device, according to
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`VD’s own disclosure, one of ordinary skill in the art would understand VD to
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`indicate that an external data entry device would be connected to the handheld
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`device through an external port, not integrated into the handheld device. See
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`Exhibit 1005, VD at ¶ [0069] and ¶ [0072].
`Exhibit 2017: Declaration of Karl Ginter – Page 18
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`35. Van Dok makes a passing reference that the invention may be
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`practiced in a variety of computing environments, including hand-held devices.
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`Exhibit 1006, VD at ¶ [0069]. However, typical hand-held devices in 2003 did not
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`provide the ability to generate graphical symbols. Indeed, the ʼ837 patent describes
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`the shortcomings of the data entry devices of prior art handheld devices, such as
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`“cellular telephones,” “PDAs,” and “handheld computers.” See Exhibit 1001, ʼ837
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`patent at 1:62-2:8. For example, those prior art devices were “limited in their
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`textual and graphical character entry systems.” Id. Space in such devices was at a
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`premium, and a it is my opinion that a POSITA would not have been motivated to
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`add techniques for generating graphical symbols to an already cramped
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`keypad/keyboard. That is particularly true given that the conventional practice of
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`that time was teaching away from hard keys and instead providing data-entry
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`techniques such as Palm’s shorthand handwriting recognition.
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`36. As discussed above, claim 11 requires that the handheld terminal
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`include an integrated data entry device providing keys that a user can manipulate to
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`generate emoticons. To the extent a hand-held device such as those briefly
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`referenced (with no detail) by Van Dok provided a physical keypad in the relevant
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`timeframe (which few did), they did not constitute the data entry device recited in
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`claim 11. Van Dok does not disclose any improvements to the typical keypads of
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`Exhibit 2017: Declaration of Karl Ginter – Page 19
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`hand-held devices known in the art (which were what the ʼ837 patent improved
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`upon).
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`37. Petitioners present no argument that it would have been obvious to
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`modify VD to include an integrated keyboard allowing entry of both text
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`characters and graphical symbols. Nor would it have been obvious to do so at the
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`time the ʼ837 patent was filed. Rather, as the ʼ837 patent discusses, integrating a
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`prior art instant messaging keyboard with a standard keyboard “would adversely
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`impact the overall size of the instant messaging terminal.” Exhibit 1001, ʼ837
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`patent at 3:14-16. That is particularly true given that claim 11 also requires other
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`features to be integrated into the handheld terminal, rendering the claimed
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`handheld terminal even less obvious to a skilled artisan at the time of the invention
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`due to size and cost constraints. Furthermore, integrating a data entry device into
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`the handheld terminal would also significantly increase the cost, an important
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`consideration for any electronic device and especially in 2003, the early days of
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`handheld devices.
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`38. Accordingly, it is my opinion that the proposed grounds of invalidity
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`based on VD fail to establish a prima facie case of obviousness.
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`Exhibit 2017: Declaration of Karl Ginter – Page 20
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`VD Does Not Disclose the Recitations of Claim 12
`2.
`It is my opinion that Petitioners fail to establish that VD renders
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`39.
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`obvious the additional recitations of claim 12. Claim 12 recites “[t]he method of
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`claim 11, the conversation session control further comprising: correlating a key on
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`the data entry device with a graphical symbol in response to the key on the data
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`entry device being depressed.” Ex. 1001, ʼ837 patent, 25:9-14. Petitio