Before the Patent Trial and Appeal Board
`
`United States Patent and Trademark Office
`
`Google LLC, LG Electronics, Inc.,
`and LG Electronics U. S.A., Inc.
`(Petitioners)
`
`V.
`
`Zipit Wireless, Inc.
`(Patent Owner)
`
`Inter Partes Review
`
`‘ No. |PR2019—O1567 | U.S. Patent NO. 7,292,870
`
`No.
`
`|PR2019-01568 | U.S. Patent No. 7,894,837
`
`Google Exhibit 1069
`Google v. Zipit
`IPR2019-01568
`
`

`

`The Zipit Patents
`
`
`The ’837 Patent
`
`
`é,.: <7 ’“
`
`|IIIII!IIIIIIIII
`
`
`
`INSTANT MESSAGING TERMINAL
`
`ADAPTED FOR WIRELESS
`
`COMMUNICATION ACCESS POINTS
`
`The ’870 Patent
`
`INSTANT MESSAGING TERMINAL
`
`ADAPTED FOR WI-FI ACCESS POINTS
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`2
`
`

`

`
`
`Challenged Independent Claims
`
`’837 Patent Claim 11
`
`’870 Patent Claim 20
`
`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 char-
`acters and graphical symbols in accordance with at least
`one instant messaging protocol that is compatible with
`an instant messaging service;
`
`wirelessly transmitting the generated data messages to a
`wireless network access point through an Internet pro-
`tocol communications module and wireless transceiver
`
`in the handheld instant messaging terminal; and
`controlling a conversation session in accordance with the at
`lea st one instant messaging protocol being implemented
`with a control module located within the handheld
`
`instant messaging terminal.
`
`20. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`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;
`displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`communicating instant messages with a wireless, Internet
`protocol access point, the instant messages being com-
`municated with a communications module and wireless
`
`transceiver in the handheld terminal;
`coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through
`the wireless, Internet protocol access point;
`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;
`displaying conversation histories for active conversations
`terminated by a loss of a network connection; and
`automatically searching for wireless, Internet protocol
`network beacons after the conversation histories are
`
`displayed.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`

`

`Challenged Independent Claims
`
`’837 Patent Claim 11
`
`’870 Patent Claim 20
`
`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;
`
`IM and
`Wireless
`Access
`
`Limitations
`
`generating data messages with the enerated textual char~
`
`acters and graphical symbols
`
`
`
`wirelessly transmitting the generated data messages to a
`Compatible
`wireless network access point through an Internet pro-
`IM Protocol
`
`tocol communications module and wireless transceiver
`Limitations
`in the handheld instant messaging terminal; and
`
`controlling a conversation sessior
`
`w1t
`a contro Ino ue ocate w1t n t e
`an
`instant messaging terminal.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`20. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`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;
`displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`communicating instant messages with a wireless, Internet
`protocol access point, the instant messages being com-
`municated with a communications module and wireless
`
`transceiver in the handheld terminal;
`coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through
`the wireless, Internet protocol access point;
`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
`
`Authentication
`Limitation
`
`messaging terminals;
`i“ Loss Limitation
`
`ml
`\ Connection
`
`‘
`
`

`

`Challenged Claims and Grounds | ’837 Patent
`
`Independent Claim 11
`l Undisputed
`
`
`
`
`
`_
`Primary References
`IM limitations
`
`
`Zaner (Ground 5)
`
`
`
`
`Wireless access details
`Sinivaara
`
`Van Dok (Ground 1)
`
`
`
`Same combinations as claim 11 (Grounds 1 and 5)
`
`Alternatively, same combinations + Saric
`
`(Grounds 2 and 6)
`
`
`
`
`
`
`Same combinations + Chiu (Grounds 3 and 7)
`
`Same combinations as claim 11 (Grounds 1 and 5)
`
`Same combinations + Capps (Grounds 4 and 8)
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`5
`
`

`

`Challenged Claims and Grounds | ’870 Patent
`
`Independent Claim 20
`
`
`
`Undisputed
`
`IM limitations
`
`Van Dok (Ground 1)
`
`Zaner (Ground 4)
`
`_
`Primary References
`
`‘
`
`Connection loss limitations
`
`McCarthy
`
`, Sinivaara 1
`Wireless access details
`/ 1
`’ Chiu
`I Secondary References
`Authentication limitation
`Dependent Claims
`
`
`
`
`
`
`
`21
`
`24-30
`
`VD combination + Tracy (Ground 2)
`
`VD combination + Saric (Ground 3)
`
`Zaner combination with touchscreen (Ground 4)
`
`Zaner combination + Saric (Ground 5)
`
`Same combinations as claim 20
`
`
`
`J
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`6
`
`

`

`Independent Claims — Disputed Limitations
`
`’837 Patent Claim 11
`
`’870 Patent Claim 20
`
`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 char~
`acters and graphical symbols in accordance with at least
`one instant messaging protocol that is compatible with
`an instant messaging service;
`
`wirelessly transmitting the generated data messages to a
`wireless network access point through an Internet pro-
`tocol communications module and wireless transceiver
`
`in the handheld instant messaging terminal; and
`
`controlling a conversation session in accordance with the at
`lea st one instant messaging protocol being implemented
`with a control module located within the handheld
`
`instant messaging terminal.
`
`20. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`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;
`displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`communicating instant messages with a wireless, Internet
`protocol access point, the instant messages being com-
`municated with a communications module and wireless
`
`transceiver in the handheld terminal;
`coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through
`the wireless, Internet protocol access point;
`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 messagingterminals;
`
`
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`

`

`VD Ground
`
`Independent Claim 11:
`
`’837 Patent
`
`

`

`’837 Reply (Paper No. 22) at 1-4.
`
`Zipit’s Construction of “data entry device
`of a handheld... terminal” Fails
`
`
`
`SOIe
`Disputed
`Limitation:
`
`generating textual characters and graphical symbols in
`
`res onse to mani ulation of keys 01
`
`
`Zipit’s Construction:
`
`As discussed above, the phrase “a data entry device of a handheld instant
`
`messaging terminal" should be construed to mean
`
`
`
`VD is not directed
`
`Board’s Institution Decision:
`
`‘837 POR (Paper No. 15) at 10.
`
`toward a handheld terminal but instead toward a user interface: “
`
`
`
`Indeed, Patent Owner acknowledges that the ’837 patent addresses many
`
`known handheld terminals, stating:
`
`Petitioners’ Reply
`
`The ’837 patent’s Background section identifies the class of
`handheld terminals that the claimed invention improves upon:
`“These terminals include cellular telephones, two-way pagers,
`personal digital assistants (PDAS), and handheld computers,
`which are commonly known as palmtop computers.” Exhibit
`1001, ’837 patent at 1:63—66.
`
`Id. On the present record, Patent Owner has not shown persuasively that a
`
`person of ordinary skill in the art would understand that the data entry
`
`mechanism is limited to those integrated into the housing of the temrinal.
`
`See id. at 14—17.
`
`
`
`Such blatant importation of
`limitations from the specification is improper.
`(.‘umurk ( 'ommc 'm‘ Inc. v. Harris
`
`('orp., 156 F.3d 1182, 1186-87 (Fed. Cir. 1998); Phillips v. AWH(‘0rp., 415 F.3d
`
`1303, 1319-20 (Fed. Cir. 2005) (“[R]eading a limitation from the written
`
`description into the claims” is a “cardinal sin[] of patent law").
`
`‘837 Reply (Paper No. 22) at 2.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`‘837 Institution Decision (Paper No. 9) at 13.
`
`

`

`[smepmpapemman.
`
`Zipit Chose to Limit Claim 1, but NOT Challenged
`Claim 11, to an “Integrated” Data Entry Device
`
`’837 Claim 1 (Not Challenged)
`
`’837 Claim 11 (Challenged)
`
`1— 11. A method for managing wireless network access and
`ahandheld terminal housing;
`instant messaging through a Wireless access point with a
`handheld instant messaging terminal comprising:
`generating textual characters and gra hical s mbols in
`
`the
`data entry device being configured to generate textual
`
`characters and graphical symbols inresponse to actua- Wtion of the data entry device;
`
`Petitioners’ Reply
`
`Zipit’s emphasis on the specification’s use of the temi “integrated“ hurts,
`
`rather than helps, Zipit’s argument. POR, 3-5. But the use of that temi in the
`
`specification and other claims of the ’837 patent shows that
`
`
`
`
`While
`
`the applicant did choose to limit claim 1 to a data entry device “integrated in the
`
`terminal housing," it chose not to include that limitation in claim ll. This
`
`demonstrates that claim 1 l is not limited to an “integrated" data enny device. Ex.
`
`1060 (“Abowd-Reply") 1] 2.
`
`NO RESPONSE in
`
`Zipit’s Sur-Reply
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`‘837 Reply (Paper No. 22) at 2.
`
`1O
`
`

`

`There Was No Clear and Unambiguous Disavowal of Non-Integrated
`
`Data Entry Devices in the ’837 Patent’s Prosecution History [smepwapm22).”.
`
`’837 Prosecution History
`
`Petitioners’ Expert
`
`Rucinski fails to discl0sc 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 ISO
`
`taught in Rucinski transmits data using an intermediate protocol (Rucinski ‘1‘]1 00l5 and
`
`0029 — 003] ) that is incompatible with instant messaging protocols used by instant
`
`messaging services. Wireless device ISO 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 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 1].
`
`’837 File History (Ex. 1002) at 118—119,
`cited at ‘837 POR (Paper No. 15) at 7-8; ’837 Reply (Paper No. 22) at 3.
`
`
`
`Rucinski (EX. 2053) at Fig. 3,
`cited at ‘837 POR (Paper No. 5) at 51;
`’837 Reply (Paper No. 22) at 4.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`4.
`
`During prosecution ot‘thc "837 patent and the application to which it
`
`claims priority, the applicant argued that, unlike in Rucinski, in the ”837 patent the
`
`claimed software processing “limetions” (including particularly protocol
`
`processing which Rucinski performed in a separate computer) are performed in the
`
`~837 palcnt‘s handheld housing. Ex, 2052 at 72-73
`
`
`
`
`
`6.
`
`indeed. a POSA would have understood that the applicant could not
`
`have distinguished Rucinski by claiming an integrated data entry device. because
`
`Rucinski‘s own data entry device (also a keyboard) was integrated into Rucinski‘s
`
`handheld wireless devices housing, as show) in F IG. 3 ofRueinslti (reproduced
`
`below).
`
`
`Abowd (Ex. 1060) at 111] 4-6, cited at ’837 Reply (Paper No. 22) at 3-4.
`
`Zipit’s Expert
`
`Q.
`
`Is the keypad 310 in Ruckinski’s Figure 3 integrated
`in the device’s housing?
`
`
`
`
`
`A.
`
`I believe so.
`
`Deposition of Karl Ginter (Ex. 1058) at 528-10,
`cited at ’837 Reply (Paper No. 22) at 4.
`
`11
`
`

`

`There Was No Clear and Unambiguous Disavowal of Non-Integrated
`
`Data Entry Devices in the ’870 Patent’s Prosecution History [smepwapem22W.
`
`
`
`The claim has been amended to more particularly point out
`
`that the processing identified in claim 21 is performed in a single handheld
`
`terminal housing.
`
`In Rucinski, the computer does the protocol
`
`processing and the wireless user device only displays and supports entry of data.
`
`Thus, Rucinski expressly teaches away from Applicants' invention, which is a
`process performed with a wireless handheld terminal that provides the protocol
`
`computer contains the application or client program that provides all of the
`
`provider through a wireless, Internet protocol access point as well as the data
`
`In the system of Rucinski, the
`
`processing required for conversation session support with an instant messaging
`
`protocol processing required for supporting the instant messaging services
`
`entry and display functions.
`
`Rucinski segregates the functions of data entry and
`
`display from the functions of wireless communication and protocol processing.
`
`‘870 Prosecution History (Ex. 2052 in |PR2019-01568) at 72-73,
`cited at ‘837 POR (Paper No. 15) at 6-7; ‘837 Reply (Paper No. 22) at 3.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`12
`
`

`

`There Was No Clear and Unambiguous Disavowal of Non-Integrated
`
`Data Entry Devices in the ’870 Patent’s Prosecution History [smepwapem22)....
`
`Petitioners’ Expert
`
`A POSA would have understood that the
`
`“functions" the applicant referred to are software functions. For example. it was
`
`typical for a peripheral data entry device (Lag. a keyboard) to transmit signals over
`
`a wire/cable/etc. to the main processor of a computing device. and then the
`
`processor would execute software fiinctionality to interpret those signals into
`
`characters or other data in performing the data entry function that the applicant
`
`mentioned A POSA would have understood that this data entry software
`
`functionality could utilize key press signals received from a data entry device.
`
`whether it is integrated, or not, integrated in the handheld terminals housing.
`
`5.
`
`A POSA reviewing the statements in the prosecution histories (Ex.
`
`
`
`“To operate as a disclaimer, the
`
`statement in the prosecution
`
`history must be clear and
`
`unambiguous, and constitute a
`
`clear disavowal of scope.”
`
`Cont’l Circuits LLC v. Intel Corp, 915 F.3d 788, 798 (Fed. Cir. 2019)
`(cited ‘837 Reply (Paper No. 23) at 3).
`
`Okay. So a keyboard of -- and right now I’m talking about
`
`like a physical keyboard on the one that's on my computer
`
`Zipit’s Expert
`
`
`
`
`1002 at 117-]le I39 and Ex. 2052 at 72-73) that Zipit cites (POR. 5-l0) would
`
`in front of me, actually generates key press indications. So
`
`have understood that the applicant was discussing data entry and protocol
`
`it does a mapping of -- and it says, I have put -- this key has
`
`processing functions (software) within the handheld, and would not have
`
`been pushed and it generates basically an XY coordinate
`
`understood that the applicant disavowed those functions use of signals from data
`
`within the -- within the key mapping matrix and we’ll call
`
`entry devices that are not integrated in the handheld instant messaging terminal
`
`housing. For example, a POSA would not have understood the applicant‘s
`
`that a key press code for now. Okay? And that is sent over
`
`the wire to the computer, okay?
`
`statements to have disavowed the use ofa non-integrated keyboard whose signals
`
`The computer then has aW in it that
`
`are interpreted by data entry soliware functions executed by a processor within the
`
`translates the key press code into the current character in
`
`handheld instant messaging terminals housing
`
`the current character set...
`
`Abowd (EX. 1060) at 111] 4-5, cited at ’837 Reply (Paper No. 22) at 3.
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`Deposition of Karl Ginter (Ex. 1058) at 88:13-24,
`cited at ’837 Reply (Paper No. 22) at 3.
`
`13
`
`

`

`VD’s “Hand-held Device” Meets Even Zipit’s
`“lnteg rated” Construction
`
`[smepmpapermmats. ,
`
`, multipro-
`,
`cessor systems, microprocessor-unase 0r programmable
`consumer electronics, network PCs, minicomputers, main-
`frame computers, and the like.
`'
`'
`4
`
`Van Dok (Ex. 1005) at [0069],
`cited at ‘837 Petition (Paper No. 2) at 20-21; ‘837 Reply (Paper No. 22) at 5.
`
`
`
`Petitioners’ Expert Zipit’s Expert
`
`9.
`
`Additionally, even if claim 11 were somehow interpreted to include
`
`an “integrated” limitation, a POSA would have understood the “hand-held
`
`
`
`
`
`device[]” embodiment disclosed in VD (at [0069]) to have an integrated keyboard,
`because— A
`
`1
`
`i
`
`
`
`That integration helps allow the device to be operated while held in the hand.
`
`Deposition of Karl Ginter (EX. 1058) at 25:7-10,
`cited at ‘837 Reply (Paper No. 22) at 5.
`
`Abowd (Ex. 1060) atfl 9, cited at ’837 Reply (Paper No. 22) at 5.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`14
`
`Q.
`
`" '
`So you said :1
`-:
`11‘
`c. ~
`‘
`
`
`
`
`
`f is that right?
`
`
`
`

`

`VD Ground
`
`Independent Claim 20:
`
`’870 Patent
`
`15
`
`

`

`’870 Independent Claim 20 — Disputed Limitations
`
`’870 Claim 20
`
`20. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`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;
`displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`communicating instant messages with a wireless, Internet
`protocol access point, the instant messages being com-
`municated with a communications module and wireless
`
`transceiver in the handheld terminal;
`coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through
`the wireless, Internet protocol access point;
`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;
`
`
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`16
`
`

`

`VD Meets “entering... graphical symbols with a data entry device” ’870 Reply (Paper No. 23) at 1.
`
`
`
`Van Dok
`
`_
`
`Instant Messenger
`
`Do you want to go get its
`
`Instant Messenger
`
`502
`
`FIG 5A
`'
`
`502
`
`Van Dok (Ex. 1005) at Fig. 5a,
`cited at ‘870 Petition
`(Paper No. 2) at 19.
`
`Petitioners’ Reply
`
`Board’s Institution Decision:
`
`Zipit argues that VD’s graphical symbols are not “enter[ed]. .. with a data
`.
`,,
`_,
`entry devrce because the user types a text sequence “2)
`
`to cause the software to
`
`
`
`produce the corresponding graphical symbol “.“© POR, 7-8.
`
`
`Ex. 1060 (“Abowd—Reply")
`W 2-3‘
`
`Patent Owner argues that Van D0k does "01 (“591058 “entering textual
`characters and graphical symbols with a data entry device” because features
`
`of the ’870 specification require the benefit of not typing text sequences to
`
`obtain corresponding graphical symbols (graphical emoticons). Prelim.
`
`Resp. 3 l —34.
`
`As
`
`discussed above, on the present record, we determined that the “entering“
`
`limitation of claim 20[A] is not limited to emoticon keys or programmable
`keys.
`
`‘870 Reply (Paper No. 23) at 2.
`
`* * *
`
`On this record, Petitioners have shown
`
`sufficiently for this Decision that the system of
`
`DEMONSTRATIVE EXHIBIT _ NOT EVIDENCE
`
`‘870 Institution Decision (Paper No. 10) at 17-18.
`
`17
`
`

`

`’870 Reply (Paper No. 23) at 3.
`
`VD’s Entering Method Is the Same As an ’870 Patent Embodiment
`
`’870 Patent
`
`Zipit’s Expert
`
`The second set of emoticons is specific to one or more
`messaging services and are not necessarily broadly known.
`Most of these emoticons cannot be assigned to the program—
`mable keys but can be entered by depressing the standard
`k6}: seguence recognized by the particular service’ Any
`emoticon that a user attempts to type in the text entry
`window 374 that is not supported by the service through
`which a buddy is coupled to the terminal is not generated in
`the window. In this manner, the user is reminded that the
`emoticon that the user is attempting to type is not supported
`bV that service. The known emoticons supported by the
`IIlajOI‘ known services that may be generated by a terminal
`made in accordance With the principles Of the present
`invention are shown in the following tables 24.
`
`Q
`
`Okay. And then the second sentence says these can be entered by depressing the
`standard key sequence recognized by the particular service.
`
`A. That isW.
`
`Q. And then Tables 2 through 4 show those emotions that can be entered; is that
`correct?
`A. And— mwith that’s what it shows, yes.
`>l<
`>l<
`>l<
`
`Tables 2 through 4 Show graphlcal emoucons’ comet
`Q
`A. M and the language is fairly clear in the specification, it says: “The
`known emoticons supported by the major known services that may be
`generated by this — by the — by a terminal made in accordance with the
`principles of the invention are shown in these tables.”
`
`’870 Patent (Ex. 1001) at 201-14, cited at ’870 Petition (Paper No.
`2) at 19; ’870 Reply (Paper No. 23) at 2—3.
`
`Deposition of Karl Ginter (EX. 1058) at 71:9-16; 6924-706,
`cited at ‘870 Reply (Paper No. 23) at 2.
`
`
`
`Petitioners’ Expert Van Dok
`
`
`
` emlmdmicnts (it“‘eiitering" graphical symbolsi one in which dedicated keys are—
`
`
`
`[0056] FIG. 5A illustrates instant messaging user inter—
`face 500, having conversation Window 502, input box 504,
`and send button 506, both “Before” and “After” automatic
`emoticon replacement in accordance with the present inven-
`tion. 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.
`
`Van Dok (EX. 1005) at [0056], cited at ’870 Petition (Paper No. 2) at 19.
`
`The patent thus discloses t\\ o tlittcreiit
`
`used to enter graphical symbols. and one in which a graphical symbol is entered by—
`typing a key sequence iliat is convened by soltware to the corresponding graphical—
`
`symbol
`
`l{\. ltltll. l0 18-20' l4 (“l'l |he present invention supports two sets of
`
`emoticons 'l'hc tirst set.
`
`. may be associated \\'ltll thc pre-progranmicd .. or the
`
`pt'ogrmumable emoticon keys... The second set... cannot be assigned to the
`
`programmable keys btit can hi: entered by depressing the standard key sequence "l.
`
`This confirms the l’OSA‘s understanding that the plain claim language "enteringI
`
`graphical sytiibols with a data cittiy dcvtcc" covers at least both these described
`embodiments,
`
`
`
`Abowd (Ex. 1060) at 1] 4, cited at ’870 Reply (Paper No. 23) at 2.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`l8
`
`

`

`Zipit’s New Claim Construction Arguments Were Waived
`
`Petition
`
`VD’s “emoticons,“—c.g. “©"—are “graphical symbols“ as the ”870 patent
`
`describes (Ex. lOOl, 3:26-36, Tables 1—4), and
`
`
`(id., l9:l8—20:|4, Tables l—4),
`. Abowdfl I30.
`
`N0 Response
`in POR
`
`‘870 Petition (Paper No. 2) at 19.
`
`Petitioners’ Reply
`
`VD‘s entering method is the same as the ’870
`
`patent‘s "second" embodiment meeting claim 20. Petition. 19.
`
`
`
`Paper I l at 8.
`
`Zipit’s Sur-Reply
`
`‘870 Reply (Paper No. 23) at 3.
`
`In contrast, claim 20 plainly requires that what the user enters—a graphical
`
`Scheduling Order:
`
`symbol—be the same thing that the system displays. Specifically, claim 20 recites
`
`“entering
`
`graphical symbols with a data entry device“ and “displaying the
`
`Patent Owner may file—
`
`cmercd
`
`graphical symbols on a display.“ ld., 24:44-48. Thus, claim 20
`
`expressly requires that the displayed graphical symbols be the same graphical
`symbols that were entered by the user. Therefore—
`
`a. A response to the petition (37 CPR § 42.120). If Patent Owner
`
`elects not to file a response, Patent Owner must arrange a conference call
`
`with the parties and the Board.
`
`‘870 Sur-Reply (Paper No. 26) at 3.
`
`‘870 Scheduling Order (Paper No. 11) at 8.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`19
`
`

`

`Zipit’s New Claim Construction Arguments Are Wrong
`
`Zipit’s Sur-Reply
`
`’870 Patent Specification
`
`In contrast, claim 20 plainly requires that what the user enters—a graphical
`
`symbol—be the same thing that the system displays. Specifically,
`
`
`
`
`lu'., 24:44-48 Thus, claim 20
`
`expressly requires that the displayed graphical symbols be the same graphical
`
`The second set of emoticons is specific to one or more
`
`messaino services and are not necessaril broad] known.
`
`‘870 Patent (EX. 1001) at 20:1-14, cited at ‘870 Petition (Paper No. 2) at 19;
`‘870 Reply (Paper No. 23) at 2-3; ’870 Sur—Reply (Paper No. 26) at 3.
`
`‘870 Sur—Reply (Paper No. 26) at 3.
`
`’870 Claim 20
`
`
`-textua1 characters and "
`~ with a
`
`data en
`device of a handheld terminal
` dispylaing the enteredtextual characters aid raphicla
`
` "
`
`symbols on a display of the handheld terminal;
`
`Zipit’s Expert
`
`
`
`
`
`A. Okay. So
`u ' if of -- andrightnow I’m talking about like a physical keyboard on the one that's on my
`*
`'
`computer in front of me, :-'«.
`= .80 it does a mapping of -- and it says, I have put
`-- this key has been pushed and 1tgenerates basicallyan XY coordinate within the -- within the key mapping
` matrix and we’ll call that a.
`3
`~
`~
`"
`'11.” for now. Okay? And that15 sent over the wire to the computer, okay?
`
` 1
`
`
`
`
`Deposition of Karl Ginter (Ex. 1058) at 88:13-24, cited at ‘870 Reply (Paper No. 23) at 5.
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`2O
`
`

`

`’870 Claim 20 | Disputed Limitations
`
`[20A]
`
`’870 Claim 20
`
`20. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`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;
`displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`communicating instant messages with a wireless, Internet
`protocol access point, the instant messages being com-
`municated with a communications module and wireless
`
`transceiver in the handheld terminal;
`coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through
`the wireless, Internet protocol access point;
`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;
`
`
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`21
`
`

`

`187mm(paperNo.2)at36-39.
`
`McCarthy Teaches Displaying Conversation Histories
`During Loss of Network Connection
`
`’870 Claim 20
`
`McCarthy
`
`displaying conversation histories for active conversations
`terminated by a loss of a network connection;
`
`Uscr A's Machine
`Time l‘lO
`— ‘
`yv'saA'sMach-n:
`———————————
`________
`111m:
`[[0
`m.J_”"
`
`
`I "m”
`
`
`,
`
`H
`
`
`
`_
`Topicl
`"9'53"” “'S‘W
`
`umvrmmu
`1mmm]—sea 1
`they 107 may in some embodiments be
`
`
`2 H 0““ “‘“n
`available to t e user Whether from the thread messaging
`i
`I
`s stem or instead ind- oendentl
`from the thread client e. -.
` L
`.
`.
`1
`r
`w
`i
`.
`such as in a task bar on the thread client
`
`Commmucaiiun
`We I
`display).
`Us” M Commumuiun 2
`
`
`
`.
`
`_ Moreover,
`'
`
`‘
`
`in some embodiments the transparency of communications
`is maintained bi not notifiinfi the user when such-
`
`occurs.
`
`
`McCarthy (EX. 1023) at 9:15-21, cited at ‘870 Petition (Paper No. 2)
`
`at 37; ‘870 Reply (Paper No. 23) at 8.
`
`a In addition, some or all of
`
`McCarthy (EX. 1023) at 6:52-58, cited at ‘870 Petition (Paper No. 2)
`at 10, 15; ‘870 Reply (Paper No. 23) at 8.
`
`While not displayed to UserA, a variety of_
`-107is also illustrated1n FIG 1C, including a current
`time 1: 02 and a current thread communication interaction
`
`status. In the illustrated embodiment,
`
`User A is cur-
`
`rently participating in active interaction with other users,
`such as when)
`-
`.1 .
`.
`.
`,
`,
`
`
`
`
`McCarthy Fig. 1K (annotated)
`
`
`
` '
`
`
`
`l Communication 6 J
`
`Commumunm
`”P’”.
`7 ,
`
`
`User A Cuninmmcazmu 1
`Us“ 3 Commurucamm 3
`
`
`
`
`
`
` —0pic-_onvcrsation7History
`
`
`
`
`Fig. IK
`
`McCarthy Fig. 1K (annotated) in Abowd (Ex_ 1004) atfl 226,
`cited at ‘870 Petition (Paper No. 2) at 37-38
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`McCarthy (EX. 1023) at 5:1-10, cited at ‘870 Petition (Paper No. 2)
`at 10, 15; '870 Reply (Paper No. 23) at 8.
`
`22
`
`

`

`
`
`Zipit’s Attorney Arguments Against McCarthy
`
`Zipit’s Sur-Reply
`
`McCarthy
`
`McCarthy mentions that the status inlormation could ittclude "current
`
`network connection status" but does not equate that with the tltread communication
`
`interaction status. In fact, McCarthy specifically notes that such intbnnation would
`
`have to be provided “independently from the thread client" M. at 6:55. This
`
`passage therefore confimts that the thread comtmtnication interaction status
`
`which plainly (low conte from the thread messaging system is something
`
`(litTerent than the network connection status. which McCarthy properly describes
`
`as external to the thread messaging system.
`
`***
`
`McCarthy states that “reestablishing connection with the network will in some
`
`embodiments cause a connection to a thread server or other appropriate thread
`
`client to automatically be created in order to retrieve communications sent while
`
`the thread client was disconnected." Ex. l023, 13:34-40. This confimts that the
`
`thread communication interaction status shown in Fig, 1K refers to the connection
`
`to the thread server or another thread client (a socket connection) and not to a
`
`connection to the user‘s local network.
`
`’870 Sur-Reply (Paper No. 26) at 11-12.
`
`
`
`When a thread client is turned ofi~ or the connection with
`
`the network is closed without first closing the window of a
`thread, reestablishing connection with the network will in
`some embodiments cause a connection to a thread server or
`
`other appropriate thread client to automatically be created in
`order to retrieve communications sent while the thread client
`was disconnected.
`
`
`DEMONSTRATIVE EXHIBIT — NOT EVIDENCE
`
`McCarthy (Ex. 1023) at 13:34—40,
`cited at ‘870 Sur-Reply (Paper No. 26) at 11-12.
`
`23
`
`While not displayed to User A, a variety of status informa-
`tion 107 is also illustrated in FIG. 1C, including a current
`time 1:02 and a current thread communication interaction
`
`status. In the illustrated embodiment, the thread communi-
`cation interaction status indicates whether User A is cur-
`
`rently participating in active interaction with other users.
`such as when User A’s thread client is connected to other
`
`thread clients (e.g., Via a network connection) and User A
`has not selected to temporarily suspend or exit from active
`thread communications.
`
`
`McCarthy (EX. 102