Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Date: April 20, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`
`IPR2021-01124
`Patent 7,292,870 B2
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
`JOHN D. HAMANN, Administrative Patent Judges.
`JEFFERSON, Administrative Patent Judge.
`
`
`JUDGMENT
`Final Written Decision on Remand
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318
`
`
`
`
`
`

`

`IPR2021-01124
`Patent 7,292,870 B2
`
`I.
`INTRODUCTION
`Microsoft Corporation (“Microsoft”) and Apple Inc. (“Apple” or
`“Petitioner”) filed a Petition (“Pet.,” Paper 3) pursuant to 35 U.S.C. § 311 to
`institute an inter partes review of claims 1, 5–10, 17–19, and 36–401 of U.S.
`Patent No. 7,292,870 B2 (“the ’870 patent,” Ex. 1001). The Petition is
`supported by the Declaration of Dr. Patrick Traynor (Ex. 1003, “Traynor
`Decl.”). Zipit Wireless, Inc. (“Patent Owner” or “Zipit”) did not file a
`Preliminary Response.
`We determined that the information presented in the Petition
`established that there was a reasonable likelihood that Apple and Microsoft
`would prevail with respect to its unpatentability challenges. Pursuant to
`35 U.S.C. § 314, we instituted this proceeding on December 21, 2021, as to
`all challenged claims and all grounds of unpatentability. Paper 7 (“Dec. on
`Inst.”).
`Pursuant to the Scheduling Order, Patent Owner was to file a response
`to the petition or a motion to amend the patent by March 15, 2022. Paper 8,
`11 (Due Date 1). Patent Owner did neither. Additionally, the Scheduling
`Order instructed Patent Owner to arrange for a conference call with the
`Board if Patent Owner elected to not file a response to the petition. Id.
`
`
`1 Claim 20 of the ’870 patent was determined to be unpatentable in Google
`LLC et al. v. Zipit Wireless, Inc., IPR2019-01567, Paper 38 at 53 (PTAB
`Mar. 9, 2021) (Final Written Decision) (finding that claims 20, 21, and 24–
`30 of the ’870 patent were unpatentable). Because the challenged dependent
`claims 36–40 of the ’870 patent depend from independent claim 20,
`Petitioner addresses claim 20 as a part of addressing the challenged
`dependent claims.
`
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`IPR2021-01124
`Patent 7,292,870 B2
`Patent Owner did not arrange for such a conference call. Petitioner’s Reply2
`(Paper 9), requested “issuance of an FWD invalidating the Challenged
`Claims” in the pending proceeding. Paper 9, 2. Patent Owner did not file
`any substantive papers or evidence to the Petition, leaving Petitioner’s
`contentions unrebutted on the record.
`On December 9, 2022, we granted Microsoft and Zipit’s Joint Motion
`to terminate the proceeding as to Microsoft (Paper 10). Paper 12. Thus, the
`proceeding continues with Apple as sole Petitioner.
`Following an oral hearing in the related cases, we issued an Adverse
`Judgment Order on December 13, 2022. Paper 13. The Director
`subsequently sua sponte issued an Order “vacat[ing] the Board’s adverse
`judgment[] and remand[ing] [the proceeding] back to the panel to either
`issue a show cause order clarifying whether Patent Owner is indeed
`abandoning the contest or to issue a final written decision addressing the
`patentability of the challenged claims.” Paper 14, 4 (Director’s decision
`Ordering Rehearing, Vacating Adverse Judgment, and Remanding to the
`Patent Trial and Appeal Board Panel for Further Proceeding Petitioner’s
`Reply). Pursuant to the Director’s order, we issue this Final Written
`Decision addressing the patentability of the challenged claims.
`Petitioner bears the burden of proving unpatentability of the
`challenged claims, and the burden of persuasion never shifts to Patent
`Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). To prevail, Petitioner must prove unpatentability by
`
`
`2 Although Patent Owner did not file a response, Petitioner filed a paper
`styled as a reply that noted Patent Owner’s failure to comply with the
`scheduling order.
`
`3
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`IPR2021-01124
`Patent 7,292,870 B2
`a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2022).
`This Decision is a Final Written Decision under 35 U.S.C. § 318(a) as
`to the patentability of the claims on which we instituted trial. Based on the
`record before us, Petitioner has shown, by a preponderance of the evidence,
`that claims 1, 5–10, 17–19, and 36–40 of the ’870 patent are unpatentable.
`A. Real Parties in Interest
`Apple asserts it is the real party-in-interest. Pet. 86.
`B. Related Matters
`Microsoft and Apple filed three concurrent Petitions for inter partes
`review of the ’870 patent, the instant petition (IPR2021-01124 (challenging
`claims 1, 5–10, 17–19, and 36–40); Microsoft Corporation and Apple Inc. v.
`Zipit Wireless, Inc., IPR2021-01125 (challenging claims 2–4, 11–14, 22,23,
`and 30–33), and Microsoft Corporation and Apple Inc. v. Zipit Wireless,
`Inc., IPR2021-01126 (challenging claims 22, 23, and 31–40). Paper 2, 1–5;
`Paper 6, 2–3. In addition, Microsoft and Apple filed three concurrent
`Petitions for inter partes review of related U.S. Patent No. 7,894,837:
`Microsoft Corporation and Apple Inc. v. Zipit Wireless, Inc., IPR2021-
`01129; Microsoft Corporation and Apple Inc. v. Zipit Wireless, Inc.,
`IPR2021-01130; and Microsoft Corporation and Apple Inc. v. Zipit
`Wireless, Inc., IPR2021-01131. Id. We issued Final Written Decision in
`IPR2021-01130 and IPR2021-01131.
`Microsoft and Apple provide that the ’870 patent was the subject of
`Final Written Decisions in IPR2014-015073 and in Google LLC et al. v. Zipit
`
`3 Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01507, Paper 50 (PTAB
`March 29, 2016) (Final Written Decision) (“Blackberry IPR”) (finding that
`the challenged claims were not shown to be unpatentable).
`
`4
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`IPR2021-01124
`Patent 7,292,870 B2
`Wireless, Inc., IPR2019-01567, Paper 38 at 53 (PTAB Mar. 9, 2021) (Final
`Written Decision) (“Google IPR”) (finding that claims 20, 21, and 24–30 of
`the ’870 patent were unpatentable). Pet. 86–87. In addition, related U.S.
`Patent No. 7,894,837 (the ’837 patent) was the subject of Google LLCv.
`Zipit Wireless, Inc., IPR2019-01568, Paper 39 (PTAB Mar. 9, 2021) (Final
`Written Decision) (finding the challenged claims unpatentable). Id. Finally,
`Microsoft and Apple state that the ’870 patent is involved in Zipit Wireless,
`Inc. v. LG Electronics Inc., Case No. 6-18-cv-02016 (D.S.C.). Pet. 87.
`Patent Owner indicates that the inter partes review of the ’870 patent
`may affect the following matters: Ex Parte Zipit Wireless, Inc.,
`Reexamination No: 90/014,722; Apple Inc. v. Zipit Wireless, Inc., Case
`No. 5:20-cv- 04448-EJD (N.D. Cal.); Apple Inc. v. Zipit Wireless, Inc.,
`Appeal No. 21-1760 (Court of Appeals for the Federal Circuit); Zipit
`Wireless, Inc. v. LG Electronics Inc., Case No. 6-18-cv-02016 (D.S.C.) (case
`currently stayed); and Zipit Wireless, Inc. v. LG Electronics U.S.A., Inc.,
`No. 2:20-cv-01494-KM-JBC (D.N.J.). Paper 6, 3–4.
`C. The ’870 Patent
`The ʼ870 patent relates to a handheld instant messaging (“IM”)
`device. Ex. 1001, 1:6–9. The ’870 patent discloses an IM terminal that
`includes a display and a data entry device integrated in a housing for the IM
`terminal. Id. at 4:38–41. The data entry device allows entry of graphical
`symbols (such as emoticons supported by an IM service provider) or textual
`characters via dedicated or programmable keys, a Wi-Fi communications
`module for communicating messages with a Wi-Fi access point, and a
`control module for coordinating authorization to coupling the IM terminal to
`a local network using a wireless access point and for controlling the IM
`conversation session. Id. at 4:28–55, Figs. 12a, 12b.
`
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`IPR2021-01124
`Patent 7,292,870 B2
`Figure 2, provided below, “shows an embodiment of an instant
`messaging terminal that operates in accordance with the principles of the
`present invention.” Id. at 9:41–43.
`
`
`Figure 2 shows terminal 50, display 54, and located on the bottom of the
`clamshell configuration 60 is data entry device 68, with QWERTY keyboard
`section 70, pre-programmed emoticon keys 74, and programmable emoticon
`keys 78. Id. at 9:40–42.
`Figures 12a and 12b, provided below, show user interface screens that
`associate emoticon pictorial images with programmable keys. Id. at 10:6–7.
`
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`IPR2021-01124
`Patent 7,292,870 B2
`
`
`
`Figures 12a and 12b show screens used in the emoticon selection procedure.
`Figure 12a identifies keys of keyboard 68 (not shown) that are associated
`with selected emoticons. Id. Figure 12b shows a screen that instructs the
`user to use the “<” and “>” keys on either side of the displayed symbol to
`change the graphical symbol that is associated with a programmable key,
`e.g., PF2. Id. at 16:62–17:5.
`The handheld terminal of the ’870 patent manages multiple IM
`conversations over Internet Protocol (“IP”) through different IM service
`providers. Id. at 5:32–6:15, code (57). The device generates a buddy list of
`contacts associated with each IM service provider and displays conversation
`windows for each buddy with whom the user is engaged in active
`conversation. Id. at 5:32–51. The device detects signals from local wireless
`access points, prioritizes the access points according to their signal strength,
`and selects the one having the strongest signal for local network access. Id.
`at 5:4–11.
`
`7
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`

`IPR2021-01124
`Patent 7,292,870 B2
`D. Illustrative Claims
`Claims 5 and 36 are illustrative. Claim 5 depends from, independent
`claim 1, and claim 36 depends from canceled claim 20. Claims 1, 5, and 36,
`along with claim 20, are reproduced below with bracketed lettering added.
`1.
`[pre] An instant messaging terminal comprising:
`[a] a handheld terminal housing;
`[b] a display mounted in the terminal housing for
`displaying textual characters and graphical symbols;
`[c] a data entry device integrated in the terminal housing
`for the display, the data entry device for generating textual
`characters and graphical symbols;
`[d] a wireless, Internet protocol communications module
`coupled to a wireless transceiver, both being within the housing,
`for communicating messages with a wireless, Internet protocol
`access point; and
`[e] a control module within the housing, the control
`module including at least one processor for executing an
`application program to implement instant messaging and session
`protocols for at
`least one conversation session
`that
`is
`communicated
`by
`the wireless,
`Internet
`protocol
`communications module and the wireless transceiver through the
`wireless, Internet protocol access point, [f] the control module,
`in response to a loss of a network connection, displays
`conversation histories for conversations that were active when
`the network connection was lost, and [g] automatically searches
`for wireless, Internet protocol network beacons upon all of the
`conversation histories being displayed.
`
`The terminal of claim 1 wherein the control module and
`5.
`the communications module detect a beacon being received by
`the wireless transceiver of the instant messaging terminal.
`
`[pre] A method for managing wireless network access and
`20.
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`[a] entering textual characters and graphical symbols with
`a data entry device of a handheld terminal to form instant
`messages for delivery to an instant messaging service;
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`IPR2021-01124
`Patent 7,292,870 B2
`[b] displaying the entered textual characters and graphical
`symbols on a display of the handheld terminal;
`[c] communicating instant messages with a wireless,
`Internet protocol access point, the instant messages being
`communicated with a communications module and wireless
`transceiver in the handheld terminal;
`[d] coordinating authentication for coupling the handheld
`instant messaging terminal to a local network through the
`wireless, Internet protocol access point;
`[e] implementing instant messaging and sessions protocols
`to control a conversation session through the wireless, Internet
`protocol access point, the instant messaging and session
`protocols being implemented within the handheld instant
`messaging terminals;
`active
`for
`conversation histories
`[f] displaying
`conversations terminated by a loss of a network connection; and
`[g] automatically searching for wireless, Internet protocol
`network beacons after the conversation histories are displayed.
`
`36. The method of claim 20, the conversation session control
`further comprising:
`file while
`from a downloaded
`generating sound
`communicating messages with a wireless, Internet protocol
`access point using the handheld instant messaging terminal.
`
`Ex. 1001, 25:12–35, 25:52–55, 26:41–65, 28:20–25 (bracketed letters
`added).
`
`9
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`IPR2021-01124
`Patent 7,292,870 B2
`E. Evidence and Instituted Grounds
`Petitioner relies on the following references. Pet. 4–5.
`Name
`Reference
`Sidekick-I T-Mobile Sidekick Owner’s Manual, Release 1.01,
`March 11, 2003
`Sidekick-II T-Mobile Sidekick Owner’s Manual,
`https://web.archive.org/web/20030202154930/http
`://help.sidekick.dngr.com/OwnersManual.Html
`Heikes, et al., U.S. Patent App. Pub. No.
`2003/0225846 A1, filed Nov. 27, 2002, published
`Dec. 4, 2003
`Jonker, et al., U.S. Patent No. 7,483,984 B1, filed
`Dec. 19, 2002, issued Jan. 27, 2009
`Brittan, UK Patent App. GB 2,376,379, published
`Dec. 11, 2002
`Capps, U.S. Patent No. 7,519,667 B1, filed
`Apr. 16, 2002, issued Apr. 14, 2009
`
`Heikes
`
`Jonker
`
`Brittan
`
`Capps
`
`Exhibit
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1011
`
`
`Petitioner also relies on the declarations of Patrick Traynor Ph.D.
`(Ex. 1003) and Duncan Hall (Ex. 1021).
`We instituted the proceeding on the following grounds:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`Heikes, Jonker, (Sidekick I or
`1, 5–10
`103(a)
`Sidekick II), Brittan
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Capps
`
`17–19, 36–40
`
`103(a)
`
`Dec. on Inst. 21; Pet. 3–4.
`
`II. ANALYSIS
`
`A. Legal Standard
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`
`10
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`IPR2021-01124
`Patent 7,292,870 B2
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b)
`(requiring a petition for inter partes review to identify how the challenged
`claim is to be construed and where each element of the claim is found in the
`prior art patents or printed publications relied upon).
`A patent claim is unpatentable under 35 U.S.C. § 103 if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved based on underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when presented, objective evidence of
`nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In
`re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)). Petitioner cannot satisfy its burden of proving obviousness
`by employing “mere conclusory statements,” but “must instead articulate
`
`4 Patent Owner did not provide any evidence or argument contesting
`Petitioner’s unpatentability arguments. Thus, Patent Owner presents no
`secondary considerations evidence.
`
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`IPR2021-01124
`Patent 7,292,870 B2
`specific reasoning, based on evidence of record, to support the legal
`conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
`1364, 1380 (Fed. Cir. 2016).
`B. Level of Ordinary Skill in the Art
`Petitioner asserts the level of skill adopted in the Final Written
`Decision in IPR2019-01567, Google IPR at 8. See Pet. 7 n.2; Ex. 1003
`¶¶ 37–38. Our prior decision in IPR2019-01567 found 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.
`Google IPR at 8. We apply this level of skill in the present case.
`C. Claim Construction
`Petitioner offers no proposed claim constructions and applies the
`constructions determined by the Board in the IPR2019-01567 Final Written
`Decision. Pet. 6–7. Petitioner argues that the remaining terms are given
`their “ordinary and customary meaning as understood by a Person of
`Ordinary Skill in the Art as of the Critical Date . . . and the patent’s
`prosecution history.” Id. (citing Ex. 1003 ¶ 69; 37 C.F.R. §42.100(b)).
`We adopt the claim constructions determinations in IPR2019-01567
`provided in the table below in this Final Written Decision for the reasons
`discussed there.
`
`
`Claim Term
`“a data entry device of a handheld
`
`IPR2019-01567 Construction
` “a handheld terminal capable of
`
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`IPR2021-01124
`Patent 7,292,870 B2
`IPR2019-01567 Construction
`Claim Term
`data entry”
`terminal” (claim 20)
`“network connection” (claim 20) No construction required
` “graphical symbols” (claim 20)
`“graphical emoticons that differ
`from textual characters
`representing emoticons”
`“ordinary meaning in the context of
`the claims”
`
`“entering textual characters and
`graphical symbols with a data
`entry device” (claim 20)
`
`Google IPR at 9–13.
`D. Obviousness of Claims 1, 5–10: Heikes, Jonker, Sidekick (Sidekick I
`or Sidekick II), and Brittan
`Petitioner asserts that claims 1 and 5–10 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Heikes, Jonker, Sidekick (Sidekick I or
`Sidekick II), and Brittan. Pet. 7–65. To support their contentions, Petitioner
`provides explanations as to how the prior art discloses each claim limitation
`and the motivations to combine the prior art teachings. Id. Petitioner also
`provides citations to the Traynor Declaration in support of their contentions.
`Ex. 1003 ¶¶ 70–325. The prior art is summarized below.
`1. Heikes (Ex. 1007)
`Heikes discloses an “Instant Messaging Personalization” system
`(Ex. 1007, code (54)), disclosing IM sender systems communicating with IM
`recipients system and IM host systems through a communication link
`including users such as AIM, ICQ, Yahoo Messenger and Microsoft
`Messenger (id. ¶ 50). Figure 4, provided below, illustrates such a
`communication system. Id. ¶ 56.
`
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`IPR2021-01124
`Patent 7,292,870 B2
`
`
`Figure 4 shows IM host system 310 “support[s] IM services” and
`“allow[s] users to send and receive IMs” using “standard or exclusive IM
`protocols.” Id. ¶¶ 52, 58. “By accessing the IM host system, an IM sender
`can use the IM client application to view whether particular users (‘buddies’)
`are online, exchange IMs with particular buddies, . . . [and] trade files.” Id.
`¶ 53, see id. ¶¶ 54, 55, 60. Heikes provides examples of user interfaces of
`IM conversation sessions where user select and send emoticons. Id. ¶¶ 84,
`110–112, 116, Figs. 11, 12, 15. Heikes further shows that IM recipient
`systems use an IM services over a wireless network or LAN as shown in
`Figure 1 below. Id. ¶¶ 2, 39, 50.
`
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`IPR2021-01124
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`
`
`Figure 1 shows IM sender system 105 typically includes client device 120
`and/or client controllers 125 that use an IM service over network 160, which
`may be a LAN or WAN. IM sender that enables IM sender system 105 to
`send and receive IMs with IM recipient systems using an IM service and
`over a wireless network 160 (e.g., LAN). Id. ¶¶ 2, 39, 50.
`2. Jonker (Ex. 1008)
`Jonker discloses a method for accessing wireless carrier networks by
`mobile computing devices. Ex. 1008, code (57). Figure 1 below depicts a
`mobile computing device accessing a network. Id. at 3:7–9.
`
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`
`
`Figure 1 shows mobile device 102 that includes access client 100,
`which enables access to network 104 via carrier LAN network 106a/106b
`using Wireless Access Point (AP) 108a. Id. at 4:1–8, 26:32–35, Fig. 1.
`Access client 100 uses a network device “to transmit and receive carrier
`network signals.” Id. at 26:36–41. In addition, Jonker teaches that access
`client 100 includes sniffer 200 to “detect access points” by receiving “carrier
`network signals transmitted by the AP,” which include “a carrier network
`identifier used by devices coupled to the carrier network to identify the
`network.” Id. at 6:54–66. Jonker further teaches that sniffer 200
`“continuously polls access points” and if the sniffer logic determines that the
`access client is not currently connected to a carrier network, it determined if
`an access point is available. Id. at 11:32–12:6.
`3. Sidekick-I (Ex. 1005) and Sidekick II (Ex. 1006)
` Sidekick-I (a PDF manual) and Sidekick II (an internet-based
`publication of a user manual) are the user manuals for a handheld mobile
`communication device that uses IM and wireless networking. Ex. 1005, 1,
`
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`IPR2021-01124
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`9, 14; Ex. 1006, 5, 9. Petitioner cites to the two Sidekick manuals in parallel
`asserting that “Sidekick-II is the earliest publically accessible portions of a
`user manual relied upon” and Sidekick-I “has a slightly later known public
`accessibility date than Sidekick-II.” Pet. 5. Petitioner relies primarily on
`Sidekick-I, but to the extent that Sidekick 1 is challenged, Petitioner also
`relies independently on Sidekick-II. Id.
`The Sidekick manuals disclose a device, with display keyboard and
`control buttons that also has wireless network connectivity to connect to IM
`functions such as AOL Messenger (AIM). Ex. 1005, 14, 19–22, 43, 46, 73,
`75; Ex. 1006, 9–12, 24–26, 52–55. The Sidekick manuals disclose that
`“[w]ith AIM, you can have up to 10 online [IM] conversations going at the
`same time.” Ex. 1005, 81–82; Ex. 1006, 47–48. The Sidekick manuals state
`that the display screen provides indications for when a message has been
`sent successfully or queued for delivery when a connection is lost when a
`device was out of radio range. Ex. 1006, 48, 72; Ex. 1005, 81.
`4. Brittan (Ex. 1009)
`Brittan discloses an “emotion key for user selection of an emotion
`from a set of emotions,” within “text messaging device[s] such as a mobile
`phone” and utilizing messaging systems such as “instant messaging”
`systems. Ex. 1009, codes (54), (57). Brittan discloses that keys are assigned
`“smilies” represented in text form by “corresponding character strings” that
`can be inserted into messages using the assigned key and displayed on the
`“sender-device display by the corresponding graphic.” Id. at 12, Fig. 4.
`5. Motivation to Combine
`Petitioner asserts that Heikes, Jonker, Sidekick (Sidekick-I or
`Sidekick-II), and Brittan teach the limitations of claims 1. Pet. 32–56;
`Ex. 1003 ¶¶ 209–289. For the motivation to combine the references,
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`IPR2021-01124
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`Petitioner asserts a person of ordinary skill in the art would have been
`motivated to combine Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II),
`and Brittan, to implement a mobile device in Heikes with connection to a
`LAN or WAN as disclosed in Jonker in accordance with Heikes’ system.
`Pet. 17–19; Ex. 1003 ¶¶ 152–160; Ex. 1007 ¶¶ 2, 38, 45–47; Ex. 1005
`¶¶ 39–45, Fig. 1. Petitioner argues that both Heikes and Jonker teach
`wireless communication and that it was “well known and common
`knowledge for wireless LANs (as described in Heikes) to operate and be
`implemented in either an ad-hoc mode or an infrastructure mode, in which a
`device connects to an access point associated with the LAN.” Pet. 18–21;
`Ex. 1003 ¶¶ 161–165.
`Petitioner further asserts that an ordinarily skilled artisan would have
`utilized the Sidekick features of an integrated display and keyboard in the
`mobile device of Heikes which does not expressly teach how data is entered
`or displayed, finding it obvious to implement a well-known PDA device
`with IM capabilities and form to navigate and perform data entry. Pet. 21–
`23; Ex. 1003 ¶¶ 167–177. Petitioner further asserts that “based on Brittan, a
`POSITA would have found it obvious to modify the Heikes- Jonker-
`Sidekick device to enable a key/button on the device to be used to select/add
`a smiley into the IM conversation from a menu of smilies (as already
`disclosed and shown in Heikes . . . )” (Pet. 26), as it was well known to use
`buttons or related menus to select emoticon smilies (id. at 27). Petitioner
`argues that
`configuring Heikes-Sidekick-Jonker’s device to implement
`Brittan’s teachings would have amounted to the use of a known
`technique to improve similar devices in the same way, and
`combining prior art elements according to known methods to
`yield predictable results—a device that enables pressing one or
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`more buttons to select a smiley from a menu of smilies and
`providing the selected smiley for display in graphical form in the
`IM conversation.
`Pet. 28 (citing Ex. 1003 ¶¶ 191–192).
`Finally, Petitioner argues that it would have been motivated to
`implement Sidekick’s teachings of displaying chat history and when the
`network connection is lost and re-connecting to the network after such a
`connection is lost. Pet. 28–32; Ex. 1003 ¶¶ 195–207.
`In view of the record here, Petitioner provides persuasive rationales
`by a preponderance of the evidence to combine the teachings of Heikes,
`Sidekick, Jonker, and Brittan, and adding Sidekick’s well-known teachings
`amounted to using known techniques to improve similar devices in the same
`way, yielding predictable results for handheld IM devices that lose
`connectivity. Pet. 30–32.
`6. Claim 1 Analysis
`Petitioner provides persuasive analysis and citation mapping the
`limitations of claim 1 to the combination of Heikes, Jonker, Sidekick (with
`parallel citations to Sidekick-I and Sidekick-II), and Brittan. Pet. 32–56;
`Ex. 1003 ¶¶ 208–289. Petitioner cites to declarant testimony to support that
`the Heikes, Jonker, Sidekick, and Brittan device teaches the limitations of
`claim 1. Id. For example, Petitioner provides evidence that “Heikes-Jonker-
`Sidekick-Brittan provides a device . . . having IM capabilities” with a
`handheld terminal (claim limitation 1[a]). Pet. 32–33; Ex. 1003 ¶¶ 208–214;
`see Ex. 1005, 1, 9, 14; Ex. 1006 5, 9–11. Petitioner’s evidence supports that
`the proposed combination teaches limitations 1[b] and 1[c], where the
`Sidekick manuals disclose a display and data entry keyboard (Pet. 34–38;
`Ex. 1003 ¶¶ 216–225) and Heikes and Brittan teach “key or a set of
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`keys/buttons on the data entry device to be used to enter/generate graphical
`symbols, e.g., for input into an IM conversation session” (Pet. 39 (citing
`Ex. 1003 ¶ 226)). Thus, Petitioner argues that the “Heikes-Jonker-Sidekick-
`Brittan’s device (see [1pre]) includes a data entry device (e.g., a keyboard
`and additional buttons) that is integrated in the terminal housing (see [1a])
`for the display and that generates textual characters and graphical symbols
`(e.g., graphical emoticons).” Pet. 40 (citing Ex. 1003 ¶¶ 222–229).
`With respect to the wireless communication limitations 1[d],
`Petitioner also provides persuasive evidence and argument that the “Heikes-
`Jonker-Sidekick-Brittan’s device includes wireless, Internet protocol
`communication module (e.g., client controller 125 and/or access client)
`coupled to a wireless transceiver, both being within the terminal housing and
`for communicating messages with a wireless Internet protocol access point.”
`Pet. 40 (citing Ex. 1003 ¶¶ 230–254); see Pet. 40–47. Further, for
`limitation 1[e], Petitioner provides persuasive evidence that Heikes discloses
`including “within a client device . . . (1) a ‘central processing unit 282
`(CPU) for executing instructions’ and (2) an ‘internal memory’ for storing
`an ‘instant messaging application’ (e.g., AOL Instant Messenger or another
`IM application).” Pet. 47 (citing Ex. 1007 ¶¶ 45–47, 50, 60; Ex. 1003
`¶¶ 256–257). Finally, Petitioner provides persuasive evidence that “Heikes-
`Jonker-Sidekick-Brittan’s control module” would respond to a loss of
`network connection by displaying conversation histories and searching for
`wireless for active IM conversations as required in limitations 1[f] and 1[g].
`Pet. 52–56; Ex. 1003 ¶¶ 271–292.
`Based on the final record, we find no deficiency in Petitioner’s
`evidence and argument regarding the Heikes-Jonker-Sidekick-Brittan IM
`device combination and functions, knowledge in the art, or in Petitioner’s
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`analysis regarding why one of ordinary skill in the art would have been
`prompted to implement the Heikes-Jonker-Sidekick-Brittan IM device.
`We find persuasive Dr. Traynor’s testimony concerning the relevant
`teachings of the cited references and knowledge of an ordinarily skilled
`artisan. Ex. 1003 ¶¶ 70–325.
`Patent Owner provided no opposition contesting Petitioner’s
`arguments or evidence. Indeed, Patent Owner stated on the record in a
`hearing for the related IPRs (IPR2021-01130 and IPR2021-01131) that they
`are not contesting a final written decision or adverse judgment in the cases
`where Patent Owner did not file a response. IPR2021-01130 Paper 29,
`64:3–64:20 (stating that Patent Owner is not contesting adverse judgment “if
`the Board determines [Petitioner] met their burden of proof with respect to
`those claims [where Patent Owner] hasn’t filed any opposition”). Based on
`full record, we find that Petitioner has shown by a preponderance of the
`evidence that Heikes-Jonker-Sidekick-Brittan (based on either Sidekick-I or
`Sidekick-II) teach the limitations of claim 1.
`7. Analysis of Claims 5–10
`Claims 5–10 depend from claim 1 and recite limitations directed to
`the control and communication modules detecting and interacting with a
`beacon through an access point. Ex. 1001, 25:51–26:2 (claims 5–10).
`Petitioner provides persuasive evidence that Jonker (see Ex. 1008, 6:54–
`7:50, 9:6–10:10, 10:18–33, 11:32–12:6, 26:32–45) teaches access client
`communication functions that teach the limitations of claims 5–10 in the
`Heikes-Jonker-Sidekick-Brittan IM device. Pet. 56–65; Ex. 1003 ¶¶ 291–
`325.
`
`We have reviewed Petitioner’s arguments and supporting evidence
`that Heikes-Jonker-Sidekick-Brittan (based on either Sidekick-I or Sidekick-
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`II) teach the limitations of claims 5–10, and we find them to be persuasive
`based on the current record. Patent Owner does not contest Petitioner’s
`arguments or evidence. Thus, we find that Petitioner provides detailed
`citation to record and declarant testimony demonstrating by a preponderance
`of the evidence that the Heikes-Jonker-Sidekick-Brittan IM device teaches
`the control and communication modules detecting and interacting with a
`beacon through an access point limitations of dependent claims 5–10. Pet.
`56–65; Ex. 1003 ¶¶ 291–325.
`E. Obviousness of Claims 17–19 and 36–40: Heikes, Jonker, Sidekick
`(Sidekick I or Sidekick II), Brittan, and Capps
`Petitioner asserts that claims 17–19 and 3