Trials@uspto.gov
`571-272-7822
`
`Paper 18
`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.
`
`IPR2021-01125
`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
`
`
`
`
`
`
`

`

`IPR2021-01125
`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 2–4, 11–14, 22, 23, and 31–331 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”) 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 9,
`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.
`Patent Owner did not arrange for such a conference call. Petitioner’s Reply
`(Paper 10) requested “issuance of an FWD invalidating the Challenged
`
`
`1 Claims 20, 21, and 24–30 of the ’870 patent were 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 22, 23, and 31–33 of the ’870 patent depend
`from canceled claims 20, 21, and 30, Petitioner addresses claims 20, 21 and
`30 in the Petition.
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`IPR2021-01125
`Patent 7,292,870 B2
`Claims” in the pending proceeding. Paper 9, 2. Finally, 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 13). 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 14. 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 15, 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
`a preponderance of the evidence. See 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2019).
`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,
`claims 2–4, 11–14, 23, and 31–33 of the ’870 patent are unpatentable.
`
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`IPR2021-01125
`Patent 7,292,870 B2
`A. Real Parties in Interest
`Apple asserts that 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 IPR2021-01125 (challenging
`claims 2–4, 11–14, 22, 23, and 31–33); Microsoft Corporation and Apple
`Inc. v. Zipit Wireless, Inc., IPR2021-01124 (challenging claims 1, 5–10, 17–
`19, and 36–40), and Microsoft Corporation and Apple Inc. v. Zipit Wireless,
`Inc., IPR2021-01126 (challenging claims 22, 23, and 31–40). Paper 2, 1–5;
`Paper 7, 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 IPR2014-015072 and in Google LLC et al. v. Zipit
`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. 90–91. In addition, related U.S.
`Patent No. 7,894,837 (the ’837 patent) was the subject of Google LLC et al.
`v. Zipit Wireless, Inc., IPR2019-01568, Paper 39 (PTAB Mar. 9, 2021)
`(Final Written Decision) (finding the challenged claims unpatentable). Id.
`
`2 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).
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`IPR2021-01125
`Patent 7,292,870 B2
`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.
`90.
`
`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 7, 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.
`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.
`
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`IPR2021-01125
`Patent 7,292,870 B2
`
`
`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.
`
`
`
`Figures 12a and 12b show screens used in the emoticon selection procedure.
`Figure 12a identifies keys of keyboard 68 (not shown) that are associated
`
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`IPR2021-01125
`Patent 7,292,870 B2
`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.
`D. Illustrative Claims
`Claims 2 and 31 are illustrative. Claim 2 depends from, independent
`claim 1, and claim 31 depends from canceled claims 20 and 30. Claims 1, 2,
`20, 30, and 31 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
`
`7
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`

`IPR2021-01125
`Patent 7,292,870 B2
`is
`that
`least one conversation session
`protocols for at
`protocol
`communicated
`by
`the wireless,
`Internet
`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, the data entry device further
`2.
`comprising:
`a plurality of keys for graphical symbols, each graphical
`symbol key including indicia identifying the graphical symbol
`generated by depressing the key bearing the indicia.
`
`[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;
`[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.
`
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`IPR2021-01125
`Patent 7,292,870 B2
`
`30. The method of claim 20, the conversation session control
`further comprising:
`accessing at least one instant messaging service provider
`through the access point.
`
`31. The method of claim 30, the conversation session control
`further comprising:
`generating a buddy list identifying buddies coupled to
`each instant messaging service accessed by the handheld instant
`messaging terminal controlling the conversation session and
`displaying the buddy list in response to a buddy list key being
`depressed on the data entry device.
`
`Ex. 1001, 25:12–41, 26:41–65, 27:44–28:3 (bracketed letters added).
`E. Evidence and Instituted Grounds
`Petitioner relies on the following references. Pet. 1–3.
`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
`Miller, et al., U.S. Patent No. 6,629,793 B1, filed
`Apr. 26, 2002, issued Oct. 7, 2003
`Rucinski, U.S. Patent App. Pub. No.
`2003/0130014 A1, filed Aug. 20, 2002, published
`July 10, 2003
`Im, KR Patent Pub. 2003-0068662, published
`Aug. 25, 2003
`
`Rucinski
`
`Heikes
`
`Jonker
`
`Brittan
`
`Miller
`
`Im
`
`
`
`Exhibit
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1012
`
`1040
`
`1044
`
`9
`
`

`

`2
`
`12–14, 31–33
`
`12–14, 31–33
`
`103(a)
`
`103(a)
`
`103(a)
`
`IPR2021-01125
`Patent 7,292,870 B2
`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
`11
`103(a)
`Sidekick II), Brittan
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Miller
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Rucinski
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Miller, Im
`
`3, 4, 22, 23
`
`103(a)
`
`Dec. on Inst. 25; Pet. 1–2.
`
`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.
`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
`
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`IPR2021-01125
`Patent 7,292,870 B2
`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.3 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
`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. 4 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
`
`3 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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`IPR2021-01125
`Patent 7,292,870 B2
`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. 3–4. 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. at 4 (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.
`
`
`IPR2019-01567 Construction
`Claim Term
`“a handheld terminal capable of
`“a data entry device of a handheld
`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.
`
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`Patent 7,292,870 B2
`D. Obviousness of Claim 11: Heikes, Jonker, Sidekick (Sidekick I or
`Sidekick II), and Brittan
`Apple asserts that claim 11, which depends from claim 1, is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Heikes, Jonker,
`Sidekick (Sidekick I or Sidekick II), and Brittan. Pet. 28–54. Claim 11
`limits the control module of claim, stating that “terminal of claim 1 wherein
`the control module accesses at least one instant messaging service provider
`through the access point.” Ex. 1001, cl. 11. To support their contentions,
`Apple provides explanations as to how the prior art discloses each claim
`limitation and the motivations to combine the prior art teachings. Pet. 28–
`54. Petitioner also provides citations to the Traynor Declaration in support
`of their contentions. Ex. 1003 ¶¶ 208–330. 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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`
`
`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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`
`
`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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`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. 3. Petitioner relies primarily on
`Sidekick-I, but to the extent that Sidekick-I 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
`Apple asserts that Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-
`II), and Brittan teach the limitations of claims 1. Pet. 14–28; Ex. 1003
`¶¶ 150–207. For the motivation to combine the references, Apple asserts a
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`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 the Heikes’ system. Pet. 14–17;
`Ex. 1003 ¶¶ 152–160; Ex. 1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1.
`Apple 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. 17; see id. 17–18; Ex. 1003 ¶¶ 161–
`166.
`
`Apple 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. 18–
`20; Ex. 1003 ¶¶ 167–177. Apple also argues 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. 23), 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. 25 (citing Ex. 1003 ¶¶ 191–192).
`Finally, Apple 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. 25–28; Ex. 1003 ¶¶ 195–207. By a preponderance of the
`evidence, Apple provide persuasive rationales to combine the teachings of
`Heikes, Sidekick, Jonker, and Brittan as 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 that
`lose connectivity. Pet. 27–28.
`6. Claim 11 Analysis
`Petitioner provides persuasive analysis and citation mapping the
`limitations of claim 11, which depends from claim 1, to the combination of
`Heikes, Jonker, Sidekick (with parallel citations to Sidekick-I and Sidekick-
`II), and Brittan. Pet. 28–54; Ex. 1003 ¶¶ 208–330. We find Petitioner’s
`citation to declarant testimony to support that the Heikes, Jonker, Sidekick,
`and Brittan device teaches the limitations of claim 1 persuasive. Pet. 28–54.
`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. 28–30; 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. 30–36; Ex. 1003
`¶¶ 222–229) and Heikes and Brittan teach “key or a set of keys/buttons on
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`the data entry device to be used to enter/generate graphical symbols, e.g., for
`input into an IM conversation session” (Pet. 35 (citing Ex. 1003 ¶ 226)).
`Thus, Petitioner asserts 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. 36 (citing Ex. 1003 ¶¶ 222–229).
`With respect to the wireless communication limitations 1[d],
`Petitioner also provides sufficient 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. 37 (citing Ex. 1003 ¶¶230–254); see Pet. 37–43. 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. 43–44 (citing Ex. 1007 ¶¶ 45–47, 50, 60; Ex. 1003
`¶¶ 256–257). Finally, Petitioner offers 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 limtiations 1[f] and 1[g].
`Pet. 48–52; Ex. 1003 ¶¶ 271–289.
`With respect to dependent claim 11, Petitioner avers that:
`Heikes-Jonker-Sidekick-Brittan’s
`control
`module
`(processor executing the AIM client application or another IM
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`application—as in [1e]) accesses an IM service (AIM or another
`service). APMT-1007, [0037] (identifying various IM services),
`[0045]–-[0048] (identifying IM appliations executing on the
`client device), FIGS. 3–4 and [0052]–[0060] (describing IM
`communications establishment and management between an IM
`sender and recipient), [0110]–[0116] and FIGS. 11–15
`(describing and showing various user interfaces “presented to an
`IM sender of an IM service provider such as the AOL Instant
`Messenger (AIM) service”); see APMT-1005, 73-82 (describing
`Sidekick device accessing the AIM service); APMT-1006, 43-48
`(same); APMT-1003, ¶326.
`Pet. 53. Petitioner asserts that in accordance with the [1d] and [1e]
`limitations of claim 1, the “Heikes-Jonker-Sidekick-Brittan’s device
`communicates data over a network, including sending and receiving IM
`messages while connected to an IM service, via the wireless, . . . the client
`controller together with the access client[] and the wireless transceiver
`through the wireless, Internet protocol access point.” Id. (citing Ex. 1007
`¶¶ 39–49, 59; Ex. 1008, 4:1–50, 5:55–6:8, 26:32–45; Ex. 1003 ¶ 328).
`Based on the full record, we find no deficiency in Petitioner’s
`evidence and argument regarding the Heikes-Jonker-Sidekick-Brittan IM
`device combination and functions, as well as knowledge in the art, or in
`Petitioner’s 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 unrebutted testimony concerning
`the relevant teachings of the cited references and knowledge of an ordinarily
`skilled artisan. Ex. 1003 ¶¶ 208–330.
`Patent Owner provided no opposition contesting Petitioner’s
`arguments or evidence. Indeed, Patent