Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Date: April 20, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`
`IPR2021-01126
`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
`
`
`
`
`
`
`571-272-7822
`
`Paper 17
`Date: April 20, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`
`IPR2021-01126
`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
`
`
`
`
`
`
`
`IPR2021-01126
`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 22, 23, and 31–401 of U.S. Patent
`No. 7,292,870 B2 (“the ’870 patent,” Ex. 1001). 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.
`Patent Owner did not arrange for such a conference call. Petitioner’s Reply2
`(Paper 9), requested “issuance of an FWD invalidating the Challenged
`
`
`1 Claims 20 and 21 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 31–40 of the ’870 patent depend from
`claims 20 and 21, the Petition addresses claim 20 as a part of addressing the
`challenged dependent claims.
`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.
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`2
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`IPR2021-01126
`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, 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
`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 22, 23, and 31–40 of the ’870 patent are unpatentable.
`
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`Patent 7,292,870 B2
`A. Real Parties in Interest
`Apple asserts that it is the real party-in-interest. Pet. 87.
`B. Related Matters
`Microsoft and Apple filed three concurrent Petitions for inter partes
`review of the ’870 patent, the instant petition IPR2021-01126 (challenging
`claims 22, 23, and 31–40); 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.,
`IPR2021-01125 (challenging claims 2–4, 11–14, 22, 23, and 30–33). 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 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. 87–88. 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.
`
`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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`IPR2021-01126
`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. 87–88.
`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.
`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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`Patent 7,292,870 B2
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`
`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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`IPR2021-01126
`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
`Dependent claims 23 and 31 are illustrative.
`20.
`[pre] A method for managing wireless network access and
`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
`
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`IPR2021-01126
`Patent 7,292,870 B2
`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.
`
`21. The method of claim 20, the conversation session control
`further comprising:
`identifying a key on the data entry device with a graphical
`symbol that is generated by depressing the key.
`
`22. The method of claim 21, the conversation session control
`further comprising:
`associating at least one programmable key with a set of
`characters corresponding to a graphical symbol supported by an
`instant messaging service provider.
`
`23. The method of claim 22, the conversation session control
`further comprising:
`generating in accordance with an instant messaging
`service protocol being used to communicate with a buddy, a
`character sequence to represent the graphical symbol supported
`by the instant messaging service provider in response to the
`depression of the programmable key.
`
`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
`
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`IPR2021-01126
`Patent 7,292,870 B2
`displaying the buddy list in response to a buddy list key being
`depressed on the data entry device.
`
`Sinivaara
`
`Chiu
`
`Canfield
`
`Im
`
`Saric
`
`Capps
`
`Rucinski
`
`Ex. 1001, 26:41–27:14; 27:38–49 (bracketed letters added).
`E. Evidence and Instituted Grounds
`Petitioner relies on the following references. Pet. 2–3.
`Name
`Reference
`Van Dok
`Van Dok, U.S. Patent App. Pub. No.
`2004/0162877, filed Feb. 19, 2003, published
`Aug. 19, 2004
`Sinivaara, U.S. Patent App. Pub. No.
`2004/0202141, filed Jan. 9, 2003, published
`Oct. 14, 2004
`Chiu, U.S. Patent App. Pub. No. 2003/0204748,
`filed May 20, 2002, published Oct. 30, 2003
`McCarthy McCarthy, U.S. Patent No. 7,328,242, filed Sep.
`17, 2002, issued Feb. 5, 2008
`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
`Canfield, et al., U.S. Patent No. 7,281,215 B1,
`filed Jul. 31, 2002, issued Oct. 9, 2007
`Im, KR Patent Pub. 2003-0068662, published
`Aug. 25, 2003
`Saric, et al., Canadian Patent App. No. 2,363,978,
`filed Nov. 26, 2001, published May 26, 2003
`Capps, U.S. Patent No. 7,519,667 B1, filed
`Apr. 16, 2002, issued Apr. 14, 2009
`Rucinski, U.S. Patent App. Pub. No.
`2003/0130014, filed Aug. 30, 2002, published July
`10, 2003
`
`
`
`9
`
`Exhibit
`1060
`
`1062
`
`1063
`
`1064
`
`1005
`
`1006
`
`1045
`
`1044
`
`1065
`
`1011
`
`1040
`
`
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`IPR2021-01126
`Patent 7,292,870 B2
`Petitioner also relies on the declarations of Patrick Traynor, Ph.D.
`(Ex. 1003), Dr. Gregory Abowd (Ex. 1049) (asserted in the Google IPR),
`and Duncan Hall (Ex. 1021).
`We instituted the proceeding that claims 22, 23, and 31–40 would
`have been unpatentable based on the following grounds:
`Claim(s)
`Challenged
`
`35 U.S.C. §
`
`Reference(s)/Basis
`Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II) or
`Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II), Rucinski
`Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II), Canfield or
`Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II), Canfield,
`Rucinski
`Van Dok, Sinivaara, Chiu, McCarthy,
`Capps
`Van Dok, Sinivaara, Chiu, McCarthy,
`Saric, Im
`
`31–33
`
`103(a)
`
`34, 35
`
`103(a)
`
`36–40
`
`22, 23
`
`103(a)
`
`103(a)
`
`Dec. on Inst. 19; 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
`
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`IPR2021-01126
`Patent 7,292,870 B2
`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
`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).
`
`
`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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`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. 9 n.3; 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. We adopt the claim constructions determinations in
`IPR2019-01567 provided in the table below for the reasons discussed there.
`Claim Term
`IPR2019-01567 Construction
`“a data entry device of a handheld
` “a handheld terminal capable of
`terminal” (claim 20)
`data entry”
`“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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`D. Obviousness of Claims 31–33: Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II) or Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II), Rucinski
`Petitioner asserts that claims 31–30 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I
`or Sidekick II) or Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or
`Sidekick II), Rucinski. Pet. 4–50. 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
`cites to the Traynor and Abowd declarations in support of their contentions.
`Ex. 1003 ¶¶ 507–618; Ex. 1049 ¶¶ 52–263. The prior art is summarized
`below.
`1. Van Dok (Ex. 1060)
`Van Dok discloses a system providing “enhancements to a real-time
`communications user interface” that “add functionality and personality” in
`“instant messaging.” Ex. 1060, code (57), ¶ 3. Van Dok addresses
`shortcomings of traditional instant messaging through “automatic emoticon
`replacement.” Id. ¶¶ 7, 9, 56. Van Dok discloses that “[k]nown instant
`messaging implementations . . . fail to show a graphical representation [e.g.,
`] for a textually entered emoticon [e.g., ‘:)’] . . . until after a message is
`sent.” Id. ¶ 14. Van Dok teaches that when the user types a text sequence
`for an emoticon (e.g., “:)” for a smiley face emoticon), the system
`automatically interprets the text sequence and displays its graphical
`representation (e.g., ) in the “input box” of a “conversation window”
`before the message is sent, “allow[ing] the user composing the message to
`preview how the message will appear when received.” Id. ¶ 56. Figure 5A
`depicts the automatic emoticon replacement disclosed in Van Dok. Id. ¶ 26.
`
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`
`
`Van Dok states that Figure 5A illustrates
`instant messaging user interface 500, having conversation
`window 502, input box 504, and send button 506, both “Before”
`and “After” automatic emoticon replacement in accordance with
`the present invention. The user interface interprets, for example,
`the text sequence “:)” 510 automatically as the smiley face
`character 512, before a user selects the send button 506 for the
`instant message in input box 504. Among other things,
`replacement before sending the real-time message allows the
`user composing the message to preview how the message will
`appear when received. Of course, text sequence 510 is merely
`one example of many possible text sequences for potentially
`many different emoticons that may be available. Which text
`sequences correspond to which emoticons may be user
`configurable, including the ability to specify user defined
`emoticons. . . .
`Id. ¶ 56.
`Van Dok also discusses use of “hand-held devices” and network
`computing environments and handheld device markup language (HDML)
`operating in wireless network environments. Id. ¶¶ 16, 66–69.
`2. Sinivaara (Ex. 1062)
`Sinivaara discloses a method for a “mobile terminal” to select an
`“access point in a wireless communication system.” Ex. 1062, code (57).
`Sinivaara teaches that
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`a group of mobile terminals in a cell utilize predetermined
`attributes which give an indication of the quality of service (QoS)
`currently experienced by the terminal, by collecting a set of such
`attributes and sending the set to the serving access point. The
`serving access point processes the attribute sets received from the
`mobile terminals and compiles a cell report on the basis of the
`sets. The cell report indicates the current overall quality of
`service in the cell. . . .
`The service report is then transmitted so that each mobile
`terminal in the neighborhood, which is about to select an access
`point, may receive it.
`Id. ¶¶ 16–17. Sinivaara describes WLAN in “infrastructure mode” is
`“preferably based on the IEEE 802.11 [Wi-Fi] standard for wireless local
`area networking” for a mobile terminal to use “beacon” information to select
`an access point to use. Id. ¶¶ 1–5, 15, 55, 56.
`3. 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,
`9, 14; Ex. 1006 5, 9. Petitioner cites to the two Sidekick manual 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
`
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`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. McCarthy (Ex. 1064)
`McCarthy teaches improving upon “prior art messaging systems” such
`
`as “instant messaging” systems by allowing a user to “participate in the chat
`while not connected and . . . pick up in a past [messaging] discussion if they
`later rejoin the chat.” Ex. 1064, 1:24, 2:12–51, 2:66–3:17, 3:54–4:10.
`5. Rucinski (Ex. 1040)
`Rucinski discloses a user interface for use in an instant messaging
`service application. Ex. 1040, code (57). Rucinski teaches a dedicated
`button to launch a buddy list. Ex. 1040 ¶ 50. Specifically, Rucinski teaches
`a “WHO’s ON” which upon activation displays a screen “identify[ing] those
`subscribers that are online and within, for example, a buddy list or chat
`group associated with the user.” Id.
`6. Motivation to Combine
`Petitioner argue that the Google IPR found that a person of ordinary
`skill in the art would have had reasons to combine VD, Sinivaara, Chiu,
`McCarty to implement Van Dok’s device as set forth in IPR2019-01567.
`Pet. 9 (citing Google IPR at 16–17). Thus, Petitioner reasserts the
`arguments presented in the Google IPR supporting the motivation to
`combination VD, Sinivaara, Chiu, and McCarty. Pet. 9–14; Ex. 1003
`¶¶ 522–522; Ex. 1049 ¶¶ 119–128. We agree and find that Petitioner
`provides persuasive argument and evidence supporting the combination of
`Van Dok’s instant messaging device with features from the Sidekick as
`
`16
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`IPR2021-01126
`Patent 7,292,870 B2
`asserted in the Google IPR (Pet. 29–35; Ex. 1003 ¶¶ 532–545) and in the
`alternative with Sidekick and Rucinski (Pet. 38–39; Ex. 1003 ¶¶ 546–560).
`In view of the final record here, Petitioner provides persuasive
`rationales by a preponderance of the evidence to combine the teachings of
`Van Dok, Sinivaara, Chiu, McCarthy, and (Sidekick I or Sidekick II); and
`Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick II), and
`Rucinski.
`7. Claims 31–33
`In view of the Google IPR which canceled claims 20, 24–30 based on
`Van Dok, Sinivaara, Chiu, and McCarty (Pet. 14–30; Google IPR at 18–26),
`Petitioner asserts that Van Dok, Sinivaara, Chiu, and McCarty in
`combination with the teachings of Sidekick (Sidekick-I and Sidekick-II)
`discloses the limitations of claims 31–33, which require conversation control
`involving generating and displaying a buddy list. Pet. 29–38; Ex. 1003
`¶¶ 532–552. In the alternative, Petitioner argues that Rucinski in
`combination with Van Dok, Sinivaara, Chiu, McCarty, and Sidekick
`provides a dedicated button to launch a buddy list for an instant messaging
`service. Pet. 38–39; Ex. 1003 ¶¶ 552–560.
`Based on the full record, we find no deficiencies in Petitioner’s
`evidence and argument regarding the functions, knowledge in the art, or in
`Petitioner’s analysis regarding the why one of ordinary skill in the art would
`have been prompted to implement the Van Dok, Sinivaara, Chiu, McCarty,
`and Sidekick device or the Van Dok, Sinivaara, Chiu, McCarty, Sidekick,
`and Rucinski device. In addition, we find persuasive Petitioner’s declarant
`testimony concerning the relevant teachings of the cited references and
`knowledge of an ordinarily skilled artisan.
`
`17
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`IPR2021-01126
`Patent 7,292,870 B2
`We find that Petitioner has shown that the asserted prior art teaches
`the handheld instant messaging terminal accessing an instant messaging
`through an access point (claims 20 and 30, Pet. 14–29), and further teaches
`the limitations of claims 31–33, directed toward conversation session control
`that generates a buddy list (claim 31), displays a buddy list for active
`conversations (claim 32), and generating and displaying an active buddy list
`conversation window (claim 33). Id. at 35–50; Ex. 1003 ¶¶ 546–591. We
`have reviewed Petitioner’s arguments and evidence and find them persuasive
`that proposed Van Dok, Sinivaara, Chiu, McCarty, and Sidekick
`combination or Van Dok, Sinivaara, Chiu, McCarty, Sidekick, and Rucinski
`combination teach the session controls for a buddy lists, active buddy
`conversations, and conversation windows as recited in claims 31–33. Id.
`(providing buddy list screens and conversation sessions showing claim
`features for each limitation of claims 31–33).
`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”). We find
`that Petitioner has shown by a preponderance of the evidence that Van Dok,
`Sinivaara, Chiu, McCarty, and Sidekick or Van Dok, Sinivaara, Chiu,
`McCarty, Sidekick, and Rucinski teach the limitations of claims 31–33 by a
`preponderance of the evidence.
`
`18
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`IPR2021-01126
`Patent 7,292,870 B2
`E. Obviousness of Claims 34 and 35: Van Dok, Sinivaara, Chiu,
`McCarthy, (Sidekick I or Sidekick II), Canfield or Van Dok,
`Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick II), Canfield,
`Rucinski
`Petitioner asserts that claims 34 and 35, which depend from
`claims 30–33, are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick II), and
`Canfield or Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick
`II), Canfield, and Rucinski. Pet. 50–64. As stated above, claim 30 was
`found unpatentable over Van Dok, Sinivaara, Chiu, and McCarty. Google
`IPR at 25–26. 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 of Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II), Canfield or Van Dok, Sinivaara, Chiu,
`McCarthy, (Sidekick I or Sidekick II), Canfield, Rucinski. Pet. 50–64;
`Ex. 1003 ¶¶ 592–650.
`Canfield discloses an “IM conversation counter and indicator” that
`“provides . . . statistics regarding concurrent instant messaging sessions.”
`Ex. 1045, codes (54), (57). Canfield teaches a system that “determine[s]”
`“statistics,” such as “a total number of concurrent instant messaging
`sessions; a number of instant messaging sessions with new messages; a
`number of new instant messaging sessions; and a number of new instant
`messages.” Id. at 1:45–62.
`Petitioner provides persuasive evidence and argument that the
`combination of Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or
`Sidekick II), and Canfield, or Van Dok, Sinivaara, Chiu, McCarthy,
`(Sidekick I or Sidekick II), Canfield, and Rucinski teach the conversation
`session windows for messaging buddies and parsing data entries for
`
`19
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`IPR2021-01126
`Patent 7,292,870 B2
`compatibility with instant messaging services required in claims 34 and 35.
`See Pet. 50–64; Ex. 1003 ¶¶ 592–650.
`Patent Owner provided no response contesting Petitioner’s arguments
`or evidence. Based on the record here, we find that Petitioner has shown by
`a preponderance of the evidence that claims 34 and 35 are unpatentable over
`Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick II), and
`Canfield, or Van Dok, Sinivaara, Chiu, McCarthy, (Sidekick I or Sidekick
`II), Canfield, and Rucinski.
`F. Obviousness of Claims 36–40: Van Dok, Sinivaara, Chiu,
`McCarthy, Capps
`In view of the Google IPR which canceled claims 20, 24–30 based on
`Van Dok, Sinivaara, Chiu, and McCarty (Pet. 14–30; Google IPR at 18–26),
`Petitioner asserts that claims 36–40 are unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Van Dok, Sinivaara, Chiu, McCarthy, and Capps.
`Pet. 64–73. Petitioner provides persuasive argument and evidence that a
`person of ordinary skill in the art would have been motivated to combine
`Capps’ teachings with Van Dok, Sinivaara, Chiu, and McCarty. Pet. 65–67;
`Ex. 1003 ¶¶ 652–657.
`Capps discloses a method and system for “integrating an instant
`messaging client application, a streaming audio server application, and an
`audio playback application” in a client computer. Ex. 1011, code (57),
`1:18–20. Capps teaches that “media playe
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