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.
`
`IPR2021-01129
`Patent 7,894,837 C1
`
`
`
`
`
`
`
`
`
`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
`
`
`
`
`
`

`

`IPR2021-01129
`Patent 7,894,837 C1
`
`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, 3–7, 10,1 17, 21, 22, 28, 33–39,
`and 43–45 of U.S. Patent No. 7,894,837 C12 (“the ’837 patent,” Ex. 1001)
`owned by Zipit Wireless, Inc. (“Patent Owner” or “Zipit”). The Petition is
`supported by the Declaration of Dr. Patrick Traynor (Ex. 1003, “Traynor
`Decl.”). 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.”).
`
`
`1 Claim 11 of the ’837 patent was determined to be unpatentable in Google
`LLC et al. v. Zipit Wireless, Inc., IPR2019-01568, Paper 39 at 49–51 (PTAB
`Mar. 9, 2021) (Final Written Decision) (finding that claims 11, 12, 14–16,
`and 20 of the ’837 patent were unpatentable). Because the challenged
`dependent claim 17 of the ’837 patent depends from independent claim 11,
`the Petition addresses claim 11 as a part of addressing the challenged
`dependent claim 17.
`2 An Ex Parte Reexamination Certificate issued for the ’837 patent on
`November 23, 2020 with amendments to independent claim 1 and newly
`added claims 21–50, each of which depend directly or indirectly from claim
`1. See Ex. 1043, 151–152. Although the Petitioner’s declarant refers to
`Exhibit 1042 as providing the Reexamination Certificate (see Ex. 1003
`¶¶ 68, 71 (referring to the Notice of Intent to Issue Ex Parte Reexamination
`Certificate in Exhibit 1042)), no exhibit marked 1042 was filed. Indeed, the
`exhibit list in the Petition shows the 1042 was “RESERVED.” Pet. v. We
`note that Petitioner filed the Reexamination Certificate as part of Exhibit
`1043 (excerpts of the Reexamination file history)). See Ex. 1043, 151–52.
`
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`IPR2021-01129
`Patent 7,894,837 C1
`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 Reply
`(Paper 10), requested “issuance of an FWD invalidating the Challenged
`Claims” in the pending proceeding. Paper 10, 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 11). Paper 13. 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,
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`IPR2021-01129
`Patent 7,894,837 C1
`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,
`claims 1, 3–7, 10, 17, 21, 22, 28, 33–39, and 43–45 of the ’837 patent are
`unapatentable.
`A. Real Parties in Interest
`Apple asserts that it is the real party-in-interest. Pet. 98.
`B. Related Matters
`Microsoft and Apple filed three concurrent Petitions for inter partes
`review of the ’837 patent, the instant petition IPR2021-01129 (challenging
`claims 1, 3-7, 10, 11, 17, 21, 22, 28, 33–39, and 43–45); Microsoft
`Corporation and Apple Inc. v. Zipit Wireless, Inc., IPR2021-01130
`(challenging claims 1, 2, 11–13, 19, 23, 24, 27, 29–31, 40–42, 46, and 48–
`50), and Microsoft Corporation and Apple Inc. v. Zipit Wireless, Inc.,
`IPR2021-01131 (challenging claims 11–13, 17–19). Paper 2, 1–5; Paper 6,
`2–3. We issued Final Written Decision in IPR2021-01130 and IPR2021-
`01131. In addition, Microsoft and Apple filed three concurrent Petitions for
`inter partes review of related U.S. Patent No. 7,292,870: Microsoft
`Corporation and Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124;
`Microsoft Corporation and Apple Inc. v. Zipit Wireless, Inc., IPR2021-
`01125; and Microsoft Corporation and Apple Inc. v. Zipit Wireless, Inc.,
`IPR2021-01126. Id.
`
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`IPR2021-01129
`Patent 7,894,837 C1
`Microsoft and Apple provide that the ’837 patent was the subject of
`Final Written Decisions in IPR2014-015063 and in Google LLC et al. v. Zipit
`Wireless, Inc., IPR2019-01568, Paper 39 (PTAB Mar. 9, 2021) (Final
`Written Decision) (“Google ’837 IPR”) (finding that claims 11, 12, 14–16,
`and 20 of the ’837 patent were unpatentable). Pet. 98. In addition, related
`U.S. Patent No. 7,292,870 was the subject of Google LLC v. Zipit Wireless,
`Inc., IPR2019-01567, Paper 38 (PTAB Mar. 9, 2021) (Final Written
`Decision) (finding the challenged claims unpatentable). Id. Finally,
`Microsoft and Apple state that the ’837 patent is involved in Zipit Wireless,
`Inc. v. LG Electronics Inc., Case No. 6-18-cv-02016 (D. S.C.). Id.
`Patent Owner indicates that the inter partes review of the ’837 patent
`may also 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 ’837 Patent
`The ʼ837 patent relates to a handheld instant messaging (“IM”)
`device. Ex. 1001, 1:16–18. The ’837 patent discloses an IM terminal that
`includes a display and a data entry device integrated in a housing for the IM
`terminal. Id. at 4:25–28. The data entry device allows entry of graphical
`symbols (such as emoticons supported by an IM service provider) or textual
`
`3 Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, 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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`IPR2021-01129
`Patent 7,894,837 C1
`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 4:28–35, 4:36–55, 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 8:62–65.
`
`
`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 11:10–15.
`Figures 12a and 12b, provided below, show user interface screens that
`associate emoticon pictorial images with programmable keys. Id. at 9:27–
`28.
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`IPR2021-01129
`Patent 7,894,837 C1
`
`
`
`Figures 12a and 12b show screens used in the emoticon selection procedure.
`Id. at 9:27–28. Figure 12a identifies keys of keyboard 68 (not shown) that
`are associated with selected emoticons. 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 16:1–8.
`The handheld terminal of the ’837 patent manages multiple IM
`conversations over Internet Protocol (“IP”) through different IM service
`providers. Id. at 5:16–63, 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. 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
`4:56–62.
`D. Illustrative Claim
`Claim 1 reproduced below with bracketed lettering added is
`illustrative.
`
`7
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`IPR2021-01129
`Patent 7,894,837 C1
`1.
`[pre] A handheld instant messaging terminal comprising:
`[1a] handheld terminal housing;
`[1b] a data entry device integrated in the terminal housing,
`the data entry device being configured to generate textual
`characters and graphical symbols in response to actuation of the
`data entry device;
`[1c] a display mounted in the terminal housing to display
`textual characters and graphical symbols including the textual
`characters and graphical symbols generated by the data entry
`device;
`[1d] an Internet protocol communications module located
`within the handheld terminal housing to generate data messages
`in an Internet protocol;
`[1e] a wireless transceiver mounted within the handheld
`terminal housing and coupled
`to
`the Internet protocol
`communications module to generate wireless data messages that
`include the data messages in the Internet protocol, the wireless
`transceiver radiates the wireless data messages from an antenna
`coupled to the wireless transceiver, and
`[1f] a control module located within the handheld terminal
`housing and coupled to the Internet protocol communications
`module, the control module including at least one processor that
`executes an application program to implement at least one instant
`messaging protocol for generation of instant messaging (IM)
`data messages that are compatible with at least one instant
`messaging service, [1g] the control module providing the
`generated IM data messages that are compatible with the at least
`one
`instant messaging service
`to
`the Internet protocol
`communications module to enable the IM data messages to be
`communicated during at least one conversation session through
`the Internet protocol communications module and the wireless
`transceiver, [1h] the control module being further configured to
`determine a character sequence corresponding to one of the
`graphical symbols in the generated IM messages that are
`compatible with the at least one instant messaging service.
`
`Ex. 1043, 151 (1:21–59) (bracketed letters added); see Pet. x–xi.
`
`8
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`IPR2021-01129
`Patent 7,894,837 C1
`E. Evidence and Instituted Grounds
`Petitioner relies on the following references. Pet. 4.
`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, 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
`Werndorfer Werndorfer et al., U.S. Patent App. Pub. No.
`2004/0024822 A1, filed Aug. 1, 2002, published
`Feb. 5, 2004
`
`Heikes
`
`Jonker
`
`Brittan
`
`Capps
`
`Exhibit
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1011
`
`1013
`
`
`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
`1, 3, 4, 21, 22, 28,
`Heikes, Jonker, (Sidekick I or
`103(a)
`33–38
`Sidekick II), Brittan
`Heikes, Jonker, (Sidekick I or
`10, 43–45
`Sidekick II), Brittan, Capps
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan,
`Werndorfer
`
`5–7, 17, 39
`
`103(a)
`
`103(a)
`
`Dec. on Inst. 23; Pet. 3–4.
`
`9
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`IPR2021-01129
`Patent 7,894,837 C1
`
`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
`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
`
`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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`IPR2021-01129
`Patent 7,894,837 C1
`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 IPR2019-01568, Google ’837 IPR at 8–9. See Pet 5 n.3;5
`Ex. 1003 ¶¶ 37. Our prior decision in IPR2019-01568 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 ’837 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 IPR2019-01568 Final Written
`
`
`5 We note that the Petition and Petitioner’s declarant cite erroneously to
`Exhibit 1042 here (see, e.g., Ex. 1003 ¶ 66; Pet. 3 n.2, 5 n.3), we view
`references to Exhibit 1042 in this context as citations to Google LLC et al. v.
`Zipit Wireless, Inc., IPR2019-01568, Paper 39 (PTAB Mar. 9, 2021) (Final
`Written Decision), which was not provided as part of Petitioner’s exhibits.
`See Pet. v (noting Exhibit 1042 is RESERVED).
`
`11
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`IPR2021-01129
`Patent 7,894,837 C1
`Decision. Pet. 5. Petitioner also asserts 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 [at] prosecution
`history.” Id. at 5–6 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)).
`We adopt the claim constructions determinations in IPR2019-01568
`provided in the table below for the reasons discussed there.
`Claim Term
`IPR2019-01568 Construction
`“generating textual characters and
` “graphical symbols” refers to
`graphical symbols in response to
`“graphical emoticons;” phrase is
`manipulation of keys on a data
`given its “ordinary meaning in the
`entry device”
`context of the claims”
`“a data entry device of a handheld
`“a handheld terminal capable of
`terminal”
`data entry”
`
`Google ’837 IPR at 9–12.
`D. Obviousness of Claims 1, 5–10: Heikes, Jonker, Sidekick (Sidekick I
`or Sidekick II), and Brittan
`Petitioner asserts that claims 1, 3, 4, 21, 22, 28, 33–38 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Heikes, Jonker,
`Sidekick (Sidekick-I or Sidekick-II), and Brittan. Pet. 27–67. 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 Declaration in support of
`their contentions. Ex. 1003 ¶¶ 199–365. 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
`
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`IPR2021-01129
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`Messenger (id. ¶ 50). Figure 4, provided below, illustrates such a
`communication system. Id. ¶ 56.
`
`
`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. 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. 4. Petitioner relies primarily on
`Sidekick-I, but to the extent that Sidekick-I is challenged, Petitioner also
`relies independently on Sidekick-II. Id. at 4–5.
`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
`For the motivation to combine Heikes, Jonker, Sidekick (Sidekick-I or
`Sidekick-II), and Brittan, Petitioner asserts a person of ordinary skill in the
`art would have been motivated to combine Heikes, Jonker, Sidekick
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`(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. 16–20; Ex. 1003 ¶¶ 157–170; Ex.
`1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1. Petitioner argues that both
`Hiekes and Jonker teach wireless communication and that it was “well
`known and common knowledge for wireless LANs to operate and be
`implemented in: (1) ad-hoc mode or (2) an ‘infrastructure mode.’” Pet. 17–
`18; Ex. 1003 ¶¶ 161–162.
`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 to navigate and perform data entry. Pet. 20–22; Ex.
`1003 ¶¶ 171–181. Petitioner argues that “[b]ased 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. 24–25) as it was well known to use buttons or related
`menus to select emoticon smilies (id. at 25). Petitioner further contends 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
`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. 26 (citing Ex. 1003 ¶¶ 195–196).
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`In view of the full unrebutted record, Petitioner provides persuasive
`rationales by a preponderance of the evidence to combine the teachings of
`Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II), and Brittan.
`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. 27–49;
`Ex. 1003 ¶¶ 199–284. Petitioner provides citation 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” and a housing with integrated data entry and display as required
`in claim 1 (preamble and limitations [1a], 1[b], and [1c]). Pet. 27–35;
`Ex. 1003 ¶¶ 200–224). Further, Petitioner shows that the Heikes-Jonker-
`Sidekick-Brittan’s device includes an Internet protocol (IP) communication
`module that performs the controller communications with the wireless
`transceiver as required in limitation [1d]. Pet. 32–41; Ex. 1003 ¶¶ 225–239.
`Petitioner’s evidence also supports that the Heikes-Jonker-Sidekick-Brittan’s
`device teaches wireless transceiver that transmits data messages over a
`network in accordance with requirements of limitation [1e]. Pet. 38–42;
`Ex. 1003 ¶¶ 240–254. Finally, Petitioner provides detailed evidence
`supporting that Heikes-Jonker-Sidekick-Brittan teaches the control module
`limitations of claim [1f], [1g], and [1h]. Pet. 42–49; Ex. 1003 ¶¶ 255–284.
`In particular, Petitioner asserts that Brittan teaches a controller that
`“detect[s] and interpret[s] key presses to output, from an associated memory,
`the appropriate character string’ corresponding to the selected smiley (i.e.,
`determines the character sequence corresponding to one of the graphical
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`symbols) and display controller 131 then recognizes the character string and
`displays it using the corresponding graphic” in accordance with limitation
`[1h]. Pet. 48; Ex. 1003 ¶ 282; Ex. 1009, 12–13, Figs. 3, 4.
`Based on the current 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
`analysis regarding why one of ordinary skill in the art would have been
`prompted to implement the Heikes-Jonker-Sidekick-Brittan IM device. In
`addition, we find persuasive Dr. Traynor’s testimony concerning the relevant
`teachings of the cited references and knowledge of an ordinarily skilled
`artisan. Accordingly, 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 3, 4, 21, 22, 28, 33–38
`Challenged claims 3, 4, 21, 22, 28, and 33–38 depend from claim 1.
`Ex. 1001, 24:9–18 (claims 3 and 4); Ex. 1043, 151–152 (claims 21, 22, 28,
`and 33–38). Petitioner provides persuasive evidence with citation to the
`teachings from the references and knowledge of ordinarily skilled artisans
`that the Heikes-Jonker-Sidekick-Brittan combination teaches the device
`limitations of claims 3, 4, 21, 22, 28, and 33–38. See Pet. 49–67; Ex. 1003
`¶¶ 285–365.
`Claim 3 recites a control module configured to detect beacons from
`wireless access points and prioritize becons by signal strength. Petitioner
`provides detailed citations that the Heikes-Jonker-Sidekick-Brittan
`combination teaches the limitations based on Jonker’s access client sniffer
`logic that obtains and sorts detected beacons based on signal strength.
`Pet. 50–52; Ex. 1008, 8:42–9:50, 12:30–50; Ex. 1003 ¶¶ 290–294.
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`With respect to the remaining challenged claims, Petitioner provides
`citations to the evidence and persuasive argument mapping the claim
`limitations to the challenged claims. Pet. 52–67; Ex 1003 ¶¶ 295–365. For
`example, Petitioner maps the stored profile containing network settings of
`claim 4 to Jonker’s stored account management data (Pet. 52; Ex. 1003
`¶¶ 295–296). For claim 21 and 22, Petitioner persuasively asserts that
`“Heikes discloses sending IM messages over a network, and further
`discloses a client controller that directs and commands network
`communications that are transmitted/received over the network by the
`wireless transceiver” and sending data over the network. Pet. 57–58 (citing
`inter alia Ex. 1007 ¶¶ 39–48, 60; Ex. 1003 ¶¶ 317–319). Similarly,
`Petitioner maps the limitations of control module for a first conversation
`session between the client device and a communication device of claim 28 to
`the Heikes IM host and conversation session. Pet. 58–59; Ex. 1003 ¶¶ 320–
`324. Finally, Petitioner persuasively demonstrates that the Heikes, Jonker,
`Sidekick (Sidekick-I or Sidekick-II), and Brittan teaches the visible display
`terminal limitations of claims 33–38. Pet. 59–67.
`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”). On the
`record here, we find that Petitioner has shown by a preponderance of the
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`evidence that Heikes, Jonker, Sidekick (Sidekick-I or Sidekick-II), and
`Brittan teach the limitations of claims 3, 4, 21, 22, 28, and 33–38.
`E. Obviousness of Claims 10, 43–45: Heikes, Jonker, Sidekick (Sidekick
`I or Sidekick II), Brittan, and Capps
`Petitioner asserts that claims 10 and 43–45 are unpatentable under 35
`U.S.C. § 103(a) as obvious over Heikes, Jonker, Sidekick (Sidekick I or
`Sidekick II), Brittan, and Capps. Pet. 68–76. To support their contentions,
`Petitioner provides explanations as to how the prior art discloses each claim
`limitation and the motivations to