Trials@uspto.gov
`571-272-7822
`
`Paper 30
`Date: December 20, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`ZIPIT WIRELESS, INC.,
`Patent Owner.
`
`IPR2021-01130
`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
`Determining Some Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a); 42 C.F.R. §§ 42.64, 42.71
`
`
`
`
`
`

`

`IPR2021-01130
`Patent 7,894,837 C1
`Microsoft Corporation (“Microsoft”) and Apple Inc. (“Apple”)
`jointly filed a Petition (“Pet.,” Paper 3) pursuant to 35 U.S.C. § 311 to
`institute an inter partes review of claims 2, 13,1 19, 23, 24, 27, 29–31, 40–
`42, 46, 48–50 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 Claims 11 and 12 of the ’837 patent were 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 13 of the ’837 patent depends from claims 11
`and 12, Petitioner addresses claim 11 as a part of addressing the challenged
`dependent claim 13.
`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, 151–152.
`
`2
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`

`

`IPR2021-01130
`Patent 7,894,837 C1
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 10, “PO Resp.”), and Microsoft and Apple filed a Reply to
`the Patent Owner Response (Paper 13, “Reply”). Patent Owner also filed a
`Corrected Sur-reply. Paper 21 (“Sur-reply”). The parties requested an oral
`hearing. Papers 16, 17.
`Microsoft and Zipit filed a Joint Motion to terminate the proceeding
`as to Microsoft (Paper 26), which we granted. Paper 28. Thus, the trial
`proceeded to an oral hearing with Apple as sole Petitioner. An oral hearing
`was held with Apple (“Petitioner”) and Patent Owner on September 21,
`2022, and a transcript of the hearing is included in the record. Paper 29
`(“Tr.”).
`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).
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of
`claims 2, 13, 19, 23, 24, 27, 29–31, 40–42, 46, and 48–50 of the ’837 patent.
`For the reasons discussed below, Petitioner has demonstrated by a
`preponderance of the evidence that claims 2, 13, 19, 23, 24, 27, 29–31, 46,
`and 48–50 of the ’837 patent are unpatentable. Petitioner has not
`demonstrated by a preponderance that claims 40–42 are unpatentable.
`
`3
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`

`

`IPR2021-01130
`Patent 7,894,837 C1
`
`I. BACKGROUND
`A. Real Parties-in-Interest
`The Petition asserts that Apple is the real party-in-interest. Pet. 89.
`Patent Owner asserts that Zipit is the real party-in-interest. Paper 6, 2.
`B. Related Matters
`Petitioner filed three concurrent Petitions for inter partes review of
`the ’837 patent, the instant petition IPR2021-01130 (challenging claims 2,
`13, 19, 23, 24, 27, 29–31, 40–42, 46, 48, and 50); Apple Inc. v. Zipit
`Wireless, Inc., IPR2021-01129 (challenging claims 1, 3–7, 10, 11, 17, 21,
`22, 28, 33–39, and 43–45); and Inc. v. Zipit Wireless, Inc., IPR2021-01131
`(challenging claims 11–13, 17–19). Paper 2, 1–5; Paper 6, 2–3. Adverse
`judgment against Patent Owner was entered in IPR2021-01129. IPR2021-
`01129 Paper 30. In addition, Petitioner filed three concurrent Petitions for
`inter partes review of related U.S. Patent No. 7,292,870: Apple Inc. v. Zipit
`Wireless, Inc., IPR2021-01124; Apple Inc. v. Zipit Wireless, Inc., IPR2021-
`01125; and Apple Inc. v. Zipit Wireless, Inc., IPR2021-01126. Id. Adverse
`judgment against Patent Owner was entered in each of these three cases. See
`IPR2021-01124 Paper 13; IPR2021-01125 Paper 14; IPR2021-01126 Paper
`13.
`
`The Petition provides 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,
`
`
`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).
`
`4
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`IPR2021-01130
`Patent 7,894,837 C1
`and 20 of the ’837 patent were unpatentable). Pet. 89–90. In addition,
`related U.S. Patent No. 7,292,870 was the subject of Google LLC et al. v.
`Zipit Wireless, Inc., IPR2019-01567, Paper 38 (PTAB Mar. 9, 2021) (Final
`Written Decision) (finding the challenged claims unpatentable). Id. Finally,
`Petitioner states 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
`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.
`
`5
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`IPR2021-01130
`Patent 7,894,837 C1
`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 11:10–23.
`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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`IPR2021-01130
`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 Claims
`Claims 11 and 19 reproduced below are illustrative of the challenged
`claims.
`
`7
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`IPR2021-01130
`Patent 7,894,837 C1
`11. A method for managing wireless network access and
`instant messaging through a wireless access point with a
`handheld instant messaging terminal comprising:
`generating textual characters and graphical symbols in
`response to manipulation of keys on a data entry device of a
`handheld instant messaging terminal;
`displaying the generated textual characters and graphical
`symbols on a display of the handheld instant messaging terminal;
`generating data messages with the generated textual
`characters and graphical symbols in accordance with at least one
`instant messaging protocol that is compatible with an instant
`messaging service;
`wirelessly transmitting the generated data messages to a
`wireless network access point through an Internet protocol
`communications module and wireless transceiver in the handheld
`instant messaging terminal; and
`controlling a conversation session in accordance with the
`at least one instant messaging protocol being implemented with
`a control module located within the handheld instant messaging
`terminal.
`
`19. The method of claim 11, the conversation session control
`further comprising:
`parsing
`textual characters and graphical symbols
`generated with the data entry device; and
`confirming the entered characters are compatible with the
`instant messaging service associated with the buddy to whom the
`message is being sent.
`
`Ex. 1001, 24:55–25:8, 26:22–28.
`
`8
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`

`IPR2021-01130
`Patent 7,894,837 C1
`E. Instituted Grounds
`Petitioner relies on the following references. Pet. 2.
`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
`Im, KR Patent Pub. 2003-0068662, published
`Aug. 25, 2003
`
`Heikes
`
`Jonker
`
`Brittan
`
`Miller
`
`Im
`
`Exhibit
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1012
`
`1044
`
`
`We instituted inter partes review of claims 2, 13, 19, 23, 24, 27, 29–
`31, 40–42, and 46 of the ’837 patent on the following grounds (Dec. on
`Inst. 8–9, 23), which are all the grounds presented in the Petition (Pet. 1–2):
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`Heikes, Jonker, (Sidekick I or
`48, 50
`103(a)
`Sidekick II), Brittan
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Miller
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Miller, Im
`Heikes, Jonker, (Sidekick I or
`Sidekick II), Brittan, Miller, Im
`
`13, 27, 49
`
`2
`19, 23, 24, 29–31,
`40–42, 46
`
`
`103(a)
`
`103(a)
`
`103(a)
`
`9
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`

`IPR2021-01130
`Patent 7,894,837 C1
`
`II. ANALYSIS
`A. 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;4
`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. Patent Owner does not challenge Petitioner’s
`statement. See PO Resp. We apply this level of skill in the present case.
`B. Claim Construction
`In inter partes review proceedings based on petitions filed on or after
`November 13, 2018, such as this one, we construe claims using the same
`claim construction standard that would be used in a civil action under
`35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b)
`(2020). “There are only two exceptions to this general rule: 1) when a
`patentee sets out a definition and acts as his own lexicographer, or 2) when
`the patentee disavows the full scope of a claim term either in the
`
`
`4 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).
`
`10
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`

`IPR2021-01130
`Patent 7,894,837 C1
`specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
`LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`We now consider claim construction issues only to the extent
`necessary to dispose of the instant unpatentability grounds. See, e.g.,
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
`Board is required to construe ‘only those terms . . . that are in controversy,
`and only to the extent necessary to resolve the controversy.’” (quoting Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`Petitioner offers no proposed claim constructions and applies the
`constructions determined by the Board in the IPR2019-01568 Final Written
`Decision. Pet. 3. Petitioner 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 the patent’s prosecution
`history.” Id. at 3–4 (citing Ex. 1003 ¶¶ 73–74; 37 C.F.R. §42.100(b)).
`Patent Owner does not challenge Petitioner’s construction. PO Resp. 10–11.
`We adopt the claim constructions determinations in IPR2019-01568
`provided in the table below.
`Claim Term
`“generating textual characters and
`graphical symbols in response to
`manipulation of keys on a data
`entry device”
`“a data entry device of a handheld
`terminal”
`
`Google ’837 IPR at 9–12.
`
`IPR2019-01568 Construction
`“graphical symbols” refers to
`“graphical emoticons;” phrase is
`given its “ordinary meaning in the
`context of the claims”
` “a handheld terminal capable of
`data entry”
`
`11
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`

`

`IPR2021-01130
`Patent 7,894,837 C1
`C. Obviousness of Claims 48–50: Heikes, Jonker, Sidekick (Sidekick I
`or Sidekick II), and Brittan
`Petitioner asserts that claims 48 and 50, which depend from claim 1
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Heikes, Jonker,
`Sidekick (Sidekick-I or Sidekick-II), and Brittan. Pet. 4–53. To support its
`contentions, Petitioner provides explanations as to how the prior art
`discloses each claim limitation and the motivations to combine the prior art
`teachings. Id. Petitioner also provides citations to the Traynor Declaration
`in support of its contentions. Id.; 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
`Messenger (id. ¶ 50). Figure 4, provided below, illustrates such a
`communication system. Id. ¶ 56.
`
`12
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`IPR2021-01130
`Patent 7,894,837 C1
`
`
`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.
`
`13
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`IPR2021-01130
`Patent 7,894,837 C1
`
`
`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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`IPR2021-01130
`Patent 7,894,837 C1
`
`
`Figure 1 shows mobile device 102 that includes access client 100,
`which enables access to network 104 via carrier LAN network 106a/106b
`using Wireless Access Point (AP) 108a. Id. at 4:1–8, 26:32–35, Fig. 1.
`Access client 100 uses a network device “to transmit and receive carrier
`network signals.” Id. at 26:36–41. In addition, Jonker teaches that access
`client 100 includes sniffer 200 to “detect access points” by receiving “carrier
`network signals transmitted by the AP,” which include “a carrier network
`identifier used by devices coupled to the carrier network to identify the
`network.” Id. at 6:54–66. Jonker further teaches that sniffer 200
`“continuously polls access points” and if the sniffer logic determines that the
`access client is not currently connected to a carrier network, it determined if
`an access point is available. Id. at 11:32–12:6.
`3. Sidekick-I (Ex. 1005) and Sidekick II (Ex. 1006)
` Sidekick-I (a PDF manual) and Sidekick-II (an internet-based
`publication of a user manual) are the user manuals for a handheld mobile
`communication device that uses IM and wireless networking. Ex. 1005, 1,
`
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`IPR2021-01130
`Patent 7,894,837 C1
`9, 14; Ex. 1006, 5, 9. Petitioner cites to the two Sidekick manual in parallel
`asserting that “Sidekick-II is the earliest publicly accessible portions of a
`user manual relied upon” and Sidekick-I “has a slightly later known public
`accessibility date than Sidekick-II.” Pet. 5. Petitioner relies primarily on
`Sidekick-I, but to the extent that Sidekick-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
`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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`IPR2021-01130
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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. 14–18; Ex. 1003 ¶¶ 157–170; Ex.
`1007 ¶¶ 2, 38, 45–47; Ex. 1005 ¶¶ 39–45, Fig. 1.
`Petitioner further asserts that an ordinarily skilled artisan would have
`utilized the sidekick features of an integrated display and keyboard into 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
`form with IM capabilities to navigate and perform data entry. Pet. 18–20;
`Ex. 1003 ¶¶ 171–181. Petitioner further contends 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. 23) as it was well known to use
`buttons or related menus to select emoticon smilies (id. at 24). 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
`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. 24–25 (citing Ex. 1003 ¶¶ 195–196).
`6. Claims 1, 48, and 50 Analysis
`Petitioner provides persuasive and sufficient 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.
`
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`IPR2021-01130
`Patent 7,894,837 C1
`Pet. 27–47; 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. 26–
`33; 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. 33–36; Ex. 1003 ¶¶ 225–239.
`Petitioner’s evidence also supports that the Heikes-Jonker-Sidekick-Brittan’s
`device based on the disclosures of Heikes and Sidekick teaches a wireless
`transceiver that transmits data messages over a network in accordance with
`requirements of limitation [1e]. Pet. 36–40; 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. 40–47; 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 symbols) and display controller 131
`then recognizes the character string and displays it using the corresponding
`graphic” in accordance with limitation [1h]. Pet 46–47; Ex. 1003 ¶ 282;
`Ex. 1009, 12–13, Figs. 3, 4.
`Petitioner relies on the analysis of claim 1 to support their contentions
`that Heikes-Jonker-Sidekick-Brittan teach the limitations of claim 11.
`Pet. 47–52; Ex. 1003 ¶¶ 300–366. Claim 11, which is cancelled (see Google
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`’837 IPR at 49–51), is incorporated into challenged dependent claims in
`related grounds discussed below.
`Claims 48 and 50 provided limitations for independent claim 1
`addressing the data entry device keys. Petitioner argues that the Heikes-
`Jonker-Sidekick-Brittan device includes a data entry key that corresponds to
`a graphical symbol and when activated as asserted in claim limitation [1g]
`displays a menu of smilies (graphical symbols) for selection. Pet. 52–53;
`Ex. 1003 ¶¶ 312–315, 366; Ex. 1009, Abstract, 12–13, Figs. 3, 4; Ex. 1007
`¶¶ 84, 110–116, Figs. 11, 12; Ex. 1010, 90–92.
`Patent Owner does not challenge Petitioner’s contentions and “takes
`no position” with respect to the cited evidence. PO Resp. 12; see 37 C.F.R.
`§ 42.23(a) (“Any material fact not specifically denied may be considered
`admitted.”); In re Nuvasive, Inc., 842 F.3d 1376, 1379–82 (Fed. Cir. 2016)
`(holding that patent owner waived arguments on an issue that were not
`raised in its response after institution).
`Based on the full record, we find that Petitioner’s evidence and
`argument establish by a preponderance of the evidence that Heikes-Jonker-
`Sidekick-Brittan IM device combination and functions teach or suggest the
`limitations of claims 1, 48, and 50. Accordingly, Petitioner has
`demonstrated that Heikes-Jonker-Sidekick-Brittan (based on either Sidekick-
`I or Sidekick-II) would have rendered obvious the limitations of claims 48
`and 50.
`D. Obviousness of Claims 13, 27, 49: Heikes, Jonker, Sidekick (Sidekick
`I or Sidekick II), Brittan, and Miller
`Petitioner asserts that claims 13, 27, and 49 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Heikes, Jonker, Sidekick (Sidekick I or
`Sidekick II), Brittan, and Miller. Pet. 53–61; see id. at 47–52 (addressing
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`claim 11 from which claim 13 indirectly depends). To support its
`contentions, Petitioner provides explanations as to how the prior art
`discloses each claim limitation and the motivations to combine the prior art
`teachings. Id. Petitioner also provides citations to the Traynor Declaration
`in support of its contentions. Ex. 1003 ¶¶ 434–448.
`Miller teaches a computer system (e.g., PDA) that includes a
`keyboard, an operating system, and a[n] “instant messaging application.”
`Ex. 1012, 4:13–50, Fig. 1. Miller discloses that when a user selects a key on
`the keyboard, the corresponding characters or graphical emoticons
`associated with the key are used to input text or graphics into an IM
`application display. Ex. 1012, 7:60–8:31, 8:66–9:35, 9:49–52 (stating that
`an “emoticon can be a set of text characters” or “a graphic”), Fig. 5–7.
`Petitioner provides persuasive and sufficient argument that the
`“Heikes-Jonker-Sidekick-Brittan’s device is the type of device that Miller
`sought to improve upon” (Ex. 1012, 1:22–2:60) as “Miller explains that
`conventional devices/software required users to choose a graphic emoticon
`for display by ‘press[ing] more than one key or using a graphical menu’ of
`such emoticons, which can ‘be confusing and distracting to the instant
`messaging experience’” (id. at 1:22–2:60). Pet. 54–55 (citing Ex. 1003
`¶¶ 428–429). We find that Petitioner offers persuasive rationales to support
`that a skilled artisan “would have been motivated to include one or more
`dedicated emoticon keys, on the combination’s keyboard, which upon being
`depressed would result in entering a graphical emoticon in the instant
`messaging application’s display.” Pet. 55–56 (citing Ex. 1003 ¶ 431; Ex.
`1012, 2:20–45). Petitioner argues this modification would have been
`straightforward and used a known technique to improve similar devices.
`Pet. 55–56; Ex. 1003 ¶¶ 432–433.
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`1. Analysis of Claims 13, 27, and 49
`Petitioner provides persuasive argument and evidence that Heikes-
`Jonker-Sidekick-Brittan-Miller teaches the limitations of dependent
`claims 13 (which depends from claims 11 and 12), 27 (which depends from
`claim 1), and 49 (which depends from claims 1 and 48). Pet. 57–61;
`Ex. 1003 ¶¶ 437–448. We find above that the cited combination teaches the
`limitations of claims 1 and 48. Petitioner also provides persuasive argument
`and evidence that Heikes-Jonker-Sidekick-Brittan teaches claim 11 (Pet. 47–
`52; Ex. 1003 ¶¶ 300–315). Patent Owner does not challenge Petitioner’s
`argument or evidence with respect to claim 11. PO Resp. 12.
`With respect to claim 12 and 13, Petitioner provides sufficient
`evidence with citation to the teachings from the references and knowledge of
`ordinarily skilled artisans that Heikes-Jonker-Sidekick-Brittan-Miller device
`teaches the conversation session controls of claims 12 and 13, including data
`entry key and generating a character sequence that represents a graphical
`symbol. Pet. 56–59; Ex. 1003 ¶¶ 434–443; see Pet. 47–52 (mapping
`limitations for claim 11 to Heikes-Jonker-Sidekick-Brittan).
`With respect to dependent claims 27 and 49, Petitioner provides
`persuasive evidence and argument that Heikes-Jonker-Sidekick-Brittan-
`Miller teaches the control data entry device and control module limitations
`for generating character sequences for graphical symbols compatible with at
`least one instant messaging protocol. Pet. 59–61; Ex. 1003 ¶¶ 444–448.
`Patent Owner does not challenge Petitioner’s contentions and “takes
`no position” with respect to the cited evidence. PO Resp. 12. Based on the
`full record, we find that Petitioner establishes that Heikes-Jonker-Sidekick-
`Brittan-Miller in combination teach or suggest the limitations of claims 13,
`27, and 49 by a preponderance of the evidence.
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`E. Obviousness of Claim 2: Heikes, Jonker, Sidekick (Sidekick I or
`Sidekick II), Brittan, Miller, and Im
`Petitioner asserts that claim 2 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over the Heikes, Jonker, Sidekick (Sidekick I or
`Sidekick II), Brittan, Miller and Im. Pet. 61–67; Ex. 1003 ¶¶ 449–477; see
`Pet. 25–47 (addressing claim 1 from which claim 2 depends). To support its
`contentions, Petitioner provides explanations as to how the prior art
`discloses each claim limitation and the motivations to combine the prior art
`teachings. Id. Petitioner also provides citations to the Traynor Declaration
`in support of its contentions. Ex. 1003 ¶¶ 199–284, 464–477.
`Im teaches “shortcut key[s]” on a keyboard of a device (e.g., a PDA)
`that can be programmed to be associated with a “character string” that can
`be input into applications. Ex. 1044, Abstract, 2. Petitioner argues that an
`ordinarily skilled artisan w