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.
`
`IPR2021-01131
`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 All Challenged Claims Unpatentable
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 318(a); 42 C.F.R. §§ 42.64, 42.71
`
`
`
`
`
`
`
`

`

`IPR2021-01131
`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 13 and 17–191 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.”), Dr. Gregory Abowd
`(Ex. 1050), and Duncan Hall (Ex. 1021). 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.”).
`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
`
`
`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) (“Google ’837 IPR”) (finding
`that claims 11, 12, 14–16, and 20 of the ’837 patent were unpatentable).
`Because the challenged dependent claims 13 and 17–19 of the ’837 patent
`depend from claims 11 and 12, Petitioner addresses claims 11 and 12 as a
`part of addressing the challenged claims.
`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. The Reexamination did not amend the
`challenged claims (i.e., claims 13 and 17–19) in the present Petition.
`Compare Ex. 1001, claims 13, 17–19, with Ex. 1043, 151–152.
`
`2
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`IPR2021-01131
`Patent 7,894,837 C1
`Corrected Sur-reply. Paper 21 (“Sur-reply”). The parties requested an oral
`hearing. Papers 16, 17.
`Prior to the oral hearing, 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 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 the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown, by a preponderance of the evidence, that claims 13 and 17–19
`are unpatentable.
`
`I. BACKGROUND
`A. Real Parties-in-Interest
`The Petition asserts that Apple is the real party-in-interest. Pet. 82.
`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 IPR2021-01131 (challenging claims 13
`and 17–19); Apple Inc. v. Zipit Wireless, Inc., IPR2021-01129 (challenging
`
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`IPR2021-01131
`Patent 7,894,837 C1
`claims 1, 3–7, 10, 11, 17, 21, 22, 28, 33–39, and 43–45); 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). 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) (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 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.). Pet. 82–83.
`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
`
`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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`IPR2021-01131
`Patent 7,894,837 C1
`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 and 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.
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`IPR2021-01131
`Patent 7,894,837 C1
`
`
`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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`IPR2021-01131
`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
`For purposes of this decision, claims 11 and 19 are illustrative of the
`challenged claims.
`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;
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`IPR2021-01131
`Patent 7,894,837 C1
`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, 24:55–25:20, 26:22–28.
`
`
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`

`IPR2021-01131
`Patent 7,894,837 C1
`E. 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
`Werndorfer Werndorfer et al., U.S. Patent App. Pub. No.
`2004/0024822, filed Aug. 1, 2002, published Feb.
`5, 2004
`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
`Saric, et al., Canadian Patent App. No. 2,363,978,
`filed Nov. 26, 2001, published May 26, 2003
`Canfield, et al., U.S. Patent No. 7,281,215 B1,
`filed Jul. 31, 2002, issued Oct. 9, 2007
`Rucinski, U.S. Patent App. Pub. No.
`2003/0130014, filed Aug. 20, 2002, published July
`10, 2003
`
`Sinivaara
`
`Saric
`
`Canfield
`
`Rucinski
`
`Exhibit
`1060
`
`1062
`
`1013
`
`1005
`
`1006
`
`1065
`
`1045
`
`1040
`
`
`We instituted inter partes review of claims 13 and 17–19 of the ’837
`patent on the following grounds (Dec. on Inst. 8–9, 19), which are all the
`grounds presented in the Petition (Pet. 1–2):
`Claim(s)
`Challenged
`
`35 U.S.C. §
`
`17
`
`18
`
`103(a)
`
`103(a)
`
`Reference(s)/Basis
`Van Dok, Sinivaara, Werndorfer,
`(Sidekick I or Sidekick II), or
`Van Dok, Sinivaara, Werndorfer,
`(Sidekick I or Sidekick II), Rucinski
`Van Dok, Sinivaara, Werndorfer,
`(Sidekick I or Sidekick II), Canfield
`
`9
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`

`IPR2021-01131
`Patent 7,894,837 C1
`Claim(s)
`Challenged
`19
`13
`
`35 U.S.C. §
`103(a)
`103(a)
`
`Reference(s)/Basis
`Van Dok, Sinivaara, Werndorfer
`Van Dok, Sinivaara, Werndorfer, or
`Van Dok, Sinivaara, Werndorfer, Saric
`Pet. 1–2. Petitioner also relies on the declarations of Patrick Traynor, Ph.D.
`(Ex. 1003), Dr. Gregory Abowd (Ex. 1050) (asserted in the Google ’837
`IPR), and Duncan Hall (Ex. 1021).
`
`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.2;
`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
`
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`IPR2021-01131
`Patent 7,894,837 C1
`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
`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 apply the
`constructions determined by the Board in the IPR2019-01568 Final Written
`Decision. Pet. 5. 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 prosecution history.” Id. at
`5 (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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`

`

`IPR2021-01131
`Patent 7,894,837 C1
`C. Obviousness of Claim 17: Van Dok, Sinivaara, Werndorfer, Sidekick
`(Sidekick I or Sidekick II), or Van Dok, Sinivaara, Werndorfer,
`Sidekick (Sidekick I or Sidekick II), Rucinski
`Petitioner asserts that claim 17 is unpatentable under 35 U.S.C.
`§ 103(a) as obvious over Van Dok, Sinivaara, Werndorfer, and Sidekick
`(Sidekick I or Sidekick II), or Van Dok, Sinivaara, Werndorfer, Sidekick
`(Sidekick I or Sidekick II), and Rucinski. Pet. 5–38. In the Google ’837
`IPR we found Van Dok, Sinivaara, and Werndorfer teach the limitations of
`claim 11, from which claim 17 depends. See Google ’837 IPR at 20, 49–51.
`Petitioner provides support with evidence and argument regarding the
`motivations to combine the prior art teachings as to how the asserted art
`discloses each limitation with citations to the Traynor and Abowd
`declarations in support of their contentions. Pet. 5–38; Ex. 1003 ¶¶ 639–
`695; Ex. 1050 ¶¶ 105–180. 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
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`IPR2021-01131
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`preview how the message will appear when received.” Id. ¶ 56. Figure 5A
`depicts the automatic emoticon replacement disclosed in Van Dok. Id. ¶ 26.
`
`
`
`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.
`
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`IPR2021-01131
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`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
`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 manuals in parallel
`asserting that “Sidekick-II is the earliest publically accessible portions of a
`user manual relied upon” and “Sidekick-I has a slightly later known public
`accessibility date than Sidekick-II.” Pet. 3. Petitioner relies primarily on
`Sidekick-I, but to the extent that Sidekick-I is challenged, Petitioner also
`relies independently on Sidekick-II. Id.
`
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`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. Werndorfer (Ex. 1013)
`Werndorfer discloses a “unified instant messaging client platform”
`designed to address the “lack of interoperability between the different instant
`messaging services” in conventional IM systems. Ex. 1013 ¶¶ 47, 48.
`Werndorfer explains that a “basic principle[]” of IM is that “proprietary
`instant messaging client software” is required “to communicate with the
`specified instant messaging service.” Id. ¶¶ 8–9. For example, AOL’s
`Instant Messenger (“AIM®”) software “allows the client computers . . . to
`communicate with the AIM server using AOL’s proprietary instant
`messaging protocol.” Id. “Moreover, the client IM software and associated
`IM protocols required by each service . . . are not compatible.” Id. ¶ 10.
`Figure 2, below, depicts an instant messaging client architecture. Id.
`¶ 18.
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`IPR2021-01131
`Patent 7,894,837 C1
`
`
`Figure 2 shows IM client platform 200 comprised of IM application
`portion 202, which contains standard IM functions used by each IM
`service 100, 108, 210 (e.g., a buddy list, user-defined online/offline
`parameters, and other universal IM features described below). Id. ¶ 48.
`“Users interact with the IM application 202 via IM graphical user interface
`201.” Id. Werndorfer teaches “interoperability with the different, normally
`incompatible, IM services, [using] IM service interface module 204, 206,
`208, [which] is provided for each IM service 100, 108, and 210,
`respectively.” Id. “The IM service interface modules 204, 206, 208 provide
`service-specific features and communicate with the respective IM services
`100, 108, 210 using the IM protocol required by that service.” Id.
`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
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`IPR2021-01131
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`subscribers that are online and within, for example, a buddy list or chat
`group associated with the user.” Id.
`6. Motivation to Combine
`Petitioner argues that the Google ’837 IPR found that a person of
`ordinary skill in the art would have had reasons to combine Van Dok,
`Sinivaara, and Werndorfer to implement Van Dok’s device as set forth in
`IPR2019-01568. Pet. 9 (citing Google ’837 IPR at 16–17). Petitioner
`reasserts the arguments presented in the Google ’837 IPR supporting the
`motivation to combine Van Dok, Sinivaara, and Werndorfer. Pet. 9–15;
`Ex. 1003 ¶¶ 648–650; Ex. 1050 ¶¶ 81–103. Petitioner provides persuasive
`argument and evidence supporting the combination of Van Dok’s instant
`messaging device with features from the Sidekick (Pet. 26–30; Ex. 1003
`¶¶ 657–671) and in the alternative with Sidekick and Rucinski (Pet. 36–38;
`Ex. 1003 ¶¶ 688–695; Ex. 1040 ¶ 50).
`7. Claim 17
`In view of the Google ’837 IPR which canceled claim 11 based on
`Van Dok, Sinivaara, and Werndorfer, Petitioner asserts that Van Dok,
`Sinivaara, Werndorfer in combination with the teachings of Sidekick
`(Sidekick-I and Sidekick-II) discloses the limitations of claim 17, which
`requires generating and displaying an active buddy list for an instant
`messaging service. Pet. 30–36; Ex. 1003 ¶¶ 672–687. In the alternative,
`Petitioner argues that Rucinski in combination with Van Dok, Sinivaara,
`Werndorfer, and Sidekick provides a dedicated button to launch a buddy list
`for an instant messaging service. Pet. 36–38; Ex. 1003 ¶¶ 688–695.
`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
`
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`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 the combination
`of Van Dok, Sinivaara, Werndorfer, and Sidekick (Sidekick I or Sidekick II),
`or Van Dok, Sinivaara, Werndorfer, Sidekick (Sidekick I or Sidekick II), and
`Rucinski discloses the limitations of claim 17.
`D. Obviousness of Claim 18: Van Dok, Sinivaara, Werndorfer, Sidekick
`(Sidekick I or Sidekick II), Canfield
`Petitioner asserts that claim 18, which depends from claim 11, is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara,
`Werndorfer, Sidekick (Sidekick I or Sidekick II), and Canfield. Pet. 38–64.
`As stated above, claim 11 was found unpatentable over Van Dok, Sinivaara,
`Werndorfer. Google ’837 IPR at 20, 49–51. To support its contentions,
`Petitioner provides persuasive explanations as to how the prior art discloses
`each claim limitation and the motivations to combine the prior art teachings
`of Van Dok, Sinivaara, Werndorfer, and Sidekick (Sidekick I or Sidekick II)
`with Canfield. Id.; Ex. 1003 ¶¶ 704–714.
`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.
`
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`Petitioner provides persuasive evidence to support the motivation to
`combine Van Dok, Sinivaara, Werndorfer, and Sidekick (Sidekick I or
`Sidekick II) with Canfield to implement Canfield’s teachings of providing
`statistics and information about concurrent sessions within the displayed
`conversation session window provided by Van Dok, Sinivaara, Werndorfer,
`and Sidekick device. Pet. 43–44; Ex. 1003 ¶ 712. Petitioner cites
`persuasive evidence and argument that the combination of Van Dok,
`Sinivaara, Werndorfer, and Sidekick (Sidekick I or Sidekick II) with
`Canfield teaches the buddy list and display window data limitations of
`dependent claim 18. Pet. 45–64; Ex. 1003 ¶¶ 715–768.
`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).
`Based on the full record, we find that Petitioner’s evidence and
`argument establish by a preponderance of the evidence that the combination
`of Van Dok, Sinivaara, Werndorfer, and Sidekick (Sidekick I or Sidekick II),
`and Canfield discloses the limitations of claim 18.
`E. Obviousness of Claim 13: Van Dok, Sinivaara, Werndorfer, or Van
`Dok, Sinivaara, Werndorfer, Saric
`Petitioner asserts that claim 13, which depends from claims 11 and 12,
`is unpatentable under 35 U.S.C. § 103(a) as obvious over Van Dok,
`Sinivaara, and Werndorfer, or Van Dok, Sinivaara, Werndorfer, and Saric.
`We determined in the Google ’837 IPR that both Van Dok, Sinivaara, and
`Werndorfer, and Van Dok, Sinivaara, Werndorfer, and Saric rendered claim
`12 obvious. Google ’837 IPR at 20–21, 34–46; Ex. 1006, 31–32, 37–40; Ex.
`1050 ¶¶ 174–1890, 191–211; see also Ex. 1003 ¶¶ 792–796. Claim 12
`includes further limits the control of claim 11 adding a “correlating a key on
`
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`the data entry device with a graphical symbol in response to the key on the
`data entry device being depressed.” Claim 13 further limits claim 12 and
`requires “generating in accordance with the at least one instant messaging
`protocol being used to control a conversation session, a character sequence
`that represents the graphical symbol.”
`In the present case, Petitioner asserts that either combination—Van
`Dok, Sinivaara, and Werndorfer, or Van Dok, Sinivaara, Werndorfer, and
`Saric—teaches “determining and generating the correct graphical symbol
`(e.g., emoticon) in response to the user depressing a key already assigned to
`that symbol” with Saric further teaching assigning an emoticon to a key.
`Pet. 75–76 (citing Ex. 1063, 12; Ex. 1003 ¶¶ 797–807; Ex. 1042, 34–36).
`Petitioner argues that Van Dok’s combined system would have assigned a
`key to an emoticon by assigning the character sequence to the special key,
`such that when pressed it sequence is generated and converted into the
`corresponding graphical emoticon in an IM application. Pet. 77–78 (citing
`Ex. 1003 ¶¶ 812–814; Ex. 1010, 90; Ex. 1060 ¶¶ 14, 56; Ex. 1013 ¶ 82).
`In view of our prior determinations, Petitioner provides persuasive
`argument and evidence that either Van Dok, Sinivaara, and Werndorfer, or
`Van Dok, Sinivaara, Werndorfer, and Saric teach the additional limitations
`of claim 13. Pet. 73–79; Ex. 1003 ¶¶ 792–819.
`Patent Owner does not challenge Petitioner’s contentions and “takes
`no position” with respect to the cited evidence. PO Resp. 37; see 37 C.F.R.
`§ 42.23(a) (“Any material fact not specifically denied may be considered
`admitted.”).
`Based on the full record, we find that Petitioner’s evidence and
`argument establish by a preponderance of the evidence that Van Dok,
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`Sinivaara, and Werndorfer, or Van Dok, Sinivaara, Werndorfer, and Saric,
`disclose the limitations of claim 13.
`F. Obviousness of Claim 19: Van Dok, Sinivaara, Werndorfer
`Petitioner asserts that claim 19, which depends from claim 11 is
`unpatentable under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara,
`and Werndorfer. In view of the Google ’837 IPR which canceled claim 11
`based on Van Dok, Sinivaara, and Werndorfer, Petitioner asserts that the
`cited art further teaches the limitations of dependent claim 19. Claim 19
`recites two disputed limitations, “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.” We address the parties’
`contentions below.
`Petitioner’s Contentions
`Petitioner argues that claim 19 does not require the parsing or
`confirming limitations are performed in a multiple IM service environment,
`asserting that claim 19 only requires confirming that the characters are
`compatible with the IM service recited in claim 11. Pet. 65. Thus,
`Petitioner asserts that the Van Dok, Sinivaara, Werndorfer combination
`teaches automatically converting a test sequence into a graphical emoticon
`character, such as a smiley face. Pet. 67–68; Ex. 1060 ¶¶ 6–7, 14, 38–41,
`45, 56, 69, 72; Figs. 2A–2B, 5A; Ex. 1003 ¶ 777. Petitioner argues that the
`when data entry in the Van Dok combination includes a character string
`recognized by the IM application as corresponding to a graphical emoti