Zipit Wireless, Inc.

Patent Trials and Appeals Board

Mar 9, 2021

IPR2019-01568 (P.T.A.B. Mar. 9, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Date: March 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GOOGLE LLC, LG ELECTRONICS, INC.,
and LG ELECTRONICS U.S.A., INC.,
Petitioners,
v.
ZIPIT WIRELESS, INC.,
Patent Owner.

IPR2019-01568
Patent 7,894,837 B2

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 Petitioners’ Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
In this inter partes review, Petitioners Google LLC (“Google”) and
LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”)
(collectively, “Petitioners”) challenged claims 11, 12, 14–16, and 20 of U.S.
Patent No. 7,894,837 B2 (“the ’837 patent,” Ex. 1001) owned by Zipit
Wireless, Inc. (“Patent Owner” or “Zipit”). Paper 2 (“Pet.” or “Petition”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision, issued pursuant to 35 U.S.C. § 318(a), addresses issues and
arguments raised during the trial in this inter partes review. For the reasons
discussed herein, we determine that Petitioners have shown by a
preponderance of the evidence that claims 11, 12, 14–16, and 20 are
unpatentable
A. Procedural History
Petitioners filed a Petition challenging claims 11, 12, 14–16, and 20 of
the ’837 patent (Pet. 3, 7–73), and Patent Owner filed a Preliminary
Response (Paper 6). We instituted trial on all grounds of unpatentability.
Paper 9 (“Dec. on Inst.” or “Decision”), 32.
Patent Owner filed a Response (Paper 16, “PO Resp.”), Petitioners
filed a Reply (Paper 23, “Reply”), and Patent Owner filed a Sur-reply
(Paper 26, “Sur-reply”). Petitioners filed a Motion to Exclude (Paper 31,
“Pet. Mot.”), and Patent Owner filed an opposition (Paper 32, “PO Opp.”)
thereto to which Petitioners replied (Paper 34).
The Petition is supported by the Declaration of Dr. Gregory Abowd
(Ex. 1004) and the Reply Declaration of Dr. Gregory Abowd (Ex. 1060).
Patent Owner supports its response with the Declaration of Karl Ginter
(Ex. 2017) and the Declaration of Rafael Heredia (Ex. 2018). Petitioners
also submit the Deposition of Karl Ginter (Ex. 1058) and the Deposition of
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Mr. Heredia (Ex. 1059). Patent Owner submits the Deposition of Dr.
Abowd (Ex. 2056).
A combined oral hearing for this inter partes review and related case
IPR2019-01568 was held on December 8, 2020, a transcript of which
appears in the record in each case. Paper 37 (“Tr.”).
B. Instituted Grounds
Petitioners’ grounds rely on the following references. Dec. on Inst. 6;
Pet. 3, 7–73.
Name Reference Exhibit
Van Dok U.S. Patent App. Pub. No. 2004/0162877, filed
Feb. 19, 2003, published Aug. 19, 2004
1005
Zaner U.S. Patent App. Pub. No. 2004/0041836, filed
Aug. 28, 2002, published Mar. 4, 2004
1006
Sinivaara U.S. Patent App. Pub. No. 2004/0202141, filed
Jan. 9, 2003, published Oct. 14, 2004
1007
Chiu U.S. Patent App. Pub. No. 2003/0204748, filed
May 20, 2002, published Oct. 30, 2003
1008
Saric Canadian Patent App. No. 2,363,978, filed
Nov. 26, 2001, published May 26, 2003
1009
Werndorfer U.S. Patent App. Pub. No. 2004/0024822, filed
Aug. 1, 2002, published Feb. 5, 2004
1010
Capps U.S. Patent No. 7,519,667, filed Apr. 16, 2002,
issued Apr. 14, 2009
1025
Petitioners assert that claims 11, 12, 14–16, and 20 would have been
unpatentable based on the following grounds:
Claim(s) Challenged 35 U.S.C. § References/Basis
11, 12, 14, 16 103(a)1 Van Dok, Sinivaara, Werndorfer
12 103(a) Van Dok, Sinivaara, Werndorfer, Saric

1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’837 Patent has an
effective filing date prior to the effective date of the applicable AIA
amendments, we refer to the pre-AIA versions of § 103.
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Claim(s) Challenged 35 U.S.C. § References/Basis
15 103(a) Van Dok, Sinivaara, Werndorfer, Chiu
20 103(a) Van Dok, Sinivaara, Werndorfer, Capps
11, 12, 14, 16 103(a) Zaner, Sinivaara, Werndorfer
12 103(a) Zaner, Sinivaara, Werndorfer, Saric
15 103(a) Zaner, Sinivaara, Werndorfer, Chiu
20 103(a) Zaner, Sinivaara, Werndorfer, Capps
Dec. on Inst. 6, 35.
C. Real Parties in Interest
Petitioners Google and LG assert they are the real parties-in-interest.
Pet. ix.
D. Related Matters
The parties advise us that the ’837 patent was asserted against
Petitioners in Zipit Wireless, Inc. v. LG Electronics Inc., Case No. 6-18-cv-
02016 (D. S.C.). Pet. ix; Paper 4, 2. The ’837 patent was also the subject of
IPR2014-01506 and was not shown to be unpatentable. See Blackberry
Corp. v. Zipit Wireless, Inc., IPR2014-01506, Paper 50 (PTAB Mar. 29,
2016) (Final Written Decision) (“Blackberry ’837 IPR”).
A related inter partes review of claims 20, 21, and 24–30 of U.S.
Patent No. 7,292,870 B2 (“the ’870 patent”), the parent to the ’837 patent, is
addressed in Google LLC et al. v. Zipit Wireless, Inc., IPR2019-01567
Paper 10 (PTAB March 9, 2020) (“the 1567 IPR”).
E. 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
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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.

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.
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Figures 12a and 12b, provided below, show user interface screens that
associate emoticon pictorial images with programmable keys. Id. at 9:27–
28.

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.
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F. Illustrative Claims
Challenged claim 11 is independent and claims 12, 14–16, and 20
depend from claim 11. Illustrative claims 11 and 12 are reproduced below
with bracketed lettering added.
11. A method for managing wireless network access and
instant messaging through a wireless access point with a
handheld instant messaging terminal comprising:
[A] generating textual characters and graphical symbols in
response to manipulation of keys on a data entry device of a
handheld instant messaging terminal;
[B] displaying the generated textual characters and
graphical symbols on a display of the handheld instant messaging
terminal;
[C] 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;
[D] 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
[E] 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.

12. The method of claim 11, the conversation session control
further comprising:
[A] correlating a key on the data entry device with a
graphical symbol in response to the key on the data entry device
being depressed.
Ex. 1001, 24:55–25:13 (bracketed letters added).

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II. ANALYSIS
A. Level of Ordinary Skill in the Art
In an obviousness analysis, prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.” In re
Preda, 401 F.2d 825, 826 (CCPA 1968). That is because an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418 (Fed. Cir. 2007); In re Translogic Tech., Inc., 504 F.3d
1249, 1259 (Fed. Cir. 2007).
Petitioners adopt Patent Owner’s level of skill in the art asserted in the
Blackberry ’837 IPR, stating 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.
Pet. 6 (citing Ex. 1038, 48 (PO Resp. of the Blackberry ’837 IPR)). Patent
Owner does not dispute the level of skill determination. In view of the full
record, we adopt Petitioners’ articulation of the level of skill. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57
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F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA
1978).
B. Claim Construction
Because the Petition was filed after November 13, 2018, we construe
the challenged claims by applying “the standard used in federal courts, in
other words, the claim construction standard that would be used to construe
the claim in a civil action under 35 U.S.C. [§] 282(b), which is articulated in
Phillips [v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc)].”2 Under
Phillips, the words of a claim are generally given their “ordinary and
customary meaning,” which is the meaning they would have to a person of
ordinary skill in the art at the time of the invention, in light of the
specification and prosecution history. See Phillips, 415 F.3d at 1312–13.
Petitioners offer no proposed claim constructions, stating that claim
terms are construed “in accordance with the ordinary and customary
meaning as understood by a [person of ordinary skill in the art] and the
patent’s prosecution history.” Pet. 5–7. Patent Owner argues the
construction of several claim terms addressed below.
1. “generating textual characters and graphical symbols in response
to manipulation of keys on a data entry device” (claim 11)
The Blackberry ’837 IPR construed the term “graphical symbols” as
distinct from the textual characters that represent graphical emoticons.
Blackberry ’837 IPR 16 (applying the broadest reasonable construction in
light of the specification). We determined that “[t]he ’837 patent

2 See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg.
51,340, 51,343 (amending 37 C.F.R. § 42.100(b) effective November 13,
2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
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distinguishes the symbols shown in Figure 2 [of the ’837 patent], which
include characters such as ‘$’ from ‘graphical symbols’ entered by an
emoticon or programmable key.” Id. at 17 (citing Ex. 1001, 18:1–4, Fig. 2).
In the present case, we agree with Patent Owner that under Phillips claim 11
distinguishes between textual characters and graphical symbols in
accordance with the ’837 Specification. See PO Resp. 8–9; Ex. 1001, 3:26–
32, 4:50–5:3. Thus, we are persuaded that the meaning a person of ordinary
skill in the art would have at the time of the invention, in light of the ’837
Specification, is that “graphical symbols” include “graphical emoticons” that
differ from textual characters representing emoticons. We maintain that
with respect to “graphical symbols” as recited in independent claim 11, we
determine that “graphical symbols” refer to “graphical emoticons.”
Our Decision on Institution further found that “entering textual
characters and graphical symbols with a data entry device” is given its
ordinary meaning in the context of the claims. Dec. on Inst. 12. We
maintain this construction for this Final Written Decision. \
2. “a data entry device of a handheld terminal” (claim 11)
Claim 11’s preamble recites that it is directed to “[a] method for
managing wireless network access and instant messaging through a wireless
access point with a handheld instant messaging terminal.” Ex. 1001, 24:55–
57. Patent Owner argues that “a data entry device of a handheld terminal”
recited in limitation 11[A] means “a data entry device integrated into the
housing of a handheld terminal.” PO Resp. 10 (emphasis added). Patent
Owner argues that the handheld aspect of the terminal is woven throughout
the body of the claim (Ex. 1001, 24:54–25:8) and discussed by Patent Owner
in prosecution of the parent ’870 patent (Ex. 2052, 10–11, 72–73), such that
a person of ordinary skill in the art would understand from the intrinsic
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record that the claim phrase “a data entry device of a handheld terminal” in
claim 11 means “a data entry device integrated into the housing of a
handheld terminal.” PO Resp. 2–11 (citing Ex. 2017 ¶¶ 24–30) (emphasis
added). Patent Owner argues that the prosecution emphasizes that all
features must be performed within a single handheld terminal as a
requirement for claim 11. Id.
We are not persuaded by Patent Owner’s proposed construction that
inserts “integrated” into the “a data entry device” limitation of claim 11.
Patent Owner’s argument importing limitations from the Specification is
improper and not supported by the intrinsic evidence. Comark Commc’ns
Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed. Cir. 1998); Phillips v.
AWH Corp., 415 F.3d 1303, 1319–20 (Fed. Cir. 2005). As Petitioners argue
(Reply 2), the ’837 patent specifically claims and describes “a data entry
device integrated in the terminal housing” in claim 1 of the ’837 patent
(Ex. 1001, 23:31), indicating that the Patent Owner knew how to specifically
claim the “integrated” device. See Kara Tech. Inc. v. Stamps.com Inc., 582
F.3d 1341, 1347 (Fed. Cir. 2009).
We are also not persuaded by Patent Owner’s citation to arguments
and testimony regarding the prosecution history. See PO Resp. 5–10. Patent
Owner’s arguments before the Office during prosecution to distinguish a
cited reference (“Rucinski”) by claiming an “integrated data entry device”
are not a clear disavowal of claim scope. Cont’l Circuits LLC v. Intel Corp.,
915 F.3d 788, 798 (Fed. Cir. 2019) (prosecution history disclaimer “must be
clear and unambiguous, and constitute a clear disavowal of scope.”).
Indeed, the portions of the discussion Patent Owner cites are specific to the
reference being distinguished, Rucinski (Ex. 2052, 10–11, 72–73), and
Patent Owner’s arguments focus on the protocols and software execution in
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Rucinski as compared to claim 11. PO Resp. 3–4. We agree with
Petitioners (Reply 2–4) that Patent Owner’s argument to overcome the
Rucinski art asserted that “Rucinski segregates the functions of data entry
and display from the functions of wireless communication and protocol
processing” and not that data entry was not integrated into an integrated
housing. Ex. 1002, 117–119 (’837 file history) (discussing messaging
protocols). Patent Owner’s evidence does not support that the data entry
device is integrated into the terminal in claim 11 based on the intrinsic
evidence. Accordingly, we give the term “a data entry device of a handheld
terminal” its ordinary and customary meaning as a handheld terminal
capable of data entry.
C. Obviousness of Claims 11, 12, 14, and 16 over Van Dok, Sinivaara,
and Werndorfer – Ground 1
Petitioners assert that claims 11, 12, 14, and 16 are unpatentable under
35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, and Werndorfer.
Pet. 7–37. To support their contentions, Petitioners provide explanations as
to how the prior art allegedly discloses each claim limitation and the
motivations to combine the prior art teachings. Id. Petitioners also provide
citations to the Abowd Declaration in support of their contentions. Ex. 1004
¶¶ 102–190. The prior art is summarized below.
1. Van Dok (Ex. 1005)
Van Dok discloses a system providing “enhancements to a real-time
communications user interface” that “add functionality and personality” in
“instant messaging.” Ex. 1005, 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.,
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] for a textually entered emoticon [e.g., ‘:)’] . . . until after a message is
sent.” Id. ¶ 14. Van Dok teaches that when the user types a text sequence
for an emoticon (e.g., “:)” for a smiley face emoticon), the system
automatically interprets the text sequence and displays its graphical
representation (e.g., ) in the “input box” of a “conversation window”
before the message is sent, “allow[ing] the user composing the message to
preview how the message will appear when received.” Id. ¶ 56. Figure 5A
depicts the automatic emoticon replacement disclosed in Van Dok. Id. ¶ 26.

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.
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Id. ¶ 56.
Van Dok also discusses use of “hand-held devices” and network
computing environments and handheld device markup language (HDML)
operating in wireless network environments. Id. ¶¶ 16, 66–69.
2. Sinivaara (Ex. 1007)
Sinivaara discloses a method for a “mobile terminal” to select an
“access point in a wireless communication system.” Ex. 1007, 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. Chiu (Ex. 1008)
Chiu relates to techniques for accessing wireless networks.
Ex. 1008, code (57). The wireless access techniques were “popular for
providing communications among portable devices, such as . . . (PDAs),
palmtop computers, . . . and the like” using a 802.11 (Wi-Fi) network
connection. Id. ¶¶ 2, 3, 5, 9–20.
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4. Werndorfer (Ex. 1010)
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. 1010 ¶¶ 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.

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.
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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. Analysis of Claim 11
Petitioners assert that Van Dok’s instant messaging system runs on a
hand-held wireless device, and would use the well-known wireless Internet
access via access points including known wireless standards taught based on
the common knowledge of skilled artisan and express teachings of
Sinivaara’s wireless Internet access. Pet. 11–14 (citing Ex. 1007 ¶¶ 3, 5–7,
55, 56, 66–69; Ex. 1004 ¶¶ 81–93). Petitioners also provide multiple
rationales to combine the IM protocols implemented in Werndofer with the
enhanced user interface and content improvements to traditional IM
disclosed in Van Dok. Id. at 14–15. Further, Petitioners argue that “a POSA
would have had multiple independent reasons to implement [Van Dok]’s IM
transmissions via IM client software that generates instant messages
formatted in accordance with an IM protocol compatible with the IM service
[Van Dok] describes.” Id. at 15 (citing Ex. 1004 ¶ 98).
In sum, Petitioners contend that “in view of Sinivaara’s and
Werndorfer’s teachings, a POSA would have had multiple independent
reasons to implement [Van Dok]’s IM device to generate messages in
accordance with an IM protocol compatible with [Van Dok]’s IM service,
and to wirelessly transmit those messages to a wireless access point for
Internet transmission.” Pet. 17; see also Ex. 1004 ¶¶ 88–101. Based on the
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full record, Petitioners present sufficient and persuasive evidence
establishing a rationale to combine the asserted references. See Pet. 11–17;
Ex. 1003 ¶¶ 88–101.
a) Claim 11 Preamble and Limitation 11[A]
Petitioners establish sufficient evidence that Van Dok, Sinivaara, and
Werndorfer disclose “[a] method for managing wireless network access and
instant messaging through a wireless access point with a handheld instant
messaging terminal.” Pet. 17–19; Ex. 1003 ¶¶ 105–113. Petitioners rely on
the hand-held wireless computer system embodiment employing the Van
Dok’s software and internet access via access point of Sinivaara. Pet. 17–
19; Ex. 1003 ¶¶ 105–113.
Petitioners also assert that Van Dok, Sinivaara, and Werndorfer
disclose limitation 11[A], “generating textual characters and graphical
symbols in response to manipulation of keys on a data entry device of a
handheld instant messaging terminal.” Pet. 19–22; Ex. 1004 ¶¶ 114–129;
Ex. 1005 ¶¶ 38, 39, Fig. 5A. Specifically, Petitioners cite the automatic
conversion of typed emoticons into the graphical emoticons. Pet. 19–20;
Ex. 1005 ¶¶ 38–41, Fig. 5A.
Patent Owner argues that Van Dok is not directed toward a handheld
terminal but instead is directed to a user interface. PO Resp. 10–11;
Ex. 1005 ¶ 3. Thus Patent Owner argues that Van Dok does not disclose a
device integrated into the housing of a handheld terminal as required in
claim limitation 11[A]. PO Resp. 11; Ex. 2056, 65:1–66:14. Patent Owner
argues that Van Dok “merely teaches data entry devices, such as a standard
keyboard and a standard mouse, which are plugged into the device via an
external port.” PO Resp. 11 (citing Ex. 1005, ¶ 72; Ex. 2017 ¶¶ 32–34).
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For the reasons discussed above, Patent Owner’s arguments are
premised on a claim construction we did not find persuasive. Id. at 10–15.
We agree with Petitioners, that Van Dok’s terminal shows a data entry
(keyboard) device. Pet. 5–6; Ex. 1005 ¶ 69. Contrary to Patent Owner’s
arguments that Van Dok never discloses a handheld data entry device or
modification of Van Dok to include an integrated keyboard (PO Resp. 14–
15), Petitioners provide sufficient evidence that Van Dok discloses a hand-
held device embodiment (Ex. 1005 ¶ 69). Reply 4–6. Patent Owner’s
arguments fail to address Petitioners’ reliance on the teachings of Van Dok
as a whole, and focus instead on Van Dok’s alleged lack of express language
describing the data entry device for the handheld terminal. PO Resp. 10–15.
On the full record, we find that Petitioners have presented persuasive
and sufficient evidence showing that a person of ordinary skill in the art
would have understood Van Dok to include a keyboard or data entry method
for a handheld terminal. See Pet. 20–21; Ex. 1004 ¶¶ 119–125.
b) Limitations 11[B], 11[C], 11[D], and 11[E]
Petitioners provide persuasive evidence and argument to show that
Van Dok, Sinivaara, and Werndorfer teach the “displaying the generated
textual characters and graphical symbols on a display of the handheld instant
messaging terminal” limitation. Pet. 22–23; Ex. 1004 ¶¶ 130–131; Ex. 1005
¶¶ 56, 69, 72, Fig. 5A. Patent Owner’s argument that Van Dok does not
meet the display limitation of 11[B] is unavailing. Patent Owner’s assertion
is unsupported by evidence and omits the context of Van Dok’s teachings
that the interface can be used in various portable devices. PO Resp. 15 n.1;
Reply 6.
Petitioners also provide sufficient evidence and argument that Van
Dok, Sinivaara, and Werndorfer teach limitation 11[C], “generating data
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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.” Pet. 23–25. Petitioners show that Van
Dok and Sinivaara teaches instant messaging of text and graphical
emoticons that person of ordinary skill in the art would have understood as a
type of data. Id. at 23–24; Ex. 1004 ¶¶ 132–136. Further, Petitioners argue
that Werndorfer illustrates the client device communicating directly with the
IM service using the “Service-Specific Protocol” compatible with the IM
service. Pet. 24–25; Ex. 1010, Fig. 2.
With respect to limitation 11[D], Petitioners provide persuasive
evidence and argument that Van Dok, Sinivaara, and Werndorfer teach the
“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” limitation.
Petitioners assert that “[a] [person of ordinary skill in the art] would have
understood that the straightforward . . . way to implement [Van Dok’s]
Internet instant messaging would have been to use the Internet protocol in
transmitting the message data from the handheld terminal” by using
conventional transmission of data in packets. Pet. 26–27. In addition
Werndorfer expressly teaches the implementation transmission of TCP
packets. Id. at 27; Ex. 1010 ¶ 103; Ex. 1004 ¶ 155.
Finally, Petitioners assert that Van Dok, Sinivaara, and Werndorfer
teach “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” as recited in claim 11.
Pet. 29–31; Ex. 1004 ¶¶ 163–172. Petitioners explain that an ordinarily
skilled artisan would have understood Van Dok’s messaging via computer-
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executed program modules using a computer system and processing unit.
Pet. 29–30. Specifically, Petitioners argue that
A POSA [person of ordinary skill in the art] would have had
reasons to implement [Van Dok]/Sinivaara/Werndorfer’s
techniques (which include controlling conversation sessions in
accordance with an IM protocol as discussed above) via program
modules executed by VD’s disclosed processing unit. A POSA
would have understood that was the typical and conventional
way for a computer system to execute such program instructions.
[Ex. 1003] Abowd ¶ 170. A POSA would have understood VD’s
processing unit to be a “control module” located within the
terminal as claimed. [Ex. 1004] Abowd ¶¶ 170–171.
Pet. 30.
We find Petitioners’ argument and evidence that Van Dok, Sinivaara,
and Werndorfer teach the limitations of claim 11 persuasive on the full
record before us.
6. Analysis of Claim 12
Claim 12 depends from claim 11, reciting that “the conversation
session control” of claim 11[E] further comprises “correlating a key on the
data entry device with a graphical symbol in response to the key on the data
entry device being depressed.” Ex. 1001, 25:9–13. Petitioners argue that
Van Dok discloses allowing a user to “assign . . . a specific keystroke
value” to a desired “personalized emoticon” “so that it can be called upon
readily in a real-time conversation.” Pet. 32 (citing Ex. 1005 ¶ 63)
(alteration in original). Petitioners assert that “[a person of ordinary skill in
the art] would have understood [Van Dok’s] ‘keystroke’ [teaching] to denote
a ‘key on the data entry device being depressed,’ as claim 12 recites” and as
corroborated by Saric’s teaching of a single keystroke. Pet. 32 (citing Ex.
1004¶ 177; Ex. 1009, 5). Petitioners establish that Van Dok, Sinivaara, and
Werndorfer teach dependent claim 12. Pet. 31–33; Ex. 1004 ¶¶ 174–180.
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Patent Owner argues that the petition fails to demonstrate “correlating
a key on the data entry device being depressed.” PO Resp. 16; Ex. 2017,
¶ 39. Petitioners respond that claim 12’s “‘correlating a key . . . with a
graphical symbol in response to the key . . . being depressed’ is met by
determining the correct graphical symbol to generate once the key is
depressed, as the ’837 patent describes.” Reply 6–7 (citing Pet. 31). We
agree with Petitioners. The Petition provides persuasive argument and
evidence that “correlating” in claim 12 describes depressing an assigned key
to generate a graphical symbol. Pet. 31–32; Ex. 1004 ¶ 176. We credit
Petitioners’ evidence that Van Dok teaches claim 12’s correlating limitation
“by determining which graphical symbol to generate in response to an
assigned key being depressed, and meets claim 11’s ‘generating’ and
‘displaying’ by the subsequent acts of generating and displaying the
graphical symbol that was determined.” Reply 7 (citing Pet. 32; Ex. 1060
¶¶ 16–17); Ex. 1004 ¶¶ 174–180.
We find Petitioners’ argument and evidence that Van Dok, Sinivaara,
and Werndorfer teach the limitations of dependent claim 12 persuasive on
the full record before us.
7. Analysis of Claims 14 and 16.
Petitioners establish that Van Dok, Sinivaara, and Werndorfer teach
the limitations of dependent claims 14 and 16. Pet. 33–37; Ex. 1004 ¶¶ 182–
190. Patent Owner does not address Petitioners’ contentions. See PO Resp.
10–18. Having reviewed the full record, Petitioners provide sufficient
evidence and argument that the conversation session control limitations of
claims 14 and 16 are taught by Sinivaara and Werndofer in combination
with Van Dok. Pet. 34–35; 36–37.
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8. Objective Indicia of Nonobviousness
Before we make a final obviousness determination, we must consider
the evidence of obviousness in light of any evidence of secondary
considerations of nonobviousness presented by Patent Owner. See Graham
v. John Deere Co., 383 U.S. 1, 17–18 (1966) (“Such secondary
considerations as commercial success, long felt but unsolved needs, failure
of others, etc., might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented. As indicia
of obviousness or nonobviousness, these inquiries may have relevancy.”);
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,
699 F.3d 1340, 1349 (Fed. Cir. 2012) (“This objective evidence must be
‘considered as part of all the evidence, not just when the decisionmaker
remains in doubt after reviewing the art.’” (quoting Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983))). Thus, our
obviousness analysis includes consideration and weighing of Patent Owner’s
indicia of nonobviousness.
Patent Owner contends that claim 11 is entitled to a presumption of
nexus to the products that embody the patent claim and received wide-spread
industry praise. PO Resp. 42–43. Specifically, Patent Owner argues that
“claim 11 reads on the Zippy and Z2 devices. Ex. 2018 [“Heredia
Declaration”] ¶ 7. “Thus, Zipit’s Zippy and Z2 devices ‘embody’ the
claimed features and are ‘coextensive with them.’” PO Resp. 44 (citing Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019)). Patent
Owner argues that the objective evidence of nonobviousness is tied to
specific products, Zipit’s Zippy and Z2 products, whose performance
received wide industry acclaim. PO Resp. 42–44.
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Petitioners argue that Patent Owner failed to establish sufficient
evidence in the Petition that claim 20 reads on the allegedly acclaimed
products and fails to support the coextensive inquiry beyond a single
conclusory sentence. Reply 20–23.
a) Objective Indicia of Nonobviousness Law
“Evidence that the industry praised a claimed invention or a product
that embodies the patent claims weighs against an assertion that the same
claim would have been obvious.” Lectrosonics, Inc. v. Zaxcon, Inc.,
IPR2018-01129, Paper 33 at 68 (PTAB Jan. 24, 2020) (citing WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1334 (Fed. Cir. 2016)). Objective evidence of
non-obviousness “may often be the most probative and cogent evidence in
the record” and “may often establish that an invention appearing to have
been obvious in light of the prior art was not.” Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349
(Fed. Cir. 2012). Thus, notwithstanding what the teachings of the prior art
would have suggested to one skilled in the art, secondary considerations
(objective evidence of nonobviousness) may lead to a conclusion that the
challenged claims would not have been obvious. In re Piasecki, 745 F.2d
1468, 1471–72 (Fed. Cir. 1984).
In order to accord substantial weight to secondary considerations in an
obviousness analysis, “the evidence of secondary considerations must have a
‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient
connection’ between the evidence and the patented invention.” Henny
Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019)
(quoting Demaco Corp. v. F. Von Lang-sdorff Licensing Ltd., 851 F.2d
1387, 1392 (Fed. Cir. 1988)). Although the patent owner bears the initial
burden of proving a nexus (WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
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1339, 1359 (Fed. Cir. 1999)), a presumption of nexus may be appropriate if
the patent owner shows “the asserted objective evidence is tied to a specific
product and that product ‘embodies the claimed features, and is coextensive
with them.’” Polaris Indus, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072
(Fed. Cir. 2018) (quoting Brown & Williamson Tobacco Corp. v. Philip
Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) (emphasis added)). On
the other hand, “[w]hen the [product] is not coextensive with the patented
invention—for example, if the patented invention is only a component of a
commercially successful machine or process,” the patent owner is not
entitled to a presumption of nexus. Demaco, 851 F.2d at 1392.
A patent owner may establish nexus, either through (1) the use of a
rebuttable presumption that arises when certain conditions are met or (2) a
direct showing of nexus. In the first, a patent owner may rely on a rebuttable
presumption of nexus as follows:
As first recognized in Demaco . . . , a patentee is entitled
to a rebuttable presumption of nexus between the asserted
evidence of secondary considerations and a patent claim if the
patentee shows that the asserted evidence is tied to a specific
product and that the product “is the invention disclosed and
claimed.” 851 F.2d at 1392 (emphasis added). That is,
presuming nexus is appropriate “when the patentee shows that
the asserted objective evidence is tied to a specific product and
that product ‘embodies the claimed features, and is coextensive
with them.’” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d
1056, 1072 (Fed. Cir. 2018) (quoting Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed.
Cir. 2000)). . . .
. . . Whether a product is coextensive with the patented
invention, and therefore whether a presumption of nexus is
appropriate in a given case, is a question of fact.
Fox Factory, 944 F.3d at 1373 (Fed. Cir. 2019).
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The court in Fox Factory further explained, with respect to a
presumption of nexus, that “the degree of correspondence between a product
and a patent claim falls along a spectrum,” and that “[a]lthough we do not
require the patentee to prove perfect correspondence to meet the
coextensiveness requirement, what we do require is that the patentee
demonstrate that the product is essentially the claimed invention.” Id. at
1374. The court in Fox Factory rejected the patent owner’s argument that
the coextensiveness requirement is simply an inquiry into “whether the
patent claims broadly cover the product that is the subject of the evidence of
secondary considerations.” Id. at 1377. Thus, simply showing that a patent
claim broadly covers the commercial product being asserted as objective
evidence of nonobviousness is not enough to show they are coextensive. Id.
That is because “[a] patent claim is not coextensive with a product that
includes a ‘critical’ unclaimed feature that is claimed by a different patent
and that materially impacts the product’s functionality.” Id. at 1375. In
contrast, “if the unclaimed features amount to nothing more than additional
insignificant features, presuming nexus may nevertheless be appropriate.”
Id. at 1374. Based on the facts of the case in Fox Factory, the court found
that “nexus may not be presumed” because “there are one or more features
not claimed by the [challenged patent] that materially impact the
functionality” of the products on which patent owner’s presumption
argument is based and the court rejected arguments that the patent claims
broadly cover the product. Id. at 1376–1377.
“A finding that a presumption of nexus is inappropriate does not end
the inquiry into secondary considerations,” however. Id. at 1373. “To the
contrary, the patent owner is still afforded an opportunity to prove nexus by
showing that the evidence of secondary considerations is the ‘direct result of
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the unique characteristics of the claimed invention.’” Id. at 1373−74
(quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). “Where the
offered secondary consideration actually results from something other than
what is both claimed and novel in the claim, there is no nexus to the merits
of the claimed invention,” meaning that “there must be a nexus to some
aspect of the claim not already in the prior art.” In re Kao, 639 F.3d 1057,
1068−69 (Fed. Cir. 2011).
Ultimately, we must weigh Patent Owner’s objective evidence in the
context of whether the claimed invention as a whole would have been
obvious to a skilled artisan. WBIP, LLC v. Kohler Co., 829 F.3d 1317,
1331−32 (Fed. Cir. 2016). Only if the patent owner presents a prima facie
case of nexus does the burden of production shift to the patent challenger to
adduce evidence showing that any commercial success or industry praise
was due to extraneous factors other than the patented invention. Demaco,
851 F.2d at 1393.
b) Presumption of Nexus
Patent Owner contends that “claim 11 reads on the Zippy and Z2
devices” and cites the declaration of Mr. Heredia, one of the named
inventors of the patent at issue in this proceeding and the ’870 patent in the
1567 IPR, who provides a claim chart mapping the claims to portions of
Zipit’s Zippy and Z2 device documentation. PO Resp. 44; Ex. 2018 ¶ 7
(claim chart); Sur-reply 19–20. Patent Owner’s asserts because claim 11
reads on Zipit’s devices they “embody” the claimed features. PO Resp. 44
(citing Fox Factory, 944 F.3d at 1373). Without further explanation, Patent
Owners summarily conclude that “the claimed features are ‘coextensive with
[Zipit’s Zippy and Z2 devices].’” Id.; Ex. 2018 ¶ 7.
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Petitioners assert that Patent Owner is not entitled to a presumption of
nexus for two reasons: (1) Patent Owner’s single conclusory sentence and
citation to the Heredia Declaration is improper incorporation by reference
and fails to establish that Zipit’s products practiced all limitations of claim
11; and (2) Patent Owner fails to support its bare allegation that the products
are coextensive with the claim. Reply 20–21; Fox Factory, 944 F.3d at
1373, 1377.
With respect to the incorporation of the Heredia Declaration, we find
that Patent Owner does not explain in its briefs how Zipit’s products are
covered by the claimed invention of the ’837 patent. We acknowledge the
claim chart in the Heredia Declaration (Ex. 2018 ¶ 7), but consider this
incorporation by reference of a declaration into a brief. See 37 C.F.R.
§ 42.6(a)(3); see also Eli Lilly and Co. v. Teva Pharms. Int’l GmbH, No.
IPR2018-01424, Paper 80 at 111 (PTAB Feb. 18, 2020) (finding reference to
claim charts in declaration to support secondary consideration was improper
incorporation). We consider this argument waived.
Even fully considering Patent Owner’s Heredia Declaration, we agree
with Petitioners that Patent Owner’s arguments also fail to address
coextensiveness of the claims. Reply 21–23; PO Resp. 43–44. This analysis
is important especially when Patent Owner asserts that claim 11 in the ’837
patent in the present case and claim 20 in the ’870 patent in the 1568 IPR
both are embodied in Zipit’s devices. See Sur-reply 21–22 (stating that facts
show that the claims of both the ’870 and ’837 patents cover the same
invention and product). As the Board explained in Lectrosonics:
“[T]he purpose of the coextensiveness requirement is to
ensure that nexus is only presumed when the product tied to the
evidence of secondary considerations ‘is the invention disclosed
and claimed.’” [Fox Factory, 944 F.3d at 1374] (quoting
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[Demaco, 851 F.2d at 1392]). “[T]he degree of correspondence
between a product and the patent claim falls along a spectrum.
At one end of the spectrum lies perfect or near perfect
correspondence. At the other end lies no or very little
correspondence.” Id. “A patent claim is not coextensive with a
product that includes a ‘critical’ unclaimed feature that is
claimed by a different patent and that materially impacts the
product’s functionality.” Id. at 1375.
Lectrosonics at 32.
In the present case, Patent Owner offers no analysis of the
coextensiveness of claim 11 with the Zipit devices beyond the conclusory
statement that the products embody the claim. PO Resp. 43–44. Patent
Owner’s briefs lack evidence or argument asserting where Zipit’s products
lie on the spectrum of correspondence between both claims (the ’870 patent
(claim 20) and ’837 patent (claim 11)) and the industry-praised products.
See Fox Factory, 944 F.3d at 1373; Demaco, 851 F.2d at 1392. Patent
Owner’s conclusory statement fails to meet its burden of establishing that
the Zipit products are coextensiveness with the claims of the ’870 patent or
’837 patent. We find that Patent Owner has not presented persuasive and
sufficient evidence to establish the degree of correspondence between the
product and in this case the independent patent claims of the ’837 patent
(claim 11) and ’870 patent (claim 20).3

3 Petitioners also argue that Zipits products are not coextensive with the
claim 20 and claim 11 because a product cannot be coextensive with two
different patents unless those patents claim the same invention. Reply 22
(citing Fox Factory, 944 F.3d at 1377–78). Petitioners argue that Patent
Owner’s briefs and exhibits in the present case and in inter partes review for
the ’837 patent both assert that the limitations of the representative claims
are material to patentability. Id. at 22 (citing PO Resp. 13–23; Ex. 1002,
281; Ex. 2052, 29). Although we agree with Patent Owner that Fox Factory
does not categorically hold that the same evidence or product cannot be used
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Based on the foregoing, we determine that Patent Owner has not
established a presumption of nexus between claim 11 and Zipit’s industry-
praised devices.
c) Nexus and Industry Praise
A finding that “a presumption of nexus is inappropriate” “does not
end the inquiry into secondary considerations.” Fox Factory, 944 F.3d at
1375. “[Patent Owner] is still afforded an opportunity to prove nexus by
showing that the evidence of secondary considerations is the ‘direct result of
the unique characteristics of the claimed invention.’” Id. at 1373–74
(quoting Huang, 100 F.3d at 140).
In the present case, Patent Owner asserts that “[t]he prosecution
histories of method claim 20 of the ‘parent’ ʼ870 patent and method claim 11
of the ‘child’ ʼ837 patent show that those two claims ‘as a whole’ are the
‘new’ feature for purposes of determining nexus.” PO Resp. 47 (citing
WBIP, 829 F.3d at 1331–1332). Patent Owner submits that the prosecution
histories of the method claims of the ’870 and ’837 patents “distinguished
the cited prior art [Rucinski] by arguing that [claim 20 of the ’870 patent]
. . . ‘as a whole’ required ‘the data entry, data display, wireless, Internet
protocol communications, and instant messaging and session protocol
implementation all be performed within a single handheld terminal
housing.’” Id. at 47–48 (citing Ex. 1002, 26). Indeed, Patent Owner argues
that during prosecution of the claims were allowed over cited prior art

demonstrate nonobviousness of two claims from multiple patents (see Fox
Factory, 944 F.3d at 1377–78), we also agree with Petitioners’ that Patent
Owner’s evidence and argument does not sufficiently support the analysis of
the coextensiveness or degree of coextensiveness between claim 20 for the
’870 patent and claim 11 for the ’837 patent and the Zipit products. See PO
Resp. 43–44; Sur-reply 21–22.
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[Rucinski] disclosing a competing product that did not perform all operation
“within a single handheld terminal. Id. at 48–49. Similarly, Patent Owner
argues that during prosecution of the ’837 patent claim 11 was distinguished
over the Rucinski prior art by emphasizing the handheld terminal aspect and
the elements of the claim as a whole being found in single device. Id. at 49–
50; Ex. 1002, 10–11, 118–119. Thus, Patent Owner argues that the “key
aspect” to the allowance of the issued claim was the “argument that ‘as a
whole,’ ‘all’ of the specified operations had to ‘be performed within a single
handheld terminal.’” PO Resp. at 48 (citing Ex. 2052, 72).
Turning to the industry praise, Patent Owner provides thirty-five
exhibits showing industry awards and praise about Zipit’s instant messaging
devices and their performance. PO Resp. 53–67. Patent Owner notes that
some of the industry praise even lauded Zipit’s devices over the Rucinski
device disclosed in the prior art and that Patent Owner distinguished to get
claim 20 allowed. Id. at 56–67 (citing Ex. 2052, 72–73; Ex 1002, 117–119;
Ex. 2002 (Chicago Tribune); Ex. 2023 (HeraldToday.com)).
Petitioners argue that claim 11 of the ’870 patent includes material
limitations, the distinction between graphical symbols and graphical
emoticons (see PO Resp. 21–37) that are not mentioned in the industry
praise that Patent Owner submits. Reply 23. Accordingly, Petitioners argue
the lack of praise for material limitations of claim 11 shows that the praise
does not address claim 11 as a whole.
Petitioners also argue that any claimed features of Zipit’s products
“that are mentioned are only praised as part of a product package whose
appeal was inextricably tied to unclaimed features as well.” Id. at 26 (citing
Ex. 1060 ¶ 55). In support of its contention, Petitioners provide a chart
showing numerous unclaimed features praised in 17 of the submitted
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exhibits. Id. at 24–25. Indeed, Petitioners argue that the cited industry
praise includes related significantly to unclaimed features, such as price and
fees, the music player capability, or the color screen. Id. at 25–28 (citing Ex.
1060 ¶ 54; Ex. 1059, 55 (discussing features customers like a MP3 player),
88 (noting that the product did a lot more than just instant messaging);
Ex. 1058, 84).
Patent Owner argues that “Zipit’s Zippy device and operation was
awarded Time’s “The Most Amazing Inventions [o]f 2005 Award.”
Ex. 2001; PO Resp. 53. The “Time award noted that ‘[w]ith handheld
devices, you can continue instant messaging even after your computer goes
to sleep” and that ‘[f]or wi-fi homes, this pocket-size instant messenger
connects to AIM, Yahoo! or MSN and is a good way to keep the kids from
fighting over the PC.’” PO Resp. 52–53 (quoting Ex. 2001, 5). Patent
Owner argued that “the Time award praised the operation of the Zippy
device as a wireless handheld IM device that is operated independent of a
PC thereby praising claim 20 ‘as a whole’ and for substantially the reasons
that ʼ870 claim 20 and ʼ837 claim 11 were allowed and deemed novel over
the prior art.” Id. at 53. Patent Owner cites other awards that praised the
Zipit products for their size and weight, freedom from the family PC, and
wireless handheld IM features, and therefore praised claim 20 as whole. Id.
at 53–56 (citing Ex. 2004, Ex. 2005, Ex. 2006, Ex. 2007). For example,
Patent Owner notes that the Chicago Tribune deemed the Zipit device the
“king of mobile instant messaging” and praised Zipit’s device over a
Motorola device because it freed the user from being within 150 feet of an
Internet connected PC. Id. at 56–57 (citing Ex. 2002).
Although the praise Patent Owner cites is noteworthy, it also shows
that the Zipit products “did a lot more than just instant messaging” that
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formed the basis of the industry praise. See Ex. 1059, 88:4–16; Reply 25.
As the court in Fox Factory stated, the evidence of secondary consideration
must show that the praise is attributable to the claimed features as opposed
to prior art features in isolation or unclaimed features. Fox Factory, 944
F.3d at 1378 (citing Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d
1023, 1034 (Fed. Cir. 2016)). Here, Patent Owner’s evidence does not show
the praise is attributable to those claimed features. Indeed, Patent Owner’s
own evidence supports that industry praise was not for claim 11 as a whole
or claimed features. For example, with reference to industry praise
published in the New York Times (Ex. 2003), Patent Owner states:
In reviewing Zipit’s Zippy IM device and operation, the
New York Times determined that “[i]nstant messaging is a bit
more portable and affordable” and is sized to “slip into the baggy
pockets of cargo pants . . . .” Ex. 2003. The Times also noted
that “there is something [the Zipit device] lacks: a service fee.
Because Zipit uses the Internet, instant messaging is free.” Id.
Clearly, the Times praised Zipit’s device and operation “as a
whole” due to its being handheld, portable, and Internet-based.
PO Resp. 57. In this instance, the size, portability, costs, and service are all
described as part of the New York Times’s praise of the Zipit product.
Ex. 2003. Such evidence does not persuasively show that either claim 11 as
whole or the particular limitations of claim 11 are praised.
Petitioners further argue that Patent Owner’s industry praised features
were already in the prior art. Reply 26 (citing Therasense, Inc. v. Becton,
Dickinson & Co., 593 F.3d 1289, 1299 (Fed. Cir. 2010)). Petitioners note
that many of the features praised in the Zipit product awards and articles
were present in the art applied during prosecution and Patent Owner
amended the claims to overcome. Reply 26–27; Ex. 1002, 110–113; 117–
118.
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In response, Patent Owner argues that Petitioners misconstrue the
proper test as it is “Petitioners [who] need to show that a ‘critical’ unclaimed
feature ‘materially impacts the functionality’ of Zipit’s Zippy and Z2
devices,” which Petitioners “failed to show.” Sur-reply 21 (citing Fox
Factory, 944 F.3d at 1375, 1376, and 1378). We disagree. It remains Patent
Owner’s burden to “to prove [a] nexus by showing that the evidence of
secondary considerations is the ‘direct result of the unique characteristics of
the claimed invention.’” Id. at 1373−74 (quoting Huang, 100 F.3d at 140)
(emphasis added).
Having reviewed Patent Owner’s evidence of industry praise, we are
not persuaded by Patent Owner’s arguments that such evidence of praise was
a result of unique characteristics of the claimed invention. See Sur-reply 22–
23. Furthermore, even considering the Heredia Declaration’s claim chart
asserting that claim 11 of the ’837 patent reads on Zipit’s products, the claim
chart does not establish that the industry praise was a direct result of the
claimed features or that the evidence of widespread acclaim praised Zipit’s
products as a whole. See Fox Factory, 944 F.3d at 1373–74. Moreover,
Patent Owner’s argument that pictures of Zipit’s actual product are shown in
the industry praise evidence “proves that the acclaim was for Zipit’s product
‘as a whole’” is unavailing. Sur-reply 22–23 (citing Exs. 2001, 2002, 2003,
2005, 2007, 2026, 2028, 2030, 2031, 2032, 2034, 2035, 2036, 2040, 2041,
2046, 2047, 2049). Photos of the product do not establish sufficiently that
the industry praise was a direct result of the product as a whole or its
claimed features from either the ’870 patent or the ’837 patent.
Based on the full record and review of Patent Owner’s industry praise,
we agree with Petitioners that Patent Owner fails to show a nexus to the
claims as a whole. Patent Owner’s argument that claim 11 reads on Zipit’s
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devices and that received industry praise fails to demonstrate that the praise
was for the claims as a whole as described in the prosecution of the claims in
the ’870 or ’837 patent, which are alleged to both read on the Zipit devices.
d) Secondary Consideration Conclusion
Accordingly, on balance, we find Petitioners’ arguments persuasive
on the secondary consideration evidence of industry praise. Reply 24–28.
Thus, we determine that Patent Owner on the full record has not established
a nexus showing that the industry praise of Zipit’s products are attributable
to the claimed features of the ’870 or ’837 patent as opposed to prior art
features or unclaimed features. Fox Factory, 944 F.3d at 1378.
9. Summary for Ground 1
Having reviewed the record and Patent Owner’s secondary
consideration evidence, we determine that Petitioners have shown by a
preponderance of the evidence that claims 11, 12, 14, and 16 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara,
and Werndorfer.
D. Obviousness of Claim 12 over Van Dok, Sinivaara, Werndorfer, and
Saraic – Ground 2
Petitioners assert that claim 12 would have been unpatentable under
35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Werndorfer, and
Saric. Pet. 37–40; Ex. 1004 ¶¶ 191–211. Claim 12 recites “correlating a key
on the data entry device with a graphical symbol in response to the key on
the data entry device being depressed.” Ex. 1001, 25:11–13. Saric teaches
including on a keyboard “special key(s) or button(s) that allow a user to
quickly display an ‘emoticon’ character on the screen while chatting.”
Ex. 1009, code (57). Petitioners assert that Saric also teaches providing
“special key(s)” for emoticon characters placed in an “optimal
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configuration” on a keyboard “for quick access”—e.g., “grouped with other
shortcut or quick access keys” Ex. 1009, 5, 6; see Ex. 1004 ¶ 207.
Patent Owner argues that Saric discloses a different technique than the
one required in claim 12. PO Resp. 19; Sur-reply 11. We are not persuaded
by Patent Owner’s argument that Saric teaches correlating the graphical
symbol based on the symbol being selected rather than the user pressing the
key. PO Resp. 19; Sur-reply 11 (citing Ex. 2017 ¶ 46). We find Petitioners’
evidence and argument based on Saric’s express teaching that a key press
assigns the emoticon to a keystroke as required in claim 12. Pet. 40;
Ex. 1003 ¶¶ 191–211; Reply 9; Ex. 1060 ¶¶ 22–23.
We are also not persuaded by Patent Owner’s argument that an
ordinarily skilled artisan would not have been motivated to change Van Dok
to provide claim 12’s recitations because it would fundamentally change
Van Dok’s automatic emoticon replacement. PO Resp. 19–20; Sur-reply 11
(citing Ex. 2017 ¶ 46). Patent Owner also argues that Van Dok and Saric do
not address how to account for different instant-messaging services using
different emoticon sequences. PO Resp. 20; Ex. 2017 ¶ 48.
We are not persuaded by Patent Owner’s contentions. Van Dok
discusses assigning key strokes to a specific emoticon and automatic
replacement used together. Ex. 1005 ¶ 64; Pet. 32, 39. Petitioners’ evidence
also shows that Saric’s teachings complement Van Dok’s disclosure.
Pet. 39. Furthermore, Patent Owner’s arguments regarding multiple
messaging services is not commensurate in scope with claim 12, which does
not address or require multiple messaging systems. See Reply 11; Ex. 1060
¶ 25. We also agree with Petitioners that “obviousness ‘does not require that
a particular combination must be the preferred, or the most desirable,
combination described in the prior art in order to provide motivation for the
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current invention.’” Reply 11 (quoting In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004) (affirming Board’s obviousness rejection)). We find that
Petitioners have provided sufficient reasoning and rationales for the
combination of Van Dok with Saric. See Pet. 37–40; Ex. 1004 ¶¶ 191–211.
Having reviewed the record and Patent Owner’s evidence of
nonobviousness, we determine Petitioners have shown by a preponderance
of the evidence that claim 12 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Van Dok, Sinivaara, Chiu, Werndordfer, and Saric.
E. Obviousness of Claim 15 over Van Dok, Sinivaara, Werndorfer, and
Chiu – Ground 3
Petitioners contend that claim 15 would have been unpatentable under
35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Werndorfer, and
Chiu. Claim 15 recites “storing a profile containing network settings for a
network to which the handheld instant messaging terminal has connected
through the wireless network access point.” Pet. 41–43; Ex. 1004 ¶¶ 222–
224. Chiu relates to techniques for accessing wireless networks. Ex. 1008,
code (57). The wireless access techniques were “popular for providing
communications among portable devices, such as . . . (PDAs), palmtop
computers, . . . and the like” using a 802.11 (Wi-Fi) network connection. Id.
¶¶ 2, 3, 5, 9–20.
Petitioners argue that Van Dok, Sinivaara, and Werndorfer in
combination with the teachings of Chiu stores a profile for a WLAN
network to which the handheld IM terminal has connected. Ex. 1008 ¶¶ 24–
26; Ex. 1004 ¶ 224. Patent Owner relies on the arguments discussed above
with respect to claim 11 from which claim 15 depends. PO Resp. 21.
Having reviewed the record, we determine that Petitioners have
shown by a preponderance of the evidence that claim 15 is unpatentable
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under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Werndorfer,
and Chiu.
F. Obviousness of Claim 20 over Van Dok, Sinivaara, Werndorfer, and
Capps – Ground 4
Petitioners contend that claim 20 would have been unpatentable under
35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Werndorfer, and
Capps.
Capps discloses “integrating an instant messaging client application, a
streaming audio server application, and an audio playback application” (Ex.
1025, 1:18–20), thereby improving on conventional IM applications that
may allow users to “transmit files to other users” but “do not permit users to
listen to music together in real-time” (id. at 1:40–2:3). Capps teaches that a
“user[] engaged in an instant messaging session, or conversation,” may
transmit streaming audio broadcast to the other user in the conversation,
according to Petitioners. Id. at 1:40–2:3; 2:65–3:12.
Petitioners assert that Van Dok and Capps in combination with
Sinivaara and Werndorfer teach the limitations of dependent claim 20.
Pet. 45–49; Ex. 1004 ¶¶ 262–266. We find that Petitioners present sufficient
evidence that that Van Dok and Capps in combination with Sinivaara and
Werndorfer teach the conversation session control limitations of claim 20
directed to receiving files from an Internet radio stration, decoding the file
according to an IM protocol, converting the file, and generating sound at the
handheld terminal via a speaker. Pet. 45–49. Patent Owner relies on the
arguments discussed above with respect to claim 11 from which claim 20
depends. PO Resp. 21.
Having reviewed the record and Patent Owner’s evidence of
nonobviousness, we determine that Petitioners have shown by a
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preponderance of the evidence that claim 20 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over Van Dok, Sinivaara, Werndorfer, and Capps.
G. Obviousness Claims 11, 12, 14, and 16 over Zaner, Sinivaara, and
Werndorfer – Ground 5
Petitioners assert that claims 11, 12, 14, and 16 over are unpatentable
under 35 U.S.C. § 103 as obvious over Zaner, Sinivaara, and Werndorfer.
Pet. 49–70. To support their contentions, Petitioners provide explanations as
to how the prior art allegedly discloses each claim limitation. Id. Zaner is
summarized below.
1. Zaner (Ex. 1006)
Zaner discloses an “application and user interface for facilitating
group interactions over a network [that] integrates [instant chat] messaging,
file sharing, media playing, journaling, profiles, and gaming into a cohesive
environment.” Ex. 1006, code (57). The real-time conversation application
through which users communicate instant messages including text and
emoticons. Id. ¶¶ 7, 39, 66, 70. Zaner describes that the application runs on
“hand-held devices,” such as “mobile phones” and “PDAs” for
communications over a wireless network. Id. ¶¶ 27, 31, 35, 79. Figure 10,
below, shows a display screen of a group space application showing
activities and functionalities. Id. ¶ 22.
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Figure 10 depicts scrollable group member icon/name listing 1001, chat
space 1003, fortune cookie control 1005 is usable to provide conversation
starters, jokes, ice-breakers, etc. Id. ¶ 70. Figure 10 shows emoticon control
1007 that can be “manipulated by the user to insert a selected emoticon (an
icon that conveys emotion) into the conversation. In an embodiment of the
invention, the [emoticon] control 1007 yields a drop-down list of emoticons
for selection.” Id.
2. Combination of References
Petitioners argue that Zaner’s handheld user terminal running the
application wirelessly over the Internet is combinable with the
combination’s other teachings for the same reasons discussed above with
respect to Van Dok. Pet. 50; Ex. 10043 ¶ 284. Further, Petitioners contend
that “a [person of ordinary skill in the art] would have been motivated to
implement Zaner’s device to access the Internet via a WLAN wireless access
point using the techniques described by Sinivaara.” Pet. 50; Ex. 1004
¶¶ 285–288. Petitioners also aver that a skilled artisan would have
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implemented Zaner’s service using the known principles for IM service
disclosed in Werndorfer. Pet. 51–54. On the present record, we find
Petitioners’ arguments and evidence sufficient to establish the rationale to
combine Zaner, Sinivaara, and Werndorfer.
a) Claims Limitations
Petitioners argue that
Zaner discloses “facilitating group interactions over a network”
through “real-time” (i.e., instant) “messaging” (or “chat”). [Ex
1006,] Abstract, [0007], [0039] (“messenging [sic] or dialog area
403” “displays lines of a conversation between group members
in essentially real-time”), [0066], [0070], FIG. 10 (reproduced
below, showing “chat space 1003”); [Ex. 1004] Abowd ¶ 303. A
POSA would have understood these teachings to disclose
managing IM as claimed, e.g., by managing transmitting and
receiving instant messages. [Ex. 1004] Abowd ¶ 304.
Pet. 55.
Petitioners provide persuasive evidence and argument mapping the
limitations of Zaner, Sinivaara, and Werndorfer to the limitations of
claim 11. Pet. 55–60; Ex. 1004 ¶¶ 307–357.
With respect to claim limitation 11[A], Petitioners map the textual
character limitations to the keyboard or input device used to enter commands
and information in the Zaner system. Pet. 57–59. Petitioners argue that
Zaner’s interface includes emoticon control 1007 shown in Figure 10 that is
manipulated to display a drop down list of emoticons that teach the
limitations of claim 21 via a known touchable display screen to insert an
emoticon into an instant message. Pet. 59–61; Ex. 1004 ¶¶ 324–328.
Petitioners assert that:
A POSA [person of ordinary skill in the art] would have
understood that the obvious implementation of
Zaner/Sinivaara/Werndorfer that uses a touchscreen generates
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graphical symbols in response to manipulation of keys (e.g.,
emoticon control key 1007 and the individual emoticon keys in
a displayed drop-down list) on a data entry device (e.g.,
touchscreen) of the handheld instant messaging terminal, as
claimed. [Ex. 1004] Abowd ¶¶ 320–329.
Pet. 62.
With respect to limitation 11[B], Petitioners provide sufficient
evidence that the Zaner discloses “displaying” the emoticons and text via the
display interface. Pet. 63–64. For limitations 11[C] and 11[D], Petitioners
provide sufficient evidence regarding generating and transmitting the IM
data text and emoticons via a wireless access point using Internet protocol
communications control. Pet. 64–66; Ex. 1003 ¶¶ 339–359. Finally, with
respect to limitation 11E, Petitioners provide sufficient evidence that Zaner
teaches “controlling a conversation session” as recited in claim 11[E] using
executable program modules running IM protocols on the hand-held device
of Zaner. Pet. 66–68; Ex. 1004 ¶ 361–368.
Patent Owner argues that asserted references do not disclose the
“generating textual characters and graphical symbol” limitation 11[A]
because it does not expressly describe the emoticon that is inserted or the
entry device for the Zaner handheld terminal or an integrated data entry
device for the handheld terminal. PO Resp. 21–25; Ex. 2010 ¶¶ 59–76. We
are not persuaded by Patent Owner’s arguments regarding the integrated
handheld terminal as it relies on Patent Owner’s proposed claim construction
rejected above and the alleged lack of express disclosure regarding the data
entry method in Zaner. PO Resp. 51–55. We find Petitioners’ arguments
sufficient to support that a skilled artisan would have understood the
keyboard or pointing device functions necessary to input data into Zaner’s
system to form the data entry device. Pet. 61–62. We also are not
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persuaded by Patent Owner’s arguments that the selection of Zaner’s
emoticon control does not teach generating textual characters or graphical
symbols via manipulation of keys. PO Resp. 26–33. As discussed above,
generating graphical emoticons is not limited to the methods disclosed in the
’837 patent via dedicated keys. Patent Owner argues that Petitioners’
evidence fails to explain how to implement such a device or how to
overcome the known technical hurdles of a touchscreen device. PO
Resp. 27–31; Ex. 2010 ¶¶ 68–69. In addition, Patent Owner argues that it
would have been unacceptable to modify Zaner as Petitioners propose by
using multiple data entry devices. PO Resp. 29; Ex. 2010 ¶ 67.
(1) Limitation 20[A]
Patent Owner argues that the combination of Zaner, Sinivaara, and
Wendorfer do not teach a “graphical symbol.” PO Resp. 22–25; Ex. 2017,
¶¶ 52–54. In sum, Patent Owner contends that the graphical symbol shown
on Figure 10 of Zaner (item 1007) may refer to graphical emoticons to
textual emoticons, and Zaner does not distinguish which applies. PO
Resp. 22–23; Ex. 2017 ¶ 54.
Petitioners reply that Patent Owner ignores the explicit depiction of
Figure 10, showing a graphical emoticon, and the context of Zaner which
discusses emoticon as “icon[s] that convey[] emotion” that are depicted as
smiley face () in Figure 10. Ex. 1006 ¶ 70; Pet. 59–60; Ex. 1060 ¶¶ 27–
29. Although emoticon standing alone may be textual or graphical (see
Ex. 1005 ¶ 14 (stating that “[a]n emoticon or emotional icon is a textual or
graphical expression of emotion, such a [sic] smile ‘:)’ or  that is suitable
for instant messaging”); Blackberry IPR at 19), we find on the full record
that Petitioners’ evidence and argument show that a person of ordinary skill
in the art would have understood “Zaner’s drop-down list of insertable
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emoticons activated by the control labeled ‘☺’ [Ex. 1006 ¶ 7, Fig. 10 (item
1007)] includes the ‘☺’ as one of the selectable emoticons.” Reply 13. The
obviousness test is whether the reference, taken as a whole, would have
suggested the teaching. See In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Here we agree with and credit Petitioners’ evidence and
argument that Zaner’s drop down lists shows a graphical selectable
emoticon. Pet. 59–60.
Patent Owner contends that Zaner’s emoticons are not generated using
the same data entry device as textual characters. PO Resp. 26–33; Ex. 2017
¶ 55. Thus, Zaner does not disclose generating graphical emoticons, or
graphical symbols, with the same data entry device on which textual
characters are entered as required by the plain language of claim 11.
PO Resp. 26 (citing Ex. 2017 ¶ 55). Patent Owner also avers that Petitioners
have not shown that utilizing Zaner’s interface with a touchscreen or in
combination with a keyboard to enter textual characters is disclosed in
Zaner. Id. at 26–28. Claim 11 shows the same data entry device being used
to generate textual and graphic characters and symbols, while Petitioners’
hypothetical modifications to Zaner require a touchscreen and separate keys
that would not meet the limitations of claim 11. PO Resp. 29 (citing
Ex. 2017 ¶ 61).
Having reviewed the full record, we credit Petitioners’ evidence and
argument that a touchscreen implementation would have been obvious.
Pet. 61–62. We do not agree with Patent Owner that claim 11 requires the
same data entry device limited to one form of manipulation or that
separation between instant messaging keys and standard keys is
impermissible within the scope of the claims. PO Resp. 28–29. Instead, we
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are persuaded by Petitioners’ evidence that a touchscreen would have been a
well-known and obvious data-entry implementation for Zaner’s handheld
device, as corroborated by Collins (Ex. 1022), showing touchscreen
implementations of both keyboard keys and menu keys. Pet. 61–62;
Ex. 1004 ¶¶ 325–330; Ex. 1060 ¶ 32–34; Ex. 1022 ¶¶ 2–3.
Patent Owner also contends it would not have been obvious as
Petitioners ignore technical challenges and fail to show how Zaner would
integrate touch screen and a keyboard. PO Resp. 31–33; Ex. 2017 ¶¶ 61–66.
We are not persuaded by Patent Owner’s argument and evidence that the
design considerations and limited screen real estate in the 2003 timeframe
would not have yielded the complex touchscreen interface required in Zaner.
PO Resp. 31–32. Patent Owner’s arguments regarding the complexity of
such designs do not undermine the teachings of the references that support
the known use of touchscreens and menu selection. See PO Resp. 26 (noting
that the corroborating reference, Collins, includes a touchscreen for
navigating menus). Indeed, “Petitioners’ declarant cited both Collins
(Ex.1022) and Ausems (Ex. 1023) corroborating that the use of touchscreen
virtual keyboards was commonplace for ‘data entry’ into ‘a variety of
application[s]’ in handheld devices (Ausems, [0002]), including in
configurations where the virtual keys occupy only a ‘portion of the display
screen’ [Ex. 1022, Figs. 1-10, ¶ 3].” Reply 16 (citing Pet. 61–62; Ex. 1060
¶ 32) (first alteration in original).
Patent Owner also argues that Zaner does not teach a handheld device
integrated into the housing of a handheld terminal. PO Resp. 33–37. As
discussed above, we rejected Patent Owner’s proposed construction and find
these argument unavailing. Patent Owner argues that Petitioners’ reliance
on the boilerplate paragraph that the system of Zaner may be realized in a
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handheld devices, mobile phones, or other devices is insufficient. Id. at 33–
34; Ex. 1006 ¶ 27. We disagree. Zaner notes that the implementation may
include PDAs or cell phones and wireless connected devices. Ex. 1006
¶¶ 26–27, 35, Fig. 2; Pet. 58–59. Further, Zaner describes the system
includes a keyboard or input device to enter commands and information.
Ex. 1006 ¶¶ 27, 30, 39. We find Petitioners’ arguments and evidence
persuasive regarding the handheld terminal and data entry device disclosed
in Zaner. Pet. 58–59.
Finally, we disagree with Patent Owner’s argument that it would not
have been obvious to modify Zaner to provide a handheld terminal with data
entry of text and graphical characters. PO Resp. 36. To the contrary, Zaner
contemplates the system including a keyboard or input device to enter
commands and information including messages with emoticons. Pet. 58–59;
Ex. 1006 ¶¶ 27, 30, 39. Patent Owner’s arguments and evidence do not
demonstrate that the modifications expressly contemplated Zaner were
beyond the level of skill in the art at the time of patenting. Having reviewed
the full record with respect to Zaner, Sinivaara, and Werndorfer, we
determine that Petitioners have shown that the asserted prior art
combinations teach the limitations of claim 11.
3. Claims 12, 14, and 16
Having reviewed the full record, we find that Petitioners present
sufficient evidence and argument that Zaner, Sinivaara, and Werndorfer
teach the limitations of claims 12, 14, and 16. Pet. 68–70; Ex. 1004 ¶¶ 369–
381.
Patent Owner’s arguments rely on the same interpretation for claim 12
discussed above with respect to Van Dok. PO Resp. 38–39. We are not
persuaded by Patent Owner’s contention that correlating excludes the
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method of determining the correct graphical symbol to generate in response
to an assigned key pressed by a user. Id.; Reply 10–11, 18. For reasons
discussed above, we find that Zaner teaches the limitations of claim 12.
Patent Owner does not address Petitioners’ contentions regarding dependent
claims 14 and 16. See PO Resp. 15, 21, 38, 41.
Having reviewed the full record with respect to Zaner, Sinivaara, and
Werndorfer, we determine that Petitioners have shown that the asserted prior
art combinations teach the limitations of claims 12, 14, and 16.
4. Summary for Ground 5
Having reviewed the record, we determine Petitioners have shown by
a preponderance of the evidence that claims 11, 12, 14, and 16 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, and
Werndorfer.
H. Obviousness of Claim 12 over Zaner, Sinivaara, Werndorfer, and
Saric – Ground 6;
Petitioners also assert that claim 12 would have been unpatentable
under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, Werndorfer, and
Saric. Pet. 70–71; Ex. 1004 ¶¶ 382–389. Patent Owner provides citations to
the evidence establishing that a person of ordinary skill in the art would have
been motivated to incorporate Saric’s teachings into Zaner’s system to
assign one or more emoticons to special keys. Ex. 1009, code (57), 5;
Ex. 1004 ¶¶ 383–384.
Patent Owner argues that in addition to Zaner not teaching the
limitations of claim 12 for the reasons discussed above, a skilled artisan
would not have been motivated to include Saric’s emoticon key in Zaner’s
device because it would abandon Zaner’s teachings and would complicate
supporting multiple messaging services. PO Resp. 40–41. We do not agree
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with Patent Owner, as the scope of claim 12 does not require supporting
multiple messaging services just correlating a key in accordance with
claim 12. Ex. 1001, 25:9–13. We also agree with Petitioners (Reply 19–
20), that Saric’s teaching of one keystroke emoticon entry does not require
all emoticons to be entered using this method or require abandoning Zaner’s
emoticon control pull-down menu. Reply 19–20; Ex. 1060 ¶ 39; see
Pet. 70–71; Ex. 1004 ¶¶ 385–386.
1. Summary for Ground 6
Having reviewed the record and Patent Owner’s evidence of
nonobviousness, we determine that Petitioners have shown by a
preponderance of the evidence that claims 11, 12, 14, and 16 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara,
Werndorfer, and Saric.
I. Obviousness of Claim 15 over Zaner, Sinivaara, Werndorfer, and
Chiu – Ground 7; and Obviousness of Claim 20 over Zaner,
Sinivaara, Werndorfer, and Capps – Ground 8
Petitioners also assert that claim 15 would have been unpatentable
under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, Werndorfer, and
Chiu (Pet. 71–72); and claim 20 would have been unpatentable under 35
U.S.C. § 103(a) as obvious over Zaner, Sinivaara, Werndorfer, and Capps
(Pet. 72–73). See Ex. 1004 ¶¶ 391–401. We find that Petitioners present
persuasive and sufficient evidence that Zaner, Sinivaara, Werndorfer, and
Chiu teach the limitations of claim 15; and that Zaner, Sinivaara,
Werndorfer, and Capps teach the limitations of claim 20.
Patent Owner does not address Petitioners’ contentions regarding
dependent claims 15 and 20. See PO Resp. 15, 21, 38, 41; Reply 20.
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Having reviewed the record and Patent Owner’s evidence of
nonobviousness, we determine Petitioners have shown by a preponderance
of the evidence that claim 15 is unpatentable under 35 U.S.C. § 103(a) as
obvious over Zaner, Sinivaara, Werndorfer, and Chiu; and that claim 20 is
unpatentable under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara,
Werndorfer, and Capps.
III. PETITIONERS’ MOTION TO EXCLUDE
Petitioners move to exclude Exhibits 2004–2007, 2023–2051, and
2055 (“the Challenged Exhibits”) under Federal Rules of Evidence (“FRE”)
901, 401, and 402, arguing that Patent Owner failed to authenticate the
Challenged Exhibits. Pet. Mot. 1. Petitioners also move to exclude certain
sentences from the Declaration of Karl Ginter (Ex. 2017 ¶ 58) that cite or
rely upon the Challenged Exhibit (secondary consideration evidence). Id.
Patent Owner opposes Petitioners’ motion to exclude, arguing that
Patent Owner served Petitioners with supplemental evidence in response to
Petitioners’ objections. PO Opp. 1–2. Patent Owner filed the previously
served supplemental evidence in the form of the Declaration of Jon Berryhill
(Ex. 2060), that addressed the authenticity of the Challenged Exhibits. Id.
Petitioners reply that the supplemental evidence failed to establish
authenticity of the Challenged Exhibits secondary consideration evidence.
Paper 34, 4.
Documents are authenticated by evidence “sufficient to support a
finding that the item is what the proponent claims it is.” Fed. R. Evid.
901(a); see Fox Factory v. SRAM, LLC, IPR2016-01876, Paper 59 at 63
(PTAB Apr. 2, 2018) (quoting same). “Authenticity is, therefore, not an
especially high hurdle for a party to overcome.” Fox Factory, IPR2016-
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01876, at 63 (citing United States v. Patterson, 277 F.3d 709, 713 (4th Cir.
2002)).4
We have reviewed Mr. Berryhill’s testimony and find it sufficient to
meet the low bar for authentication. See Ex. 2060. In addition, Petitioners’
arguments go to the weight of the evidence and not its admissibility.
Accordingly, we deny Petitioners’ Motion to Exclude.
IV. CONCLUSION
For the reasons given, based on the arguments and evidence of record,
Petitioners have met their burden to prove by a preponderance of the
evidence that claims 11, 12, 14–16, and 20 of the ’837 patent are
unpatentable as follows: claims 11, 12, 14, and 16 are unpatentable under
35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, and Werndorfer;
claim 12 is unpatentable under 35 U.S.C. § 103(a) as obvious over Van Dok,
Sinivaara, Werndorfer, and Saric; claim 15 is unpatentable under 35 U.S.C.
§ 103(a) as obvious over Van Dok, Sinivaara, Werndorfer, and Chiu; claim
20 is is unpatentable under 35 U.S.C. § 103(a) as obvious over Van Dok,
Sinivaara, Werndorfer, and Capps; claims 11, 12, 14, and 16 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, and
Werndorfer; claim 12 is unpatentable under 35 U.S.C. § 103(a) as obvious
over Zaner, Sinivaara, Werndorfer, and Saric; claim 15 is unpatentable under
35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, Werndorfer, and Chiu;
and claim 20 is unpatentable under 35 U.S.C. § 103(a) as obvious over

4 See also United States v. Ceballos, 789 F.3d 607, 617–18 (5th Cir. 2015)
(noting “low” burden for authentication); United States v. Isiwele, 635 F.3d
196, 200 (5th Cir. 2011) (noting flaws in authentication go to weight, not
admissibility).
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Zaner, Sinivaara, Werndorfer, and Capps. We deny Petitioners’ Motion to
Exclude.
The table below summarizes our conclusions:
Claims 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
11, 12, 14,
16
103(a) Van Dok,
Sinivaara,
Werndorfer
11, 12, 14, 16
12 103(a) Van Dok,
Sinivaara,
Werndorfer, Saric
12
15 103(a) Van Dok,
Sinivaara,
Werndorfer, Chiu
15
20 103(a) Van Dok,
Sinivaara,
Werndorfer,
Capps
20
11, 12, 14,
16
103(a) Zaner, Sinivaara,
Chiu, McCarthy
11, 12, 14, 16
12 103(a) Zaner, Sinivaara,
Werndorfer,
Saraic
12
15 103(a) Zaner, Sinivaara,
Werndorfer, Chiu
15
20 103(a) Zaner, Sinivaara,
Werndorfer,
Capps
20
Overall
Outcome
11, 12, 14–16,
20

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V. ORDER
Accordingly, it is:
ORDERED that claims 11, 12, 14–16, and 20 of the ’837 patent are
determined to be unpatentable; and
Petitioners’ Motion to Exclude is denied; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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Patent 7,894,837 B2
52
FOR PETITIONERS:
IPR2019-01568
Patent 7,894,837 B2
53
FOR PETITIONERS:
Elisabeth Hunt
Richard Giunta
Anant Saraswat
WOLF GREENFIELD & SACKS, P.C.
ehunt-ptab@wolfgreenfield.com
rgiunta-ptab@wolfgreenfield.com
asaraswat-ptab@wolfgreenfield.com

FOR PATENT OWNER:
Stephen R. Risley
Cortney S. Alexander
KENT & RISLEY LLC
steverisley@kentrisley.com
cortneyalexander@kentrisley.com