Zipit Wireless, Inc.Download PDFPatent Trials and Appeals BoardMar 9, 2021IPR2019-01568 (P.T.A.B. Mar. 9, 2021) Copy Citation 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) IPR2019-01568 Patent 7,894,837 B2 2 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 IPR2019-01568 Patent 7,894,837 B2 3 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. IPR2019-01568 Patent 7,894,837 B2 4 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 IPR2019-01568 Patent 7,894,837 B2 5 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. IPR2019-01568 Patent 7,894,837 B2 6 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. IPR2019-01568 Patent 7,894,837 B2 7 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). IPR2019-01568 Patent 7,894,837 B2 8 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 IPR2019-01568 Patent 7,894,837 B2 9 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)). IPR2019-01568 Patent 7,894,837 B2 10 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 IPR2019-01568 Patent 7,894,837 B2 11 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 IPR2019-01568 Patent 7,894,837 B2 12 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., IPR2019-01568 Patent 7,894,837 B2 13 ] 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. IPR2019-01568 Patent 7,894,837 B2 14 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. IPR2019-01568 Patent 7,894,837 B2 15 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. IPR2019-01568 Patent 7,894,837 B2 16 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 IPR2019-01568 Patent 7,894,837 B2 17 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). IPR2019-01568 Patent 7,894,837 B2 18 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 IPR2019-01568 Patent 7,894,837 B2 19 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- IPR2019-01568 Patent 7,894,837 B2 20 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. IPR2019-01568 Patent 7,894,837 B2 21 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. IPR2019-01568 Patent 7,894,837 B2 22 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. IPR2019-01568 Patent 7,894,837 B2 23 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 IPR2019-01568 Patent 7,894,837 B2 24 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). IPR2019-01568 Patent 7,894,837 B2 25 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 IPR2019-01568 Patent 7,894,837 B2 26 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. IPR2019-01568 Patent 7,894,837 B2 27 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 IPR2019-01568 Patent 7,894,837 B2 28 [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 IPR2019-01568 Patent 7,894,837 B2 29 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. IPR2019-01568 Patent 7,894,837 B2 30 [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 IPR2019-01568 Patent 7,894,837 B2 31 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 IPR2019-01568 Patent 7,894,837 B2 32 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. IPR2019-01568 Patent 7,894,837 B2 33 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 IPR2019-01568 Patent 7,894,837 B2 34 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 IPR2019-01568 Patent 7,894,837 B2 35 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 IPR2019-01568 Patent 7,894,837 B2 36 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 IPR2019-01568 Patent 7,894,837 B2 37 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 IPR2019-01568 Patent 7,894,837 B2 38 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. IPR2019-01568 Patent 7,894,837 B2 39 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 IPR2019-01568 Patent 7,894,837 B2 40 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 IPR2019-01568 Patent 7,894,837 B2 41 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 IPR2019-01568 Patent 7,894,837 B2 42 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 IPR2019-01568 Patent 7,894,837 B2 43 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 IPR2019-01568 Patent 7,894,837 B2 44 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 IPR2019-01568 Patent 7,894,837 B2 45 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 IPR2019-01568 Patent 7,894,837 B2 46 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 IPR2019-01568 Patent 7,894,837 B2 47 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. IPR2019-01568 Patent 7,894,837 B2 48 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- IPR2019-01568 Patent 7,894,837 B2 49 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). IPR2019-01568 Patent 7,894,837 B2 50 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 IPR2019-01568 Patent 7,894,837 B2 51 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. IPR2019-01568 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 Copy with citationCopy as parenthetical citation