BLACKBERRY CORPORATIONv.Zipit Wireless Inc

Patent Trial and Appeal Board

Mar 29, 2016

10846236 (P.T.A.B. Mar. 29, 2016)

Trials@uspto.gov Paper 50
Tel: 571-272-7822 Entered: March 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
BLACKBERRY CORP. and BLACKBERRY LTD.,
Petitioner,
v.
ZIPIT WIRELESS, INC.,
Patent Owner.
_______________

Case IPR2014-01507
Patent 7,894,870 B2
_______________

Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

JEFFERSON, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Blackberry Corp. and Blackberry Ltd. (collectively, “Petitioner”) filed a
Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1, 2, 5–12,
17–21, 24–31, and 36–40 of U.S. Patent No. 7,292,870 B2 (Ex. 1001, “the ’870
patent”). See 35 U.S.C. § 311. Patent Owner, ZIPT Wireless, Inc. did not file a
Preliminary Response. Pursuant to 35 U.S.C. § 314, in our Decision to Institute
(Paper 6, “Dec.”), we instituted this proceeding as to claims 1, 2, 5–12, 17–21, 24–
31, and 36–40 of the ’870 patent. Dec. 9.
Patent Owner filed a Patent Owner Response (Paper 10, “PO Resp.”) and
Petitioner filed a Reply (Paper 14, “Reply”). We authorized Patent Owner to file a
Sur-Reply to allegations raised by Petitioner’s Reply. Patent Owner’s Sur-Reply
was filed on November 6, 2015 (Paper 25, “Sur-Reply”). Petitioner subsequently
withdrew portions of its Reply. Paper 38.
Petitioner filed a motion to exclude evidence (Paper 34, “Pet. Mot. Excl.”),
Patent Owner filed an opposition (Paper 41, “PO Opp. Excl.”) to which Petitioner
filed a reply (Paper 45, “Pet. Reply Excl.”). Similarly, Patent Owner filed a
motion to exclude Petitioner’s evidence (Paper 37, “PO Mot. Excl.”), Petitioner
filed an opposition (Paper 42, “Pet. Opp. Excl.”) to which Patent Owner filed a
reply (Paper 47, “PO Reply Excl.”).
An oral hearing in this matter was held on Dec. 7, 2015 (Paper 49, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written Decision is
issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons that
follow, Petitioner has not demonstrated by a preponderance of the evidence that
claims 1, 2, 5–12, 17–21, 24–31, and 36–40 of the ’870 patent are unpatentable.
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B. Related Matters
Petitioner states that the ’870 patent has been asserted in Zipit Wireless Inc.
v. BlackBerry Ltd., No. 6:13-cv-2959-JMC (D.S.C. 2013). Pet. 1. In addition,
Petitioner has filed petitions challenging the patentability of certain claims in U.S.
Patent Nos. 7,894,837 (IPR2014-01506); 8,086,678 (IPR2014-01508); and
8,190,694 (IPR2014-01509).
C. The ’870 Patent
The ʼ870 patent relates to a handheld instant messaging (“IM”) device.
Ex. 1001, 1:6–9. The ’870 patent discloses an IM terminal that includes a display
and a data entry device integrated in a housing for the IM terminal. Id. at 4:38–41.
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 4:28–55,
Figs. 12a, 12b.
Figures 12a and 12b, provided below, show user interface screens that
associate emoticon pictorial images with programmable keys. Id. at 10:6–7.
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Figures 12a and 12b show screens used in the emoticon selection procedure.
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 16:62–66.
The handheld terminal of the ’870 patent manages multiple IM
conversations over Internet protocol (“IP”) through different IM service providers.
Id. at 5:32–6:15, Abstract. The device generates a buddy list of contacts associated
with each IM service provider and displays conversation windows for each buddy
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with whom the user is engaged in active conversation. Id. at 5:32–51. 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 5:4–11.
D. Illustrative Claims
Illustrative independent claim 1 (Ex. 1001, 23:29–61) is reproduced below:
1. An instant messaging terminal comprising:
a handheld terminal housing;
a display mounted in the terminal housing for
displaying contextual characters and graphical symbols;
a data entry device integrated in the terminal
housing for the display, the data entry device for
generating textual characters and graphical symbols;
a wireless, Internet protocol communications
module coupled to a wireless transceiver, both being
within the housing, for communicating messages with a
wireless, Internet protocol access point; and
a control module within the housing, the control
module including at least one processor for executing an
application program to implement instant messaging and
session protocols for at least one conversation session that
is communicated by the wireless, Internet protocol
communications module and the wireless transceiver
through the wireless, Internet protocol access point, the
control module, in response to a loss of a network
connection, displays conversation histories for
conversations that were active when the network
connection was lost, and automatically searches for
wireless, Internet protocol network beacons upon all of the
conversation histories being displayed.
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E. The Asserted Grounds
We instituted trial on the grounds alleging that:
(1) claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30, 31, 36, 37, and 40 are
unpatentable under 35 U.S.C. § 102(b) as anticipated by TOSHIBA POCKET PC e740
USER’S MANUAL (2002) (Ex. 1004, “e740 User’s Manual”);
(2) claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30, 31, 36, 37, and 40 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the e740 User’s Manual
and SYMBOL PPT 2800 SERIES PRODUCT REFERENCE GUIDE FOR POCKET PC 2002,
Symbol Technologies, Inc. (2002) (Ex. 1005, “Symbol”);
(3) claims 1, 2, 5–8, 11, 12, 17–21, 24–27, 30, 31, and 36–40 are
unpatentable under 35 U.S.C. § 103(a) as obvious over the e740 User’s Manual
and Michael Morrison, SPECIAL EDITION: USING POCKET PC 2002 (2002)
(Ex. 1008, “Morrison”); and
(4) claims 9, 10, 28, and 29 are unpatentable under 35 U.S.C. § 103(a) as
obvious over the e740 User’s Manual and USER’S MANUAL E750 POCKET PC
(2003) (Ex. 1007, “e750 User’s Manual”). Dec. 5, 10.
II. ANALYSIS
A. Objections to Patent Owner’s Declarant
Petitioner raised substantive objections to the credentials, qualifications and
veracity of Patent Owner’s declarant, Dr. Alon Konchitsky. We address these
allegations and objections below.
1. Dr. Konchitsky’s Ph.D. Credentials
Petitioner asserts that Patent Owner’s declarant, Dr. Alon Konchitsky, did
not receive a genuine Ph.D. from Bournemouth University and, as a result, Dr.
Konchitsky’s testimony is entitled to no weight. Reply 1. Patent Owner responds
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that Dr. Konchitsky received an electrical engineering Ph.D. degree from
Bournemouth University Extension in Israel, Campus of Ramat Gan College, and
submits that several documents including Dr. Konchitsky’s Ph.D. diploma and
Ph.D. payment receipts corroborate Dr. Konchitsky’s Ph.D. Sur-Reply 1–3;
Exs. 1059–1060. In his declaration, Dr. Konchitsky provides that he
“unequivocally state[s] – under penalty of perjury – that I did in fact receive my
Ph.D. in electrical engineering from the Bournemouth University Extension in
Israel, Campus of Ramat Gan College.” Declaration of Alon Konchitsky, Ph.D.,
Ex. 2082 ¶ 17.
We note first that the parties do not dispute that Dr. Konchitsky is qualified
to provide his expert opinion on the subject matter of the ’870 patent even without
considering his Ph.D. from Bournemouth University. Sur-Reply 13–15; Tr. 4:14–
22, 21:1–15. Petitioner concedes that Dr. Konchitsky “worked at Nokia. He
worked at a company that was purchased by Intel. To be able to testify about
emoticons and parental controls on devices he meets the low threshold under the
federal rules for providing expert testimony.” Tr. 4:21–24. Accordingly, the
circumstances surrounding Dr. Konchitsky’s Ph.D. credentials go to the weight of
his testimony rather than admissibility.
Further, we do not find that Petitioner has demonstrated sufficiently that Dr.
Konchitsky’s testimony should be afforded diminished weight because Dr.
Konchitsky falsified his Ph.D. from Bournemouth University Extension through
Ramat Gan College in Israel. Petitioner concedes that
[t]he sur-reply shows that it’s possible that Konchitsky did
receive a degree from either Ramat Gan or the extension
at Ramat Gan. That was not an authorized diploma, had
nothing to do with the Bournemouth University. And
whether or not he knew that or was unwittingly duped into
believing that he was getting a genuine Bournemouth
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University diploma, in the time allotted in IPR and our
resources, there’s just not enough time and money
available to prove that circumstantial case whether he
knew that his diploma was not genuine.
Tr. 5:14–22. Additionally, Petitioner has withdrawn all its allegations that Dr.
Konchitsky himself engaged in any act of forgery or perjury with respect to his
Ph.D. November 13 2015 e-mail from Petitioner Counsel, Ex. 2106; Tr. 4:11–23,
6:13–8:2. This is not to say that there is sufficient evidence to establish whether
Dr. Konchitsky’s Ph.D. is genuine. However, as Petitioner argues, the issue is one
of Dr. Konchitsky’s veracity and credibility. Tr. 7:7–17. Thus, while it may be
possible Dr. Konchitsky’s Ph.D. is not genuine, Petitioner has not shown that Dr.
Konchitsky engaged in any wrongdoing in obtaining his Ph.D. or representing that
he obtained a Ph.D. from Bournemouth University Extension in Israel. Thus, we
do not diminish the weight of Dr. Konchitsky’s on this basis.
2. Dr. Konchitsky’s Masters Credentials
Petitioner further argues that Dr. Konchitsky’s mischaracterization of his
Master’s degree from Bournemouth University (Tr. 6:15–23) demonstrates Dr.
Konchitsky’s lack of credibility and diminishes the weight of his testimony (see id.
at 9:6–14). Petitioner does not dispute Dr. Konchitsky received a Master’s degree
from Bournemouth University. Tr. 13:9–15. Rather, Petitioner asserts that Dr.
Konchitsky has embellished his Master’s degree in tourism and hospitality
management by describing it as a degree in “management and business.” Id. at
5:23–25.
Dr. Konchitsky and Patent Owner do not dispute that Dr. Konchitsky’s
curriculum vitae does not state that his Master’s degree was issued in “Tourism
and Hospitality Management.” Ex. 2082 ¶ 94; see Tr. 21:5–7. Dr. Konchitsky
asserts that he believes his CV is accurate because his
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Master’s thesis was focused on computers and computer
science, and how personal computers could best be
integrated into a hotel’s business. This field, where I was
forecasting the trend in a particular vertical industry, is
part of Information Technology in graduate business
studies, which is a subcategory of the school of
management.
Ex. 2082 ¶ 94. While the argument may be made that Dr. Konchitsky’s description
of his Master’s degree is merely harmless embellishment or an artful rewording
having the same effective meaning, we find that Dr. Konchitsky, nevertheless,
incorrectly described his Master’s degree and misrepresented his credentials to the
Board. Further, that Dr. Konchitsky may be qualified to testify based on his
undergraduate degrees and experience, as asserted by Patent Owner (Tr. 21:16–5),
does not mitigate Dr. Konchitsky’s misrepresentation of his credentials nor
preclude us from appropriately weighing his testimony in light of such
misrepresentation. We expect all parties and individuals involved in proceedings
before the Board to “have a duty of candor and good faith to the Office during the
course of a proceeding.” 37 C.F.R. § 42.11. Moreover, we agree with the
sentiment that “[e]ven the slightest accommodation of deceit or a lack of candor in
any material respect quickly erodes the validity of the process. As soon as the
process falters in that respect, the people are then justified in abandoning support
for the system in favor of one where honesty is preeminent.” United States v.
Shaffer Equip. Co., 11 F.3d 450, 457–59 (4th Cir. 1993). Therefore, we will
consider Dr. Konchitsky’s statements regarding his Master’s degree in affording
his testimony the appropriate weight.
3. Dr. Konchitsky’s Translation of Mr. Cohen’s Statement
Petitioner further argues that the circumstances of Dr. Konchitsky’s
incorrect translation of Mr. Cohen’s Statement (Ex. 2092), submitted to support his
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Ph.D. from Bournemouth University Extension through Ramat Gan College in
Israel, demonstrate a lack of credibility and reliability. Pet. Mot. Exclude 4;
Ex. 1061. In particular, Petitioner argues that the incorrect English translation of
Mr. Cohen’s Statement includes the phrase “[d]uring the time period 1999-2002,
the Extension offered a doctoral program in communication systems in electrical
engineering,” for which the Hebrew counterpart does not appear in the original
Hebrew version. Ex. 2092, 2.
At the Oral Hearing, counsel for Patent Owner indicated that it relied on Dr.
Konchitsky for the translation of all documents in his supplemental declaration
(Ex. 2082). Tr. 13:22–14:11. Counsel for Patent Owner further represented that
there was a “mismatching problem between the drafts” that resulted in the
submission of an English version that did not match the statement in Hebrew. Id.
at 14:16–21. Patent Owner’s counsel stated that:
we have now obtained a declaration from Dr. Konchitsky
that explains how the error occurred. And we also have a
certified translation and have obtained a corrected, if you
will, Exhibit 2092 from Mr. Cohen that matches the
English version. And in short, just like I said Friday
during the call, Dr. Konchitsky says it was a mismatching
problem between the drafts that were discussed and
exchanged with Mr. Cohen. He apparently mixed up the
English translation with the Hebrew version. We don’t, of
course, speak Hebrew, so we couldn't catch the mistake
ourselves.
Id. at 14:12–21. Patent Owner did not provide a certified translation of Exhibit
2092 at the time of filing as it was required to do per 37 C.F.R. § 42.63(b).
We find that “mismatching” situation that have been avoided if a proper
certified translation of Exhibit 2092 had been completed and submitted as required
by Rule 42.63. In addition to the incorrect and misleading translation, we note that
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Patent Owner’s reliance on Dr. Konchitsky’s self-translated evidence strongly
undermines the credibility of the facts submitted in support of Konchitsky’s Ph.D.
credentials. Although we do not dismiss Dr. Konchitsky’s testimony on this
basis,1 the misleading translation proffered by Patent Owner erodes the foundation
of Dr. Konchitsky’s declaration and the weight we grant his testimony, and
undermines the foundation of our trial process.
With these considerations in mind, we now turn to the construction of
certain claim terms.
B. Claim Construction
In an inter partes review, claim terms in an unexpired patent are given their
broadest reasonable construction in light of the Specification of the patent in which
they appear. 37 C.F.R. § 42.100(b); see also In re Cuozzo Speed Techs., LLC, 793
F.3d 1268, 1277–79 (Fed. Cir. 2015) (“We conclude that Congress implicitly
approved the broadest reasonable interpretation standard in enacting the AIA” and
“the standard was properly adopted by PTO regulation.”), cert. granted sub nom.
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 890 (mem.) (2016). Under the
broadest reasonable construction standard, claim terms are given their ordinary and
customary meaning, as would be understood by one of ordinary skill in the art, in
the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,

1 Petitioner has requested authorization to file a motions for sanctions based on Dr.
Konchitsky’s translation of Exhibit 2092. Specifically, at the Oral Hearing,
Petitioner requested reimbursement for the cost of obtaining certified translations
of Exhibits 2087, 2091, and 2092. Tr. 9:13–16. On February 12, 2016, by email
correspondence to the Board, the parties informed us that Patent Owner “has fully
reimbursed Petitioner for the cost of obtaining certified translations of Exhibits
2087, 2091, and 2092.” Ex. 3001. Accordingly, we treat Petitioner’s request to
file a motion for sanctions as moot.
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1257 (Fed. Cir. 2007). Any special definition for a claim term must be set forth
with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
1480 (Fed. Cir. 1994).
1. “graphical gymbol”
Petitioner did not propose a construction of the claim term “graphical
symbol” as recited in the challenged claims. See Pet. 8–11. Instead, the Petition
equated a graphical symbol to “emoticons.” Pet. 5 (citing Ex. 1001, 4:36–55,
Figs. 12a and 12b). Our Decision did not determine a broadest reasonable
interpretation for the claim term.
Patent Owner contends that the broadest reasonable interpretation by a
person of ordinary skill in the art in light of the Specification is that “graphical
symbols,” are “graphical emoticons” and not individual textual characters or such
characters combined to form text emoticons. PO Resp. 5. Patent Owner argues
that contrary to Petitioner’s contention, there is no applicable plain and ordinary
meaning. Tr. 61:1–6. Patent Owner further argues that Petitioner fails to provide
evidence that the cited prior art teaches or suggests graphical emoticons. Instead,
Patent Owner contends that the Petitioner’s evidence “merely discloses individual
‘textual characters,’ such as ‘:’, ‘-‘, ‘)’, ‘$’, ‘=’, and ‘&’” and fails to show “any
combination of ‘textual characters’ that ‘generate’ a ‘graphical symbol.’” PO
Resp. 5–6.
In support of “graphical symbol” being construed as graphical emoticon,
Patent Owner cites the ’870 patent’s reference to Exhibit 2003, Miller, U.S. Patent
No. 6,629,793 (“the ’793 patent”), which discloses a specialized graphical
emoticon keyboard designed to support instant messaging that resolves
textual/graphical data entry issues for regular sized keyboards. PO Resp. 6 (citing
Ex. 1001, 2:60–67). Patent Owner argues that the ’793 patent expressly states that
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“emoticon can be a text emoticon, such as the smiley face : ) or it can be a graphic
emoticon.” Ex. 2003, 1:37–38; see also Ex. 2003, 9:50–54 (“An emoticon can also
be a graphic such as the emoticon faces shown in section the pull-down menu 606
of FIG. 6 below. As an example, Table 7 below shows a commonly known list of
text emoticons.”); 13:33–36 (stating that “displaying a text emoticon in the
dominant display window in step 820, displaying a graphic emoticon in the
dominant display window in step 822”); 13:54–57 (stating that “the application
114 uses the character map described in Table 9 and determines that a particular
graphic emoticon, such as those shown in pull-down menu 606 of FIG. 6,”);
14:51–52 (“a text emoticon or a graphic emoticon.”). Patent Owner relies on
Exhibit 2003 as referenced in the background of the ’870 patent along with the
Declaration of Dr. Konchitsky, Ex. 2007, to establish that Miller supports a
distinction in the art between emoticons made of known textual characters (such as
an ampersand, or parentheses) and graphical emoticons, represented by pictorial
smiley faces. PO Resp. 6–8 (citing Ex. 2003, Figs. 2, 3, and 6).
The ’870 patent states that:
Emoticons are graphical symbols intended to convey
emotional aspects of a message. For example, one instant
messaging service may require the typing of the following
characters :-) to generate the symbol , while another
instant messaging service may only require the typing of
:) to generate the symbol , which is typically known as
the smiley face.
Ex. 1001, 3:26–32. Based on this passage and numerous references throughout the
’870 patent Specification, Patent Owner contends that the generation of a “symbol”
from typed characters indicates that emoticons represented by symbols such as the
“” are the “graphical symbols” as recited in the claims. PO Resp. 8–9 (citing
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Ex. 1001, 4:50–5:3, 7:4–23, 8:27–32, 8:43-46, 16:62–17:5, 18:46–55, 19:17–31,
20:1–14, Fig. 2, Figs. 12a and 12b).
Patent Owner also argues that the express statement that graphical symbols
can be entered by using emoticon keys or programmable keys further supports the
contention that graphical symbols are graphical emoticons. PO Resp. 9–11 (citing
Ex. 1001, 16:62–17:5, 18:47–53, Figs. 12a and 12b). In sum, Patent Owner
contends that the ’870 patent specification and claims distinguish between textual
characters and graphical symbols, e.g. “,” which are generated from typed
characters, e.g. “:-).” PO Resp. 12–19.
Petitioner does not dispute that emoticons, such as , are “graphical
symbols,” but contends that “graphical symbols” are not limited to such emoticons
and can include emoticons of typed textual characters. Reply 12. In rebuttal to
Patent Owner’s contentions, Petitioner argues that the ’870 patent does not
expressly equate “graphical symbol” with “graphical emoticon,” nor does it
distinguish textual characters from graphical symbols. Reply 12–20. Furthermore,
Petitioner asserts that the patentee did not act as its own lexicographer. Petitioner
argues that its Declarant, Dr. Brody, and Petition relied on the plain and ordinary
meaning of the term “graphical symbol.” Reply 21–22; Tr. 31:3–6 (Petitioner’s
counsel stated that “[t]he petitioner's construction for graphical symbols is that that
term should be given its plain and ordinary meaning. That was something that was
explained by Dr. Brody in his declaration, Exhibit 1003.”); see also Deposition of
Alon Konchitsky, Ph.D., Ex. 1021, 69:6–24 (Konchitsky stating that the plain and
ordinary meaning of graphical symbol is graphical emoticon).
Petitioner further asserts that Patent Owner’s construction unreasonably
narrows the construction of “graphical symbols” based on misreading passages of
the ’870 patent and reliance on the Miller patent that is not incorporated by
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reference. Reply 12–20. Petitioner’s construction relies on its Declarant’s
testimony that the broadest reasonable interpretations of “textual characters” and
“graphical symbols” is their plain and ordinary meaning. Reply 20–21; Ex. 1003
¶ 27 (stating that “the broadest reasonable interpretation of the claim terms of the
‘870 patent is generally consistent with the terms’ ordinary and customary
meaning, as a PHOSITA would have understood them”).
Based on the full record and consideration of the parties’ arguments and
evidence, we determine that the broadest reasonable interpretation of the term
“graphical symbols,” as would be understood by one of ordinary skill in the art, in
the context of the entire disclosure is “graphical emoticon.” See Ex. 1001, 3:26–
36, 4:50–5:3, 7:4–23, 8:27–32, 8:43-46, 16:62–17:5, 18:46–55, 19:17–31, 20:1–14,
Figs. 2, 12a, and 12b. We agree with Patent Owner that the Specification of the
’870 patent shows “symbols” being generated by textual characters. PO Resp. 14–
15. Specifically, the ’870 patent refers to characters generating graphical symbols
where symbols are pictorial representations, e.g. , indicates to a person of
ordinary skill in the art that symbols (and graphical symbols) are distinct from the
textual characters used to generate them. Ex. 1001, 3:26–36, 4:50–5:3. Thus, we
are not persuaded by Petitioner’s argument or the testimony of their Declarant that
the ’870 patent Specification does not distinguish between characters and symbols.
Reply 12–13. We find that the Specification of the ’870 patent showing
combination of textual characters that are used to generate “graphical symbols”
across different messaging services further supports the distinctions between
textual characters and graphical symbols. See Ex. 1001, 7:20–23; 8:27–32, 8:43–
46, Tables 1–4.
We are similarly not persuaded by Petitioner’s argument that unreasonably
broadens “graphical symbols.” Reply 13–16. Petitioner’s Declarant testimony
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asserts “that whether a character is textual or graphical depends on the context in
which it is used.” Reply 16. However, Petitioner’s argument ignores the context
in which the terms “textual characters” and “graphical symbols” are used in the
Specification and claims of the ’870 patent. Indeed, the claims themselves support
a distinction between textual characters and graphical symbols. The claims refer to
“a device . . . for displaying textual characters and graphical symbols” and a “ data
entry device for generating textual characters and graphical symbols” (claim 1);
and “entering textual characters and graphical symbols with a data entry device”
and “displaying the entered textual characters and graphical symbols on a display”
(claim 20). Moreover, dependent claims 3 recites “at least one programmable key
associated with a set of characters corresponding to a graphical symbol supported
by an instant messaging service.” The claims in light of the Specification of the
’870 patent support the determination that “graphical symbols” refer to “graphical
emoticons” and not the string of textual characters that may represent the graphical
emoticon.
We are also persuaded by Patent Owner’s argument that the ’870 patent
Specification shows that “graphical symbols” are entered using emoticon keys or
programmable keys, while textual characters are entered by typing on a keyboard.
PO Resp. 15–16 (citing Ex. 1001, 18:47–48, Fig. 2). The ’870 patent distinguishes
the symbols shown in Figure 2, which include characters such as “$” from
“graphical symbols” entered by an emoticon or programmable key. Ex. 1001,
18:47–48, Fig. 2. This distinction contradicts Petitioner’s description of “graphical
symbols” being disclosed in the e740 User’s Manual by characters such as “$” and
“=”. Pet. 27–28.
We note that Petitioner fails to cite any persuasive intrinsic evidence that
supports its contention regarding the plain and ordinary meaning of the term
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“graphical symbols.” Petitioner’s argument is based on extrinsic declaration
testimony. We find unavailing Petitioner’s argument that “a [person of ordinary
skill in the art] would know that characters such as a colon, dash, and closed
parentheses are flexible in their usage and not strictly categorized as ‘textual’ or
‘graphical’” and refutes the usage of the term “graphical symbol” in the
Specification and claims of the ’870 patent. Reply 20 (citing Ex. 2006, 84:2,
89:11–18, 170:17–171:25,180:3–14). Petitioner’s reliance on general knowledge
of an ordinarily skilled artisan broadens the term “graphical symbol” in a manner
that disregards the context and usage of the term. Petitioner’s arguments regarding
the alleged flexible usage of textual and graphical symbols to a person of ordinary
skill in the art and reliance on the plain and ordinary meaning of the term do not
yield the conclusion that “the broadest reasonable interpretation of the term
‘graphical symbols’ includes more than just emoticons” (Tr. 97:10–11). See also
Ex. 2006, 182:17–25 (Petitioner’s Declarant stating that “a person having ordinary
skill in the art would understand, that graphical symbols, emoticons, can be
displayed as combinations of text characters, as combinations of text characters
and graphical symbols, and as pictorial signals.”). Accordingly, based on the
intrinsic evidence before us, we are not persuaded by Petitioner that “graphical
symbols” as recited in the claims encompasses combinations of characters.
Finally, we disagree with Petitioner’s assertion that the ’793 patent as cited
in the ’870 patent, is not useful because it was not incorporated by reference into
the Specification of the ’870 patent. Reply 20. The ’793 patent is expressly
referenced in the Background section of the ’870 patent, and akin to the file history
of a patent, is intrinsic evidence that may be useful in construing claim terms. See
Kumar v. Ovonic Battery Co., 351 F.3d 1364, 1368 (Fed. Cir. 2003) (stating that
“[Federal Circuit] cases [] establish that prior art cited in a patent or cited in the
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prosecution history of the patent constitutes intrinsic evidence” and citing cases
establishing same); Arthur A. Collins, Inc. v. Northern Telecom Ltd., 216 F.3d
1042, 1045 (Fed. Cir. 2000) (noting “[w]hen prior art that sheds light on the
meaning of a term is cited by the patentee, it can have particular value as a guide to
the proper construction of the term, because it may indicate . . . the meaning of the
term to persons skilled in the art”). Based on the full record, we find that the ’793
patent as referenced in the ’870 patent Specification supports the determination
that a person of ordinary skill in the art would understand that “graphical symbol”
in light of the ’870 patent Specification is a “graphical emoticon” that is distinct
from a “textual emoticon.”
With respect to extrinsic evidence, we note that neither party has cited a
dictionary or treatise defining the terms textual character or graphical symbol as
recited in the challenged claims. See PO Resp. 28 n.9 (noting that the term
“graphical symbols” does not appear in the 2003 editions of Merriam-Webster’s
Dictionary or Newton’s Computer Dictionary). After considering the full record,
we find that the extrinsic evidence,2 does not change our determination that the
broadest reasonable interpretation, as would be understood by one of ordinary skill
in the art in the context of the entire disclosure, of “graphical symbol” is “graphical
emoticon.”

2 Although Petitioner has presented evidence that Patent Owner seeks a broader
construction of the term “graphical symbol” in related district court proceedings
(Reply 23–24; Ex. 1034 at 6), Petitioner has not indicated that the district court
adopted Patent Owner’s proposed construction. Even if a court had adopted Patent
Owner’s proposed construction, a district court’s interpretation of a claim term is
instructive but not binding on our construction. See Power Integrations, Inc. v.
Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no dispute that the board is
not generally bound by a prior judicial construction of a claim term.”).
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C. Anticipation Based on e740 User’s Manual
Petitioner asserts that claims 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30, 31,
36, 37, and 40 are anticipated by e740 User’s Manual (Ex. 1004). Pet. 12–33. The
e740 User’s Manual describes the hardware and software functionality of the
Toshiba Pocket PC e740 product. Ex. 1004, 2. The e740 is a touchscreen wireless
device that includes MSN Messenger software and wireless IP functions.
Id. at 13–14. In support of its contentions, Petitioner also provides claim charts
and citations to the Declaration testimony of Dr. Arthur T. Brody (“Brody
Declaration,” Ex. 1003). Id.
Based on the complete record, we agree with Patent Owner that Petitioner
has not demonstrated by a preponderance of the evidence that the e740 User’s
Manual explicitly or inherently discloses the limitations of independent claims 1
and 20. See PO Resp. 35–37. The Petition applies a construction for “graphical
symbol” that includes text emoticons and individual characters themselves as
graphical symbols. See Pet. 14–15 (claim 1), 25 (claim 20), 28 n.3 (citing
individual characters such as “)” and “-“ as graphical symbols alone). The Petition
states that the “combination of characters, each element of the smiley face—‘:’, ‘-‘,
‘)’—is also a graphical symbol” like a “character sequence, such as ‘:-)’ or ‘;-)’,
that represents a graphical symbol.” Pet. 28 n.3. Based on the claim construction
determined above, “graphical symbols” are “graphical emoticons” that are distinct
from “textual emoticons” presented by Petitioner. Petitioner’s evidence and
argument do not establish that the cited reference teaches a “device [] configured to
generate textual characters and graphical symbols” as recited in independent
claims 1 and 20.
Upon review of the complete record, we are not persuaded by Petitioner’s
arguments that the e740 User’s Manual and Morrison disclose graphical
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emoticons. Reply 22; Tr. 38:13–39:10. Petitioner’s efforts to bootstrap MSN
Messenger as discussed in the e740 User’s Manual to the disclosure of graphical
emoticons is not supported by the Petitioner’s evidence and argument as presented
in the Petition. Pet. 12–13, 28, 42. In sum, Petitioner has not provided persuasive
or sufficient evidence that the e740 User’s Manual discloses “graphical symbols”
as recited in independent claims 1 and 11.
After consideration of the complete record before us, we are not persuaded
by a preponderance of the evidence that claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21,
24–27, 30, 31, 36, 37, and 40 are anticipated by e740 User’s Manual.
D. Obviousness Grounds Based on e740 User’s Manual and Morrison
Petitioner contends that claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30,
31, 36, 37, and 40 are obvious in view of the e740 User’s Manual and Symbol
(Pet. 33–42); claims 1, 2, 5–8, 11, 12, 17–21, 24–27, 30, 31, and 36–40 are obvious
in view of e740 User’s Manual and Morrison (Pet. 42–54); and claims 9, 10, 28,
and 29 are obvious in view of e740 User’s Manual and e750 User’s Manual (Pet.
54–56). Petitioner presents claim charts and evidence in support of these
contentions. Pet. 33–56.
Petitioner’s argument and evidence rely on the same overly broad
construction of “graphical symbols” used in the anticipation grounds based on the
e740 User’s Manual. Pet. 35, 38, 43–44, 48, 55–56 (citing e740 User’s Manual for
teaching recited claim limitations for graphical symbol). As discussed above,
Petitioner’s argument that the combination of Morrison and the e740 User’s
Manual teach “graphical symbols” is not supported by the Petition. Although we
carefully weighed Patent Owner’s Declarant testimony, we agree with Patent
Owner’s argument that the Petition fails to demonstrate that Morrison and the e740
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User’s Manual teach or suggest “graphical symbols” or “graphical emoticons” as
opposed to textual characters cited by Petitioner. PO Resp. 35–42, 43–46.
We have considered the arguments and evidence presented by the Petitioner
and Patent Owner. For the reasons discussed above, we conclude that Petitioner
has not shown by a preponderance of the evidence that claims 1, 2, 5–8, 11, 12, 17,
18, 20, 21, 24–27, 30, 31, 36, 37, and 40 are obvious in view of the e740 User’s
Manual and Symbol; claims 1, 2, 5–8, 11, 12, 17–21, 24–27, 30, 31, and 36–40 are
obvious in view of e740 User’s Manual and Morrison; or claims 9, 10, 28, and 29
are obvious in view of e740 User’s Manual and e750 User’s Manual.
E. Petitioner’s Motions to Exclude
Petitioner filed a Motion to Exclude certain evidence. Paper 34 (“Pet. Mot.
Excl.”). Patent Owner filed an Opposition to Petitioner’s Motion to Exclude
(Paper 41, “PO Opp. Excl.”), and Petitioner filed a Reply to Patent Owner’s
Opposition (Paper 42, “Pet. Reply Excl.”). In particular, Petitioner moves to
exclude Patent Owner’s exhibits, as discussed below.
1. Secondary Consideration Charts (Exhibits 2080–2081)
Petitioner argues it is prejudiced because Patent Owner’s secondary
considerations exhibits were improperly filed with the sur-reply, depriving
Petitioner of a written reply. Pet. Mot. Excl. 1. Patent Owner contends that the
exhibits were summary originally introduced during cross examination of Patent
Owner’s expert prior to Petitioner’s Reply. PO Opp. Excl. 2. As such Patent
Owner states that they are not new evidence and instead are merely summaries of
evidence introduced in with the Patent Owner’s Response. Id. (citing Ex. 2007).
Although we did not rely on these exhibits or reach secondary consideration
issues, Patent Owner’s belated introduction of summary evidence that Patent
Owner admits is in the record with the Patent Owner response is cumulative. We
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grant Petitioner’s motion to exclude Exhibits 2080 and 2081.
2. Dr. Konchitsky’s Bournemouth University Ph.D. Dissertation
(Exhibit 2084) and Dr. Konchitsky’s Bournemouth University
Master’s Thesis (Exhibit 2090)
Petitioner argues that Exhibit 2084 and Exhibit 2090 are inadmissible
because Patent Owner failed to file an English translation with an affidavit
attesting to the accuracy of the translation pursuant to 37 C.F.R. § 42.63(b).3 Pet.
Mot. Excl. 2, 4–5. Rule 42.63(b) provides that “[w]hen a party relies on a
document or is required to produce a document in a language other than English, a
translation of the document into English and an affidavit attesting to the accuracy
of the translation must be filed with the document.”
Patent Owner does not dispute that (1) Exhibit 2084 and Exhibit 2090 are
written in Hebrew; and (2) no English translation has been provided. PO Opp.
Excl. 3–4, 6–7. However, Patent Owner argues that Rule 42.63(b) should not
apply in circumstances where the substance of the document in a foreign language
is not relied upon. PO Opp. Excl. 3, 5–6. Alternatively, Patent Owner argues that
we should waive the certified translation in these circumstances in the interest of a
just, speedy and inexpensive resolution of this proceeding. Id.
Based on the complete record, we are not persuaded by Patent Owner’s
arguments that we should set aside the requirements of Rule 42.63(b). For
example, Patent Owner argues that the “substance” of Exhibit 2084 is not at issue
because the “entire point of Exhibit 2084” is that it is a Ph.D. dissertation written
in the Hebrew language. PO Opp. Excl. 4. However, without a certified
translation, we cannot confirm that Exhibit 2084 contains Dr. Konchitsky’s Ph.D.

3 Petitioner filed its objections within the prescribed time limit provided under Rule
42.64(b)(1). Paper 29.
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dissertation in Hebrew. Moreover, we cannot agree with Patent Owner that
Exhibit 2084 is “indisputably authenticated,” as we cannot ascertain the contents of
the document to determine authenticity. See id.
Additionally, based on the facts this case, Patent Owner has not explained
how waiver of Rule 42.63(b) would promote a just, speedy and inexpensive
resolution of the proceeding. Providing a certified translation of a document in a
foreign language allows each party a fair opportunity to develop its respective
positions based on a full understanding of the record. Generally, the development
of a clear and complete record promotes the interests of a just, speedy and
inexpensive resolution. In the instance of a missing translation, the record lacks
clarity and completeness, which in itself incurs expenditure of resources on issues
that could have been avoided altogether. Accordingly, based on the totality of the
facts, we do not waive Rule 42.63(b) for Exhibit 2084 and Exhibit 2090.
Petitioner’s Motion to Exclude Exhibit 2084 and Exhibit 2090 is granted.
3. Dr. Konchitsky’s Bournemouth University Ph.D. Transcript
(Exhibit 2085)
Petitioner argues that Patent Owner has not established the authenticity of
Exhibit 2085 in order to demonstrate that Dr. Konchitsky obtained a genuine Ph.D.
from Bournemouth University. Pet. Mot. Excl. 2–3. Exhibit 2085 purportedly
shows Dr. Konchitsky’s Bournemouth University Ph.D. transcript.
Arguably, the Ph.D. transcript alleged shown in Exhibit 2085 may not be
sufficient to establish that Dr. Konchitsky obtained a genuine Ph.D.; however, as
discussed above, Dr. Konchitsky’s education and experience qualify him to
provide his opinion on the subject matter of this proceeding even without taking
into consideration whether Dr. Konchitsky has a Ph.D. from Bournemouth
University Extension through Ramat Gan College in Israel. Further, Petitioner has
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withdrawn any allegation that Dr. Konchitsky himself engaged in forgery or
perjury related to his Ph.D. Tr. 5:8–22. Thus, we determine that the authenticity
of Exhibit 2085 is moot.
4. Dr. Konchitsky’s Bournemouth University Ph.D. Payment Receipts
(Exhibit 2087) and Dr. Konchitsky’s Master’s Payment Receipts
(Exhibit 2091)
Petitioner has withdrawn its motion to exclude Exhibits 2087 and 2091. Pet.
Exclude Reply 3; Tr. 11:1–4. We treat this request as moot.
5. Statement of Mr. Cohen (Exhibit 2092); November 4, 2002 Letter
from Marilyn Russell on Bournemouth University Letterhead
(Exhibit 2093); December 26, 2002 Letter of Professor Meidan on
Bournemouth University Letterhead (Exhibit 2094); October 18,
2015 Letter of Professor Meidan (Exhibit 2095); Statement of Gili
Dror (Exhibit 2096); Statement of Simon Perez (Exhibit 2097);
December 21, 2004 Letter of Recommendation by Stanford
University Professor Lusignan (Exhibit 2102)
Petitioner presents several arguments challenging the admissibility of
Exhibits 2092–2097 and 2102. Pet. Mot. Excl. 5–14. Petitioner’s Motion is
dismissed as moot as this Decision does not rely on Exhibits 2092–2097 and 2102.
Further, we note that in evaluating the credibility of Dr. Konchitsky’s
testimony, we considered the circumstances of how Patent Owner came to file an
incorrect translation of Exhibit 2092, which is originally in a foreign language and
purported to be a statement by Mr. Haim Cohen. Supra Sect. II(A)(3); see
Ex. 1061 (certified translation of Exhibit 2092 filed by Petitioner). Our discussion
of Exhibit 2092 does not rely on the substance of Ex. 2092 to determine
Dr. Konchitsky’s credibility, but solely considers Dr. Konchitsky’s testimony in
light of the circumstances Patent Owner asserts led to a “mismatched” Exhibit
2092 with an incorrect translation.
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Accordingly, we dismiss Petitioner’s Motion to Exclude Exhibits 2092–
2097 and 2102 as moot.
F. Patent Owner’s Motion to Exclude
Patent Owner filed a Motion to Exclude. Paper 38 (“PO Mot. Excl.”).
Petitioner filed an Opposition to Patent Owner’s Motion to Exclude (Paper 42,
“Pet. Opp. Excl.”), and Patent Owner filed a Reply (Paper 47, “PO Reply Excl.”).
1. Exhibits 1008 and 1009
Patent Owner presents several arguments challenging the admissibility of
Exhibits 1008 and 1009. Pet. Mot. Excl. 2–3. Patent Owner argues that the
Decision on Institution did not expressly rely on these exhibits, that the exhibits are
not relevant or authenticated. Id. Petitioner responds that the challenged exhibits
are not hearsay and are authentic. Pet. Opp. Excl. 1–4.
Patent Owner’s Motion to Exclude Exhibits 1008 and 1009 is dismissed as
moot because this Decision does not rely on these exhibits.
2. Exhibits 1022, 1031, 1032, 1039, and 1040
Patent Owner asserts that Exhibits 1022, 1031, 1032, 1039, and 1040 are not
directed at the substance of the unpatentability issues but instead relate to the
alleged deception regarding the academic credentials of Dr. Konchitsky. PO Mot.
Excl. 4. Patent Owner contends that these exhibits are inadmissible hearsay and
not relevant. Id. at 3–11. Patent Owner also identifies numerous alleged
deficiencies with each challenged Exhibit.
Because we do not directly rely on the evidence cited in Exhibits 1022,
1031, 1032, 1039, and 1040 in reaching our Decision on the unpatentability of the
challenged claims of the ’870 patent, we dismiss as moot Patent Owner’s Motion
to Exclude Exhibits 1022, 1031, 1032, 1039, and 1040.
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3. Exhibits 1036 and 1037
Patent Owner contends that Exhibits 1036 and 1037, first introduced in the
Petitioner’s Reply, constitute new evidence that was not included in the Petition
and should be excluded. PO Mot. Excl. 11–13. Petitioner contends that Exhibits
1036 and 1037 are submitted properly to rebut Patent Owner’s construction of the
claim term “graphical symbol.” Pet. Opp. Excl. 13–15.
We are not persuaded by Patent Owner’s argument that Petitioner’s exhibits
are irrelevant and unreliable hearsay. PO Mot. Excl. 11–13. Petitioner’s Reply
cites the Exhibits 1036 and 1037 in rebuttal to Patent Owner’s claim interpretation
of the cited prior art references, and not as substitute grounds for unpatentability.
Reply 22–23. Finally, Patent Owner’s issues regarding the lack of supporting
declaration explaining the relevance of the exhibits or the substantive teachings of
the exhibits, are best addressed in the weight accorded to Petitioner’s arguments
and evidence.
Based on the facts of the present case, we deny Patent Owner’s Motion to
Exclude Exhibits 1036 and 1037.
III. CONCLUSION
For the foregoing reasons, Petitioner has not demonstrated by a
preponderance of the evidence that:
(1) claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30, 31, 36, 37, and 40 of
the ’870 patent are unpatentable under 35 U.S.C. § 102 as anticipated by e740
User’s Manual;
(2) claims 1, 2, 5–8, 11, 12, 17, 18, 20, 21, 24–27, 30, 31, 36, 37, and 40 of
the ’870 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the e740
User’s Manual and Symbol; and
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(3) claims 1, 2, 5–8, 11, 12, 17–21, 24–27, 30, 31, and 36–40 of the ’870
patent are unpatentable under 35 U.S.C. § 103(a) as obvious over the e740 User’s
Manual and Morrison; and
(3) claims 9, 10, 28, and 29 of the ’870 patent are unpatentable under 35
U.S.C. § 103(a) as obvious over the e740 User’s Manual and the e750 User’s
Manual.
IV. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, based on a preponderance of the evidence, 1, 2, 5–12, 17–
21, 24–31, and 36–40 of U.S. Patent No. 7,292,870 have not been shown to be
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2080,
2081, 2084, and 2090 is granted;
FURTHER ORDERED that Petitioner’s Motion to Exclude Exhibits 2085,
2087, 2091–2097, and 2102 is dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude Exhibits
1006, 1007, 1009–1011, 1022, 1031, 1032, 1039, and 1040 is dismissed as moot;
FURTHER ORDERED that Patent Owner’s Motion to Exclude Exhibits
1036 and 1037 is denied; and
FURTHER ORDERED, because this is a final written decision, the 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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PETITIONER:

Robert Mattson
cpdocketmattson@oblon.com

Jason Kern
cpdocketkern@oblon.com

John Presper
cpdocketpresper@oblon.com

PATENT OWNER:

Stephen Risley
srisley@srtslaw.com

Robert Dulaney
rdulaney@srtslaw.com