Zipit Wireless, Inc.

Patent Trials and Appeals Board

Mar 9, 2021

IPR2019-01567 (P.T.A.B. Mar. 9, 2021)

Trials@uspto.gov Paper 38
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.

IPR2019-01567
Patent 7,292,870 B2

Before TREVOR M. JEFFERSON, NEIL T. POWELL, and
JOHN D. HAMANN, Administrative Patent Judges.
JEFFERSON, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying Petitioners’ Motion to Exclude
35 U.S.C. § 318(a)

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I. INTRODUCTION
In this inter partes review, Petitioners Google LLC (“Google”) and
LG Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”)
(collectively, “Petitioners”) challenged claims 20, 21, and 24–30 of U.S.
Patent No. 7,292,870 B2 (“the ’870 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 20, 21, and 24–30 are
unpatentable.
A. Procedural History
Petitioners filed a Petition challenging claims 20, 21, and 24–30 of the
’870 Patent (Pet. 3, 6–74), and Patent Owner filed a Preliminary Response
(Paper 7). We instituted trial on all grounds of unpatentability. Paper 10
(“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 30,
“Pet. Mot.”), and Patent Owner filed an opposition (Paper 31, “PO Opp.”)
thereto to which Petitioners replied (Paper 33).
Petitioners submit the Declaration of Dr. Gregory Abowd (Ex. 1004,
“Abowd Decl.”) and the Reply Declaration of Dr. Gregory Abowd
(Ex. 1060) in support of the Petition and Reply. Patent Owner supports its
Response and Sur-reply with the Declaration of Karl Ginter (Ex. 2017,
“Ginter Decl.”) and the Declaration of Rafael Heredia (Ex. 2018).
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Petitioners also submit the Deposition of Karl Ginter (Ex. 1058) and the
Deposition of 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, 6–74.
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
Tracy U.S. Patent App. Pub. No. 2003/0058223, filed
Jan. 23, 2002, issued Mar. 27, 2003
1012
McCarthy U.S. Patent No. 7,328,242, filed Sep. 17, 2002,
issued Feb. 5, 2008
1023
We instituted inter partes review of the challenged claims, claims 20,
21, and 24–30, on the following grounds:
Claim(s) Challenged 35 U.S.C. § References/Basis
20, 24–30 103(a)1 Van Dok, Sinivaara, Chiu, McCarthy

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 ’870 Patent has an
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Claim(s) Challenged 35 U.S.C. § References/Basis
21 103(a) Van Dok, Sinivaara, Chiu, McCarthy, Tracy
21 103(a) Van Dok, Sinivaara, Chiu, McCarthy, Saric
20, 21, 24–30 103(a) Zaner, Sinivaara, Chiu, McCarthy
21 103(a) Zaner, Sinivaara, Chiu, McCarthy, Saric
Dec. on Inst. 6, 32.
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 ’870 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 ’870 patent was also the subject of
IPR2014-01507 and was not shown to be unpatentable. See Blackberry
Corp. v. Zipit Wireless, Inc., IPR2014-01507, Paper 50 (PTAB March 29,
2016) (Final Written Decision) (“Blackberry IPR”).
A related inter partes review of claims 11, 12, 14–16, and 20 of
U.S. Patent No. 7,894,837 B2 (“the ’837 patent”), the child to the ’870
patent, is addressed in Google LLC et al. v. Zipit Wireless, Inc., IPR2019-
01568, Paper 9 (PTAB March 10, 2020) (“the 1568 IPR”).
E. 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

effective filing date prior to the effective date of the applicable AIA
amendments, we refer to the pre-AIA versions of § 103.
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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.
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 9:41–43.

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 9:40–42.
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Figures 12a and 12b, provided below, show user interface screens that
associate emoticon pictorial images with programmable keys. Id. at 10:6–7.

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. Id. 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 16:62–17:5.
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, 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. 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.
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F. Illustrative Claims
Challenged claim 20 is an independent claim. Challenged claims 21
and 24–30 depend directly or indirectly from claim 20. Claims 20 and 21,
reproduced below with bracketed lettering added, are illustrative.
20. A method for managing wireless network access and
instant messaging through a wireless access point with a
handheld instant messaging terminal comprising:
[A] entering textual characters and graphical symbols with
a data entry device of a handheld terminal to form instant
messages for delivery to an instant messaging service;
[B] displaying the entered textual characters and graphical
symbols on a display of the handheld terminal;
[C] communicating instant messages with a wireless,
Internet protocol access point, the instant messages being
communicated with a communications module and wireless
transceiver in the handheld terminal;
[D] coordinating authentication for coupling the handheld
instant messaging terminal to a local network through the
wireless, Internet protocol access point;
[E] implementing instant messaging and sessions
protocols to control a conversation session through the wireless,
Internet protocol access point, the instant messaging and session
protocols being implemented within the handheld instant
messaging terminals;
[F] displaying conversation histories for active
conversations terminated by a loss of a network connection; and
[G] automatically searching for wireless, Internet protocol
network beacons after the conversation histories are displayed.

21. The method of claim 20, the conversation session control
further comprising:
identifying a key on the data entry device with a graphical
symbol that is generated by depressing the key.
Ex. 1001, 26:41–27:2 (bracketed letters added).
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II. ANALYSIS
A. Level of Ordinary Skill in the Art
In an obviousness analysis, prior art references must be “considered
together with the knowledge of one of ordinary skill in the pertinent art.” In
re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571
F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account
not only specific teachings of the reference but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom.” In re
Preda, 401 F.2d 825, 826 (CCPA 1968). That is because an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 550 U.S. at 418 (Fed. Cir. 2007) (emphasis added); 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 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. 5 (citing Ex. 1038, 47 (Blackberry IPR Prelim. Resp.)). 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 F.3d
1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).
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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. Patent Owner argues the construction
of several claim terms addressed below.
1. “a data entry device of a handheld terminal” (claim 20)
Claim 20’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, 26:41–
43. Patent Owner argues that the handheld aspect of the terminal is woven
throughout the body of the claim (id. at 26:44–65) and discussed by Patent
Owner in prosecution (Ex. 1002, 246–247), such that a person of ordinary
skill in the art would understand from the intrinsic record that the claim

2 See Changes to the Claim Construction Standard for Interpreting Claims in
Trial Proceedings Before the Patent Trial and Appeal Board, 83 Fed.
Reg. 51,340, 51,343 (amending 37 C.F.R. § 42.100(b) effective November
13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)).
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phrase “a data entry device of a handheld terminal” in claim 20 means “a
data entry device integrated into the housing of a handheld terminal.”
PO Resp. 4 (citing Ex. 2017 ¶¶ 24–30) (emphasis added). Patent Owner’s
arguments from the prosecution history of the ’870 patent state that the
application of “claim 21 requires that 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.” Ex. 1002, 246; PO Resp. 2–3. Patent Owner emphasizes that all
features must be performed within a single handheld terminal as a
requirement for claim 20. PO Resp. 2–3.
We are not persuaded by Petitioners’ proposed construction that
inserts “integrated” into the preamble of claim 20. 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, 415 F.3d at 1319–20. As
Petitioners argue (Reply 4), the ’870 patent specifically claims and describes
“a data entry device integrated in the terminal housing” in claim 1 of the
’870 patent (Ex. 1001, 25:16), 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. 3–4. Patent
Owner’s arguments before the Office during prosecution to distinguish a
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.”).
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Indeed, the portions of the discussion Patent Owner cites are specific to the
reference being distinguished during prosecution, Rucinski (Ex. 2053), and
Patent Owner’s arguments there focus on the protocols and software
execution in Rucinski as compared to claim 20. PO Resp. 3–4 (citing Ex.
1002, 246–247). We agree with Petitioners (Reply 3–4) 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, 246–247. Patent Owner’s
evidence does not support that the data entry device is required to be
integrated into the housing in claims 20 and 21 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.
2. “network connection” (claim 20)
Claim 20[F] recites “displaying conversation histories for active
conversations terminated by a loss of a network connection.” Ex. 1001,
26:61–62. Patent Owner argues that “‘network connection’ . . . refers to the
handheld instant messaging terminal’s connection to the local network
recited earlier in the claim, through which the handheld terminal
communicates instant messages.” PO Resp. 4–5 (citing Ex. 2017 ¶ 31).
Following the various references to “networks” in claim 20, Patent Owner
argues that “when claim 20 later refers to ‘a loss of network connection,’ the
connection that was lost refers to a local network with a working connection
to a wide area network to which the handheld terminal is wirelessly coupled
via the wireless, Internet protocol access point.” PO Resp. 5 (citing
Ex. 2017 ¶ 32). Patent Owner maintains that the Specification consistently
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references the handheld terminal’s connection to the Wi-Fi network, and
thus the network connection in claim 20 refers to a local network
connection. Ex. 2017 ¶ 33; Ex. 1001, 9:53–59, 13:1–3; 14:12–14, 14:47–50.
Claim 20 recites the term “network” in the preamble and limitation
20D, 20F, and 20G. Claim 20 recites “a local network through the wireless,
Internet protocol access point” in limitation 20D, “the loss of a network
connection” in limitation 20F, and “Internet protocol network beacons” in
limitation 20G. Each recitation of “network” in claim 20 is slightly
different, referring to “managing wireless network access” in the preamble,
to “local network through the wireless, Internet protocol access point” in
limitation 20[D], and “searching for wireless, Internet protocol network
beacons” in limitation 20[F]. Ex. 1001, 26:53–65. Patent Owner’s
argument asserts that the active conversations terminated by a loss of a
network connection in limitation 20F, refers back to the connection of the
messaging terminal to a local network through the wireless, Internet protocol
access point of limitation. PO Resp. 5–6.
Patent Owner does not address how the proposed claim construction
affects the application of the asserted prior art to limitations 20[F]. See PO
Resp. 4–5; Sur-reply 10–13. Whether network loss refers to a local network
or Internet protocol access point networks is not at issue in the analysis of
limitations 20[F] and 20[G]. PO Resp. 11–13, 28; Sur-reply 10–13. See
Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
1999). Accordingly, we determine that this term does not require
construction.
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3. ” entering textual characters and graphical symbols with a data
entry device” (claim 20)
The Blackberry IPR construed the term “graphical symbols” as
distinct from the textual characters that represent graphical emoticons.
Blackberry IPR 16 (applying the broadest reasonable construction in light of
the specification). We determined that “[t]he’870 patent distinguishes the
symbols shown in Figure 2 [of the ’870 patent], which include characters
such as ’$’ from ‘graphical symbols’ entered by an emoticon or
programmable key.” Id. (citing Ex. 1001, 18:47–48, Fig. 2). In the present
case, we agree with Patent Owner that under a Phillips interpretation,
claim 20 distinguishes between textual characters and graphical symbols in
accordance with the ’870 Specification. See Prelim. Resp. 8–9; Ex. 1001,
3:26–32, 4:50–5:3. Thus, we determined in the Decision on Institution in
the present case that the meaning a person of ordinary skill in the art would
have at the time of the invention, in light of the ’870 Specification, is that
“graphical symbols” include “graphical emoticons” that differ from textual
characters representing emoticons. We maintain that construction with
respect to “graphical symbols” as recited in independent claim 20; we
determine that “graphical symbols” refer to “graphical emoticons.”
Our Decision on Institution also rejected Patent Owner’s construction
that “entering textual characters and graphical symbols with a data entry
device” means “enter[ing] using emoticon keys or programmable keys,
while textual characters are entered by typing on a keyboard.” Dec. on Inst.
14. For this Final Written Decision, we accord “entering textual characters
and graphical symbols with a data entry device” its ordinary meaning in the
context of the claims.
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C. Obviousness of Claims 20 and 24–30 over Van Dok,
Sinivaara, Chiu, and McCarthy – Ground 1
Petitioners assert that claims 20 and 24–30 are unpatentable under 35
U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Chiu, and McCarthy.
Pet. 6–47. To support their contentions, Petitioners provide explanations as
to how the prior art 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 ¶¶ 52–263.
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.,
] 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.
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Van Dok states that Figure 5A illustrates
instant messaging user interface 500, having conversation
window 502, input box 504, and send button 506, both “Before”
and “After” automatic emoticon replacement in accordance with
the present invention. The user interface interprets, for example,
the text sequence “:)” 510 automatically as the smiley face
character  512, before a user selects the send button 506 for the
instant message in input box 504. Among other things,
replacement before sending the real-time message allows the
user composing the message to preview how the message will
appear when received. Of course, text sequence 510 is merely
one example of many possible text sequences for potentially
many different emoticons that may be available. Which text
sequences correspond to which emoticons may be user
configurable, including the ability to specify user defined
emoticons.
Id. ¶ 56.
Van Dok also discusses use of “hand-held devices” and network
computing environments and handheld device markup language (HDML)
operating in wireless network environments. Id. ¶¶ 16, 66–69.
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
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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.
4. McCarthy (Ex. 1023)
McCarthy teaches improving upon “prior art messaging systems” such
as “instant messaging” systems by allowing a user to “participate in the chat
while not connected and . . . pick up in a past [messaging] discussion if they
later rejoin the chat.” Ex. 1023, 1:24, 2:12–51, 2:66–3:17, 3:54–4:10.
5. Analysis of Claim 20
Petitioners assert that Van Dok, Sinivaara, Chiu, and McCarthy teach
the limitations of claim 20 and its dependent claims 24–30. Pet. 16–47;
Ex. 1004 ¶¶ 119–263. Petitioners assert that Van Dok’s instant messaging
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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 a skilled artisan and
express teachings of Sinivaara’s wireless Internet access. Pet. 11–13 (citing
Ex. 1007 ¶¶ 3, 5–7, 55, 56, 66–69; Ex. 1004 ¶¶ 99–110). Petitioners also
argue that in implementing the WLAN (wireless local area network) access
of Van Dok and Sinivaara over known wireless networks, a person of skill in
the art would have incorporated Chiu’s automated techniques for
coordinating security key authentication, for access to WLAN (e.g., 802.11)
as disclosed in Sinivaara. Id. at 12 (citing Ex. 1004 ¶¶ 111–114). Further,
Petitioners assert that a skilled artisan would have been motivated to
incorporate McCarthy’s techniques for handling IM conversations when
network connectivity is lost, to “maintain communications in a persistent
and virtual manner” into Van Dok wireless access device. See id. at 15
(citing Ex. 1004 ¶¶ 115–117); Ex. 1023, 3:5–9, 3:64–4:2.
In sum, Petitioners argue that a person of ordinary skill in the art
would have been motivated to use the Van Dok system in combination with
the known wireless and messaging systems of Sinivaara, Chiu, and
McCarthy, such that Van Dok’s “hand-held device is implemented to use a
wireless access point for WLAN Internet access per Sinivaara, to coordinate
authentication for coupling to the WLAN through the access point per Chiu,
and to maintain the display of IM conversation histories when the device
loses network connectivity per McCarthy.” Pet. 16 (citing Ex. 1004 ¶ 118).
Based on the full record, Petitioners present sufficient and persuasive
evidence establishing a rationale to combine the asserted references. See id.
at 10–16; Ex. 1004 ¶¶ 94–118.
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a) Claim 20 Preamble and Limitation 20[A]
Petitioners establish sufficient evidence that the combination of Van
Dok, Sinivaara, Chiu, and McCarthy discloses a “method for managing
wireless network access and instant messaging through a wireless access
point with a handheld instant messaging terminal.” Pet. 16–18; Ex. 1004
¶¶ 119–128. Petitioners rely on the hand-held wireless computer system
embodiment employing Van Dok’s software and the internet access via
access point features of Sinivaara, Chiu, and McCarthy. Id.
Petitioners also assert that Van Dok, Sinivaara, Chiu, and McCarthy
discloses limitation 20[A], “entering textual characters and graphical
symbols with a data entry device of a handheld terminal to form instant
messages for delivery to an instant messaging service.” Pet. 18–22;
Ex. 1004 ¶¶ 128–153; Ex. 1005 ¶¶ 6, 8, 14, 38–41, 45, 56, Figs 2A, 2B, 5A.
Specifically, Petitioners cite the feature of automatic conversion of typed
emoticons into the graphical emoticons. Pet. 18–22; Ex. 1005 ¶¶ 6, 8, 14,
38–41, 45, 56, 69, Figs 2A, 2B, 5A.
Patent Owner contends that Van Dok does not disclose “entering
textual characters and graphical symbols with a data entry device” because
the ’870 patent eliminates the need for users to type text sequences
corresponding to graphical symbols and instead uses emoticon keys or
programmable keys for data entry. PO Resp. 8–9; Ex. 2017 ¶ 48. Patent
Owner argues that “[c]laim 20 expressly requires ‘entering . . . graphical
symbols with a data entry device of a handheld terminal.’” PO Resp. 9
(quoting Ex. 1001, 26:44–46) (second alteration in original). Thus, Patent
Owner avers Van Dok “never discloses entering graphical symbols with a
data entry device” and “only discloses entering textual characters with a data
entry device” where Van Dok’s “software automatically replaces the user-
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entered textual characters.” Id. at 9–10; Ex. 2017 ¶¶ 49–50. Patent Owner
argues that “claim 20 plainly requires that what the user enters—a graphical
symbol—be the same thing that the system displays.” Sur-reply 3. In sum,
Patent Owner’s argument is that claim 20 expressly requires the displayed
graphical symbols be the same graphical symbols that were entered by the
user’s keystrokes. Id. Patent Owner argues that claim 20 was expressly
drafted to “focus on the embodiment in which graphical symbols were
entered via the data entry device (rather than requiring the user to remember
and enter a text string that is converted to a graphical symbol).” Id. at 4.
Patent Owner’s arguments and evidence are not commensurate in
scope with the ordinary meaning of “entering” and its usage in the
Specification. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); Ex. 1001,
19:18–20:14. We agree with Petitioners (Reply 2) that the ’870 patent
describes the Van Dok entering technique in an embodiment, noting that
“emoticons [that] cannot be assigned to the programmable keys . . . can be
entered by depressing the standard key sequence.” Ex. 1001, 20:1–14;
Pet. 19. Furthermore, the ’870 patent describes graphical emoticons that are
entered by depressing key sequences in Tables 2–4. Ex. 1001, Tables 2–4;
Ex. 1058, 67–69 (describing translation of typed text sequence into a graphic
character). We do not agree that with Patent Owner that the “entering”
limitation of claim 20[A] is limited to emoticon keys where the displayed
graphical symbols are the same graphical symbols that were entered by the
user’s keystrokes.
The parties dispute whether claim 20 encompasses or excludes
embodiments in the ’870 patent. See PO Resp. 8–9; Reply 2–3; Sur-reply 4–
6. Petitioners assert that “[a]n interpretation that excludes a disclosed
embodiment is ‘incorrect . . . absent probative evidence to the contrary.’”
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Reply 3 (quoting Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276–77 (Fed. Cir.
2008)). Thus, Petitioners argue that Van Dok discloses the same method
recited in claim 20 and found in the embodiment of the ’870 patent. Id.; see
Ex. 1001, Tables 2–4; Ex. 1058, 67–69. In addition, Petitioners argue that
Patent Owner’s Response ignores this embodiment, arguing instead that
claim 20 is limited to direct entry of graphical emoticons. Reply 3.
We agree with Petitioners that the ’870 patent states the invention
supports “two sets of emoticons,” those “associated with the pre-
programmed . . . or the programmable emoticon keys” and those “entered by
depressing the standard key sequence.” Reply 2–3 (quoting Ex. 1001,
19:18–20:14). Patent Owner’s textual narrow reading requires dedicated
emoticon keys or programmable keys for entering graphical symbols, when
the ’870 patent encompasses converting character entry to generate a
graphical symbol. Ex. 1001, 20:1–14, Tables 2–4; Pet. 19; Ex. 1058, 67–69.
We decline Patent Owner’s arguments to limit the claims to specific
embodiments. See Cont'l Circuits, 915 F.3d at 797–98. We find that
Petitioners have provided persuasive and sufficient evidence that Van Dok
teaches the “entering” limitation of claim 20[A]. See Pet. 18–20; Reply 2–3.
It is improper for a reply to present new evidence that could have been
presented in a prior filing. Patent Trial and Appeal Board Consolidated Trial
Practice Guide November 2019, 73–74 (“2019 Trial Practice Guide”)
(accessible via https://www.uspto.gov/TrialPracticeGuideConsolidated). A
reply (or sur-reply) is not an opportunity to raise new arguments or present
belated evidence that could have been (and should have been) provided
earlier, the Board need not consider such arguments and evidence. Id.
Indeed, we expressly cautioned that arguments not presented by Patent
Owner in its Patent Owner Response would be deemed waived. See, e.g.,
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Paper 11, 8. In the Sur-reply, Patent Owner argues for the first time that
previously cancelled broader claims merely required entering and displaying
graphical symbols or textual characters but did not require the one-to-one
correspondence between entering and displaying that claim 20 requires.
Sur-reply 5; Ex. 1002, 50, 228 (discussing application claim 20 versus
issued claim 20). Patent Owner further argues that this amended claim
language excludes the embodiment where the system displays a graphical
symbol in response to a user’s entered text sequence. Sur-reply 5–6. Patent
Owner’s belated arguments regarding the claim amendment and the scope of
canceled claims are waived as they were raised for the first time in the Sur-
reply. See 2019 Trial Practice Guide, 73–74.
Finally, Patent Owner argues that Van Dok does not disclose a device
integrated into the housing of a handheld terminal as required in claim
limitation 20[A]. PO Resp. 1–4. As discussed above for construction of the
“data entry device,” we do not find that Van Dok is required to disclose “a
data entry device integrated into the housing of a handheld terminal.” Id. at
10–11. We agree with Petitioners, however, that Van Dok’s terminal shows
a data entry (keyboard) device. Pet. 20; PO Resp. 9–11; 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. 11–12), Petitioners provide sufficient
evidence that Van Dok discloses a hand-held device embodiment with data
input capability (Ex. 1005 ¶ 69). Reply 6–7. 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 a handheld terminal. PO Resp. 10–12 (arguing that
Van Dok teaches external keyboards based on an embodiment).
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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; Ex. 1058, 46; Reply 3.
b) Limitations 20[B], 20[C], 20[D], and 20[E]
Petitioners provide persuasive and sufficient evidence and argument
to show that Van Dok, Sinivaara, Chiu, and McCarthy teach “displaying the
entered textual characters and graphical symbols” limitations. Pet. 23–24;
Ex. 1004 ¶¶ 155; Ex. 1005 ¶¶ 56, 69, 72, Fig. 5A. Similarly, Petitioners
provide sufficient evidence and argument that Van Dok, Sinivaara, Chiu,
and McCarthy teach the “communicating instant messages with a wireless,
Internet protocol access point” recited in limitation [20[C]], “coordinating
authentication” recited in limitation 20[D], and implementing instant
messaging and session protocols recited in limitation 20[E]. Pet. 24–33;
Ex. 1004 ¶¶ 157–214.
Petitioners assert that the real time exchange of messaging in Van
Dok, with the known wireless internet protocols via wireless access point
disclosed in Sinivaara and conventional instant messaging over the Internet,
teach the limitations of 20[C]. Pet. 24–28. Further, Petitioners argue that
Chiu’s techniques for coordinating authentication in a WLAN and the
known instant messaging protocols as improved by Van Dok teach the
limitations of claim 20[D] and 20[E]. Id. at 28–33; Ex. 1004 ¶¶ 229–237.
Petitioners also provide persuasive rationales and reasoning to combine the
teachings of Van Dok, Sinivaara, Chiu, and McCarthy.
Patent Owner does not address Petitioners’ arguments or evidence
concerning these limitations. See PO Resp. 7–23. We find Petitioners’
arguments and evidence persuasive.
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c) Limitation 20[F]
Claim limitation 20[F] recites displaying conversation histories for
active conversations terminated by a loss of a network connection.
Petitioners argue that an ordinarily skilled artisan would have understood
that Van Dok teaches a user interface with conversation history (Ex. 1005
¶ 40) and McCarthy teaches similar conversation history for IMs (Ex. 1023,
2:12–30, 5:53–65, 8:51–62, 10:38–41, 14:56–58, Fig. 1). Pet. 33–34;
Ex. 1004 ¶¶ 215–228. Petitioners rely on McCarthy’s techniques for
continuing to display the above active conversations’ histories when the
user’s participation is temporarily terminated by loss of the device’s network
connection. Pet. 36–37; Ex. 1004 ¶¶ 224–225; Ex. 1023, 8:51–62, 9:56–
10:19, Figs. 1G, 1K.
Patent Owner argues that McCarthy’s interaction with threads
addresses a “socket” connection between thread clients and network
connections and not the local network connection. PO Resp. 13–14;
Ex. 2017 ¶¶ 77–78. Thus, Patent Owner asserts, a skilled artisan “would
have understood that the connection between thread clients and/or a thread
server referred to a socket connection rather than the network connection of
any particular thread client.” PO Resp. 14–15; Ex. 2017 ¶ 79. Patent Owner
argues that the scenarios in McCarthy that Petitioners rely on do not relate to
a lost network connection at all, but instead refer to a lost or cancelled thread
connection moving from active to passive. PO Resp. 15–16; Ex. 2017 ¶ 80.
As a result, Patent Owner argues that McCarthy does not teach that a thread
client will display conversation histories due to a loss of network connection
and that Figure 1K in McCarthy applies only when a user chooses to go into
passive status. PO Resp. 17–18; Ex. 2017 ¶ 84. Thus, Figure 1K cited by
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Petitioners does not apply when a user loses a network connection.
PO Resp. 19–20.
We are not persuaded by Patent Owner’s arguments regarding
McCarthy. McCarthy does not discuss socket connections, but instead
expressly discusses network connections, broadly referring to “problems
when using a device with intermittent connectivity (e.g., portable computing
devices, such as cellular telephones, PDAs, WI-FI enabled laptops, etc.),”
which are described as network connectivity. Ex. 1023, 2:21–30, 14:55–58;
Pet. 9–10; Reply 7–8; Ex. 1058, 108 (discussing network and socket
connections).
We also agree with Petitioners, “McCarthy also specifically teaches
that the ‘status information 107’—indicating whether current status is
‘active’ (Fig. 1C) or ‘passive’ (Fig. 1K)—can reflect ‘current network
connection status.’” Reply 7–8 (citing Ex. 1023, 6:52–58, 5:1–10; Pet. 10).
We find that McCarthy, teaches that passive status may occur from a lost
connection to other computing devices. Id. at 8; Ex. 1023, 5:1–10 (noting
connection to thread clients via network connection), 6:52–58 (noting status
information includes network status), 8:51–9:34, 13:34–40 (teaching
connection with network is closed without closing thread); see also Pet. 9–
10 (discussing McCarthy during passive status).
We are not persuaded by Patent Owner’s arguments that a person of
ordinary skill in the art would have understood the passive mode in
McCarthy would not apply to a lost network connection or that such a loss in
connection would not be known to the user. PO Resp. 19–20. Instead,
McCarthy teaches that passive interaction status may arise due to a change
in change in connection status for the thread client when such a loss of
network connection occurs. Ex. 1023, 9:15–21; Pet. 37; Reply 8. On the
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full record, we find that Petitioners provided persuasive evidence and
argument that a McCarthy teaches that such connections included loss of
network connection. Pet. 9–10, 36; Reply 8–9; Ex. 1004 ¶¶ 88–89, 215–228;
Ex. 1023, 5:1–10, 6:52–58, 9:15–30, Figs. 1K.
Accordingly, Petitioners present persuasive and sufficient evidence
and argument that Van Dok, Sinivaara, and Chiu in combination with
McCarthy teach display of active conversation history during a loss of
network connection as required in claim 20[F]. Pet. 33–39.
d) Limitation 20[G]
Petitioners assert that Van Dok, Sinivaara, Chiu, and McCarthy teach
“automatically searching for wireless, Internet protocol network beacons
after the conversation histories are displayed” as recited in claim 20[G].
Pet. 39–42; Ex. 1004 ¶¶ 229–237. Petitioners argue that the known
techniques of Sinivaara as supported by corroborating evidence regarding
the knowledge in the art, would have led a skilled artisan to implement
automatically searching for WLAN beacons to select the best received signal
strength indicator (RSSI) after a lost network connection. Pet. 39–42;
Ex. 1004 ¶¶ 229–237; Ex. 1023, 10:50–11:5, 11:51–62, 13:34–44; Ex. 1007
¶¶ 4, 5. Petitioners further argue that McCarthy teaches reestablishing a
network connection due to network connection loss. Pet. 39; Ex. 1023,
10:50–11:5, 11:51–62, 13:34–44. Petitioners rely on Sinivaara as teaching
typical current implementation of wireless Internet access automatically
searched for WLAN beacons to establish a network connection. Pet. 41
(citing Ex. 1004 ¶¶ 231–232 (citing corroborating references)). Petitioners
provide articulated rationales and reasoning to support the implementation of
Van Dok, Sinivaara, Chiu, and McCarthy to automatically search for
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beacons and access point for wireless Internet access. Id. at 41–42; Ex. 1004
¶¶ 233–234.
We are not persuaded by Patent Owner’s arguments (PO Resp. 21–22)
which argue the references separately. Bradium Techs. v. Iancu, 923 F.3d
1032, 1050 (Fed. Cir. 2019) (obviousness combination cannot be overcome
by attacking references individually). Patent Owner addresses the teachings
of Sinivaara separately (PO Resp. 22–23) and not the combination of
Sinivaara and McCarthy presented in the Petition. See Pet. 39–42.
Furthermore, Patent Owner’s arguments regarding modification of Sinivaara
are unavailing, as Petitioners’ persuasively assert that the combination uses
Sinivaara’s standard techniques for connecting to a network in the situation
where McCarthy teaches to do so after conversation histories are displayed
to teach the claim 20[G] limitations. Id.
Based on the foregoing, Petitioners present persuasive and sufficient
evidence and argument that Van Dok, Sinivaara, Chiu, and McCarthy teach
limitation 20[G].
6. Analysis of Claims 24–30
Claims 24–30 depend from claim 20. Petitioners establish sufficient
argument and evidence that Van Dok, Sinivaara, Chiu, and McCarthy teach
dependent claims 24–30. Pet. 43–47; Ex. 1004 ¶¶ 239–263. Petitioners
present sufficient evidence mapping the conversation session control
limitations via an instant messaging service of claims 24–30 to the teachings
of Van Dok, Sinivaara, Chiu, and McCarthy. Pet. 43–47; Ex. 1004 ¶¶ 239–
263. Patent Owner does not raise any arguments specific to claims 24–30.
See generally PO Resp. 23. Having reviewed the full record, we find that
Petitioners have provided persuasive argument and evidence that Van Dok,
Sinivaara, Chiu, and McCarthy teach dependent claims 24–30.
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7. 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 20 is entitled to a presumption of
nexus to the products that embody the patent claim and received wide-spread
industry praise. PO Resp. 41–44. Specifically, Patent Owner argues that
“claim 20 reads on the Zippy and Z2 devices. Ex. 2018 ¶ 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 and support
its contentions of nonobviousness. PO Resp. 41–44.
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Petitioners argue that Patent Owner failed to establish sufficient
evidence in the Petition that claim 20 reads on the allegedly acclaimed
products and fails to support the coextensive inquiry beyond a single
conclusory sentence. Reply 21–22.
a) Objective Indicia of Nonobviousness Law
“Evidence that the industry praised a claimed invention or a product
that embodies the patent claims weighs against an assertion that the same
claim would have been obvious.” Lectrosonics, Inc. v. Zaxcon, Inc.,
IPR2018-01129, Paper 33 at 68 (PTAB Jan. 24, 2020) (citing WBIP, LLC v.
Kohler Co., 829 F.3d 1317, 1334 (Fed. Cir. 2016)). Objective evidence of
non-obviousness “may often be the most probative and cogent evidence in
the record” and “may often establish that an invention appearing to have
been obvious in light of the prior art was not.” Transocean Offshore
Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc., 699 F.3d 1340, 1349
(Fed. Cir. 2012). Thus, notwithstanding what the teachings of the prior art
would have suggested to one skilled in the art, secondary considerations
(objective evidence of nonobviousness) may lead to a conclusion that the
challenged claims would not have been obvious. In re Piasecki, 745 F.2d
1468, 1471–72 (Fed. Cir. 1984).
In order to accord substantial weight to secondary considerations in an
obviousness analysis, “the evidence of secondary considerations must have a
‘nexus’ to the claims, i.e., there must be ‘a legally and factually sufficient
connection’ between the evidence and the patented invention.” Henny
Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1332 (Fed. Cir. 2019)
(quoting Demaco Corp. v. F. Von Lang-sdorff Licensing Ltd., 851 F.2d
1387, 1392 (Fed. Cir. 1988)). Although the patent owner bears the initial
burden of proving a nexus (WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
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1339, 1359 (Fed. Cir. 1999)), a presumption of nexus may be appropriate if
the patent owner shows “the asserted objective evidence is tied to a specific
product and that product ‘embodies the claimed features, and is coextensive
with them.’” Polaris Indus, Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072
(Fed. Cir. 2018) (quoting Brown & Williamson Tobacco Corp. v. Philip
Morris Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000) (emphasis added)). On
the other hand, “[w]hen the [product] is not coextensive with the patented
invention—for example, if the patented invention is only a component of a
commercially successful machine or process,” the patent owner is not
entitled to a presumption of nexus. Demaco, 851 F.2d at 1392.
A patent owner may establish nexus, either through (1) the use of a
rebuttable presumption that arises when certain conditions are met, or (2) a
direct showing of nexus. In the first, a patent owner may rely on a rebuttable
presumption of nexus as follows:
As first recognized in Demaco . . . , a patentee is entitled
to a rebuttable presumption of nexus between the asserted
evidence of secondary considerations and a patent claim if the
patentee shows that the asserted evidence is tied to a specific
product and that the product “is the invention disclosed and
claimed.” 851 F.2d at 1392 (emphasis added). That is,
presuming nexus is appropriate “when the patentee shows that
the asserted objective evidence is tied to a specific product and
that product ‘embodies the claimed features, and is coextensive
with them.’” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d
1056, 1072 (Fed. Cir. 2018) (quoting Brown & Williamson
Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1130 (Fed.
Cir. 2000)). . . .
. . . Whether a product is coextensive with the patented
invention, and therefore whether a presumption of nexus is
appropriate in a given case, is a question of fact.
Fox Factory, 944 F.3d at 1373 (Fed. Cir. 2019).
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With respect to a presumption of nexus, the court in Fox Factory
further explained 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 (quoting
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)). 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 1376–77.
“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
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showing that the evidence of secondary considerations is the ‘direct result of
the unique characteristics of the claimed invention.’” Id. at 1373−74
(quoting In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)) (emphasis
added). “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 20 reads on the Zippy and Z2
devices” and cites the declaration of Mr. Heredia, one of the named
inventors of the patents at issue in this proceeding and the related 1568 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 22–23. Patent Owner asserts that because claim 20 reads on
Zipit’s devices they “embody” the claimed features. PO Resp. 44 (citing
Fox Factory, 944 F.3d at 1373). Without further explanation or argument,
Patent Owner summarily concludes that “the claimed features [] are
‘coextensive with [Zipit’s Zippy and Z2 devices].’” Id.; Ex. 2018 ¶ 7.
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Petitioners assert that Patent Owner is not entitled to a presumption of
nexus for two reasons: (1) Patent Owner’s single conclusory sentence and
citation to the Heredia Declaration is improper incorporation by reference
and fails to establish that Zipit’s products practiced all limitations of
claim 20; and (2) Patent Owner fails to support its bare allegation that the
products are coextensive with the claim. Reply 21–22; 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 ’870 patent. PO Resp. 44. We
acknowledge the claim chart in the Heredia Declaration (Ex. 2018 ¶ 7), but
consider this improper 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 104 (PTAB Feb. 18, 2020)
(finding reference to claim charts in declaration to support secondary
consideration was improper incorporation). Patent Owner provides no
argument or analysis other than the bare citation to Mr. Heredia’s
Declaration. PO Resp. 44. We consider this argument waived.
Even fully considering Patent Owner’s Heredia Declaration, however,
we agree with Petitioners that Patent Owner’s arguments also fail to address
coextensiveness of the claims. Reply 22–23; PO Resp. 43–44. The missing
coextensiveness analysis is especially important here, where Patent Owner
asserts that claim 20 in the ’870 patent and claim 11 in the ’837 patent in the
1568 IPR both are embodied in Zipit’s devices. See Sur-reply 25 (stating
that facts show that the claims of both the ’870 and ’837 patents cover the
same invention and product); see also Fox Factory, 944 F.3d at 1377–1378
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(discussing when a product embodies claims from two different patents). 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
[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 20 with the Zipit devices (or claim 11 from the
1568 IPR) beyond the conclusory statement that the products embody the
claims. 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, 1377;
Demaco, 851 F.2d at 1392. We are left to divine the degree and scope of
coextensiveness from the briefs and Mr. Heredia’s claim chart. Patent
Owner’s conclusory statement fails to meet its burden of establishing that
the Zipit products are coextensive 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
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product and in this case the independent patent claims of the ’837 patent
(claim 11) and ’870 patent (claim 20).3
Based on the forgoing, we determine that Patent Owner has not
established a presumption of nexus between claim 20 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 In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)).
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

3 Petitioners also argue that Zipit’s products are not coextensive with claim
20 and claim 11 because a product cannot be coextensive with two different
patents unless those patents claim the same invention. Reply 23 (citing FOX
Factory, 944 F.3d at 1377–78). Petitioners argue that Patent Owner’s briefs
and exhibits in the present case and in the inter partes review for the ’837
patent both assert that the limitations of the representative claims are
material to patentability. Id. at 23 (citing PO Resp. 13–23; Ex. 1002, 281;
Ex. 2052, 29 (’837 file history)). Although we agree with Patent Owner that
Fox Factory does not categorically hold that the same evidence or product
cannot be used to demonstrate nonobviousness of two claims from multiple
patents (Fox Factory, 944 F.3d at 1377–78), 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
24–25.
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WBIP, 829 F.3d at 1331–1332). To support its analysis of the claims as a
whole, 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 (citing Ex. 1002, 26). Indeed, Patent Owner argues that
during prosecution of the claims were allowed over cited prior art [Rucinski]
disclosing a competing product that did not perform all operation “within a
handheld terminal. Id. at 50. 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. PO Resp. 48–49;
Ex. 2052, 10–11, 28–29. In sum, Patent Owner contends 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. 48 (citing Ex. 1002, 846).
Turning to the industry praise, Patent Owner provides 35 exhibits
showing industry awards and praise about Zipit’s instant messaging devices
and their performance. PO Resp. 52–67. Patent Owner notes that some of
the industry praise even lauded Zipit’s devices over the Rucinski device
disclosed in the prior art that Patent Owner distinguished to get claim 20
allowed. Id. at 67–68 (citing Ex. 1002, 246; Ex. 2052, 28–29; Ex. 2002
(Chicago Tribune); Ex. 2023 (HeraldToday.com)).
Petitioners argue that claim 20 of the ’870 patent includes material
limitations, namely 20[F] and 20[G] that are not mentioned in the industry
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praise that Patent Owner submits. Reply 24. These network performance
limitations were added to the pending claims to gain allowance of the issued
claim, but appear nowhere in the industry praise. Id.; see PO Resp. 13–23
(arguing limitations 20[F] and 20[G]); Ex. 1002, 281 (arguing same during
prosecution). In addition, Petitioners note that Patent Owner points to no
praise of the graphical symbols being limited to graphical emoticons, which
are also material limitations of claim 20. Reply 24 (citing PO Resp. 1, 7–10,
28–32). Accordingly, Petitioners argue the lack of praise for material
limitations of claim 20 shows that the praise does not address claim 20 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.” Reply 27 (citing
Ex. 1060 ¶ 55). In support of its contention, Petitioners provide a chart
showing numerous unclaimed features praised in the 17 exhibits. Id. at 25–
26. Petitioners assert that the cited industry praise related significantly to
unclaimed features, such as price and fees, the music player capability, or
the color screen of the Zipit products. Id. at 26–28 (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. 52. 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) (alterations in
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original). 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; Ex. 2002.
Although the praise Patent Owner cites is noteworthy, the praise
Patent Owner cites also shows that the Zipit products “did a lot more than
just instant messaging” that also formed the basis of the industry praise. See
Ex. 1059, 88:4–16; Reply 23. 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 that the praise is attributable to
those claimed features. Indeed, Patent Owner’s own evidence supports that
industry praise was not for claim 20 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
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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. 56–57 (alterations in original). In this instance, the size,
portability, costs, and service are described as part of the New York Times’s
praise of the Zipit product. Ex. 2003. Such evidence alone does not
persuasively show that either claim 20 as a whole or the particular
limitations of claim 20[F] and 20[G] are praised.
Petitioners further argue that Patent Owner’s industry praised features
were already in the prior art. Reply 27 (citing Therasense 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 that Patent Owner
overcame by adding unpraised limitation 20[F] and 20[G] to distinguish.
Reply 27–28; Ex. 1002, 277, 281.
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 24 (citing Fox
Factory, 944 F.3d at 1375, 1376, and 1378). We disagree. It remains Patent
Owner’s burden “to prove [a] nexus by showing that the evidence of
secondary considerations is the ‘direct result of the unique characteristics of
the claimed invention.’” Fox Factory, 944 F.3d at 1373−74 (quoting In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)) (emphasis added).
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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 25–
27. Furthermore, even considering Mr. Heredia Declaration’s claim chart
asserting that claim 20 of the ’870 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. 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. Id. at 26–27
(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 20 reads on Zipit’s
devices that received industry praise (Sur-reply 25–26) 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
persuasively established a nexus showing that the industry praise of Zipit’s
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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.
8. 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 20 and 24–30 are unpatentable
under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Chiu, and
McCarthy.
D. Obviousness of Claim 21 over Van Dok, Sinivaara, Chiu, McCarthy,
Tracy – Ground 2; and Claim 21 over Van Dok, Sinivaara, Chiu,
McCarthy, Saric– Ground 3
Claim 21 depends from claim 20 and recites that “the conversation
session control” (limitation 20[E]) comprises “identifying a key on the data
entry device with a graphical symbol that is generated by depressing the
key.” Petitioners assert that claim 21 would have been unpatentable under
35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Chiu, McCarthy,
Tracy. Pet. 48–49; Ex. 1004 ¶¶ 265–271.
Tracy (Ex. 1012) teaches an adaptable keyboard that uses active ink to
cause a character or symbol on a button to be changed to form the desired
image. Ex. 1012, code (57). Tracy teaches that “[i]t would be of substantial
benefit” if a function key “could adapt, and change [its] appearance” to
“display the appropriate character[] or symbol[]” for the function it is
currently assigned to perform. Id. ¶ 5. Tracy teaches that this adaptable key
could be used in “portable electronic devices.” Id. ¶¶ 3, 5.
Petitioners argue (Pet. 49) that an ordinarily skilled artisan would
have understood Van Dok’s teaching allows a user to “assign . . . a specific
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keystroke value” to a desired “personalized emoticon” for use in “realtime
conversation” using a single keystroke. Ex. 1005 ¶ 63; Ex. 1004 ¶ 265
(discussing single key stroke). Petitioners assert that Van Dok’s key
assignment in combination with Tracy’s teaching of ways to adapt a key in
portable electronic devices would have motivated a skilled artisan to include
adaptable keys in Van Dok’s keyboard. Pet. 49; Ex. 1004 ¶ 269. Thus, the
resulting Van Dok, Sinivaara, Chiu, McCarthy, and Tracy combination
would display a symbol on an adaptable key on the data entry device of
claim 20. Pet. 49; Ex. 1004 ¶ 271.
Similarly, Petitioners also assert that Van Dok, Sinivaara, Chiu,
McCarthy, and Saric teach a similar combination. Pet. 49–52; Ex. 1004
¶¶ 273–286. Saric discloses 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). Thus, Saric “eliminates
lengthy series of characters [to type emoticons] and replaces them with one
keystroke.” Id. at 5. Saric teaches that the keys “reside on a PDA” or other
“handheld device[],” and “may be labeled.” Id. at 6, 9 (discussing PDA
keyboard with “keys” programmed to create corresponding graphical
representation of the emoticon on the screen).
Petitioners argue that a skilled artisan would have been motivated by
Saric’s teachings to include one or more dedicated “emoticon” keys on Van
Dok’s keyboard, which also teaches assigning personalized emoticon keys.
Pet. 51–52; Ex. 1004 ¶ 285.
We are not persuaded by Patent Owner’s contentions with respect to
claim 21 for Tracy (PO Resp. 24–25) or Saric (id. at 26–28). With respect to
Tracy, Patent Owner argues that there is no motivation to implement Tracy’s
teachings in Van Dok because Van Dok already assigns emoticons to key
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strokes and automatically replaces them. Id. at 24; Ex. 2017 ¶ 99. We
disagree as Van Dok expressly includes functionality for assigning a
graphical symbol to a keystroke. Ex. 1005 ¶ 63. We credit Petitioners’
argument and evidence that applying Tracy would introduce displays on the
assigned keys contemplated in Van Dok. Reply 12; Pet. 49; Ex. 1004 ¶ 269.
In addition, Patent Owner’s argument that Tracy’s teachings would have
been prohibitively expensive or suboptimal design choices are not availing
as the test for obviousness is not the expense of the design or cost
effectiveness of its production. See Grit Energy Sols., LLC v. Oren Techs.,
LLC, 957 F.3d 1309, 1323 (Fed. Cir. 2020) (noting that business or
economic reasons are not determinative of nonobviousness).
With respect to the Saric combination, Patent Owner argues that a
person of ordinary skill in the art would not have been motivated to include
Saric’s labeled emoticon key in the Van Dok device which does not include
emoticon keys, as it would abandon Van Dok’s automatic emoticon
replacement. PO Resp. 26–27. We disagree. Van Dok discusses assigning
key strokes to a specific emoticon and automatic replacement being used
together and not as mutually exclusive options. Ex. 1005 ¶ 64; Pet. 51.
Petitioners’ evidence shows that Saric’s teachings complement Van Dok’s
disclosure. Pet. 51. Furthermore, Patent Owner’s arguments regarding
multiple messaging services not being supported by the combination of Van
Dok and Saric is not commensurate in scope with claim 21, which does not
address multiple messaging systems. See Reply 14. Finally, Patent Owner’s
arguments regarding cost and physical space on the Van Dok device fail to
persuade us that a skilled artisan would be dissuaded from the combination
of Saric and Van Dok, as commercial costs do not refute the obviousness of
design alternatives. See Grit Energy, 957 F.3d at 1323. In addition, design
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tradeoffs are within the scope and knowledge of a person of ordinary skill in
the art. Ex. 1058, 77–82; Ex. 1060 ¶ 34.
a) Summary for Grounds 2 and 3
Having reviewed the full record and Patent Owner’s evidence of
nonobviousness (see Section II.C.7), we determine that Petitioners have
shown by a preponderance of the evidence that claim 21 is unpatentable
under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Chiu,
McCarthy, and Tracy (Ground 2) and Van Dok, Sinivaara, Chiu, McCarthy,
and Saric (Ground 3).
E. Obviousness Claims 20, 21, and 24–30 over Zaner, Sinivaara, Chiu,
and McCarthy – Ground 4
Petitioners assert that claims 20, 21, and 24–30 are unpatentable under
35 U.S.C. § 103 as obvious over Zaner, Sinivaara, Chiu, and McCarthy.
Pet. 52–73; Ex. 1004 ¶¶ 288–368. To support their contentions, Petitioners
provide evidence and argument detailing how the prior art discloses each
claim limitation. Pet. 52–73; Ex. 1004 ¶¶ 288–368. 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,
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below, shows a display screen of a group space application showing
activities and functionalities. Id. ¶ 22.

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. Ex. 1006 ¶ 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. Analysis of Claim 20
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 the Van Dok. Pet. 53; Ex. 1004 ¶ 304. Further, Petitioners
contend that
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a [person of ordinary skill in the art] would have been motivated
to implement Zaner’s device to manage its wireless Internet
access via a WLAN wireless access point using the techniques
Sinivaara describes, to incorporate Chiu’s automated techniques
for coordinating security key authentication, and to incorporate
McCarthy’s techniques for handling IM conversations through
network connectivity loss.
Pet. 53; Ex. 1004 ¶ 304. On the present record, we find Petitioners’
arguments and evidence sufficient to establish the rationale to combine
Zaner, Sinivaara, Chiu, and McCarthy.
a) Claim Limitations 20[A]–20[G]
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 ¶ 306. 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
¶ 307.
Pet. 54. Petitioners assert that Zaner discloses implementing its IM software
on “hand-held devices” like “mobile phones” and “PDAs,” which a person
of ordinary skill in the art would have understood to be a type of “handheld
instant messaging terminal.” Ex 1006 ¶¶ 26, 27, 35.
Petitioners provide evidence and argument mapping the limitations of
Zaner in view of Sinivaara, Chiu, and McCarthy to the limitations 20[A]–
20[G]. Pet. 55–69; Ex. 1004 ¶¶ 307–357. With respect to claim 21,
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
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display screen to insert an emoticon into an instant message. Pet. 70–71;
Ex. 1004 ¶¶ 358–361. Petitioners further map the limitations of Zaner in
view of Sinivaara, Chiu, and McCarthy to the conversation session control
of claims 24–30. Pet. 72–73; Ex. 1004 ¶¶ 362–368.
Patent Owner does not make separate arguments for claim limitations
20[B] to 20[E]. PO Resp. 28–40. Having reviewed the full record, we find
that Petitioners have provided persuasive and sufficient evidence that Zaner
in view of Sinivaara, Chiu, and McCarthy teaches claim limitations 20[B] to
20[E]. We address Patent Owner’s contentions regarding limitations 20[A],
20[G], and 20[F], below.
(1) Limitation 20[A]
Patent Owner argues that the combination of Zaner in view of
Sinivaara, Chiu, and McCarthy does not disclose “entering . . . a graphical
symbol” as recited in claim limitation 20[A] because Zaner teaches
emoticon control 1007 that is manipulated to show a drop-down list of
emoticons for selection. PO Resp. 28–29; Ex. 2017 ¶ 62. In sum, Patent
Owner contends that the graphical symbol shown on Figure 10 of Zaner
(item 1007) may refer to graphical emoticons or to textual emoticons, and
Zaner does not distinguish which applies. PO Resp. 29.
Petitioners reply that Patent Owner ignores the explicit depiction of
Figure 10, showing a graphical emoticon, and the context of Zaner which
discusses emoticons as “icon[s] that convey[] emotion” that are depicted as
smiley faces () in Figure 10. Ex. 1006 ¶ 70; Pet. 57–58; Ex. 1060 ¶¶ 36–
38. Although an emoticon standing alone may be textual or graphical (see
Ex. 1005 ¶ 14; Blackberry IPR at 18), we find on the full record that
Petitioners’ evidence and argument show that a person of ordinary skill in
the art would have understood “Zaner’s drop-down list of insertable
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emoticons activated by the control labeled ‘☺’ [Ex. 1006 ¶ 7, Fig. 10 (item
1007)] includes the ‘☺’ as one of the selectable emoticons.” Reply 17. 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. 58, Reply 17; Ex. 1060 ¶ 39.
Patent Owner also argues that Zaner does not teach a handheld device
integrated into the housing of a handheld terminal. PO Resp. 32. 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
handheld devices, mobile phones, or other devices is insufficient. Id. at 32–
33; 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. 52–53, 55. Further, Zaner describes the system
includes a keyboard or input device to enter commands and information into
the Zaner interface. Ex. 1006 ¶¶ 27, 30, 39. We find Petitioners’ arguments
and evidence persuasive regarding the handheld terminal and data entry
device disclosed in Zaner and the knowledge and skill of a person of
ordinary skill in the art. Pet. 55–59.
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. 35. To the contrary, Zaner
contemplates the system including a keyboard or input device to enter
commands and information including messages with emoticons. Pet. 55–59;
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Ex. 1006 ¶¶ 27, 30, 39. Patent Owner’s arguments and evidence do not
demonstrate that the modifications expressly contemplated by Zaner were
beyond the level of skill in the art at the time of patenting.
(2) Limitation 20[F] and 20[G]
With respect to 20[F] and 20[G], Patent Owner relies on the same
arguments addressed with respect to the Van Dok grounds above. PO Resp.
36. For the reasons discussed above, Petitioners present persuasive and
sufficient evidence and argument that Van Dok, Sinivaara, Chiu, and
McCarthy teach limitation 20[F] and 20[G].
(3) Summary for Claim 20
Having reviewed the full record with respect to Zaner, Sinivaara,
Chiu, and McCarthy (Ground 4), we determine that Petitioners have shown
that the asserted prior art combinations teach the limitations of claim 20.
3. Claim 21
With respect to claim 21, Petitioners ague that Zaner’s user interface
includes an “emoticon control 1007 [that] is manipulated by the user to
insert a selected emoticon.” Ex. 1006 ¶ 70; Ex. 1004 ¶ 358. Petitioners
assert that a person of ordinary skill in the art would have understood that in
Zaner’s handheld computing device embodiment (Ex. 1006 ¶¶ 27, 35), “it
was well-known to provide a touchscreen as a data entry device of the
handheld terminal, for example to decrease the need for peripheral devices
and/or to increase the amount of real estate on the device that can be shared
by the screen.” Pet. 70; Ex. 1004 ¶ 359 (citing Ex. 1022 ¶¶ 2–3 (Collins)
(corroborating use of touch-sensitive display with images of keys to perform
functions)).
Patent Owner argues it would not have been obvious as Petitioners
ignore technical challenges and fails to show how Zaner would integrate
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touch screen and a keyboard into its device. PO Resp. 39–40; Ex. 2017
¶¶ 68–69. We are not persuaded by Patent Owner’s contentions. We credit
Petitioners’ testimony and argument establishing that touchscreen or
pointing device and a keyboard for data entry were known. Pet. 70–71;
Ex. 1004 ¶¶ 358–361; Ex. 1022 ¶¶ 2–3. 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. Id. at 38–39. 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. 37 (noting that the corroborating reference,
Collins, includes a touchscreen for navigating menus).
Having reviewed the full record with respect to Zaner, Sinivaara,
Chiu, and McCarthy, we determine that Petitioners have shown that the
asserted prior art combinations teach the limitations of claim 21.
4. Claim 24–30
Claims 24–30 depend from claim 20. Patent Owner does not make
separate arguments for claims 24–30. PO Resp. 37–40. Having reviewed
the full record, Petitioners establish sufficient argument and evidence that
Zaner, Sinivaara, Chiu, and McCarthy teach the limitations of dependent
claims 24–30. Pet. 72–73; Ex. 1004 ¶¶ 362–368.
5. Summary for Ground 4
Having reviewed the full record and Patent Owner’s evidence of
nonobviousness (see Section II.C.7), we determine Petitioners have shown
by a preponderance of the evidence that claims 20, 21, and 24–30 are
unpatentable under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara,
Chiu, and McCarthy.
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F. Obviousness of Claim 21 over Zaner, Sinivaara, Chiu, McCarthy,
Saric – Ground 5
Petitioners also assert that claim 21 would have been unpatentable
under 35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, Chiu, McCarthy,
and Saric. Pet. 73–74; Ex. 1004 ¶¶ 369–372. Petitioners argue that a person
of ordinary skill in the art would have been motivated to incorporate Saric’s
special keys or buttons into Zaner’s system to achieve speed and efficiency
in instant messaging. Pet. 74; Ex. 1004 ¶ 369. Specifically, a skilled artisan
would have been motivated by Saric’s teachings to include dedicated
“emoticon” keys on Zaner’s keyboard with a label denoting the emoticon
that will be displayed upon and entered. Pet. 74; Ex. 1009, 9–10; Ex. 1004
¶ 371.
Patent Owner argues that there is not sufficient motivation to modify
Zaner’s keyboard nor would it yield success as it would make Zaner’s
emotion control superfluous. PO Resp. 40–41. We disagree with Patent
Owner’s contentions, as Petitioners do not propose replacing all Zaner
emoticon entry, but rely on Saric’s teachings to motivate special keys for
one or more emoticons. Pet. 74; Reply 20. Finally Patent Owner’s
arguments regarding expectation of success are based on limitations that are
not required in claim 21, namely support for multiple instant messaging
service emoticons. Failure to support graphical emoticons for multiple
instant messaging services is not a technical problem presented by claim 21.
1. Summary for Ground 5
Having reviewed the full record and Patent Owner’s evidence of
nonobviousness (see Section II.C.7), we determine Petitioners have shown
by a preponderance of the evidence that Zaner, Sinivaara, Chiu, McCarthy,
and Saric teach the limitations of claim 21.
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III. PETITIONERS’ MOTION TO EXCLUDE
Petitioners move to exclude Exhibits 2004–2007, 2011–2014, 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)
that cite or rely upon the Challenged Exhibit (secondary consideration
evidence). Id. Petitioners challenged “Exhibit 2017, ¶ 94, third sentence
(relying on Exhibits 2011–2013), Exhibit 2017, ¶ 95, first and second
sentences (relying on Exhibit 2014), and Exhibit 2017, ¶ 68, fifth and sixth
sentences (relying on Exhibit 2055).” 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 33, 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, IPR2016-01876, Paper 59 at 63 (PTAB Apr. 2,
2018) (quoting same). We agree with Patent Owner (PO Opp. 1) that
“[a]uthenticity is, therefore, not an especially high hurdle for a party to
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overcome.” Fox Factory, IPR2016-01876, 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 (1) claims 20 and 24–30 are unpatentable under 35 U.S.C.
§ 103(a) as obvious over Van Dok, Sinivaara, Chiu, and McCarthy;
(2) claim 21 is unpatentable under 35 U.S.C. § 103(a) as obvious over Van
Dok, Sinivaara, Chiu, McCarthy, and Tracy; (3) claim 21 is unpatentable
under 35 U.S.C. § 103(a) as obvious over Van Dok, Sinivaara, Chiu,
McCarthy, and Saric; (4) claims 20, 21, and 24–30 are unpatentable under
35 U.S.C. § 103(a) as obvious over Zaner, Sinivaara, Chiu, and McCarthy;
and (5) claim 21 is unpatentable under 35 U.S.C. § 103(a) as obvious over
Zaner, Sinivaara, Chiu, McCarthy, and Saric. We deny Petitioners’ Motion
to Exclude.

4 See also United States v. Ceballos, 789 F.3d 607, 617–18 (5th Cir. 2015)
(noting “low” burden for authentication); United States v. Isiwele, 635 F.3d
196, 200 (5th Cir. 2011) (noting flaws in authentication go to weight, not
admissibility).
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The table below summarizes our conclusions:
Claim(s) 35 U.S.C. §
Reference(s)/
Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
20, 24–30 103(a) Van Dok,
Sinivaara, Chiu,
McCarthy
20, 24–30
21 103(a) Van Dok,
Sinivaara, Chiu,
McCarthy, Tracy
21
21 103(a) Van Dok,
Sinivaara, Chiu,
McCarthy, Saric
21
20, 21, 24–
30
103(a) Zaner, Sinivaara,
Chiu, McCarthy
20, 21, 24–30
21 103(a) Zaner, Sinivaara,
Chiu, McCarthy,
Saric
21
Overall
Outcome
20, 21, 24–30

V. ORDER
Accordingly, it is:
ORDERED that claims 20, 21, and 24–30 of the ’870 patent are
determined to be unpatentable; and
Petitioners’ Motion to Exclude is denied; and
FURTHER ORDERED that, because this is a final written decision,
parties to this proceeding seeking judicial review of our Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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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