DCT
6:18-cv-02016
Zipit Wireless Inc v. LG Electronics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Zipit Wireless, Inc. (Delaware)
- Defendant: LG Electronics, Inc. (Republic of Korea)
- Plaintiff’s Counsel: Foster Law Firm, LLC; Kent & Risley LLC
- Case Identification: 6:18-cv-02016, D.S.C., 07/23/2018
- Venue Allegations: Venue is based on allegations that Defendant LG Electronics, Inc. intentionally and continuously sells products, instructs customers, maintains distribution channels, and derives substantial revenue from its activities within the District of South Carolina.
- Core Dispute: Plaintiff alleges that Defendant’s smartphones with Wi-Fi instant messaging capabilities infringe patents related to handheld messaging terminals, particularly concerning the generation of graphical symbols like emojis.
- Technical Context: The case centers on technology for dedicated, Wi-Fi-based instant messaging devices, a capability that has become a core and highly valued functionality of the modern smartphone market.
- Key Procedural History: The asserted patents previously survived Inter Partes Review (IPR) proceedings initiated by BlackBerry, with the U.S. Patent Trial and Appeal Board (PTAB) confirming the patentability of all asserted claims. The complaint states that Zipit subsequently licensed the patents to both BlackBerry and Samsung following separate legal disputes.
Case Timeline
| Date | Event |
|---|---|
| 2003-12-24 | Earliest Priority Date for ’870 and ’837 Patents |
| 2007-11-06 | U.S. Patent No. 7,292,870 Issued |
| 2011-02-22 | U.S. Patent No. 7,894,837 Issued |
| 2011-02-xx | Earliest Accused Product Launch (Optimus Series) |
| 2015-03-30 | IPRs Instituted for ’870 and ’837 Patents |
| 2016-03-29 | PTAB Final Written Decisions Confirming Patentability |
| 2017-10-17 | Plaintiff Provides Defendant Written Notice of Infringement |
| 2018-07-23 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 7,292,870 - “Instant Messaging Terminal Adapted For Wi-Fi Access Points,” issued November 6, 2007
The Invention Explained
- Problem Addressed: The patent describes a market where instant messaging was primarily tied to desktop computers, and mobile options like pagers or early smartphones had cumbersome data entry and could not easily access multiple messaging services or connect to emerging Wi-Fi "hotspots" (’870 Patent, col. 1:12-24; col. 3:10-37).
- The Patented Solution: The invention is a handheld, self-contained instant messaging terminal with an integrated keyboard, designed to connect directly to Wi-Fi access points. It proposes specific features to improve the user experience, such as managing multiple messaging services, using programmable keys for emoticons, and automatically restoring conversation histories after a lost network connection (’870 Patent, Abstract; col. 4:38-54).
- Technical Importance: The technology aimed to untether instant messaging from desktop computers and expensive cellular plans by creating a portable, low-cost device that could leverage the growing availability of public and private Wi-Fi networks (’870 Patent, col. 2:1-15).
Key Claims at a Glance
- The complaint asserts independent method claim 20 and dependent claims 21, and 24-30.
- The essential elements of independent claim 20 include:
- A method for managing wireless network access and instant messaging with a handheld terminal.
- Entering textual and graphical symbols with a data entry device.
- Displaying the entered characters and symbols.
- Communicating instant messages via a Wi-Fi access point.
- Coordinating authentication to couple the terminal to a local network.
- Implementing protocols to control a conversation session.
- Displaying conversation histories for active conversations that were terminated by a loss of network connection.
- Automatically searching for network beacons after the conversation histories are displayed.
U.S. Patent No. 7,894,837 - “Instant Messaging Terminal Adapted For Wireless Communication Access Points,” issued February 22, 2011
The Invention Explained
- Problem Addressed: As a continuation of the '870 patent, this patent addresses the same technical challenges: the limitations of prior messaging devices and the complexities of using multiple IM services over Wi-Fi networks (’837 Patent, col. 3:5-39).
- The Patented Solution: The invention is directed at the specific methods within a handheld terminal for generating and transmitting IM data messages. It describes a control module that executes an application program to implement the necessary protocols to ensure the messages, including graphical symbols, are compatible with the specific instant messaging service being used (’837 Patent, Abstract).
- Technical Importance: This technology provided a system-level solution for ensuring that a single device could seamlessly communicate across different, proprietary instant messaging platforms, a key feature for user convenience (’837 Patent, col. 6:9-18).
Key Claims at a Glance
- The complaint asserts independent method claim 11 and dependent claims 12, 14, 15, 16, and 20.
- The essential elements of independent claim 11 include:
- A method for managing wireless network access and IM with a handheld terminal.
- Generating textual and graphical symbols via a data entry device.
- Displaying the generated symbols.
- Generating data messages with the symbols in accordance with a protocol compatible with an instant messaging service.
- Wirelessly transmitting the data messages to a network access point.
- Controlling a conversation session in accordance with the messaging protocol.
III. The Accused Instrumentality
Product Identification
A wide range of LG's Wi-Fi-capable smartphones, with the LG G5 smartphone identified as a representative example (Compl. ¶¶ 82, 125, 144). The full list of accused devices spans dozens of models released since 2011 (Compl. ¶82, pp. 21-27).
Functionality and Market Context
The accused functionality resides in the smartphones' ability to send and receive instant messages containing emojis or other graphical symbols over a Wi-Fi connection (Compl. ¶81). This is accomplished through either preloaded applications (e.g., "Hangouts") or third-party applications downloaded from an app store (e.g., WhatsApp, Facebook Messenger) (Compl. ¶¶ 86-87). The complaint alleges that these devices include virtual keyboards that allow users to generate emojis for inclusion in messages, a feature it contends is a primary driver of consumer purchasing decisions (Compl. ¶¶ 18-19, 90). The image on page 40 of the complaint shows a representative virtual keyboard on an LG G5 smartphone, illustrating the standard text input and the selection of graphical emoji symbols (Compl. p. 40, Exhibit 'O').
IV. Analysis of Infringement Allegations
'870 Patent Infringement Allegations
| Claim Element (from Independent Claim 20) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| entering textual characters and graphical symbols with a data entry device of a handheld terminal to form instant messages | Defendant's smartphones provide a virtual keyboard for users to enter text and select graphical emoji symbols to compose instant messages. | ¶90 | col. 25:45-48 |
| displaying the entered textual characters and graphical symbols on a display of the handheld terminal | The smartphone's screen displays the text and emojis as they are entered by the user in the messaging application. | ¶123 | col. 25:49-51 |
| communicating instant messages with a wireless, Internet protocol access point | The smartphones use Wi-Fi to transmit the composed instant messages through a wireless access point to the intended recipient. | ¶81 | col. 25:52-55 |
| displaying conversation histories for active conversations terminated by a loss of a network connection | The complaint alleges infringement of this claim as a whole, but notes a pre-suit denial from the Defendant that its smartphones perform this specific function. | ¶¶ 110, 122 | col. 26:1-4 |
| automatically searching for wireless, Internet protocol network beacons after the conversation histories are displayed | The complaint alleges infringement of this claim as a whole, but notes a pre-suit denial from the Defendant that its smartphones perform this specific function. | ¶¶ 110, 122 | col. 26:5-8 |
Identified Points of Contention
- Scope Questions: A central question will be whether the "handheld instant messaging terminal" recited in the claims, which the patent specification primarily describes as a dedicated clamshell device, can be construed to read on a general-purpose, multi-function smartphone.
- Technical Questions: A significant factual dispute is foreshadowed by the complaint's reference to Defendant's pre-suit denial that its devices perform the claimed steps of displaying conversation histories after network loss and then automatically searching for beacons (Compl. ¶110). The basis for this denial and the evidence Plaintiff can provide to the contrary will be a critical point of contention.
'837 Patent Infringement Allegations
| Claim Element (from Independent Claim 11) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| generating data messages with the generated textual characters and graphical symbols in accordance with at least one instant messaging protocol that is compatible with an instant messaging service | Defendant's smartphones run applications (e.g., Hangouts, WhatsApp) that format the user-entered text and emojis into data messages compliant with the protocol of the specific IM service being used. | ¶¶ 86-87, 142 | col. 28:51-56 |
| wirelessly transmitting the generated data messages to a wireless network access point | The smartphones use their Wi-Fi transceivers to send the formatted data messages to a Wi-Fi access point for delivery. | ¶81 | col. 25:1-4 |
| controlling a conversation session in accordance with the at least one instant messaging protocol | The messaging application on the smartphone manages the back-and-forth communication of the conversation according to the rules of the specific IM service. | ¶¶ 83, 142 | col. 25:5-9 |
Identified Points of Contention
- Technical Questions: The complaint notes that Defendant, in pre-suit communications, denied that its smartphones "have at least one processor that executes an application program for generating instant messaging data messages that are compatible with an instant messaging service" (Compl. ¶111). This raises a direct factual conflict over a core element of the asserted claim and suggests a dispute over how the accused software and hardware combinations technically operate.
- Scope Questions: It may be disputed whether a third-party software application downloaded by a user onto a general-purpose operating system (Android) constitutes the integrated "control module" executing an "application program" as envisioned and described in the patent.
V. Key Claim Terms for Construction
- The Term: "handheld instant messaging terminal"
- Context and Importance: This term is foundational to the scope of both patents. Its construction will determine whether the claims, rooted in the context of dedicated messaging hardware from the early 2000s, can cover modern, general-purpose smartphones.
- Intrinsic Evidence for a Broader Interpretation: The claims use the general term "handheld terminal housing," and the specification refers broadly to "handheld communication terminals" without explicitly limiting them to a single function (’870 Patent, col. 1:6-8).
- Intrinsic Evidence for a Narrower Interpretation: The patent's figures and detailed embodiments consistently depict a specific clamshell device with a physical keyboard, suggesting the invention is the device itself, not just the function (’870 Patent, Fig. 2; col. 12:1-10).
- The Term: "data entry device"
- Context and Importance: This term is critical because the patents depict a physical, integrated keyboard, whereas the accused products use a software-based, on-screen keyboard. The infringement analysis may turn on whether a software keyboard is structurally and functionally equivalent to the device described.
- Intrinsic Evidence for a Broader Interpretation: The term itself is not explicitly limited to a physical structure. An argument could be made that a software keyboard is "integrated in the terminal housing" because it is rendered on the integrated display and controlled by the integrated processor.
- Intrinsic Evidence for a Narrower Interpretation: Every embodiment in the specification describes a physical QWERTY keyboard as part of the hardware structure, which may support an interpretation limiting the term to a physical component (’870 Patent, Fig. 2; col. 12:3-7).
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendant instructs customers on how to use the infringing features through user manuals and online content (Compl. ¶¶ 127, 146). It also alleges contributory infringement, asserting that the accused smartphones are a material part of the invention, are especially designed for the infringing use, and are not staple articles of commerce suitable for substantial non-infringing use (Compl. ¶¶ 132, 151).
- Willful Infringement: Willfulness is alleged based on Defendant's purported knowledge of the patents since at least October 17, 2017, following written notice from Plaintiff (Compl. ¶¶ 93, 128). The complaint alleges that Defendant continued its infringing conduct after receiving notice and engaged in "willful blindness" (Compl. ¶¶ 129-130, 137).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "handheld instant messaging terminal," which is described and depicted in the patents as a dedicated hardware device, be construed to encompass a modern, general-purpose smartphone running messaging applications?
- A second key issue will be one of technical equivalence: Does the accused smartphones' software-based virtual keyboard, which presents a palette of selectable emojis, constitute the claimed "data entry device" with specific "keys for graphical symbols," a structure described in the patent as a physical keyboard?
- A central evidentiary question will be one of factual operation: The complaint highlights pre-suit denials by the Defendant regarding specific functionalities required by the claims, such as displaying conversation histories after network loss ('870 Patent) and executing a compatible messaging program ('837 Patent). The case may turn on evidence demonstrating whether the accused devices, in fact, perform these disputed functions.