Samsung Electronics Co Ltd v. Varia Holdings LLC

1. Case Identification

• Patent #: 7,167,731
• Filed: March 15, 2013
• Petitioner(s): Samsung Electronics Co., Ltd.
• Patent Owner(s): Varia Holdings LLC
• Challenged Claims: 1-25

2. Patent Overview

• Title: Emoticon Input Method and Apparatus
• Brief Description: The ’731 patent describes a method and apparatus for improving the ease of entering emoticons into text messages on a mobile communication device. The invention centers on using a designated input key to display a list of selectable emoticons for insertion into a message.

3. Grounds for Unpatentability

Ground 1: Claims 1, 9-13, 15, 17-19, 21, and 23-24 are anticipated under 35 U.S.C. §102(a) by SPH-A5000.

• Prior Art Relied Upon: Samsung SPH-A5000 Mobile Phone User's Manual ("SPH-A5000").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the SPH-A5000 user manual, published in March 2001, discloses all limitations of the challenged claims. SPH-A5000 describes a mobile phone with a display and a "Select" key that functions as the claimed "first input key." When operating in a text mode (composing an SMS message), a user can press the "Select" key to display a list of emoticons. The manual further shows that a user can navigate this list with arrow keys, which changes the highlighted focus on an emoticon, and then select one for insertion. The manual also depicts a standard 12-key keypad and the inherent operating logic (processor and memory) required to perform these functions, thus anticipating independent claim 1 and its dependent claims.

Ground 2: Claims 1, 9-15, 17-18, and 21-24 are anticipated under 35 U.S.C. §102(b) by Philips.

• Prior Art Relied Upon: Philips Savvy Phone User's Guide ("Philips").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that the Philips user guide, published in 1999, anticipates the challenged claims. Philips discloses a mobile phone capable of sending SMS messages with a 12-key keypad and display. While entering text, a user can press a soft key (the claimed "first input key") to access a list of selectable emoticons. The guide illustrates that a user can navigate the emoticon list using left and right buttons to change the current focus and press an "OK" key to insert the selected emoticon into the message. Petitioner contended that these disclosures, which describe operation in a text mode on a wireless mobile phone, teach every element of the challenged claims.

Ground 3: Claims 1, 4, 10-13, 15, 17-19, 21, and 23-24 are anticipated under 35 U.S.C. §102(e) by Hawkins.

• Prior Art Relied Upon: Patent 6,975,304 ("Hawkins").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hawkins, which has a priority date of June 11, 2001, anticipates the challenged claims. Hawkins teaches a mobile device where a user can request alternate symbols, including emoticons, for a base character. This request can be made by pressing a dedicated "symbol key" or by pressing and holding a key (e.g., the ":" key), which then displays a pop-up menu with a list of emoticons. The list is shown with a current focus (highlighted in reverse video) that can be changed, and the user can select an emoticon for insertion into an e-mail (a "text mode"). This functionality, disclosed for a mobile device with a display and operating logic, was argued to meet all limitations of the claims.

Ground 4: Claims 1, 14-15, 17-18, 21, and 23-25 are anticipated under 35 U.S.C. §102(a) by Kenwood.

• Prior Art Relied Upon: Japanese Patent Application No. 2000-270115 ("Kenwood").
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Kenwood, a Japanese patent application published in 2000, anticipates the challenged claims. Kenwood discloses a mobile communication terminal where emoticons are registered in groups assigned to numeric keys on the keypad. While composing an e-mail, a user can press a numeric key (the "first input key") to display a list of emoticons from the corresponding group. The user can then select an emoticon from the list by pressing the same numeric key multiple times or by using arrow keys. Kenwood also discloses adding new emoticons to the list, anticipating claim 25. This system of displaying and selecting from an emoticon list on a mobile device was asserted to anticipate the claims.
• Additional Grounds: Petitioner asserted numerous additional grounds of unpatentability. These grounds were primarily obviousness challenges under §103, arguing that the claims are obvious over one of the four base references (SPH-A5000, Philips, Hawkins, or Kenwood) in view of secondary references or the general knowledge of a person of ordinary skill in the art (POSITA). Secondary references included Nokia II (EP 1 018 679), King (Patent 5,953,541), and IBM (Patent 5,987,482). These combinations were used to argue that it would have been obvious to a POSITA to modify the base systems to include features such as a timeout for automatic selection (from King), using pixel-map based graphical symbols instead of character-based ones (from the ’731 patent’s own admissions and Philips/Nokia), or adding highlighting features for the selected emoticon (from IBM).

4. Key Claim Construction Positions

• "Responsive to a selection of said first input key": Petitioner proposed that this limitation should be construed broadly to mean that the key, when pressed, results in the display of an emoticon list. Critically, Petitioner argued the key does not need to be solely dedicated to this function and that the functionality could be accessed through a multifunction key, potentially requiring multiple interactions or menu navigation. This construction was central to mapping the functionality of soft keys and menu-driven options in the prior art to the claims.
• "Display a list of emoticons for selection": Petitioner argued this term should be interpreted to cover various display methods, including displaying multiple emoticons on the screen at once (as in the ’731 patent's Fig. 2) or displaying them one at a time as a user navigates through the list. This broad interpretation allowed Petitioner to apply the limitation to prior art that showed either implementation.

5. Relief Requested

• Petitioner requests institution of an inter partes review (IPR) and cancellation of claims 1-25 of the ’731 patent as unpatentable.