PTAB

IPR2014-01506

BlackBerry Corp v. Zipit Wireless Inc

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1. Case Identification

2. Patent Overview

  • Title: Handheld Instant Messaging Terminal
  • Brief Description: The ’837 patent relates to a handheld instant messaging (IM) device that manages multiple IM conversations through different IM service providers. The device generates buddy lists, displays conversation windows, detects and prioritizes local wireless access points by signal strength, and uses programmable keys for text and graphical symbols.

3. Grounds for Unpatentability

Ground 1: Anticipation over the e740 User’s Manual - Claims 1-4, 10-15, and 17 are anticipated under 35 U.S.C. §102(b) by the e740 User’s Manual.

  • Prior Art Relied Upon: The Toshiba Pocket PC e740 User’s Manual (“e740 User’s Manual”), published March 2002.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the e740 User’s Manual, which describes the Toshiba Pocket PC e740, disclosed every element of the challenged claims. The manual detailed a handheld device with a touch screen for data entry, a display, a Wi-Fi (IEEE 802.11b) WLAN adaptor serving as a wireless transceiver, and an IP communications module implemented via software running on an Intel Xscale processor. Petitioner asserted that the processor running the pre-installed MSN Messenger application constituted the claimed control module executing an IM protocol compatible with an IM service. For dependent claims, Petitioner contended the manual taught programmable keys for graphical symbols (e.g., emoticons via a “My Text” menu), detecting and prioritizing wireless access points by signal strength, storing network profiles, and an audio player for downloaded files.

Ground 2: Obviousness over e740 User's Manual and Nokia Manual - Claims 5 and 16 are obvious over the e740 User's Manual in view of the Nokia 7650 IM+ Manual.

  • Prior Art Relied Upon: e740 User's Manual and the IM+ Multi-system Mobile Instant Messenger for Nokia 7650/3650 Version 2.18 manual (“Nokia 7650 IM+ Manual”), published January 30, 2003.
  • Core Argument for this Ground:
    • Prior Art Mapping: The e740 User’s Manual provided the base handheld IM device with its standard MSN Messenger client. The Nokia 7650 IM+ Manual disclosed a third-party application, IM+, that enabled simultaneous access to a plurality of IM services (ICQ, MSN, and AOL). This application loaded contacts from each service into a single, unified "common contact list." Petitioner argued that adding the functionality of the IM+ application to the e740 device would result in a terminal configured to access multiple IM providers and generate a unified buddy list, as required by claim 5, and control at least two conversation sessions with different protocols, as required by claim 16.
    • Motivation to Combine: A POSITA would combine these references because the e740 Pocket PC was expressly designed for user-installable third-party software. The Nokia 7650 IM+ Manual demonstrated the known benefits of supporting multiple popular IM platforms and a unified buddy list on a mobile device to enhance user convenience. As MSN Messenger was common to both references and IM+ software was made available for Pocket PC devices, the combination was predictable.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in installing and running the IM+ software on the e740 device, as it was a standard Pocket PC for which such applications were designed.

Ground 3: Obviousness over e740 User's Manual and Morrison - Claims 1-5, 10-17, and 20 are obvious over the e740 User's Manual in view of Morrison.

  • Prior Art Relied Upon: e740 User's Manual and Special Edition: Using Pocket PC 2002 by Michael Morrison (“Morrison”), published June 2002.
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner used Morrison, a comprehensive guide to Pocket PC 2002 devices, to supplement the disclosures of the e740 User's Manual. Morrison described the hardware and software features common to such devices, including the availability of multiple IM services beyond Microsoft's offering, such as AOL Instant Messenger and Yahoo! Messenger. For claim 20, which required receiving files from an "Internet radio station," Morrison explicitly disclosed "playing streaming multimedia content" that "enables you to listen to live Internet radio" on a Pocket PC using Windows Media Player, a program also present on the e740 device.
    • Motivation to Combine: A POSITA would combine these references because they both described contemporaneous Pocket PC 2002 hardware and software environments. Morrison provided general knowledge about the capabilities and available applications for the class of devices to which the e740 belonged. Therefore, a POSITA would have found it obvious to apply the software configurations and functionalities described in Morrison to the specific e740 device to achieve predictable results, such as expanded IM capability and access to internet radio.
    • Expectation of Success: The combination involved applying known software functionalities (e.g., alternative IM clients, streaming media players) described in a general guide (Morrison) to a compatible device (e740), making success highly predictable.

4. Key Claim Construction Positions

  • "Communications module": Petitioner proposed this term should be interpreted to include hardware and/or software components. This construction was based on the patent’s description of the module as an "implement[ed]" component and was asserted as necessary to encompass software-based IP protocol stacks running on a processor, as disclosed in the prior art.
  • "Coupled": Petitioner proposed this term should be interpreted as an indirect or operative (non-physical) connection. This construction was argued to be consistent with the specification's use of the term to describe a terminal’s connection to a remote IM service via a network access point.

5. Relief Requested

  • Petitioner requests the institution of an inter partes review and the cancellation of claims 1-5, 10-17, and 20 of Patent 7,894,837 as unpatentable.