PTAB

IPR2014-01507

BlackBerry Corp v. Zipit Wireless Inc

Key Events

Petition

petition Intelligence

Title: Instant Messaging Terminal and Method
Brief Description: The ’870 patent discloses a handheld instant messaging (IM) device that uses a wireless, Internet Protocol (IP) connection to manage multiple IM conversations across different service providers. The device also features functionality for handling a loss of network connection and using programmable keys for graphical symbols.

Prior Art Relied Upon: The Toshiba Pocket PC e740 User's Manual (“e740 User's Manual”), published in March 2002.
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that the e740 User's Manual, which describes a Toshiba Pocket PC running Windows Pocket PC 2002, disclosed every limitation of the challenged claims. The e740 device was described as a handheld terminal with a touchscreen for data entry, an integrated Wi-Fi (IEEE 802.11b) transceiver for wireless IP communications, and a control module (Intel Xscale processor) running IM software like MSN Messenger. Petitioner contended the key limitation added during prosecution—displaying conversation histories after a loss of network connection and automatically searching for new networks—was met by the e740's ability to power its WLAN module off and on while an IM application remained open, combined with its utility for automatically scanning for and connecting to the best available access point.

Prior Art Relied Upon: e740 User's Manual and Symbol PPT 2800 Series Product Reference Guide for Pocket PC 2002 (“Symbol”), published in August 2002.
Core Argument for this Ground:
- Prior Art Mapping: The e740 User's Manual disclosed the base handheld IM terminal. Symbol, describing a contemporaneous Pocket PC 2002 device, taught a "Power Save Polling (PSP) mode" where the wireless adapter repeatedly enters a "sleep" state for a user-specified number of 0.1-second ticks before waking to check for data. Petitioner asserted that these rapid, repeated sleep/wake cycles constituted a "loss of a network connection," during which any active conversation history would remain displayed on the screen, thus teaching the critical limitation of independent claims 1 and 20.
- Motivation to Combine: A person of ordinary skill in the art (POSITA) would combine the teachings because both references described contemporaneous Pocket PC 2002 devices with similar hardware and software components. A POSITA would have found it obvious to implement Symbol's power-saving features in the e740 device to improve battery life, a well-known goal for portable electronics.
- Expectation of Success: The combination was a predictable integration of known technologies, as both devices operated on the same Pocket PC 2002 platform, ensuring that software features from one would be compatible with the other.

Prior Art Relied Upon: e740 User's Manual and Special Edition: Using Pocket PC 2002 by Michael Morrison (“Morrison”), published in June 2002.
Core Argument for this Ground:
- Prior Art Mapping: Morrison, a guide for Pocket PC 2002 devices, was argued to supplement the e740 User's Manual by explicitly teaching the use of multiple third-party IM services beyond MSN Messenger, such as AOL Instant Messenger and Yahoo! Messenger. Morrison also disclosed playing streaming multimedia content, such as Internet radio, concurrently with other operations. This teaching was mapped to dependent claims requiring sound generation from a downloaded or streamed file while communicating messages.
- Motivation to Combine: A POSITA would combine Morrison's teachings with the e740 device to enhance its functionality. As both references concerned the same Pocket PC 2002 operating system, a POSITA would have been motivated to install and use the additional software applications described by Morrison on a device like the e740 to expand its communication and multimedia capabilities.
- Expectation of Success: Success was expected because Morrison explicitly described software and functionalities designed for the same platform as the e740 device.

Prior Art Relied Upon: e740 User's Manual and the Toshiba Pocket PC e750 User's Manual (“e750 User's Manual”), published in March 2003.
Core Argument for this Ground:
- Prior Art Mapping: The challenged claims in this ground relate to security features. The e750 User's Manual, describing a successor model to the e740 from the same manufacturer, explicitly taught that the device would prompt a user to enter a network (WEP) key when attempting to join an encrypted network. This directly taught the limitation of generating a prompt for a security key in response to a request, as recited in claims 9 and 28.
- Motivation to Combine: A POSITA would have been motivated to incorporate the security features of the newer e750 model into the e740. Since the e750 was an incremental update in the same product family, its features represented a predictable evolution of the technology, and combining them would be a matter of routine product improvement.
- Expectation of Success: Combining features between two very similar devices from the same manufacturer's product line would have been straightforward and yielded predictable results.

"Communications module": Petitioner proposed this term be construed to include hardware and/or software components, not just a hardware component, consistent with the patent's specification.
"Coupled": Petitioner argued for a broad construction including an indirect or operative (non-physical) connection, noting the claims refer to IM buddies being "coupled" to buddy lists.
"Loss of a network connection": For the purposes of the petition, Petitioner adopted the Patent Owner's asserted litigation construction, which is satisfied if a conversation history is already displayed, the connection is lost, and the history remains displayed.
"Wireless, Internet protocol": Petitioner adopted the Patent Owner's litigation construction that this term is satisfied by connecting to a "Wi-Fi" hotspot, which was an amendment made during prosecution to overcome prior art.

Petitioner requested that the Board institute an inter partes review and cancel claims 1, 2, 5-12, 17-21, 24-31, and 36-40 of the ’870 patent as unpatentable.