Google LLC v. Zipit Wireless Inc

1. Case Identification

• Case #: IPR2019-01567
• Patent #: 7,292,870
• Filed: August 30, 2019
• Petitioner(s): Google LLC, LG Electronics, Inc., and LG Electronics U.S.A., INC.
• Patent Owner(s): Zipit Wireless, Inc.
• Challenged Claims: 20-21, 24-30

2. Patent Overview

• Title: Handheld Instant Messaging with Wireless Network Connection
• Brief Description: The ’870 patent relates to a method for managing instant messaging (IM) and network access on a handheld terminal. The technology describes connecting wirelessly to a network via an access point and providing standard IM features, including entering and displaying textual characters and graphical symbols (emoticons), and handling network connection loss.

3. Grounds for Unpatentability

Ground 1: Obviousness over VD, Sinivaara, Chiu, and McCarthy - Claims 20 and 24-30 are obvious over VD in view of Sinivaara, Chiu, and McCarthy.

• Prior Art Relied Upon: VD (Application # 2004/0162877), Sinivaara (Application # 2004/0202141), Chiu (Application # 2003/0204748), and McCarthy (Patent 7,328,242).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the primary reference, VD, disclosed the core functionality of a handheld IM terminal that automatically replaces textual emoticons (e.g., ":)") with graphical representations before a message is sent. The secondary references were alleged to supply missing details for a standard wireless implementation. Sinivaara taught implementing wireless internet access on a mobile terminal using a standard WLAN infrastructure with access points (i.e., Wi-Fi). Chiu taught techniques for automatically coordinating authentication to connect a portable device to secured wireless networks. Finally, McCarthy taught a method for improving IM systems on devices with intermittent connectivity by maintaining the display of conversation histories after a network connection is lost, allowing the user to continue composing messages.
  • Motivation to Combine: A POSITA implementing VD’s handheld IM system would combine these references to provide a complete, functional product using predictable, well-known solutions. A POSITA would have used Sinivaara's teachings on standard Wi-Fi access as a known, limited, and predictable option for implementing VD's generic "wireless link." To improve connection reliability and security, a POSITA would incorporate Chiu's authentication methods. To enhance the user experience on a wireless device prone to connection drops, a POSITA would integrate McCarthy’s technique for handling intermittent connectivity.
  • Expectation of Success: Petitioner asserted a POSITA would have had a high expectation of success because the combination involved applying known wireless networking standards, authentication protocols, and connection-loss solutions to a known type of application (handheld IM) to achieve predictable improvements in functionality and usability.

Ground 2: Obviousness over Zaner, Sinivaara, Chiu, and McCarthy - Claims 20-21 and 24-30 are obvious over Zaner in view of Sinivaara, Chiu, and McCarthy.

• Prior Art Relied Upon: Zaner (Application # 2004/0041836), Sinivaara (Application # 2004/0202141), Chiu (Application # 2003/0204748), and McCarthy (Patent 7,328,242).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground presented an alternative primary reference, Zaner, which also disclosed a real-time chat application for handheld devices that included the use of graphical emoticons selected from a control menu. Petitioner argued that, similar to VD, Zaner provided the foundational handheld IM system. The combination with Sinivaara, Chiu, and McCarthy was argued to supply the same missing claim elements as in Ground 1: standard Wi-Fi access, automated security authentication, and a method for displaying conversation histories after a network connection is terminated. The mapping of these secondary references was identical to that presented in the first ground.
  • Motivation to Combine: The motivation was substantially the same as in Ground 1. A POSITA seeking to implement Zaner's handheld chat application would have been motivated to use the well-known and standardized wireless networking solutions taught by Sinivaara and Chiu to provide basic connectivity and security. Likewise, a POSITA would incorporate McCarthy's teachings to solve the known problem of intermittent connectivity common to portable devices, thereby improving the robustness and user experience of Zaner's system.
  • Expectation of Success: The argument relied on the same logic as Ground 1, stating that combining Zaner's IM system with standard, off-the-shelf wireless technologies from the secondary references would yield the predictable result of a fully functional and reliable wireless messaging device.

• Additional Grounds: Petitioner asserted additional obviousness challenges for claim 21 based on adding Tracy (Application # 2003/0058223), for an adaptable key displaying the emoticon symbol, or Saric (Canadian Application # 2,363,978), for a dedicated, labeled emoticon key, to the primary combinations.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should institute trial and not exercise discretionary denial under §314(a) or §325(d). The petition contended that the asserted prior art combinations were not previously presented to the USPTO during prosecution or in a prior IPR filed by a different party (BlackBerry IPR2014-01507). Furthermore, Petitioner argued that the timing of the petition was a direct result of the Patent Owner’s serial litigation campaign, asserting that the Patent Owner waited years after suing other parties before suing Petitioner, and that such a litigation strategy should not shield the patent from review.

5. Relief Requested

• Petitioner requests institution of inter partes review and cancellation of claims 20-21 and 24-30 of Patent 7,292,870 as unpatentable.