PTAB

IPR2019-01568

Google LLC v. Zipit Wireless Inc

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1. Case Identification

2. Patent Overview

  • Title: Handheld Instant Messaging Terminal
  • Brief Description: The ’837 patent describes a handheld instant messaging (IM) terminal that wirelessly connects to a network through an access point. The device generates and displays textual characters and graphical symbols (e.g., emoticons) and transmits them in data messages using an IM protocol compatible with an IM service.

3. Grounds for Unpatentability

Ground 1: Obviousness over VD, Sinivaara, and Werndorfer - Claims 11-12, 14, and 16 are obvious over VD in view of Sinivaara and Werndorfer.

  • Prior Art Relied Upon: VD (Application # 2004/0162877), Sinivaara (Application # 2004/0202141), and Werndorfer (Application # 2004/0024822).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that VD disclosed a handheld IM device with an enhanced user interface, including the core functionality of generating and displaying text and graphical emoticons. However, VD did not explicitly detail the wireless access method or the specifics of its IM protocol compatibility. Petitioner asserted that Sinivaara supplied the missing wireless access limitations by teaching that connecting mobile terminals to the Internet via a standard WLAN access point (e.g., Wi-Fi) was a common and well-known method. Werndorfer was argued to supply the IM protocol limitation by explaining that a "basic principle" of traditional IM is using client software with a proprietary protocol compatible with the specific IM service to communicate with the service's server.
    • Motivation to Combine: A POSITA would combine VD's IM system with Sinivaara's teachings because implementing wireless connectivity via a WLAN access point was one of only a few predictable, standard options available. Similarly, a POSITA would have been motivated to implement VD’s system using an IM protocol compatible with an IM service as taught by Werndorfer, because this was the conventional and typical method for ensuring functionality in the "traditional IM" field that VD sought to improve.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining these elements because it involved applying well-known, standard technologies (WLAN access, compatible IM protocols) to a known system (a handheld IM device) to achieve the predictable result of a functional, wirelessly connected IM terminal.

Ground 2: Obviousness over Zaner, Sinivaara, and Werndorfer - Claims 11-12, 14, and 16 are obvious over Zaner in view of Sinivaara and Werndorfer.

  • Prior Art Relied Upon: Zaner (Application # 2004/0041836), Sinivaara (Application # 2004/0202141), and Werndorfer (Application # 2004/0024822).

  • Core Argument for this Ground:

    • Prior Art Mapping: This ground presented Zaner as an alternative primary reference to VD. Petitioner argued that Zaner disclosed a real-time chat application for handheld devices that communicated instant messages with text and graphical emoticons over a wireless network. As with the VD-based ground, Petitioner contended that Zaner's general disclosure of wireless internet communication would be implemented by a POSITA using the standard WLAN access point method described in Sinivaara. Likewise, the IM functionality described in Zaner would be implemented using a compatible protocol as taught by Werndorfer.
    • Motivation to Combine: The motivation to combine Zaner with Sinivaara and Werndorfer was identical to that asserted in Ground 1. A POSITA would have naturally turned to the limited, predictable, and conventional options for wireless access (Sinivaara) and IM protocol implementation (Werndorfer) to build out the system disclosed in Zaner.
    • Expectation of Success: The expectation of success was based on the straightforward application of standard components and protocols to achieve their expected functions, resulting in a predictable and operable system.

  • Additional Grounds: Petitioner asserted additional obviousness challenges based on the core combinations of VD/Sinivaara/Werndorfer and Zaner/Sinivaara/Werndorfer. These grounds added Saric (disclosing assigning special keys to emoticons for claim 12), Chiu (disclosing storing network profiles for claim 15), and Capps (disclosing integrating streaming audio for claim 20) to address the specific limitations of the remaining dependent claims.

4. Key Claim Construction Positions

  • "compatible with an instant messaging service": Petitioner argued this term, added during prosecution to overcome a rejection, should be construed in light of its purpose: to distinguish the Rucinski reference, which allegedly required an "intermediate protocol" to be translated by a separate device. Petitioner contended that a system is "compatible" if it does not require such an intermediate translation step. Under this construction, the proposed prior art combinations met the limitation because neither VD, Zaner, nor Werndorfer described any need for an intermediate protocol or a separate translation device; instead, Werndorfer illustrated direct communication between the client and the IM service.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. §314(a) or §325(d). The petition asserted that it relies on prior art not previously presented to the USPTO during prosecution or in a prior IPR filed by BlackBerry. Furthermore, Petitioner contended that the timing of the petition was a direct result of the Patent Owner's "litigation activity," specifically a campaign of serial lawsuits. Petitioner argued that Zipit waited nearly five years after its initial litigation to sue the Petitioners, and therefore should not be able to use its own litigation strategy as a shield against the resulting IPR petitions.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 11-12, 14-16, and 20 of Patent 7,894,837 as unpatentable.