PTAB

IPR2021-01130

Microsoft Corp v. Zipit Wireless Inc

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Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Instant Messaging Terminal Adapted for Wireless Communication Access Points
  • Brief Description: The ’837 patent relates to a handheld instant messaging (IM) terminal capable of communicating over wireless networks. The invention focuses on the terminal's ability to generate, display, and transmit messages containing both textual characters and graphical symbols (emoticons) that are compatible with an IM service.

3. Grounds for Unpatentability

Ground 1: Obviousness over Heikes-Jonker-Sidekick-Brittan - Claims 48 and 50 are obvious over Heikes, Jonker, Sidekick, and Brittan.

  • Prior Art Relied Upon: Heikes (Application # 2003/0225846), Jonker (Patent 7,483,984), Sidekick (T-Mobile Sidekick Owner's Manual), and Brittan (UK Application # GB 2,376,379).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the combination of these references teaches every limitation of the challenged claims. Heikes taught a general IM system on a mobile device (e.g., PDA) that could send and receive IMs, including emoticons selected from a menu. Jonker taught the specific implementation details for connecting a mobile device to a wireless local area network (LAN) via an access point using known protocols like 802.11. Sidekick provided a concrete example of a popular, commercially available handheld device with an integrated keyboard, display, wireless connectivity, and AOL Instant Messenger (AIM) functionality. Finally, Brittan taught using a dedicated key to access a menu of emoticons ("smilies"), which are represented by character strings for transmission and displayed graphically to the user.
    • Motivation to Combine: A POSITA would combine these references to create an improved and fully functional IM device. A POSITA would have looked to Jonker to implement Heikes’s generic disclosure of wireless LAN communication with a predictable, well-known access point-based solution. Sidekick represented a successful, real-world embodiment of the type of device Heikes described, making it a natural choice for a skilled artisan to use as a model for the physical form factor and user interface. Brittan's method for emoticon selection provided a known technique to enhance the user experience for the emoticon feature already present in Heikes.
    • Expectation of Success: A POSITA would have had a reasonable expectation of success because the combination involved integrating known components and functionalities (wireless LAN access, PDA form factors, IM clients, and emoticon input methods) that were all common in the art and designed to work together.

Ground 2: Obviousness over Heikes-Jonker-Sidekick-Brittan-Miller - Claims 12-13, 27, and 49 are obvious over the combination of Ground 1 in view of Miller.

  • Prior Art Relied Upon: Heikes, Jonker, Sidekick, Brittan, and Miller (Patent 6,629,793).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground builds on the base combination from Ground 1, which taught selecting emoticons from a menu. Miller was introduced to address the claimed limitation of correlating a single key press with a graphical symbol. Miller explicitly taught improving IM systems by adding a plurality of dedicated keys for emoticons to a keyboard. Pressing one of these dedicated keys would directly input the corresponding graphical emoticon into the IM application, bypassing the need for menu navigation, which Miller described as "confusing and distracting."
    • Motivation to Combine: Petitioner argued a POSITA, observing the cumbersome menu-based emoticon selection in the base combination, would be motivated to implement Miller's solution. Miller addressed the exact problem present in the prior art combination and provided a straightforward solution: dedicated hardware keys. The motivation was to improve usability, speed, and user experience, which is a recognized rationale for combining prior art references.
    • Expectation of Success: Success would be expected as Miller's teachings were directed to the same field (IM on computer devices) and solved a known problem using a simple, predictable hardware modification.

Ground 3: Obviousness over Heikes-Jonker-Sidekick-Brittan-Miller-Im - Claims 2, 19, 23-24, 29-31, 40-42, and 46 are obvious over the combination of Ground 2 in view of Im.

  • Prior Art Relied Upon: Heikes, Jonker, Sidekick, Brittan, Miller, and Im (KR Application # 2003-0068662).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground adds Im to address limitations related to programmable keys for graphical symbols. While the Ground 2 combination taught dedicated, fixed emoticon keys, Miller itself noted a problem with this approach: emoticons can become obsolete. Im taught a solution by disclosing programmable shortcut keys on a PDA, where a user could assign a custom character string to a specific key. The claims in this ground, such as claim 2 requiring a "programmable key," are met by combining Im's teachings with the device from Ground 2. Other claims related to "parsing" and "confirming" compatibility were argued to be inherent functions of a system that must recognize a character string to display the correct graphical emoticon.
    • Motivation to Combine: A POSITA, recognizing the obsolescence problem with Miller’s fixed keys, would be motivated to find a way to make them user-definable. Im provided a known technique for implementing programmable keys on the same type of device (a PDA). A POSITA would combine Im's teachings to allow users to update or customize the emoticons assigned to keys, yielding the predictable result of a more flexible and future-proof user interface.
    • Expectation of Success: The combination had a high expectation of success as it applied a known software feature (programmable shortcut keys from Im) to a known hardware feature (dedicated keys from Miller) on a conventional PDA platform.

4. Key Claim Construction Positions

  • "graphical symbols": Petitioner argued that, consistent with a construction from a prior IPR on a related patent, this term should be construed to mean "graphical emoticons." This construction is central to applying prior art references that specifically discuss emoticons and smilies.
  • "generating textual characters and graphical symbols in response to manipulation of keys": Petitioner asserted this phrase should be given its ordinary meaning, wherein the generation of a graphical symbol (emoticon) is the result of the key manipulation, even if it involves an intermediate step like generating a character string that is then converted to the graphical image.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued that discretionary denial under Fintiv would be inappropriate. The petition was filed after the one-year statutory bar was triggered by complaints that Patent Owner voluntarily dismissed before providing infringement contentions. Petitioner asserted that Patent Owner engaged in a litigation strategy of suing other parties first, delaying suit against Petitioners until after earlier IPRs could be joined. Furthermore, Petitioner argued that the only parallel litigation involving the ’837 patent was stayed at a very early stage, did not involve the Petitioners, and had no scheduled trial date, meaning the Fintiv factors strongly favored institution.

6. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 2, 12-13, 19, 23-24, 27, 29-31, 40-42, 46, and 48-50 of the ’837 patent as unpatentable.