PTAB

IPR2021-01131

Microsoft Corporation v. Zipit Wireless, Inc.

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1. Case Identification

2. Patent Overview

  • Title: Instant Messaging Terminal Adapted for Wireless Communication Access Points
  • Brief Description: The ’837 patent describes a method for managing wireless network access and instant messaging (IM) on a handheld terminal. The technology involves generating and displaying text and graphical symbols (emoticons), creating data messages compatible with an IM service, and transmitting them through a wireless access point.

3. Grounds for Unpatentability

Ground 1: Obviousness over VD-Sinivaara-Werndorfer-Sidekick or VD-Sinivaara-Werndorfer-Sidekick-Rucinski - Claim 17 is obvious over VD, Sinivaara, and Werndorfer in view of either Sidekick or Sidekick and Rucinski.

  • Prior Art Relied Upon: VD (Application # 2004/0162877), Sinivaara (Application # 2004/0202141), Werndorfer (Application # 2004/0024822), Sidekick (T-Mobile Sidekick Owner's Manual), and Rucinski (Application # 2003/0130014).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the base combination of VD, Sinivaara, and Werndorfer, which the Board previously found to render parent claim 11 obvious in a prior IPR, teaches a handheld wireless device with IM capabilities. VD taught enhancing an IM user interface with features like automatic emoticon replacement. Sinivaara taught connecting a mobile terminal to the internet via a wireless access point (WLAN). Werndorfer taught a unified IM client platform that communicates with IM services using service-specific protocols. Petitioner argued that Sidekick, a well-known commercial device, taught the additional limitations of claim 17: generating and displaying an "active buddy list" identifying buddies sending data messages, and displaying this list in response to a key press.
    • Motivation to Combine (for §103 grounds): A person of ordinary skill in the art (POSITA) would combine the base system with Sidekick's teachings to improve usability. Providing status indicators and launching conversations from a buddy list were well-known, conventional features for IM applications. As an alternative for the "buddy list key" limitation, a POSITA would have been motivated to incorporate a dedicated key, as taught by Rucinski's "WHO'S ON" key, to provide faster, more efficient access to the buddy list, a predictable design choice.
    • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success because combining these elements involved applying known techniques (buddy list management) to a similar device (a handheld IM terminal) to achieve predictable results (improved user experience).

Ground 2: Obviousness over VD-Sinivaara-Werndorfer-Sidekick-Canfield - Claim 18 is obvious over VD, Sinivaara, and Werndorfer in view of Sidekick and Canfield.

  • Prior Art Relied Upon: VD (Application # 2004/0162877), Sinivaara (Application # 2004/0202141), Werndorfer (Application # 2004/0024822), Sidekick (T-Mobile Sidekick Owner's Manual), and Canfield (Application # 7,281,215).
  • Core Argument for this Ground:
    • Prior Art Mapping: Building on the base combination as modified by Sidekick, Petitioner argued Canfield taught the additional limitations of claim 18. Claim 18 requires generating a conversation window for each active buddy and displaying a header in that window that identifies the buddy, a number of windows being displayed (interpreted as a conversation rank), and a total number of active conversations. Petitioner asserted that Sidekick taught generating conversation windows and identifying the buddy's screen name in the header. Canfield was introduced to explicitly teach an "IM conversation counter and indicator" that provides statistics—such as the total number of concurrent sessions and the rank of the current session—directly in the conversation window's title bar to help users manage multiple conversations.
    • Motivation to Combine (for §103 grounds): A POSITA would have been motivated to implement Canfield's teachings to improve the user interface of the base device, which could handle multiple conversations as taught by Sidekick. Displaying such statistics was a known method for making it "quickly and easily" for a user to locate and manage concurrent IM sessions, and applying this known technique to the similar IM device of the primary combination would have been a straightforward improvement.
    • Expectation of Success (for §103 grounds): Because both the primary combination and Canfield relate to IM clients on handheld devices, a POSITA would have reasonably expected that adding a conversation counter to the existing conversation window would function as intended.

Ground 3: Obviousness over VD-Sinivaara-Werndorfer - Claim 19 is obvious over VD, 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 the base combination of VD, Sinivaara, and Werndorfer rendered claim 19 obvious. Claim 19 requires "parsing" characters and "confirming" they are compatible with the IM service. Petitioner contended that VD taught these features by disclosing an IM system that "interprets" a text sequence like :) and automatically converts it to a graphical smiley face. This interpretation and conversion process is "parsing." The system's ability to recognize a character string as corresponding to a supported emoticon constituted "confirming" compatibility, as unsupported strings would be displayed as-is.
    • Motivation to Combine (for §103 grounds): The motivation is inherent to the combination. A POSITA implementing VD's emoticon-enhancement features in a standard IM client (as taught by Werndorfer) that connects wirelessly (as taught by Sinivaara) would necessarily implement a form of parsing and compatibility checking, as this was the known and conventional way for such emoticon features to function.
    • Expectation of Success (for §103 grounds): A POSITA would have expected success because the functionality was a core, well-understood feature of the IM systems disclosed in the prior art.

  • Additional Grounds: Petitioner asserted an additional obviousness challenge against claim 13 (which depends from claim 12) based on the VD-Sinivaara-Werndorfer combination, optionally in view of Saric (CA Patent App. # 2,363,978).

4. Key Claim Construction Positions

  • Petitioner argued that the term "graphical symbols" should be construed to mean "graphical emoticons," a construction previously adopted by the Board. This construction was central to connecting the claim language to the prior art's explicit teachings on generating and displaying emoticons, such as the automatic emoticon replacement in VD.
  • Petitioner also argued that the limitation in claim 18[b] for "a number of windows being displayed" refers to the rank or conversation number of the conversation window being displayed, based on the ’837 patent’s specification and figures.

5. Arguments Regarding Discretionary Denial

  • Petitioner argued against discretionary denial under §314(a) and the Fintiv factors. It was asserted that the parallel district court litigation had been dismissed without prejudice by the Patent Owner before infringement contentions were served, and the only remaining litigation was stayed. Therefore, no trial date was pending, and the IPR would not be inefficient.
  • Petitioner also argued against denial under §325(d), stating that while the grounds build upon combinations used in a prior IPR (IPR2019-01568), they are directed to different claims (17-19 and 13) that were not challenged in that proceeding. Furthermore, the grounds required the introduction of additional, previously unconsidered references (Sidekick, Rucinski, Canfield, Saric) to meet the new claim limitations.

6. Relief Requested

  • Petitioner requests institution of an IPR and cancellation of claims 13 and 17-19 of the ’837 patent as unpatentable.