Microsoft Corp v. Zipit Wireless Inc

1. Case Identification

• Case #: IPR2021-01131
• Patent #: 7,894,837
• Filed: June 16, 2021
• Petitioner(s): Microsoft Corporation, Apple Inc.
• Patent Owner(s): Zipit Wireless, Inc.
• Challenged Claims: 13, 17-19

2. Patent Overview

• Title: Instant Messaging Terminal Adapted for Wireless Communication Access Points
• Brief Description: The ’837 patent discloses methods for managing wireless network access and instant messaging (IM) on a handheld terminal. The technology focuses on generating, displaying, and controlling IM conversation sessions, including the use of graphical symbols (emoticons) within messages transmitted over a wireless network.

3. Grounds for Unpatentability

Petitioner’s arguments build upon a foundational combination of prior art—VD, Sinivaara, and Werndorfer—which was previously found in a Final Written Decision (FWD) for IPR2019-01568 to render claim 11 of the ’837 patent obvious. Petitioner asserted that this base combination, along with additional prior art, renders the dependent challenged claims obvious under 35 U.S.C. §103.

Ground 1: Obviousness of Claim 17 over VD-Sinivaara-Werndorfer-Sidekick

• Prior Art Relied Upon: VD (Application # 2004/0162877), Sinivaara (Application # 2004/0202141), Werndorfer (Application # 2004/0024822), and Sidekick (T-Mobile Sidekick Owner's Manual).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that the base combination of VD, Sinivaara, and Werndorfer teaches all limitations of claim 11, including a handheld wireless IM terminal. Dependent claim 17 adds generating an "active buddy list" and displaying it in response to a key press. Sidekick, a user manual for a commercial handheld device with IM capabilities, explicitly discloses displaying buddy lists that identify buddies with whom conversations are active using status indicators (e.g., balloon icons, conversation numbers) and teaches using device buttons (e.g., "Jump" button, "Menu" button) to access and display these lists.
  • Motivation to Combine: A POSITA would combine Sidekick's well-known buddy list functionalities with the IM system of the base combination to improve usability. Providing status indicators and quick access to ongoing conversations was a standard, desirable feature in IM clients that enabled a better user experience, providing a strong reason for its inclusion.
  • Expectation of Success: The integration of a standard user interface feature like an active buddy list into a known IM system was a straightforward implementation with predictable results.

Ground 2: Obviousness of Claim 18 over VD-Sinivaara-Werndorfer-Sidekick-Canfield

• Prior Art Relied Upon: VD, Sinivaara, Werndorfer, Sidekick, and Canfield (Patent 7,281,215).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground builds on the combination for claim 17. Dependent claim 18 requires each conversation window to have a header identifying the buddy, a "number of windows being displayed," and the "total number of active conversation sessions." The VD-Sinivaara-Werndorfer-Sidekick combination already teaches a conversation window that identifies the buddy in its header. Canfield teaches an "IM conversation counter and indicator" that provides statistics about concurrent IM sessions, including displaying the total number of sessions and the number of sessions with new messages directly in the window's title bar (e.g., "8 IMs (3 new)"). This directly maps to the claim's requirements for displaying session counts in the header.
  • Motivation to Combine: A POSITA would be motivated to add Canfield's teachings to the base device to provide the user with useful, consolidated statistics about their concurrent conversations. This functionality enhances the user's ability to manage multiple chats efficiently, which is particularly beneficial on a handheld device.
  • Expectation of Success: Adding a known informational display element from one IM system (Canfield) to another (VD/Sidekick) was a conventional design choice that would have been expected to function as intended.

Ground 3: Obviousness of Claim 19 over VD-Sinivaara-Werndorfer

• Prior Art Relied Upon: VD, Sinivaara, and Werndorfer.

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that the same base combination that renders claim 11 obvious also inherently discloses the limitations of dependent claim 19. Claim 19 adds "parsing textual characters and graphical symbols" and "confirming the entered characters are compatible with the instant messaging service." Petitioner contended that VD's system, which automatically interprets a text sequence like :) and converts it into a graphical emoticon, necessarily "parses" the input characters. This conversion only occurs for recognized sequences, thereby inherently "confirming" that the characters are "compatible" with the IM service.
  • Motivation to Combine: The motivation is the same as for the base combination rendering claim 11 obvious. The features of claim 19 were argued to be inherent or obvious consequences of implementing the IM system taught by the primary combination.

• Additional Grounds: Petitioner asserted an additional obviousness challenge for claim 13 over the VD-Sinivaara-Werndorfer combination, alternatively combined with Saric (CA Application # 2,363,978), to teach generating a specific character sequence for a graphical symbol.

4. Key Claim Construction Positions

• Petitioner stated it applied claim constructions previously adopted by the Board in related proceedings. The most critical construction was for the term "graphical symbols" within the phrase "generating textual characters and graphical symbols."
  • The Board had construed "graphical symbols" to mean "graphical emoticons." This construction was central to Petitioner's arguments, as it directly linked the claim language to the prior art's extensive teachings on creating and displaying emoticons in IM clients.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under §314(a) (based on Fintiv factors) and §325(d) would be inappropriate.
• The core argument against denial was that the Patent Owner’s litigation strategy forced the timing of the petition. The Patent Owner allegedly filed complaints against the Petitioners and then voluntarily dismissed them, triggering the one-year statutory bar for filing an IPR but leaving Petitioners without information regarding infringement contentions.
• For Fintiv, Petitioner noted that the only co-pending litigation was stayed, in its earliest stages, and did not involve the Petitioners. For §325(d), Petitioner contended that the grounds presented were substantially different from prior challenges, as they addressed different claims and introduced new prior art references and combinations (e.g., Sidekick, Canfield) not previously considered against the challenged claims.

6. Relief Requested

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