6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50 Page 1 of 5
`
`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF SOUTH CAROLINA
`GREENVILLE DIVISION
`
`Civil Action No. 6:13-cv-2959-JMC
`
`JURY TRIAL DEMANDED
`
`)))))))))))))
`
`ZIPIT WIRELESS INC.,
`
`Plaintiff,
`
`v.
`
`BLACKBERRY LIMITED f/k/a RESEARCH
`IN MOTION LIMITED and BLACKBERRY
`CORPORATION f/k/a RESEARCH IN
`MOTION CORPORATION,
`
`Defendants.
`
`JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT
`
`Pursuant to the Consent Amended Scheduling Order, Plaintiff Zipit Wireless Inc.
`
`(“Zipit”), and Defendants BlackBerry Limited and BlackBerry Corporation (collectively
`
`“BlackBerry”) file this Joint Claim Construction and Prehearing Statement.
`
`(a)
`
`Construction of Terms on Which the Parties Agree
`
`The parties agree on the following constructions of terms proposed in the parties’
`
`Simultaneous Exchange of Preliminary Claim Constructions and Extrinsic Evidence:
`
`Term
`“instant messaging” / “instant message”
`
`Agreed Construction
`“communication of messages between users
`real-time manner”
`“message
`in a
`/
`communicated between users in a real-time
`manner”
`
`(b)
`
`Each party’s proposed construction of each disputed term, together with an
`identification of all references from the specification or prosecution history that
`support that construction, and an identification of any extrinsic evidence known to
`the party on which it intends to rely either to support its proposed construction or to
`oppose any other party’s proposed construction, including, but not limited to, as
`permitted by law, dictionary definitions, citations to learned treatises and prior art,
`and testimony of percipient and expert witnesses.
`
`1
`
`BLACKBERRY EX. 1034, pg. 1
`Blackberry v. Zipit
`IPR2014-01507
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50 Page 2 of 5
`
`The Parties respectfully request the Court to construe the terms set forth in the
`
`attached Exhibit A. The requested information is also set out in the attached Exhibit A.
`
`BlackBerry submits Dr. Arthur T. Brody as an expert to provide testimony by declaration
`
`related to claim construction.
`
`(c)
`
`An identification of the terms whose construction will be most significant to the
`resolution of the case and which will be case or claim dispositive.
`
`Zipit presently believes that the Court’s construction of the terms “handheld
`
`terminal,” “housing,” “beacon,” and “graphical symbols” will be most significant to the
`
`resolution of the case. Zipit is not presently aware at this stage of the case of any term
`
`whose construction will be case or claim dispositive.
`
`BlackBerry identifies the following terms as most significant to the resolution of the
`
`case:
`
`“in response to” / “in response to a loss of a network connection, displays conversation
`
`histories for conversations that were active when the network connection was lost” /
`
`“displaying conversation histories for active conversations terminated by a loss of a
`
`network connection”
`
`BlackBerry believes that this term is significant and/or that adoption of its
`
`proposed constructions for these terms would be claim dispositive as to
`
`noninfringement of the ‘870 Patent
`
`“automatically searches for wireless, Internet protocol network beacons upon all of the
`
`conversation histories being displayed” / “automatically searching for wireless, Internet
`
`protocol network beacons after the conversation histories are displayed”
`
`2
`
`BLACKBERRY EX. 1034, pg. 2
`Blackberry v. Zipit
`IPR2014-01507
`
`
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`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50 Page 3 of 5
`
`BlackBerry believes that this term is significant and/or that adoption of its
`
`proposed constructions for these terms would be claim dispositive as to
`
`noninfringement of the ‘870 Patent
`
`“instant messaging terminal”
`
`BlackBerry believes that this term is significant and/or that adoption of its
`
`proposed construction for this term would be claim dispositive as to
`
`noninfringement of the ‘870 and ‘837 Patents
`
`“device database” / “control database”
`
`BlackBerry believes that this term is significant and/or that adoption of its
`
`proposed constructions for these terms would be claim dispositive as to
`
`noninfringement of the ‘678 and ‘694 Patents
`
`“wireless, Internet protocol communications module” / “wireless, Internet protocol
`
`access point”
`
`BlackBerry believes that these terms are significant and/or that adoption of its
`
`proposed position would be claim dispositive as to invalidity of the ‘870
`
`Patent
`
`“instant messaging protocol”
`
`BlackBerry believes that this term is significant.
`
`“beacon”
`
`BlackBerry believes that this term is significant
`
`(d)
`
`The anticipated length of time necessary for the Claim Construction Hearing.
`
`Zipit estimates that the Claim Construction Hearing will take approximately two
`
`hours. BlackBerry estimates that the Claim Construction Hearing will take approximately
`
`four hours. All allotted time will be divided evenly between Zipit and BlackBerry.
`3
`
`BLACKBERRY EX. 1034, pg. 3
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50 Page 4 of 5
`
`(e) Whether any party proposes to call one or more witnesses at the Claim
`Construction Hearing , the identity of each such witness, and for each witness, a
`summary of his or her testimony including, for any expert, each opinion to be
`offered related to claim construction.
`
`The Parties do not intend to call any witnesses at the claim construction hearing, but may
`
`make experts available to answer questions from the Court at the hearing.
`
`Respectfully submitted, this 3rd day of September, 2014.
`
`/s/ Robert P. Foster
`
`Robert P. Foster
`FOSTER LAW FIRM, LLC
`601 East McBee Avenue
`Suite 104
`Greenville, SC 29601
`Telephone: (864) 242-6200
`Facsimile: (864) 233-0290
`Email: rfoster@fosterfoster.com
`
`Stephen R. Risley
`(Admitted Pro Hac Vice)
`SMITH RISLEY TEMPEL & SANTOS LLC
`Two Ravinia Drive, Suite 700
`Atlanta, GA 30346
`Telephone: (770) 709-0022
`Facsimile: (770) 804-0900
`Email: srisley@srtslaw.com
`
`Attorneys for Plaintiff
`Zipit Wireless, Inc.
`
`4
`
`BLACKBERRY EX. 1034, pg. 4
`Blackberry v. Zipit
`IPR2014-01507
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50 Page 5 of 5
`
`By: /s/ Steve A. Matthews
`
`Steve A. Matthews
`Federal ID No. 5119
`smatthews@hsblawfirm.com
`HAYNSWORTH SINKLER BOYD, P.A.
`1201 Main Street (29201-3226)
`P.O. Box 11889 (29211-1889)
`Columbia, South Carolina
`(803) 779-3080
`
`OF COUNSEL:
`(Admitted pro hac vice)
`Andrew N. Thomases
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`(650) 617 4000
`
`(Admitted pro hac vice)
`Gene W. Lee
`Todd M. Simpson
`Matthew J. Moffa
`Kyotaro Hemmi
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, NY 10036-8704
`(212) 596-9000
`
`Attorneys for Defendants BLACKBERRY
`LIMITED and BLACKBERRY
`CORPORATION
`
`5
`
`BLACKBERRY EX. 1034, pg. 5
`Blackberry v. Zipit
`IPR2014-01507
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 1 of 13
`
`EXHIBIT A
`
`1
`
`‘870 Patent and
`‘837 Patent
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`Construction:
`“A terminal approximately the size of
`a cellular mobile phone”
`Intrinsic and Extrinsic Evidence:
`
`“handheld terminal”
`
`the Provisional Patent Application to
`the ‘870/’837 Patent;
`the ‘870/’837 Patent, including at
`Col. 1, Lines 52-56; Col. 4, Lines
`28-30, Lines 38-43, and Lines 50-52;
`Col. 7, Lines 4-11; Col. 9, Lines 6-
`15; Col. 23, Lines 10-37;
`the ‘678/’694 Patent, including at
`Col. 3, Lines 38-41;
` Declaration of Dr. Alon Konchitsky,
`including at p. 9-11
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`Construction:
`Plain and Ordinary Meaning
`
`INTRINSIC SUPPORT
`
`‘000 Provisional application, e.g. at
`[0029]
`
`‘870 Specification1, e.g., at 1:52-56;
`2:55-59; 4:8-12
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`Microsoft Computer Dictionary, 5th
`Ed. (2002) (excerpts)
`(BB_ZIP0123544-0123548)
`
`1 All references to passages in the ‘870 Specification should be deemed to include citations to the corresponding text as it appears in the ‘837 specification.
`
`1
`
`BLACKBERRY EX. 1034, pg. 6
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 2 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`2
`
`‘870 Patent and
`‘837 Patent
`
`“housing”
`
`3
`
`‘870 Patent and
`‘837 Patent
`
`“beacon”
`
`Construction:
`“Non-detachable casing”
`Intrinsic and Extrinsic Evidence:
`
`the Provisional Patent Application to
`the ‘870/’837 Patent;
`the ‘870/’837 Patent, including at
`Col. 1, Lines 52-56; Col. 4, Lines
`35-52-; Col. 6, Line 60 -Col. 7, Line
`11; Col. 9, Lines 6-15; Col. 11, Line
`59-Col. 12, Line 10;
`the ‘678/’694 Patent, including at
`Col. 3, Lines 38-41;
` Declaration of Dr. Alon Konchitsky,
`including at p. 11-12
`
`Construction:
`“a signal from a Wi-Fi device that
`indicates the proximity or presence of
`the device”
`Intrinsic and Extrinsic Evidence:
`the ‘870 Patent, including at Col. 3,
`Lines 40-47; Col. 5, Lines 6-11; Col.
`10, Lines 40-47;
` Declaration of Dr. Alon Konchitsky,
`
`2
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`ZWI000001 – ZWI000003
`Construction:
`
`Plain and Ordinary Meaning
`
`INTRINSIC SUPPORT
`
`‘870 Prosecution History, e.g., at
`November 3, 2006 Amendment
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`Merriam Webster’s Collegiate
`Dictionary 11th Ed. (2003) (excerpts)
`(BB_ZIP0123192–0123197)
`
`Construction:
`“a signal from a device that indicates
`the proximity or location of the device
`or its readiness to perform a task”
`
`INTRINSIC SUPPORT
`
`‘870 Specification, e.g. at 5:4-14,
`
`BLACKBERRY EX. 1034, pg. 7
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 3 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`including at p. 21-23
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`7:24-28, 10:41-43, 13:4-9
`
`4
`
`‘870 Patent and
`‘837 Patent
`
`“graphical symbols”
`
`‘870 Prosecution History, e.g., at
`November 3, 2006 Amendment
`
`EXTRINSIC SUPPORT
`Expert Testimony of Dr. Arthur T.
`Brody
`
`“Beacon Signals: What, Why, How,
`and Where?” IEEE Computer, October
`2001, 108-110 (BB_ZIP0123189–
`0123191)
`Construction:
`
`Plain and Ordinary Meaning
`
`INTRINSIC SUPPORT
`
`‘870 Specification, e.g., at 1:52-56,
`3:26-27
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`Merriam Webster’s Collegiate
`
`Construction:
`“Emoticons”
`Intrinsic and Extrinsic Evidence:
`the ‘870 Patent, including at Col. 3,
`Lines 26-27; Col. 4, Lines 50-62;
`Col. 6, Lines 25-30; Col. 7, Lines 4-
`19; Col. 19, Lines 19-26;
` Declaration of Dr. Alon Konchitsky,
`including at p. 24-25
`
`3
`
`BLACKBERRY EX. 1034, pg. 8
`Blackberry v. Zipit
`IPR2014-01507
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 4 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`5
`
`’870 Patent and
`’837 Patent
`
`“instant messaging
`terminal”
`
`Construction:
`“A terminal approximately the size of
`a cellular mobile phone capable of
`sending and receiving instant
`messages”
`Intrinsic and Extrinsic Evidence:
`
`the Provisional Patent Application to
`the ‘870/’837’ Patent;
`the ‘870/’837 Patent, including at
`Col. 1, Lines 52-56; Col. 4, Lines
`28-30, Lines 38-43, and Lines 50-52;
`Col. 7, Lines 4-11; Col. 9, Lines 6-
`15; Col. 23, Lines 10-37;
`the ‘678/’694 Patent, including at
`Col. 3, Lines 38-41;
` Declaration of Dr. Alon Konchitsky,
`including at p. 9-11.
`
`6
`
`‘870 Patent,
`’837 Patent
`
`“instant messaging
`protocol”
`
`Construction:
`“A system of digital rules for the
`
`4
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`Dictionary 11th Ed. (2003) (excerpts)
`(BB_ZIP0123192–0123197)
`Construction:
`
`“dedicated instant messaging terminal
`that is not primarily a cell phone or
`wireless e-mail communications
`device”
`
`INTRINSIC SUPPORT
`
`‘000 Provisional application, e.g., at
`[0002]-[0005], [0007]-[0008]
`
`‘870 Specification, e.g., at 1:52-58;
`3:7-10, and all references to Zipit’s
`embodiment of an instant messaging
`terminal / device, shown, for example,
`as the “Zippy” device in Figure 2
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`U.S. Patent No. 6,665,173, e.g., at
`2:39-61 (BB_ZIP0123549–0123571)
`Construction:
`
`“a protocol that does not require a
`
`BLACKBERRY EX. 1034, pg. 9
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 5 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`exchange of instant messages without
`using an intermediary protocol”
`Intrinsic and Extrinsic Evidence:
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`proxy or translation processing to
`communicate instant messages with an
`instant messaging service”
`
`the Provisional Patent Application to
`the ‘870/’837 Patent;
`the ‘870/’837 Patent, including at
`Col. 5, Line 64-Col. 6, Line 14; Col.
`12, Lines 16-22; Col. 13, Lines 35-
`43
` Newton’s Telecom Dictionary, CMP
`Books, 19th Ed., March 2003,
`including at p. 640;
` File History of ‘870 patent,
`including at September 13, 2010
`Amendment, p. 8-10;
` File History of ‘837 patent,
`including at November 3, 2006
`Amendment, p.16-18;
`Declaration of Dr. Alon Konchitsky,
`including at p. 12-15
`
`INTRINSIC SUPPORT
`
`‘870 Specification, e.g. at 3:23-25 and
`Tables
`
`‘000 Provisional application, e.g., at
`[0002]-[0004], [0035], claims,
`appendix p23
`
`‘870 Prosecution History, e.g., at
`November 3, 2006 Amendments and
`Comments
`
`‘837 Prosecution History, e.g., at
`September 13, 2010 Amendment and
`Comments
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`7
`
`’870 Patent
`
`“wireless, Internet
`protocol communications
`module”
`
`Construction:
`“A module which enables wireless
`communication via Wi-Fi without
`using an intermediary protocol, for
`
`Indefinite
`
`INTRINSIC SUPPORT
`
`‘000 Provisional application, e.g., at
`
`5
`
`BLACKBERRY EX. 1034, pg. 10
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 6 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`connection to a system of
`interconnected computer networks”
`Intrinsic and Extrinsic Evidence:
`
`the Provisional Patent Application to
`the ‘870/’837 Patent;
`the ‘870/’837 Patent, including at
`Col. 1, Line 66 – Col. 2, Line 5; Col.
`4, Lines 43-45; Col. 6, Lines 15-
`21and Lines 40-43; Col. 8, Lines 33-
`38; Col. 12, Lines 35-39; Col. 13,
`Lines 35-43
` Newton’s Telecom Dictionary, CMP
`Books, 19th Ed., March 2003,
`including at p. 419;
` File History of ‘837 patent,
`including at November 3, 2006
`Amendment, p.15-18;
` Declaration of Dr. Alon Konchitsky,
`including at p. 15-17
`
`6
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`[0005]-[0006], [0008]
`
`‘870 Specification, e.g. at 2:28-50,
`5:4-14, 7:24-28, 10:40-11: 41, 12:11-
`43, 13:4-9, 14:47-59, Fig. 1 and
`corresponding disclosure. Fig. 3 and
`corresponding disclosure, Fig. 7A and
`corresponding disclosure, Fig. 7B and
`corresponding disclosure, Fig. 8 and
`corresponding disclosure.
`
`‘870 Prosecution History, e.g., at
`November 3, 2006 Amendment and
`comments
`
`‘837 Prosecution History, e.g., at
`September 13, 2010 Amendment and
`Comments
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`Microsoft Computer Dictionary, 5th
`Ed. (2002) (excerpts)
`(BB_ZIP0123544-0123548)
`
`RFC 791, “Internet Protocol”,
`September 1981
`
`BLACKBERRY EX. 1034, pg. 11
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 7 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`8
`
`’870 Patent
`
`“wireless, Internet
`protocol access point”
`
`Construction:
`“A device that receives Wi-Fi signals
`to allow connection to a system of
`interconnected computer networks”
`Intrinsic and Extrinsic Evidence:
`
`the Provisional Patent Application to
`the ‘870/’837 Patent;
`the ‘870/’837 Patent, including at
`Col. 1, Line 66 – Col. 2, Line. 7;
`Col. 4, Lines 43-45; Col. 6, Lines
`15-21; Col. 8, Lines 33-38; Col. 10,
`Lines 24-39;
` Newton’s Telecom Dictionary, CMP
`Books, 19th Ed., March 2003,
`including at p. 37;
` Declaration of Dr. Alon Konchitsky,
`including at p. 17-18
`
`7
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`RFC 793, “Transmission Control
`Protocol”, September 1981
`(BB_ZIP0123615–0123706)
`
`RFC 1889, “RTP: A Transport
`Protocol for Real-Time Applications”,
`January 1996 (BB_ZIP0123468–
`0123543)
`
`Indefinite
`
`INTRINSIC SUPPORT
`
`‘000 Provisional application, e.g., at
`[0005]-[0006], [0008]
`
`‘870 Specification, e.g. at 2:28-50,
`5:4-14, 7:24-28, 10:40-11: 41, 12:11-
`43, 13:4-9, 14:47-59, Fig. 1 and
`corresponding disclosure. Fig. 3 and
`corresponding disclosure, Fig. 7A and
`corresponding disclosure, Fig. 7B and
`corresponding disclosure, Fig. 8 and
`corresponding disclosure.
`
`‘870 Prosecution History, e.g., at
`November 3, 2006 Amendment and
`comments
`
`‘837 Prosecution History, e.g., at
`
`BLACKBERRY EX. 1034, pg. 12
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 8 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`September 13, 2010 Amendment and
`Comments
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`Microsoft Computer Dictionary, 5th
`Ed. (2002) (excerpts)
`(BB_ZIP0123544-0123548)
`
`RFC 791, “Internet Protocol”,
`September 1981
`
`RFC 793, “Transmission Control
`Protocol”, September 1981
`(BB_ZIP0123615–0123706)
`
`RFC 1889, “RTP: A Transport
`Protocol for Real-Time Applications”,
`January 1996 (BB_ZIP0123468–
`0123543)
`
`9
`
`’870 Patent,
`’837 Patent,
`’678 Patent, and
`’694 Patent
`
`“in response to”
`
`Construction:
`Construction of this term is
`unnecessary as it has a plain and
`ordinary meaning known to a person
`of ordinary skill in the art.
`
`Construction:
`
`“as a result of”
`
`INTRINSIC SUPPORT
`
`8
`
`BLACKBERRY EX. 1034, pg. 13
`Blackberry v. Zipit
`IPR2014-01507
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 9 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`To the extent that this term needs to be
`construed, this term means
`“An afterwards action”
`Intrinsic and Extrinsic Evidence:
`the ‘870/’837 Patent, including at
`Col. 8, Lines 62-66; Col. 18, Lines
`11-16;
`-the ‘678/’694 Patent, including at
`Col. 6, Lines 62-65; Col. 7, Lines
`60-64;
` Declaration of Dr. Alon Konchitsky,
`including at p. 18-20
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`‘870 Specification, e.g., at Claims 12
`and 23, 5:52-63, 7:8-12, 8:6-16, 17:6-9
`
`‘678 Specification2, e.g., at 4:60-
`5:18; 5:31-33; 7:12-39; 7:47-52; 7:60-
`8:3; 9:41-58; 10:2-7
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`Merriam Webster’s Collegiate
`Dictionary 11th Ed. (2003) (excerpts)
`(BB_ZIP0123192–0123197)
`
`10 ’870 Patent
`
`“in response to a loss of a
`network connection,
`displays conversation
`histories for conversations
`that were active when the
`network connection was
`lost”
`
`Construction:
`Construction of this term is
`unnecessary as it has a plain and
`ordinary meaning known to a person
`of ordinary skill in the art.
`To the extent that this term needs to be
`construed, this term means
`“As an afterward action to an event
`where the ability to transmit or receive
`digital messages has ended, a record
`of the messages exchanged during a
`
`Construction:
`
`“as a result of a loss of a network
`connection, [displays / displaying]
`conversation histories for
`conversations that were active when
`the network connection was lost”
`
`INTRINSIC SUPPORT
`
`‘000 Provisional application, e.g., at
`69-70
`
`2 All references to passages in the ‘678 Specification should be deemed to include citations to the corresponding text as it appears in the ‘694 specification.
`
`9
`
`BLACKBERRY EX. 1034, pg. 14
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 10 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`communications session that was
`terminated are displayed”
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`‘870 Specification, e.g., at 5:52-63,
`8:6-16, 18:63-19:17, Claim 12
`
`“displaying conversation
`histories for active
`conversations terminated
`by a loss of a network
`connection”
`
`11 ’870 Patent
`
`“automatically searches
`for wireless, Internet
`protocol network beacons
`upon all of the
`conversation histories
`being displayed”
`
`Construction of this term is
`unnecessary as it has a plain and
`ordinary meaning known to a person
`of ordinary skill in the art.
`To the extent that this term needs to be
`construed, this term means
`“Displaying a record of the messages
`exchanged during a communications
`session that was terminated by an
`event where the ability to transmit or
`receive digital messages has ended”
`Intrinsic and Extrinsic Evidence:
`the ‘870/’837 Patent, including at
`Col. 8, Lines 62-66; Col. 18, Lines
`11-16; Col. 19, Lines 11-15;
` Declaration of Dr. Alon Konchitsky,
`including at p. 20-21
`Construction:
`“Automatically searches for signals
`announcing the proximity or presence
`of a Wi-Fi device at some point after
`the record of the messages exchanged
`during a communications session have
`been displayed”
`
`10
`
`‘870 Prosecution History, e.g., at
`November 3, 2006 Amendment and
`Comments, January 25, 2007 Office
`Action, April 30, 2007 Amendment
`and Comments
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`ZWI018148
`
`Merriam Webster’s Collegiate
`Dictionary 11th Ed. (2003) (excerpts)
`(BB_ZIP0123192–0123197)
`
`Indefinite because “wireless, Internet
`protocol” is indefinite; alternatively,
`“automatically [searches / searching]
`for wireless, Internet protocol network
`beacons after all of the conversation
`histories are displayed”
`
`INTRINSIC SUPPORT
`
`BLACKBERRY EX. 1034, pg. 15
`Blackberry v. Zipit
`IPR2014-01507
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 11 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`“automatically searching
`for wireless, Internet
`protocol network beacons
`after the conversation
`histories are displayed”
`
`12 ’678 Patent and
`’694 Patent
`
`“device database”
`
`“Automatically searches for signals
`announcing the proximity or presence
`of a Wi-Fi device after the record of
`the messages exchanged during a
`communications session have been
`displayed”
`Intrinsic and Extrinsic Evidence:
` See 7 and 8 above for “wireless,
`Internet protocol”
`the ‘870 Patent, including at Col. 3,
`Lines 40-43; Col. 5, Lines 6-11; Col.
`10, Lines 40-47;
` Declaration of Dr. Alon Konchitsky,
`including at p. 21-23
`Construction:
`Construction of this term is
`unnecessary as it has a plain and
`ordinary meaning known to a person
`of ordinary skill in the art.
`To the extent that this term needs to be
`construed, this term means “A
`database that stores device data ”
`Intrinsic and Extrinsic Evidence:
`
`‘000 Provisional application, e.g. at
`p65
`
`‘870 Specification, e.g., at 18:63-19:17
`
`‘870 Prosecution History, e.g., at
`January 25, 2007 Office Action, April
`25, 2007 Amendment and Comments
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`ZWI018148
`
`Construction:
`
`“a database, distinct from a control
`database, that stores device data”
`
`INTRINSIC SUPPORT
`
`‘107 Provisional application, e.g., at
`[0021], [0027], [0029], [0035], Fig. 1
`and corresponding disclosure, Fig. 4
`and corresponding disclosure
`
`11
`
`BLACKBERRY EX. 1034, pg. 16
`Blackberry v. Zipit
`IPR2014-01507
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 12 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`the ‘678/’694 Patent, including at
`Col. 5, Lines 3-6; Col. 6, Lines 21-
`33;
` Newton’s Telecom Dictionary, CMP
`Books, 19th Ed., March 2003,
`including at p. 225;
` Declaration of Dr. Alon Konchitsky,
`including at p. 23
`
`13 ’678 Patent and
`’694 Patent
`
`“control database”
`
`Construction:
`Construction of this term is
`unnecessary as it has a plain and
`ordinary meaning known to a person
`of ordinary skill in the art
`To the extent that the Court decides to
`construe this term, this term means “A
`database that stores control data”
`Intrinsic and Extrinsic Evidence:
`the ‘678/’694 Patent, including at
`Col. 2, Lines 55-56; Col. 7, Lines
`26-28;
` Newton’s Telecom Dictionary, CMP
`Books, 19th Ed., March 2003,
`including at p. 225;
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`
`‘6783 Specification, e.g., at Abstract,
`2:42-56; 4:60-5:18, 6:21-23, 7:12-28,
`7:53-8:3, 9:41-45, Fig. 1 and
`corresponding disclosure, Fig. 4 and
`corresponding disclosure, claims 1, 4
`
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`Construction:
`
`“a database, distinct from a device
`database, that stores control data”
`
`INTRINSIC SUPPORT
`
`‘107 Provisional application, e.g., at
`[0021], [0027], [0029], [0035], Fig. 1
`and corresponding disclosure, Fig. 4
`and corresponding disclosure
`
`‘678 Specification, e.g., at Abstract,
`2:42-56; 4:60-5:18, 6:21-23, 7:12-28,
`7:53-8:3, 9:41-45, Fig. 1 and
`corresponding disclosure, Fig. 4 and
`corresponding disclosure, claims 1, 4
`
`3 All references to passages in the ‘678 Specification should be deemed to include citations to the corresponding text as it appears in the ‘694 specification.
`
`12
`
`BLACKBERRY EX. 1034, pg. 17
`Blackberry v. Zipit
`IPR2014-01507
`
`
`
`

`
`6:13-cv-02959-JMC Date Filed 09/03/14 Entry Number 50-1 Page 13 of 13
`
`Asserted Patents Terms or Claim Phrases Plaintiff’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
` Declaration of Dr. Alon Konchitsky,
`including at p. 24
`
`Defendant’s Proposed Construction
`and Intrinsic / Extrinsic Evidence
`EXTRINSIC SUPPORT
`
`Expert Testimony of Dr. Arthur T.
`Brody
`
`13
`
`BLACKBERRY EX. 1034, pg. 18
`Blackberry v. Zipit
`IPR2014-01507