UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORP. AND BLACKBERRY LTD.,
`Petitioner,
`
`v.
`
`ZIPIT WIRELESS INC.,
`Patent Owner.
`____________
`
`IPR2014-01507
`Patent No. 7,292,870
`____________
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`1
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`Blackberry Ex 1058, pg. 1
`Blackberry v. Zipit
`IPR2014-01507
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`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BLACKBERRY CORP. AND BLACKBERRY LTD.,
`Petitioner,
`
`v.
`
`ZIPIT WIRELESS INC.,
`Patent Owner.
`____________
`
`IPR2014-01507
`Patent No. 7,292,870
`____________
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`1
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`Blackberry Ex 1058, pg. 1
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`TABLE OF CONTENTS
`
`INTRODUCTION AND SUMMARY OF REPLY ........................................ 1
`ARGUMENT ................................................................................................... 2
`A.
`Patent Owner’s Expert Falsified his Credentials
`Regarding a PhD in Electrical Engineering from
`Bournemouth University ....................................................................... 3
`This is Not the First Time Konchitsky Inflated his
`Credentials ............................................................................................. 8
`The Broadest Reasonable Interpretation of “Graphical
`Symbols” is Not “Graphical Emoticons” .............................................. 9
`Even Under Patent Owner’s Construction, MSN
`Messenger for Pocket PC Generates and Displays
`Graphical Symbols .............................................................................. 22
`Patent Owner and Konchitsky Construe “Graphical
`Symbols” More Narrowly in the Current IPR than in
`District Court ....................................................................................... 23
`Patent Owner Failed to Demonstrate a Nexus Between
`the Alleged Secondary Indicia of Non-Obviousness and
`the Claimed Invention ......................................................................... 24
`III. CONCLUSION .............................................................................................. 25
`
`E.
`
`F.
`
`
`
`i
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`
`
`
`
`
`
`
`I.
`II.
`
`B.
`
`C.
`
`D.
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`Blackberry Ex 1058, pg. 2
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`IPR2014-01507
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Bonar v. Dean Witter Reynolds, Inc.,
` 835 F.2d 1378 (11th Cir. 1988) ............................................................................. 8
`
`Facebook, Inc. v. Pragmatus AV, LLC,
`2014 U.S. App. LEXIS 17678 (Fed. Cir. Sept. 11, 2014) ................................... 24
`
`
`Gnosis S.P.A. v. S. Ala. Medical Sci. Found.,
` IPR2013-00116 (PTAB June 20, 2014) ........................................................ 24, 25
`
`In re Kao,
` 639 F.3d 1057 (Fed. Cir. 2011) ............................................................................ 24
`
`Intellectual Property Dev., Inc. v. UA-Columbia Cablevision
`of Westchester, Inc.,
`336 F.3d 1308 (Fed. Cir. 2003)..................................................................... 16, 20
`
`
`Interactive Gift Express, Inc. v. CompuServe Inc.,
`231 F.3d 859 (Fed. Cir. 2000)....................................................................... 16, 20
`
`
`Kroy IP Holdings, LLC v. Safeway, Inc.,
` 2015 U.S. Dist. LEXIS 69364 (E.D. Tex. May 29, 2015) ............................ 16, 20
`
`Merck & Co., Inc. v. Teva Pharm. USA, Inc.,
` 395 F.3d 1364 (Fed. Cir. 2005) ............................................................................ 24
`
`Mitchell v. Holt,
`Interference No. 105,746 (BPAI Apr. 27, 2012) ................................................... 8
`
`
`Teleflex, Inc. v. Ficosa N. Am. Corp.,
`299 F.3d 1313 (Fed. Cir. 2002)............................................................................ 15
`
`
`
`ii
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`IPR2014-01507
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`EXHIBIT LIST
`
`
`
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`
`Exhibit Description
`1001
`U.S. Patent No. 7,292,870 to Heredia et al.
`1002
`Excerpts from the prosecution history of U.S. Patent No. 7,292,870
`1003
`Declaration of Arthur T. Brody, Ph.D.
`1004
`Toshiba Pocket PC e740 User’s Manual
`1005
`Symbol PPT 2800 Series Produce Reference Guide for Pocket PC 2002
`Excerpts of Special Edition: Using Pocket PC 2002
`1006
`1007
`Toshiba Pocket PC e750 User’s Manual
`1008
`Exhibit A to Patent Owner’s Infringement Contentions dated May 2,
`2014
`Archived screenshots showing lists of emoticons used with various
`instant messaging programs
`Article entitled “Anytime, Anywhere” published on March 31, 2003 in
`the Wall Street Journal
`Verizon LTE White Paper entitled “LTE: The Future of Mobile
`Broadband Technology”
`Intentionally Left Blank
`Intentionally Left Blank
`Huawei Respondents’ Corrected Identification of Expert Witnesses,
`Investigation No. 337-TA-868 (U.S.I.T.C. June 27, 2013)
`Declaration of Alon Konchitsky, IPR2012-00026 and IPR2013-00109
`(May 21, 2013)
`Excerpts of July 2, 2013 A. Konchitsky deposition transcript in
`IPR2012-00026 and IPR2013-00109
`September 2001 Bournemouth University Research Awards Handbook
`British Library search results for “Konchitsky”
`March 3, 2014 British Library Research Report
`
`1015
`
`1016
`
`1017
`1018
`1019
`
`iii
`
`
`
`
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`Blackberry Ex 1058, pg. 4
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`IPR2014-01507
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`
`Directions and maps, Bournemouth University website
`August 27, 2015 A. Konchitsky deposition transcript
`September 8, 2015 Declaration of Prof. Mark Hadfield, Bournemouth
`University
`Photograph of bookshelf from the office of former Dean James Roach,
`Bournemouth University
`Photograph of bookshelf from the office of former Dean James Roach,
`Bournemouth University
`Photograph of bookshelf from the office of former Dean James Roach,
`Bournemouth University
`March 13, 2014 letter regarding Alon Konchitsky from Dr. F. Knight,
`Bournemouth University
`Results of Unit E database search for the name “Konchitsky”
`Results of Scopus search for “Konchitsky” and “Bournemouth”
`Konchitsky PhD diploma
`2002 Bournemouth University PhD diploma (name and thesis title
`redacted)
`September 9, 2015 Declaration of Emma Jackson, Bournemouth
`University
`September 9, 2015 Declaration of Dr. Fiona Knight, Bournemouth
`University
`Konchitsky MA diploma
`Joint Claim Construction and Prehearing Statement, Zipit Wireless Inc.
`v. BlackBerry Limited et al., Case No. 13-2959 (D.S.C.)
`September 3, 2014 Declaration of Alon Konchitsky, Zipit Wireless Inc.
`v. BlackBerry Limited et al., Case No. 13-2959 (D.S.C.)
`Introduction, Special Edition: Using Pocket PC 2002
`Dana Internet Solutions Guide
`
`iv
`
`
`
`1020
`1021
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`1028
`1029
`1030
`
`1031
`
`1032
`
`1033
`1034
`
`1035
`
`1036
`1037
`
`
`
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`
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`Blackberry Ex 1058, pg. 5
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`INTRODUCTION AND SUMMARY OF REPLY
`
`I.
`
`The response filed by Zipit Wireless Inc. (“Patent Owner”), the purported
`
`owner of U.S. Patent No. 7,292,870 (“the ‘870 patent”), is based almost entirely on
`
`the construction of the ubiquitous claim term “graphical symbols.” Patent Owner
`
`narrowly construes this term to mean “graphical emoticons.” Patent Owner’s
`
`construction
`
`in
`
`this proceeding, however,
`
`is narrower
`
`than
`
`its proposed
`
`construction of “graphical symbols” in its underlying infringement suit brought
`
`against BlackBerry Corp. and BlackBerry Ltd. (“BlackBerry” or “Petitioner”).
`
`Indeed, Patent Owner’s construction is so unreasonable that it could only be
`
`supported with the declaration of an “expert” with falsified credentials who
`
`provided evasive and nonsensical testimony in his deposition.
`
`Nowhere in the ‘870 patent is a “graphical symbol” defined implicitly or
`
`explicitly as a “graphical emoticon.” Putting aside the declaration of Patent
`
`Owner’s “expert” who falsely claims to have received a PhD in electrical
`
`engineering from Bournemouth University, Patent Owner’s unreasonably narrow
`
`construction is based on: (1) its self-serving interpretation of embodiments in the
`
`specification that it seeks to import into the claims; and (2) U.S. Patent No.
`
`6,629,793 (“Miller,” Ex. 2003), which was not incorporated by reference and cited
`
`only in a single sentence in the Background section of the ‘870 patent as an
`
`example of prior art keyboards that were deemed too unwieldy for instant
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`messaging (“IM”) on mobile devices (i.e., not cited for anything having to do with
`
`graphical symbols). Regardless, MSN Messenger for Pocket PC 2002 generates
`
`and displays graphical symbols even under Patent Owner’s construction.
`
`Patent Owner also relies on “widespread acclaim” and “industry praise” of
`
`its devices that allegedly practice certain of the challenged claims as secondary
`
`indicia of non-obviousness. But Patent Owner utterly fails to demonstrate any
`
`nexus between such “acclaim” and the claimed invention.
`
`For these reasons, and as discussed in further detail below, the prior art
`
`renders the challenged claims unpatentable for the grounds set forth in the Petition.
`
`II. ARGUMENT
`
`The only claim term at issue in this proceeding is “graphical symbols.”
`
`According to Patent Owner, this term should be limited to “graphical emoticons,” a
`
`phrase found nowhere in the ‘870 patent.1 Neither Patent Owner nor its alleged
`
`
`1 Patent Owner’s “expert,” Alon Konchitsky, read the phrase “graphical emoticons”
`
`into the specification because, according to him, “All emoticons that are shown in
`
`the patent are graphical emoticons.” (Ex. 1021, Aug. 27, 2015 Konchitsky Tr. at
`
`112:20-21). At deposition, he refused to acknowledge that the symbols he calls
`
`“text emoticons” – such as “:-)” – are shown in the ‘837 patent (id. at 113:2-114:8),
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`despite their presence in, for example, Tables 1-3.
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`2
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`expert 2 dispute that the cited prior art teaches every other limitation 3 of the
`
`challenged claims. Patent Owner’s desperate attempt to rescue the claims, however,
`
`requires such an unreasonably narrow interpretation of “graphical symbols” that it
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`can only be supported by a witness with falsified credentials.
`
`A.
`
`Patent Owner’s Expert Falsified his Credentials Regarding a PhD
`in Electrical Engineering from Bournemouth University
`
`Patent Owner’s expert, Alon Konchitsky, claims to have received a PhD in
`
`electrical engineering from Bournemouth University in 2002. (Ex. 2007 ¶ 6;
`
`curriculum vitae at 2). Bournemouth University is located in the county of Dorset
`
`on the southern coast of England. It has only two campuses: (1) Talbot Campus, in
`
`
`2 Konchitsky demonstrated a lack of familiarity with the Petition and Dr. Brody’s
`
`declaration. His excuse for not opining on the presence or absence of any claim
`
`elements in the cited prior art beyond those relating to “graphical symbols” is that
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`Dr. Brody and Petitioner did address them either (Ex. 1021 at 61:2-18), which is
`
`obviously incorrect. (See Petition at 12-56; Ex. 1003 ¶¶ 48-200).
`
`3 Patent Owner asserts that the prior art does not disclose a key with a picture of a
`
`“graphical symbol” on it that may be actuated to generate the “graphical symbol.”
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`(Response at 4, 43-44, 46-47, 57). Thus, like the other arguments in the Response,
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`this argument is based on Patent Owner’s unduly narrow construction of the term
`
`3
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`“graphical symbols.”
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`the town of Poole; and (2) Lansdowne Campus, in the town of Bournemouth. (Ex.
`
`1020, Directions and maps from Bournemouth University website; Ex. 1022, Sept.
`
`8, 2015 Hadfield Decl. ¶ 25). The Faculty of Science & Technology (formerly the
`
`School of Design Engineering & Computing) is located on the Talbot Campus.
`
`(Id.)
`
`Konchitsky claims to have earned his PhD from Bournemouth University
`
`through a “remote program” while living in Ramat Gan, Israel. (Ex. 1021 at 91:9-
`
`92:2). According to Konchitsky, he did “most of” his PhD work while living in
`
`Israel (id. at 91:19-21), and then later while living and working in the U.S. (See Ex.
`
`2007, curriculum vitae at 3 (working for Nokia in California from 2001-2004)).
`
`Konchitsky could not remember how often he visited Bournemouth University in
`
`England while supposedly studying for his PhD, other than to say “at least once,”
`
`and did not know how many campuses Bournemouth University had or on which
`
`campus the engineering school was located. (Ex. 1021 at 91:22-92:24). In the
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`2001-2002 timeframe, however, Bournemouth students pursuing their PhDs
`
`outside the United Kingdom were required to “spend not less than an average of 6
`
`weeks per year at the University.” (Ex. 1017, Sept. 2001 Bournemouth University
`
`Research Awards Handbook at 44).
`
`Bournemouth PhD candidates in the 2001-2002 timeframe were also
`
`required to defend their thesis in a viva voce examination “normally held in the
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`4
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`UK” and submit a copy of their thesis to the British Library. (Ex. 1017 at 22, 24;
`
`Ex. 1022 ¶ 12). Tellingly, Konchitsky’s curriculum vitae attached to Ex. 2007 does
`
`not list either his PhD or his master’s theses. However, in an older version of his
`
`curriculum vitae submitted in a prior matter (Ex. 1014), Konchitsky claims to have
`
`authored a PhD thesis entitled, “Multi-Mode Multi-Band [Wide Band Signal] RF
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`Transmitter.” When contacted about the thesis, the British Library responded that
`
`no record of Konchitsky’s PhD thesis – or “any theses by anyone named
`
`Konchitsky” – could be found by the British Library.4 (Ex. 1018, British Library
`
`search results; Ex. 1019, March 3, 2014 British Library Research Report (“[W]e
`
`searched for any theses by anyone named KONCHITSKY: We found none.”)). At
`
`deposition, Konchitsky had no explanation for why his PhD thesis was not
`
`available at the British Library. (Ex. 1021 at 131:25-132:22).
`
`Bournemouth University’s Research Degrees Committee (“RDC”) approves
`
`PhD candidates’ research programs, supervision arrangements, and examination
`
`
`4 Prof. Mark Hadfield, Deputy Dean of Research, Enterprise
`
`and
`
`Internationalization at the School of Design, Engineering & Computing (now
`
`known as the Faculty of Science & Technology) at Bournemouth University from
`
`2007-2014, personally searched for any thesis by Alon Konchitsky in the Scopus
`
`database and found no results. (Ex. 1022 ¶¶ 23-24; Ex. 1028).
`
`5
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`arrangements. (Ex. 1017 at 40; Ex. 1022 ¶ 13). The RDC assigns a panel of
`
`examiners to PhD candidates during committee meetings, which take place
`
`approximately every two months. (Ex. 1022 ¶ 13). The RDC keeps minutes of such
`
`meetings. (Id.; Ex. 1032, Sept. 9, 2015 Knight Decl. ¶ 3). No record of anyone
`
`name Alon Konchitsky was found in RDC minutes between the 1996-97 and
`
`2006-07 academic years. (Ex. 1026, March 13, 2014 letter from Dr. F. Knight; Ex.
`
`1032 ¶¶ 4-5). Further, there is no record of anyone with the surname Konchitsky
`
`in the student records of Bournemouth University. (Ex. 1022 ¶¶ 16-17; Ex. 1027,
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`results of Unit E database search).
`
`Only five students received PhD degrees in the general area of electrical
`
`engineering in 2002 from Bournemouth University. (Ex. 1022 ¶¶ 18-22; Exs.
`
`1023-1025, photos of former Dean James Roach’s bookshelf). Alon Konchitsky
`
`was not one of them. (Id.)
`
`Following his deposition, Konchitsky produced a black and white copy of
`
`what purports to be his PhD diploma issued in September 2002. (Ex. 1029).
`
`Konchitsky’s “PhD,” however, bears an unmistakably different signature of
`
`Chancellor John Taylor (Lord Taylor of Warwick) than other PhD’s issued in
`
`2002, and does not contain the name of a thesis, as is the practice for PhDs issued
`
`by Bournemouth University. (See Ex. 1030, Jan. 2002 Bournemouth University
`
`6
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`Blackberry Ex 1058, pg. 11
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`PhD diploma (name and thesis redacted); Ex. 1031, Sept. 9, 2015 Jackson Decl. ¶¶
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`4-11). Based on the foregoing, Konchitsky’s PhD diploma is not genuine.5
`
`Konchitsky says he defended his thesis in Ramat Gan before a single
`
`advisor, and graduated with a PhD from Bournemouth’s “campus” in Ramat Gan
`
`in 2002. (Ex. 1021 at 95:8-96:6). But Bournemouth University never had a Ramat
`
`Gan campus, and the School of Design, Engineering & Computing never had a
`
`partnership with or offered research programs through Ramat Gan College. (Ex.
`
`1022 ¶¶ 26-27). Moreover, PhD candidates were required to defend their thesis in
`
`person before an examination committee, which normally took place in the United
`
`Kingdom. (Id. ¶ 12; Ex. 1017 at 22). Further, although Konchitsky claimed not to
`
`be the only person to receive a PhD from the Ramat Gan “campus” of
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`Bournemouth University in 2002 (Ex. 1021 at 98:20-99:12, 100:18-101:4, 103:6-
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`20), he steadfastly refused to identify anyone else who supposedly received a PhD
`
`along with him. (Id. at 97:24-103:20). Wary of his credentials being investigated
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`further (or because there in fact are no such persons), Konchitsky rebuffed such
`
`questions on the specious grounds that they were irrelevant. (Id.)
`
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`5 Fake diplomas from Bournemouth University can easily be purchased online. See,
`
`e.g., http://www.diplomasmarket.com/industry_show.php?id=108.
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`7
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`Blackberry Ex 1058, pg. 12
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`In sum, Konchitsky did not receive a PhD in electrical engineering from
`
`Bournemouth University. (Ex. 1022 ¶¶ 7-27; Ex. 1026; Ex. 1032 ¶¶ 3-5; Ex. 1017
`
`at 24; Exs. 1018-1019; Exs. 1023-1025; Exs. 1029-30; Ex. 1031 ¶¶ 4-11). Thus,
`
`Konchitsky falsified his credentials and perjured himself in his declaration. (Ex.
`
`2007 ¶¶ 6, 186). He therefore is a wholly unreliable witness and his opinions
`
`should be given absolutely no weight. See, e.g., Mitchell v. Holt, Interference No.
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`105,746, Decision on Motions at 19-24 (BPAI Apr. 27, 2012) (excluding testimony
`
`of witness who lied under oath and was not qualified as an expert); Bonar v. Dean
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`Witter Reynolds, Inc., 835 F.2d 1378, 1383-85 (11th Cir. 1988) (vacating punitive
`
`damages award where expert testifying on disputed issue lied about graduating
`
`from the University of Alabama and having attended Columbia University).
`
`B.
`
`This is Not the First Time Konchitsky Inflated his Credentials
`
`Konchitsky’s curriculum vitae boasts “Post Graduate, CDMA Engineering”
`
`from the University of California San Diego. (Ex. 2007, curriculum vitae at 2). In
`
`Case Nos. IPR2012-00026 and IPR2013-00109, Konchitsky submitted a
`
`declaration referring to this experience as a postgraduate “degree.” (Ex. 1015 ¶ 3).
`
`Konchitsky conceded, however, that he in fact earned a “certificate” in CDMA
`
`engineering because UCSD does not issue postgraduate degrees. (Ex. 1016, July 2,
`
`2013 Konchitsky Tr. at 148:11-14). Faced with this misrepresentation in his
`
`declaration signed under penalty of perjury, Konchitsky acknowledged having to
`
`8
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`Blackberry Ex 1058, pg. 13
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`“absolutely correct it to, ‘postgraduate certificate,’ to be more accurate.” (Id. at
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`149:4-14, emphasis added).
`
`Thus, Konchitsky’s inflated credentials are not limited to passing himself off
`
`as having earned a PhD in electrical engineering from Bournemouth University.6
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`Konchitsky lied in his previous declaration about having a postgraduate degree
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`from UCSD. (Ex. 1015 ¶ 3; Ex. 1016 at 148:11-14, 149:4-14). Nonetheless,
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`Konchitsky kept the purposely vague description “Post Graduate, CDMA
`
`Engineering” in his curriculum vitae in this proceeding, inviting others to
`
`mistakenly infer that he earned a postgraduate degree.
`
`C. The Broadest Reasonable Interpretation of “Graphical Symbols”
`is Not “Graphical Emoticons”
`
`Patent Owner contends that the broadest reasonable interpretation (“BRI”) of
`
`“graphical symbols” is “graphical emoticons.” (Response at 8). According to
`
`Patent Owner, the ‘870 specification “expressly defines a ‘symbol’ as a ‘’” and
`
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`6 Konchitsky is also economical in describing his master’s degree as “M.A.,
`
`Management” on his curriculum vitae. A copy of the MA degree Konchitsky
`
`produced following his deposition provides the full title: “Tourism and Hospitality
`
`Management.” (Ex. 1033). How a program in tourism and hospitality management
`
`spawned a master’s thesis entitled “Migration from central [cloud] computing to
`
`personal computing [PC]” is unclear. (See Ex. 1014 at Ex. K, p. 6).
`
`9
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`Blackberry Ex 1058, pg. 14
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`“expressly states that emoticons represented by symbols, such as , , and , are
`
`‘graphical symbols.’” (Id. at 8-9, emphasis added). To the extent Patent Owner
`
`argues that “graphical emoticons” is a lexicographer definition of “graphical
`
`symbols,” Patent Owner’s expert disagrees, stating that “graphical emoticon” is the
`
`plain and ordinary meaning7 of “graphical symbol.” (Ex. 1021 at 69:6-24). More
`
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`7 Konchitsky claimed to be familiar with the plain and ordinary meaning rule, but
`
`could not or would not explain what it meant. (Ex. 1021 at 35:7-41:10). His
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`testimony was a study in evasive and nonsensical answers designed to prevent
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`cross-examination, culminating in the following exchange:
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`Do you know what the plain and ordinary meaning rule is in
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`claim construction? Yes or no. I don’t want an analysis. I don’t want,
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`you know, anything else. I just want a yes or no. You know what it
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`means or you don’t or maybe you do or you think you do or you’re
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`not sure.
`MR. RISLEY: Objection. Form.
`THE WITNESS: Yes, I think I know.
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`BY MR. PRESPER: Okay. Can you tell me what you think you know
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`about the plain and ordinary meaning rule?
`MR. RISLEY: Objection. Form.
`10
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`
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`Blackberry Ex 1058, pg. 15
`Blackberry v. Zipit
`IPR2014-01507
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`important, however, is that the passage in the specification cited by Patent Owner
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`as “expressly” defining “graphical symbols” as “graphical emoticons” actually
`
`does nothing of the sort:
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`Emoticons are graphical symbols intended to convey emotional
`aspects of a message. For example, one instant messaging service
`may require the typing of the following characters :-) to generate the
`symbol , while another instant messaging service may only require
`the typing of :) to generate the symbol , which is typically known as
`the smiley face.
`
`(Ex. 1001 at 3:26-32). First, “graphical emoticons” appears nowhere in this
`
`passage providing examples of how different characters generate the symbol.
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`Second, this passage defines emoticons, not graphical symbols. Neither party
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`disputes that emoticons are graphical symbols. Just because emoticons are
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`graphical symbols, however, does not mean that all graphical symbols are
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`emoticons (let alone “graphical emoticons”) to a person of one of ordinary skill in
`
`the art (“POSITA”). Even Konchitsky agreed that the above passage only defines
`
`
`THE WITNESS: That I know that.
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`11
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`
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`(Id. at 40:8-20).
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`Blackberry Ex 1058, pg. 16
`Blackberry v. Zipit
`IPR2014-01507
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`emoticons to a POSITA: “By reading again Column 3, lines 34 to 39,8 a person
`
`who is ordinary skilled in the art which I’ve read the patent in entirety – in all the
`
`patent, entire patent in entirety would have understand that an emoticon is a
`
`graphical symbol.” (Ex. 1021 at 115:8-12).
`
`Moreover, the passage above does not describe :-) as “textual” characters,
`
`contrary to Patent Owner’s self-serving interpretation. On the contrary, as
`
`explained by Petitioner’s expert, Dr. Brody (whose credentials are undisputed), 9
`
`“the individual characters that you see there, colon, a dash, and a right paren are –
`
`have to be looked at in context.” (Ex. 2006 at 180:4-6). “They are by themselves, if
`
`used in, say I am writing a sentence in a letter … then it would be a textual a
`
`character. … [O]f course, when used in combination they are viewed together as a
`
`
`8 Konchitsky was referring to the same passage at column 3, lines 26-32 of the
`
`‘870 patent (which has an almost identical specification to U.S. Patent No.
`
`7,894,837).
`
`9 Patent Owner’s passing observation that Dr. Brody’s testimony in a prior matter
`
`was excluded (Response at note 11) relates only to two paragraphs in a rebuttal
`
`report regarding “improvements attributable to the patented invention.” (See Ex.
`
`2008 at 4). All of Dr. Brody’s remaining opinions on infringement and invalidity
`
`12
`
`
`
`were admitted in that case.
`
`
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`Blackberry Ex 1058, pg. 17
`Blackberry v. Zipit
`IPR2014-01507
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`graphical character and they can also be used to generate a graphical character.”
`
`(Id. at 180:7-14). Dr. Brody further explained that the passage above relied on by
`
`Patent Owner “is not differentiating between a pictorial smiley face and the colon,
`
`dash, right paren put in together and saying that the smiley face symbol is a
`
`graphical symbol and the three characters taken together is not a graphical
`
`symbol.” (Id. at 182:12-16). The specification is “not implying that at all” because
`
`“a person having ordinary skill in the art would understand, that graphical symbols,
`
`emoticons, can be displayed as combinations of text characters, as combinations of
`
`text characters and graphical symbols, and as pictorial signals.” (Id. at 182:17-25).
`
`The remaining portions of the specification cited by Patent Owner in support
`
`of its unreasonably narrow construction of “graphical symbols” are even less
`
`persuasive. For example, Patent Owner cites column 18, lines 48-54:
`
`Textual characters are entered by typing on the keys in the QWERTY
`portion 70 of the keyboard 68 while graphical symbols may be
`entered by depressing the emoticon keys 74 or the programmable keys
`78. Preferably, the pre-programmed emoticon keys are assigned to
`the smiley face, sad face, and surprised face graphical characters,
`although other graphical characters may be assigned to these keys.
`
`According to Patent Owner, this passage defines textual characters and graphical
`
`symbols according to the keys used to generate them. (Response at 9-10, 15-17).
`
`The language above, however, says only that graphical symbols may be entered
`
`13
`
`
`
`
`
`
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`Blackberry Ex 1058, pg. 18
`Blackberry v. Zipit
`IPR2014-01507
`
`
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`using emoticon keys 74 or programmable keys 78, not that they must be entered
`
`that way. Likewise, the use of the QWERTY portion of a keyboard to enter textual
`
`characters does not foreclose using the QWERTY portion to enter graphical
`
`symbols. As explained by Dr. Brody, a POSITA would understand that a colon,
`
`dash, etc. could be either a textual character or graphical symbol depending on the
`
`context in which it is used. (Ex. 2006 at 84:2, 170:17-171:25, 180:3-14).
`
`Even Konchitsky, when asked to confirm that “graphical symbols are not
`
`entered by typing on the QWERTY portion of the keyboard,” repeatedly answered
`
`“No, that’s not correct.” (Ex. 1021 at 73:13-24). When he was then asked to clarify
`
`whether he thought “the emoticon keys 74 and programmable keys 78 are on the
`
`QWERTY portion of the keyboard,” he answered “No, they’re not.” (Id. at 75:4-8).
`
`Thus, Patent Owner and its expert disagree that graphical symbols cannot be
`
`entered on the QWERTY portion of a keyboard.
`
`Even assuming that graphical symbols could only be entered using the
`
`emoticon keys 74 or programmable keys 78 (and not on the QWERTY portion),
`
`nothing in the specification requires those keys to enter only “graphical
`
`emoticons.” Patent Owner cites Figure 12 and column 16, line 62 through column
`
`17, line 5. (Response at 10-11, 17-18). This passage, however, simply describes an
`
`“emoticon” selection procedure and does not require “the graphical symbol that is
`
`displayed” to be a “graphical emoticon.” To save the claims, Patent Owner seeks to
`
`14
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`Blackberry Ex 1058, pg. 19
`Blackberry v. Zipit
`IPR2014-01507
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`narrow their scope to just pictorial “smileys” such as those shown in Figure 12B.
`
`In doing so, however, Patent Owner commits the “cardinal sin” of claim
`
`construction – importing limitations from the specification into the claims. See,
`
`e.g., Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1324 (Fed. Cir. 2002).
`
`As explained by Dr. Brody (whose credentials are undisputed), a POSITA
`
`would understand that Figure 12B simply shows “what gets displayed if you are
`
`going to display that pictorial symbol within your instant messaging device.” (Ex.
`
`2006 at 193:12-14). “If your instant messaging service doesn’t have that particular
`
`symbol because, remember, you are programming something, so it may or may not
`
`… what a programmable key does is it would send out the sequence of whatever
`
`textual characters and graphical symbols that you would put in there.” (Id. at
`
`193:14-21). In other words, the language in column 16 together with Figure 12
`
`merely “gives an example … within an embodiment. It does not limit it to only a
`
`smiley face.” (Id. at 194:2-4).
`
`Patent Owner criticizes Petitioner and Dr. Brody for purportedly broadening
`
`the meaning of “graphical symbols” to the point of encompassing the term “textual
`
`characters.” (Response at 12-28). But Patent Owner misunderstands the Petition,
`
`Dr. Brody’s testimony, and the plain and ordinary meaning of the claim terms to a
`
`POSITA. Whether a character is textual or graphical depends on the context in
`
`which it is used and – contrary to Patent Owner’s improper importation of
`
`15
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`Blackberry Ex 1058, pg. 20
`Blackberry v. Zipit
`IPR2014-01507
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`
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`IPR2014-01507
`Petitioner Reply to Patent Owner Response
`embodiments into the claims – is not rigidly dependent upon where the key used to
`
`enter it is located. (See Ex. 2006 at 84:2, 89:11-18, 170:17-171:25, 180:3-14). If a
`
`colon, dash, or closed parentheses is used as punctuation or part of standard
`
`language in a sentence, then it is a textual character, not a graphical symbol. (Id. at
`
`67:18-68:2, 89:11-18). On the other hand, when those characters are used together
`
`to depict a smiley face on its side, then they are a graphical symbol, not textual
`
`characters. (Id. at 89:11-18, 169:23-170:9). A POSITA would know that such
`
`characters are flexible in their usage and not strictly categorized as “textual” or
`
`“graphical.” (Id. at 84:2, 89:11-18, 170:17-171:25, 180:3-14). Moreover, it is
`
`axiomatic that a single prior-art feature can satisfy more than one claim limitation.
`
`See, e.g., Kroy IP Holdings, LLC v. Safeway, Inc., 2015 U.S. Dist. LEXIS 69364,
`
`at *28-29 (E.D. Tex. May 29, 2015); Intellectual Property Dev., Inc. v. UA-
`
`Columbia Cablevision of Westchester, Inc., 336 F.3d 1308, 1320 n.9 (Fed. Cir.
`
`2003); Interactive Gift Express, Inc. v. CompuServe Inc., 231 F.3d 859, 872 (Fed.
`
`Cir. 2000).
`
`Patent Owner further emphasizes a distinction between textual characters
`
`and graphical symbols by pointing to portions of the specification allegedly
`
`teaching that the former “generate” the latter. (Response at 13-15). For example,
`
`Patent
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