6:18-cv-02016-JMC Date Filed 07/25/18 Entry Number 24 Page 1 of 51
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`IN THE UNITED STATES DISTRICT COURT
`DISTRICT OF SOUTH CAROLINA
`GREENVILLE DIVISION
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`Civil Action No. ____________
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`JURY TRIAL DEMANDED
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`ZIPIT WIRELESS, INC.,
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`LG ELECTRONICS, INC.
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`Plaintiff,
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`v.
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`Defendant.
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`COMPLAINT FOR PATENT INFRINGEMENT
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`Plaintiff, Zipit Wireless, Inc., for its Complaint against Defendant LG Electronics, Inc.,
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`alleges as follows:
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`INTRODUCTION
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`1.
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`This is an action for patent infringement arising under the patent laws of the United
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`States, Title 35, United States Code.
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`
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`THE PARTIES
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`2.
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`Plaintiff, Zipit Wireless, Inc. (hereinafter “Zipit”) is a Delaware Corporation with a
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`principal place of business located at 101 North Main Street, Suite 201, Greenville, South Carolina
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`29601.
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`3.
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`On information and belief, Defendant LG Electronics, Inc., is a Korean corporation
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`having a place of business at LG Twin Towers 20, Yeouido-dong, Yeongdeunspo-gu, Seoul,
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`150-721, Republic of Korea.
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`4.
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`On information and belief, Defendant LG Electronics, Inc. owns and controls,
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`directly and indirectly, LG Electronics Mobilecomm U.S.A., Inc.
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`JURISDICTION AND VENUE
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`5.
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`This Court has subject matter jurisdiction over all causes of action set forth herein
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`pursuant to 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the patent laws of the
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`United States, Title 35, United States Code, including 35 U.S.C. §271 et seq.
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`6.
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`This Court has personal jurisdiction over Defendant under the long arm statute of the
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`State of South Carolina because: (i) Defendant has and continues to intentionally sell products and
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`methods, including the infringing methods, to customers in South Carolina; (ii) Defendant has and
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`continues to intentionally instruct customers and potential customers in South Carolina with respect
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`to how to use the products and methods that Defendant sells to customers in South Carolina; (iii)
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`Defendant knows and has known its products and methods, including the infringing methods, have
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`and continue to be sold and marketed in South Carolina; (iv) Defendant knows and has known that
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`its manufactured products and methods will enter the United States of America and the State of
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`South Carolina; (v) Defendant has and continues to target customers and potential customers in
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`South Carolina to buy and/or use Defendant’s products and methods, including the infringing
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`methods; (vi) Defendant has and continues to provide advice to customers in South Carolina; (vii) it
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`has been and continues to be foreseeable that Defendant’s products and methods, including the
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`infringing methods, would enter the State South Carolina; (viii) Defendant has and continues to
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`market to citizens of South Carolina through its website www.lg.com/us, which is copyrighted 2009-
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`2018 by LG Electronics; (ix) Defendant has and continues to provide services to citizens of South
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`Carolina through its through website; (x) Defendant derives substantial revenue from South
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`Carolina; (xi) South Carolina has and continues to be part of Defendant’s established distribution
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`channels; (xii) there is a chain of imputation from Defendant to LG Electronics Mobilecomm
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`U.S.A., Inc.; (xiii) LG Electronics Mobilecomm U.S.A., Inc. is an agent of Defendant; (xiv)
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`Defendant exercises control over LG Electronics Mobilecomm U.S.A., Inc.; (xv) Defendant directs
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`LG Electronics Mobilecomm U.S.A., Inc., Defendant’s agent and distributor, to take action in South
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`Carolina; (xvi) LG Electronics Mobilecomm U.S.A., Inc. is the alter ego of Defendant; (xvii) LG
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`Electronics Mobilecomm U.S.A., Inc.’s profits flow to Defendant; (xviii) the assertion of personal
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`jurisdiction over Defendant is reasonable and fair; (xix) the State of South Carolina has an interest in
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`this matter due to the presence of Defendant’s products and methods, including the infringing
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`methods, in the State of South Carolina; and (xx) the State of South Carolina has an interest in this
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`matter because Plaintiff is, and always has been, based in South Carolina.
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`7.
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`This Court also has personal jurisdiction over Defendant as: (i) Defendant transacts
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`business in the State of South Carolina; (ii) Defendant maintains regular and systematic business
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`contacts with the State of South Carolina and within this judicial district and division; (iii) Defendant
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`purposely, regularly, and continuously conducts business in the State of South Carolina and within
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`this judicial district and division; (iv) Defendant knowingly places its infringing products in the
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`stream of commerce knowing, expecting, and intending for its infringing products to be offered for
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`sale, sold, purchased, and used by residents of State of South Carolina and within this judicial
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`district and division; (v) Defendant knowingly places its infringing products in the stream of
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`commerce knowing, expecting, and intending for materials supporting it infringing products, such as
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`user manuals and product support literature, to be offered for sale, sold, purchased, and used by
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`residents of State of South Carolina and within this judicial district and division; (vi) Defendant
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`purposefully directs its activities at residents of the State of South Carolina; (vii) the cause of action
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`set forth herein arises out of or relates to the Defendant’s activities in the State of South Carolina;
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`and (viii) the exercise of jurisdiction over Defendant will not offend the traditional notions of fair
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`play and substantial justice.
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`8.
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`Venue is proper in this judicial district and division pursuant to 28 U.S.C. §1331,
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`§1338(a), §§1391(c)(3), and §1400(b).
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`BACKGROUND
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`Zipit’s Technology
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`9.
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`Zipit has and continues to offer for sale Wi-Fi based instant messaging solutions.
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`Zipit’s first product, the Zipit Wireless Messenger:
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`was introduced in 2004 and was sold through major retailers including Target, Best Buy, Radio
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`Shack, and Amazon and received press coverage in the Chicago Tribune, the New York Times,
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`and many media outlets, as shown in Exhibit “G.”
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`10.
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`In 2007, Zipit introduced its second-generation Wi-Fi based instant messaging
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`device known as “Z2”:
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`11.
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`In 2011, Zipit launched an enterprise messaging solution in conjunction with a
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`major U.S. cellular carrier and is actively selling this solution into healthcare, hospitality, ems,
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`manufacturing, utility, and government accounts. Zipit’s solution has been deployed in over 250
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`enterprise customers across the U.S. and Zipit’s customer base continues to grow monthly.
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`Zipit’s Awards And Notoriety
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`12.
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`In 2005, Time Magazine awarded Zipit’s first Wi-Fi instant messaging device
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`(“Zippy”) Time’s “The Most Amazing Inventions of 2005” Award:
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`To determine the award winners, Time Magazine “spent more than six months surveying fields
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`as diverse as electronics, aeronautics, medical technology, sports equipment, toys, clothing and
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`food looking for the newest-and most inspired-ideas of the year.” Exhibit “G.”
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`13.
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`Zipit’s “Zippy” instant messaging device also won an award from iParenting
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`Media in 2006. Exhibit “G.”
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`14.
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`Zipit’s “Zippy” Wi-Fi instant messaging device also received praise and acclaim
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`in media across the United States and the World in at least the Chicago Tribune “Zipit is king of
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`messengers” (March 3, 2005); the New York Times “Making an Easy Task, Instant Messaging,
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`Even Easier.” (March 10, 2005); the New York Times “Making an Easy Task, Instant
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`Messaging, Even Easier.” (March 21, 2005) (Online Edition); the Austin American-Statesman
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`“Gadgets: … Instant messaging with no extra charges” (March 21, 2005); ABC12.com “Zipit
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`Wireless Messenger” (Aug. 15, 2005); ABC12.com “Zipit Wireless Messenger” (Aug. 22,
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`2005); The Greenville News (Dec. 5, 2004); Parade “a brilliant little device” (April 24, 2005);
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`Univision.com; ym.com “What’s Hot: March 15, 2005” (March 17, 2005); Gizmodo “Perfect for
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`the IM addict” (July 19, 2005); Gizmodo “Teacher’s Worst Nightmare - Aeronix ZipIt” (Sept.
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`29, 2005); HeraldToday.com (“Zipit rules wireless messenging world”) (March 10, 2005); HUB:
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`Digital Living (March 2005); New York Daily News “Hot, hotter, hottest The Definitive guide
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`to who and what is sexy right now” “Gadgets” (April 3, 2005); and the St. Petersburg Times
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`“2005 Annual Gadget Guide From Apple to Zipit” “For the good times” (Nov. 28, 2005).
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`Exhibit “G”.
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`15.
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`Zipit’s second version of its Wi-Fi instant messaging device, “Z2”, also was
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`widely praised and acclaimed. In 2007, PC Magazine awarded Zipit’s “Z2” the “Winner” of its
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`“Best of Show” award at the Digital Life show in the category of “Portable Gear.” Zipit’s “Z2”
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`also won another award from iParenting Media in 2008. Exhibit “G.”
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`16.
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`Zipit’s “Z2” Wi-Fi instant messaging device, also was praised in at least the
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`following media sources: PC Magazine DigitalLife 2007 “Best of Show” (Sept. 28, 2007);
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`DigitalLife’s “Best of Show Award” (Oct. 2, 2007); 2013 iParenting Media Awards – Winner –
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`Zipit Wireless Messenger 2 (April 30, 2008); 2014, Video – Z2 Highlight Reel (The Today
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`Show; USA Today; Associated Press Article; The Washington Post; The Boston Globe; Houston
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`Chronicle; The Philadelphia Inquirer; The Kansas City Star; The Miami Herald; San Francisco
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`Chronicle; Orlando Sentinel; Rocky Mountain News; ABC Television Channel 7; CNN
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`Television; FOX News FOX & Friends; The New York Times; Pittsburgh Post-Gazette; MTV
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`Television; Yahoo! Tech; CNET; eva; The Montel Williams Television Show; NBC Channel 5;
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`LINUX Journal; WNN Wi-Fi News; Digital Tech News’; Wireless Week; electronista; I40
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`News; Best stuff; FOX & Friends (2015); The Montel Williams Show (Dec. 6, 2006; WABC –
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`New York Channel 7 (Dec. 17, 2006); FOX Business (March 19, 2008); The Today Show (Jan.
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`6, 2008); MTV; The Detroit News – “In our opinion - Zipit Z2 perfect for kids” (June 30, 2008);
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`the Akron Beacon, Ohio.com (April 14, 2008); the Arizona Star (April 3, 2008); the
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`BaltimoreSun.com (April 17, 2008); The Record NorthJersey.com “Kids and their parents will
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`love the Z2 messaging device” (April 12, 2008); TheStreet.com “Instant Messaging With Mass
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`Appeal” (Dec. 7, 2007); Digital Life “Digital Life Announces the DigitalLife Innovators Class of
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`2007” (Sept. 24, 2007); E-Gear “Is Anybody Out There” (April 9, 2008); Gizmodo “Zipit Z2
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`Wireless Messenger Lets Teens IM For Free” (Nov. 7, 2007); GoErie.com “ Txt all d tym” “IM
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`friends without tying up computer” (April 11, 2008); CBS4Denver.com “One of the best
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`products for teens, tweens and their parents” (2007); InfoSyncWorld.com “Zipit Z2 Wireless
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`Messenger sends IMs without PC or phone” “it has a dedicated smiley button, which we have
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`never seen before, but now we want on our Treo :-)” (Nov. 7, 2007); InsignifacantThoughts.com
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`(Sept. 28, 2007); KansasCity.com “Better Messages” (Dec. 6, 2007); LinuxDevices.com (Nov. 9,
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`2007); MiamiHerald.com (Oct. 18, 2007); ny1.com (Sept. 27, 2007); NYTimes.com (Oct. 4,
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`2007); PCMag.com.br (Sept. 28, 2007); PC.Watch.Impress.co.JP (Dec. 9, 2007); Yahoo! News
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`(Sept. 27, 2007); Register Hardware UK (Nov. 7, 2007); SlashGear.com (Sept. 27, 2007);
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`StarTelegram.com “High-tech hobbies” (Oct. 14, 2007); the Minneapolis StarTribune.com (Oct.
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`8, 2007); DailyHerald.com (June 23, 2008); The Gazette Canada.com (Oct. 11, 2007);
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`TheStreet.com “Instant Messenger With Mass Appeal” “a must-have for travelers” (Dec. 7
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`2007); TimeforKids.com (Nov. 26, 2007); Twice.com (Sept. 27, 2007); ABCNews.com (Nov. 2,
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`2007); ABCNews: The Ultimate Gift Guide (Nov. 8, 2007); Adweek Magazine “Top 10 Trends
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`of 2007” (Dec. 17, 2007); BlogStuff.com (Nov. 26, 2007); Blog-SciFi.com (Sept. 27, 2007);
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`Brighthand.com (Sept. 30, 2007); CBS Tech Toys Review (Oct. 16, 2007); and The Charlotte
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`Observer Charlotte.com (Oct. 21, 2007). Exhibit “G.”
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`Wi-Fi Instant Messaging Devices With Emoticons Drive Purchasing Decisions
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`17.
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`Prior to the existence of Wi-Fi instant messaging, carriers typically charged up to
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`$0.20 per text, or $20.00 per month for unlimited texting. Thanks to Wi-Fi based instant
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`messaging, however, consumers no longer had to pay for individual instant messages or monthly
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`service plans. As a result, by 2016, it was estimated that consumers saved, and carriers lost, $54
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`billion ($54,000,000,000) in revenue that carriers would have made from SMS-based instant
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`messaging.
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`18.
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`Instant messaging has been and continues to be the single most important
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`smartphone feature. Indeed, many potential customers are unlikely to purchase a smartphone
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`that is not able to generate an instant message comprising an emoji / graphical symbol (, )
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`that is sent over Wi-Fi.
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`19.
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`Using a handheld device, such as a smartphone, to send instant messages that
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`contain emojis is a major and growing form of communication among an incredibly large
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`demographic. Indeed, this is reflected by Oxford Dictionary’s “word” of the year for 2015,
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`which was the “face with tears of joy” emoji:
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`Oxford Dictionary selected the emoji as its “word” of the year because the emoji was “the
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`‘word’ that best reflected the ethos, mood, and preoccupations of 2015.” It is further reflected
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`by the creation of “World Emoji Day,” which is held annually on July 17.
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`ZIPIT’S PATENTS
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`20.
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`The United States Patent and Trademark Office awarded Zipit two patents on its
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`highly acclaimed “Instant Messaging Terminal Adapted For Wi-Fi Access Points,” U.S. Patent
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`No. 7,292,870 and U.S. Patent No. 7, 894,837.
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`Zipit’s U.S. Patent No. 7,292,870
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`21.
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`On November 6, 2007, the United States Patent and Trademark Office duly and
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`legally issued United States Patent No. 7,292,870, entitled “Instant Messaging Terminal Adapted
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`For WI-FI Access Points.” A true and correct copy of U.S. Patent No. 7,292,870 is attached hereto
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`as Exhibit “A.”
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`22.
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`Zipit is the owner, by assignment, of all right, title, and interest in and to U.S. Patent
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`No. 7,292,870 (hereinafter the “ʼ870 Patent”), including the right to sue for past, present, and future
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`patent infringement, and to collect past, present, and future damages.
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`23.
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`The ʼ870 patent complies with the Patent Act, including 35 U.S.C. §101, 35 U.S.C.
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`§102, 35 U.S.C. § 103, and 35 U.S.C. §112. Exhibit “B.”
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`24.
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`On July 16, 2013, the Patent Office issued a Certificate of Correction for the ʼ870
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`patent. Exhibit “C.”
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`25.
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`26.
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`Each and every claim of the ʼ870 patent is valid and enforceable.
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`The ʼ870 patent and its claims are entitled to the benefit of the date upon which Zipit
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`filed its provisional patent application 60/532,000, which was filed on December 24, 2003. Exhibit
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`“D.”
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`27.
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`As the invention(s) claimed in the ʼ870 patent were conceived no later than April
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`2003, the claims of the ʼ870 patent are further entitled to a priority date of no later than April 2003.
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`IPR2014-01507
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`28.
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`On March 30, 2015, the Patent Trial and Appeal Board (“PTAB”) of the United
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`States Patent and Trademark Office instituted an Inter Partes Review (“IPR”) of the ʼ870 patent.
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`29.
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`On June 22, 2015, Zipit filed its “Patent Owner’s Response Under 37 C.F.R. §
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`42.120.” Exhibit “E.”
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`30.
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`On March 29, 2016, the PTAB issued a Final Decision that confirmed the
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`patentability of all claims of the ʼ870 Patent in IPR2014-01507. Exhibit “F.”
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`31.
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`All papers and pleadings filed with the PTAB for IPR2014-01507 are part of the
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`prosecution history of the ʼ870 Patent. Due to their size and volume, the papers and pleadings filed
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`with the PTAB for IPR2014-01507 are incorporated herein by reference.
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`No Claim Of Zipit’s ’870 Patent Is Abstract
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`32.
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`The claims of the ʼ870 Patent are focused on an advance over the prior art such
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`that their character as a whole is not directed to excluded subject matter, such as an abstract idea,
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`or any other subject matter excluded under 35 U.S.C. §101.
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`33.
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`In fact, the PTAB determined that the combinations claimed in the claims of the
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`ʼ870 Patent were novel and nonobvious, as did the Patent Office during its initial review of the
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`claims.
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`34.
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`The advancement claimed in the claims of the ʼ870 Patent includes, inter alia, an
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`instant messaging terminal and method that includes a housing, a display mounted in the
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`housing, a data entry device that affords the generation of textual characters and graphical
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`symbols, a wireless Internet protocol communications module, a wireless transceiver, and a
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`control module that includes a processor for executing an application program to implement
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`instant messaging and session protocols for a conversation. Such a claimed combination does
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`not exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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` And such a combination constitutes a tangible, specific, concrete invention.
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`35.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that, after loss of a network connection,
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`automatically searches for a new connection and displays the conversation histories that were
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`active when the network connection was lost. Such a claimed combination does not exist in the
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`prior art. Such a combination was not well-understood, routine, or conventional. And such a
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`combination constitutes a tangible, specific, concrete invention.
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`36.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes a plurality of keys for graphical
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`symbols, each graphical symbol key including indicia identifying the graphical symbol generated
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`by depressing the key bearing the indicia. Such a claimed combination does not exist in the prior
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`art. Such a combination was not well-understood, routine, or conventional. And such a
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`combination constitutes a tangible, specific, concrete invention.
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`37.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes at least one programmable key
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`associated with a set of characters corresponding to a graphical symbol supported by an instant
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`messaging service provider. Such a claimed combination does not exist in the prior art. Such a
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`combination was not well-understood, routine, or conventional. And such a combination
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`constitutes a tangible, specific, concrete invention.
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`38.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that stores a
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`profile containing network settings for a network communicating with the communications
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`module and the wireless transceiver through an access point. Such a claimed combination does
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`not exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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` And such a combination constitutes a tangible, specific, concrete invention.
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`39.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that includes an
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`audio player for generating sound from a downloaded file. Such a claimed combination does not
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`exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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`And such a combination constitutes a tangible, specific, concrete invention.
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`40.
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`The advancement claimed in the claims of the ʼ870 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that generates
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`sound from files received from an Internet radio station through a wireless, Internet protocol
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`access point. Such a claimed combination does not exist in the prior art. Such a combination
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`was not well-understood, routine, or conventional. And such a combination constitutes a
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`tangible, specific, concrete invention.
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`The Inventions Claimed In The ’870 Patent Were Not
`Well-Understood, Routine, Or Conventional
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`41.
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`Prior to Zipit’s invention, instant messaging primarily transpired with desktop
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`computers.
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`42.
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`Prior to Zipit’s invention, text messages were sent over a carrier’s cellular network
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`using SMS. Users sending and receiving text messages typically were charged for each text,
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`including at rates of $.20/text or $20/month.
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`43.
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`Zipit’s technology allowed instant messaging by a handheld instant messaging
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`terminal using Wi-Fi, avoiding the expense of texting and the need to share a desktop computer for
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`instant messaging.
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`44.
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`Zipit’s patented and claimed technology allowed mobile handheld devices to directly
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`connect to a Wi-Fi access point without using an intermediate protocol in order to send instant
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`messages comprising an emoji / graphical symbol (, ) over Wi-Fi, instead of the cellular
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`network.
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`45.
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`No claims of the ʼ870 Patent are unpatentable under §103. In addition, the
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`patentability of the claims of the ʼ870 Patent is confirmed by the overwhelming evidence of
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`widespread acclaim that Patentee’s “Zippy” and “Z2” devices received. Due to the several awards,
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`newspaper stories, television stories, and online articles regarding Zipit’s “Zippy” and “Z2” devices,
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`including for example: (i) Time Magazine’s “The Most Amazing Inventions of 2005” Award, which
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`was awarded to Zipit Wireless, Inc. for its “Zippy” device, (ii) the 2005 Chicago Tribune article,
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`which declares that “Zipit Is King Of Messengers”, and (iii) PC Magazine’s “Winner” of its 2007
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`“Best of Show” award in the category of “Portable Gear,” which was awarded to Zipit for its “Z2”
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`device, Zipit’s patented “Zippy” and “Z2” devices received widespread acclaim. Exhibit “G.”
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`46.
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`A nexus exists between Zipit’s “Zippy” device and the claims of the ‘870 Patent.
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`Exhibits “E” and “G.”
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`47.
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`A nexus also exists between Zipit’s acclaimed “Z2” device and the claims of the
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`‘870 Patent. Exhibits “E” and “G.”
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`Zipit’s U.S. Patent No. 7,894,837 Patent
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`48.
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`On February 22, 2011, the United States Patent and Trademark Office duly and
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`legally issued United States Patent No. 7,894,837, entitled “Instant Messaging Terminal Adapted
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`For Wireless Communication Access Points.” A true and correct copy of U.S. Patent No. 7,894,837
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`is attached hereto as Exhibit “H.”
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`49.
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`Zipit is the owner, by assignment, of all right, title, and interest in and to U.S. Patent
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`No. 7,894,837 (hereinafter the “ʼ837 Patent”), including the right to sue for past, present, and future
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`patent infringement, and to collect past, present, and future damages.
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`
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`50.
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`The ʼ837 Patent complies with the Patent Act, including 35 U.S.C. §101, 35 U.S.C.
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`§102, 35 U.S.C. § 103, and 35 U.S.C. §112. Exhibit “I.”
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`51.
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`52.
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`Each and every claim of the ʼ837 Patent is valid and enforceable.
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`The ʼ837 patent and its claims are entitled to the benefit of the filing date of the ʼ870
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`patent (May 14, 2004) and also the date upon which Zipit filed its provisional patent application
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`(December 23, 2003). Exhibit “D.”
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`53.
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`As the invention(s) claimed in the ʼ837 patent were conceived no later than April
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`2003, the claims of the ʼ837 patent are further entitled to a priority date of no later than April 2003.
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`6:18-cv-02016-JMC Date Filed 07/25/18 Entry Number 24 Page 16 of 51
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`IPR2014-01506
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`
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`54.
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`55.
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`On March 30, 2015, the PTAB instituted an IPR of the ʼ837 patent.
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`On June 22, 2015, Zipit filed its “Patent Owner’s Response Under 37 C.F.R.
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`§42.120.” Exhibit “J.”
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`56.
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`On March 29, 2016, the PTAB issued a Final Decision that confirmed the
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`patentability of all claims of the ʼ837 Patent in IPR2014-01506. Exhibit “K.”
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`57.
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`All papers and pleadings filed with the PTAB for IPR2014-01506 are part of the
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`prosecution history of the ʼ837 Patent. Due to their size and volume, the papers and pleadings filed
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`with the PTAB for IPR2014-01506 are incorporated by reference.
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`Zipit’s ’837 Patent Is Not Abstract
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`58.
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`The claims of the ʼ837 patent are focused on an advance over the prior art such
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`that their character as a whole is not directed to excluded subject matter, such as an abstract idea,
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`or any other subject matter excluded under 35 U.S.C. §101.
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`59.
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`In fact, the PTAB determined that the combinations claimed in the claims of the
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`ʼ837 Patent were novel and nonobvious, as did the Patent Office during its initial review of the
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`claims.
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`60.
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`The advancement claimed in the claims of the ʼ837 patent includes, inter alia, an
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`instant messaging terminal and method that includes a housing, a display mounted in the
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`housing, a data entry device that affords the generation of textual characters and graphical
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`symbols, a wireless Internet protocol communications module, a wireless transceiver, and a
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`control module that includes a processor for executing an application program to implement
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`instant messaging and session protocols for a conversation. Such a claimed combination does
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`6:18-cv-02016-JMC Date Filed 07/25/18 Entry Number 24 Page 17 of 51
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`not exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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` And such a combination constitutes a tangible, specific, concrete invention.
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`61.
`
`The advancement claimed in the claims of the ʼ837 patent further includes, inter
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`alia, an instant messaging terminal and method that includes a housing, a display mounted in the
`
`housing, a data entry device that affords the generation of textual characters and graphical
`
`symbols, a wireless Internet protocol communications module, a wireless transceiver, and a
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`control module that includes a processor for executing an application program to implement at
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`least one instant messaging protocol for generation of instant messaging data messages that are
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`compatible with an instant messaging service. Such a claimed combination does not exist in the
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`prior art. Such a combination was not well-understood, routine, or conventional. And such a
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`combination constitutes a tangible, specific, concrete invention.
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`62.
`
`The advancement claimed in the claims of the ʼ837 patent further includes, inter
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`alia, an instant messaging terminal and method that includes a plurality of keys for graphical
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`symbols, each graphical symbol key including indicia identifying the graphical symbol generated
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`by depressing the key bearing the indicia. Such a claimed combination does not exist in the prior
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`art. Such a combination was not well-understood, routine, or conventional. And such a
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`combination constitutes a tangible, specific, concrete invention.
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`63.
`
`The advancement claimed in the claims of the ʼ837 patent further includes, inter
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`alia, an instant messaging terminal and method that includes at least one programmable key
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`associated with a set of characters corresponding to a graphical symbol supported by an instant
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`messaging service provider. Such a claimed combination does not exist in the prior art. Such a
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`6:18-cv-02016-JMC Date Filed 07/25/18 Entry Number 24 Page 18 of 51
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`combination was not well-understood, routine, or conventional. And such a combination
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`constitutes a tangible, specific, concrete invention.
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`The advancement claimed in the claims of the ʼ837 patent further includes, inter
`64.
`alia, an instant messaging terminal and method that includes a control module to generate, in
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`accordance with the at least one instant messaging protocol being implemented, a character
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`sequence corresponding to a graphical symbol in response to the depression of the programmable
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`key being depressed. Such a claimed combination does not exist in the prior art. Such a
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`combination was not well-understood, routine, or conventional. And such a combination
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`constitutes a tangible, specific, concrete invention.
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`65.
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`The advancement claimed in the claims of the ʼ837 patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that detects
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`beacons received by the wireless transceiver from a plurality of wireless network access points
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`and prioritizes the detected beacons by strength of detected signal. Such a claimed combination
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`does not exist in the prior art. Such a combination was not well-understood, routine, or
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`conventional. And such a combination constitutes a tangible, specific, concrete invention.
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`66.
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`The advancement claimed in the claims of the ʼ837 patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that stores a
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`profile containing network settings for a network communicating with the communications
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`module and the wireless transceiver through an access point in memory. Such a claimed
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`combination does not exist in the prior art. Such a combination was not well-understood,
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`routine, or conventional. And such a combination constitutes a tangible, specific, concrete
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`invention.
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`6:18-cv-02016-JMC Date Filed 07/25/18 Entry Number 24 Page 19 of 51
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`67.
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`The advancement claimed in the claims of the ʼ837 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that includes an
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`audio player for generating sound from a downloaded file. Such a claimed combination does not
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`exist in the prior art. Such a combination was not well-understood, routine, or conventional.
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`And such a combination constitutes a tangible, specific, concrete invention.
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`68.
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`The advancement claimed in the claims of the ʼ837 Patent further includes, inter
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`alia, an instant messaging terminal and method that includes a control module that generates
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`sound from files received from an Internet radio station through a wireless, Internet protocol
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`access point. Such a claimed combination does not exist in the prior art. Such a combination
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`was not well-understood, routine, or conventional. And such a combination constitutes a
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`tangible, specific, concrete invention.
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`The Inventions Claimed In The ’837 Patent Were Not
`Well-Understood, Routine, Or Conventional
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`
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`69.
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`Prior to Zipit’s invention, handheld devices only allowed SMS text messaging over a
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`carrier’s cellular network.
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`70.
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`Prior to Zipit’s invention, text messages were sent over a carrier’s cellular network
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`using SMS. Users sending and receiving text messages typically were charged for each text,
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`including at rates of $.20/text or $20/month.
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`
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`71.
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`Zipit’s technology allowed instant messaging by a handheld mobile device using Wi-
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`Fi, avoiding the expense of texting and the need to share a desktop computer for instant messaging.
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`
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`72.
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`Zipit’s patented and claimed technology allowed mobile handheld devices to directly
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`connect to a Wi-Fi access point without using an intermediate protocol in order to send instant
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`6:18-cv-02016-JMC Date Filed 07/25/18 Entry Number 24 Page 20 of 51
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`messages comprising an emoji / graphical symbol (, ) over Wi-Fi, instead of the ce