Samsung - Varia IPR Petition - Final Version

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Patent:
Inventor:
Filed:
Issued:
Title:
7,167,731
:
:
Jonathan O. Nelson
:
:
Sep. 12, 2005
:
:
Jan. 23, 2007
:
:
Emoticon Input Method :
and Apparatus
:
Attorney Docket No. 072395.0208
Mail Stop PATENT BOARD
Patent Trial and Appeal Board
U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, Virginia 22313-1450
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
On behalf of Samsung Electronics Co., Ltd. (“Samsung” or “Petitioner”) and
in accordance with 35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes review is
respectfully requested for claims 1-25 of U.S. Patent No. 7,167,731 (“the ‘731
patent”), attached hereto as Exhibit 1001.
The undersigned representative of Petitioner authorizes the Patent Office to
charge the $27,200 Petition Fee, along with an excess claim fee of $3000 and any
additional fees, to Deposit Account 02-4377, ref: 072395.0208 (twenty-five claims
are identified for review, and therefore the excess claim fee for the five additional
claims over and above the twenty claim limit is $3000).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
TABLE OF CONTENTS
LIST OF EXHIBITS…………………………………………………………….....v
I.
INTRODUCTION........................................................................................1
II.
OVERVIEW OF THE ‘731 PATENT.........................................................2
III.
OVERVIEW OF THE PROSECUTION HISTORY ..................................4
IV.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................6
A.
Prior Art Patents and Printed Publications...................................................7
B.
Grounds for Challenge .................................................................................8
V.
CLAIM CONSTRUCTION ...................................................................... 11
VI.
LEVEL OF ORDINARY SKILL IN THE ART ...................................... 14
VII.
THERE IS A REASONABLE LIKELIHOOD THAT THE
CHALLENGED CLAIMS ARE UNPATENTABLE.............................. 15
GROUND 1.
Claims 1, 9-13, 15, 17-19, 21, and 23-24 are Unpatentable Under
35 U.S.C. § 102(a) as Anticipated by SPH-A5000 ................. 15
GROUND 2.
Claims 2-8, 14, 16, 20, 22 and 25 are Unpatentable Under 35
U.S.C. § 103(a) as Obvious over SPH-A5000 in view of the
Knowledge of One of Ordinary Skill in the Art ...................... 20
GROUND 3.
Claims 2-8 and 14 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over SPH-A5000 in view Nokia II............................ 23
GROUND 4.
Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of King............................................ 26
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 5.
Claim 20 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of IBM ............................................ 26
GROUND 6.
Claim 22 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of Philips or Nokia ......................... 27
GROUND 7.
Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of Kenwood or Nokia..................... 28
GROUND 8.
Claims 1, 9-15, 17-18 and 21-24 are Unpatentable Under 35
U.S.C. § 102(b) as Anticipated by Philips............................... 29
GROUND 9.
Claims 2-6, 7-13, 19-20, and 25 are Unpatentable Under 35
U.S.C. § 103(a) as Obvious over Philips in view of the
Knowledge of One of Ordinary Skill in the Art ...................... 33
GROUND 10.
Claims 2-8 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of Nokia II................................ 35
GROUND 11.
Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Philips in view of King .................................................... 38
GROUND 12.
Claims 19-20 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of IBM...................................... 38
GROUND 13.
Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Philips in view of Kenwood or Nokia ............................. 38
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 14.
Claims 1, 4, 10-13, 15, 17-19, 21 and 23-24 are Unpatentable
Under 35 U.S.C. § 102(e) as Anticipated by Hawkins............ 40
GROUND 15.
Claims 2-10, 14, 20, 22 and 25 are Unpatentable Under 35
U.S.C. § 103(a) as Obvious over Hawkins in view of the
Knowledge of One of Ordinary Skill in the Art ...................... 45
GROUND 16.
Claims 2-9 and 14 are Unpatentable Under 35 U.S.C. § 103(a)
as Obvious over Hawkins in view of Nokia II ........................ 48
GROUND 17.
Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of King................................................. 51
GROUND 18.
Claim 20 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of IBM ................................................. 52
GROUND 19.
Claim 22 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of Philips or Nokia............................... 52
GROUND 20.
Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of Kenwood or Nokia .......................... 53
GROUND 21.
Claims 1, 14-15, 17-18, 21 and 23-25 are Unpatentable Under
35 U.S.C. § 102(a) as Anticipated by Kenwood ..................... 53
GROUND 22.
Claims 11-13 are Unpatentable Under § 103(a) as Obvious over
Kenwood in view of the Knowledge of One of Ordinary Skill in
the Art ...................................................................................... 56
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 23.
Claims 19-20 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Kenwood in view of IBM ................................. 57
VIII.
FEES.......................................................................................................... 58
IX.
MANDATORY NOTICES....................................................................... 58
X.
CERTIFICATION OF GROUNDS FOR STANDING............................ 59
XI.
CONCLUSION ......................................................................................... 60
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
LIST OF EXHIBITS
Exhibit 1001 – U.S. Patent No. 7,167,731
Exhibit 1002 – File History for U.S. Patent No. 7,167,731
Exhibit 1003 – File History for U.S. Patent No. 6,987,991
Exhibit 1004 – Complaint in Varia Holdings LLC v. Samsung
Exhibit 1005 – Complaint in Varia Holdings LLC v. Research In Motion
Exhibit 1006 – Samsung SPH-A5000 User’s Manual (translation, original)
Exhibit 1007 – Samsung SPH-N1016 User’s Manual (translation, original)
Exhibit 1008 – Samsung SPH-N1018 User’s Manual (translation, original)
Exhibit 1009 – Samsung SPH-N2000 User’s Manual (translation, original)
Exhibit 1010 – Samsung SPH-A5019 User’s Manual (translation, original)
Exhibit 1011 – U.S. Patent No. 6,975,304
Exhibit 1012 – Philips Savvy Mobile Phone User’s Guide
Exhibit 1013 – Journal Du Telephone article
Exhibit 1014 – Le Monde France article (translation, original, certification)
Exhibit 1015 – Japanese Pat. Appln. No. 2000-270115 and certified translation
Exhibit 1016 – U.S. Patent No. 5,953,541
Exhibit 1017 – WO 00/57617 to Nokia
Exhibit 1018 – EP 1 018 679 A2 to Nokia
Exhibit 1019 – Declaration of Young-Min Ryu
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Exhibit 1020 – Declaration of Jonghoon Song
Exhibit 1021 – U.S. Patent No. 5,987,482 to Bates
Exhibit 1022 – Wang, Y., “Perception of Meaning and Usage Motivations of
Emoticons Among Americans and Chinese Users,” Rochester Institute of
Technology Digital Media Library, Sept. 14, 2004
Exhibit 1023 – Perry, T., and Adam, J., “E-mail: Pervasive and Persuasive,” IEEE
Spectrum, Vol. 29, Issue 10, p. 23, Oct. 1992
Exhibit 1024 – Katsuno, H., and Yano, C., “Face to Face: On-line Subjectivity in
Contemporary Japan,” Asian Studies Review, Vol. 26, Issue 2, 2002, at p.
211-212.
Exhibit 1025 – Selected Articles on Criticism of Varia v. Samsung Case
Exhibit 1026 – Bederson Declaration
Exhibit 1027 – R. Zakon, Hobbes’ Internet Timeline, RFC 2235 (1997).
Exhibit 1028 – G. Kessler & S. Shepard, A Primer on Internet and TCP/IP Tools
and Utilities, RFC 2151 (1997).
Exhibit 1029 – A. Harmon, “Internet Changes Language for :-) & :-(”, New York
Times, (Feb 20, 1999).
Exhibit 1030 – Scott E. Fahlman, “Smiley Lore :-)” web publication
Exhibit 1031 – Scott E. Fahlman, Original Message Post (Sept 19, 1982).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Exhibit 1032 – S. Hambridge, “Netiquette Guidelines”, Network Working Group
RFC 1855 (1995)
Exhibit 1033 – D.W. Sanderson, “Smileys”, O'Reilly Press (1994).
Exhibit 1034 – A. Wolf, “Emotional Expression Online: Gender Differences in
Emoticon Use”, CyberPsychology & Behavior (2000).
Exhibit 1035 – J. B. Walther & K. P. D’Addario, “The Impacts of Emoticons on
Message Interpretation in Computer-Mediated Communication”, Social
Science Computer Review (2001).
Exhibit 1036 – J. Blagdon, “How Emoji Conquered the World”, The Verge (March
4, 2013)
Exhibit 1037 – David Canfield Smith, Charles Irby, Ralph Kimball, and Eric
Harslem, “The Star User Interface: an Overview”, AFIPS Press (1986).
Exhibit 1038 – Palm Pilot Handbook, 3Com Corporation (1997).
Exhibit 1039 – iPaq H3000 Reference Guide, Compaq Computer Corporation
(2000).
Exhibit 1040 – D. Goldberg and C. Richardson, “Touch-Typing with a Stylus”, In
Proceedings of the INTERACT '93 and CHI '93 Conference on Human
Factors in Computing Systems, ACM, New York, NY (1993).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Exhibit 1041 – K. Perlin, “Quikwriting: Continuous Stylus-based Text Entry”, In
Proceedings of the 11th annual ACM symposium on User interface software
and technology, ACM, New York, NY (1998).
Exhibit 1042 – NEC Digital Mover N503i User Manual (February, 2001)
Exhibit 1043 – U.S. Patent No. 6,130,628 Schneider-Hufschmidt et al.
Exhibit 1044 – U.S. Patent No. 6,445,934 to Khazaka
Exhibit 1045 – U.S. Patent No. 6,043,760 to Laakkonen
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
I.
INTRODUCTION
The ‘731 Patent is directed to the display of emoticons in text messages on
mobile devices. None of this subject matter was new at the time of filing of the
application that led to issuance of the ‘731 Patent.
Specifically, the use of emoticons in computer-based text communication
traces back to the 1980’s. The first recorded use of emoticons – in this case, the
“smiley,” :-) – was used in a post written on September 19, 1982, by Scott E.
Fahlman, then a graduate student at the Computer Science Department of Carnegie
Mellon University. See Wang, Y., “Perception of Meaning and Usage Motivations
of Emoticons Among Americans and Chinese Users,” Rochester Institute of
Technology Digital Media Library, Sept. 14, 2004. Exh. 1022.
Widespread use of emoticons in electronic messaging, including on mobile
devices such as pagers and cell phones, was acknowledged by the early 1990’s.
See Perry, T., and Adam, J., “E-mail: Pervasive and Persuasive,” IEEE Spectrum,
Vol. 29, Issue 10, p. 23, Oct. 1992; Katsuno, H., and Yano, C., “Face to Face: Online Subjectivity in Contemporary Japan,” Asian Studies Review, Vol. 26, Issue 2,
2002, at p. 211-212. Exh. 1023. By the year 1999, cell phones with built-in
emoticon functionality for text messaging were on the market. Exh. 1014.
In view of this history and the prior art cited in this Petition—which includes
printed publication user manuals for mobile phone devices introduced long before
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
the inventor of the ‘731 Patent filed his original application in August of 2001—
the claims of the ‘731 Patent cannot stand.
The ‘731 Patent is now being asserted by patent holding entity Varia
Holdings LLC in ongoing patent litigation in multiple federal courts and against
multiple parties, including Petitioner.1
See Varia Holdings LLC v. Samsung
Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC, Civil Action No. 1:12-cv-01899-PGG
(S.D.N.Y.); and Varia Holdings LLC v. Research In Motion Corp. and Research In
Motion Ltd., Civil Action No. 1:12-cv-00320-SLR-MPT (D. Del). See Exhs. 10041005. An inter partes review before the USPTO would be the most efficient
vehicle for resolving this dispute over an invalid patent.
II.
OVERVIEW OF THE ‘731 PATENT
The ‘731 Patent, issued to sole named inventor Jonathan O. Nelson is
entitled “Emoticon Input Method and Apparatus.” Exh. 1001. It was filed on Sep.
12, 2005, claims priority to parent Application No. 09/932,592 filed on Aug. 17,
2001, and includes twenty-five total claims; claim 1 is the only independent claim.
The Abstract of the ‘731 Patent describes a communication device with logic
associated with an input key “to improve the ease-of-use of the apparatus for
entering emoticons” into text messages. See Exh. 1001, ‘731 Patent, Abstract.
1
The ‘731 Patent, and the patent holder’s campaign to enforce it, have been the
subject of widespread criticism. See, e.g., Exh. 1025, selected reports.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
The Background portion of the ‘731 Patent sets a baseline for what the
applicant describes was known to one of ordinary skill at the time of the invention.
Specifically, the Applicant conceded “[i]t is known that for many users, their email
and instant messaging communications (also referred to as textual or non-verbal
communications) often involve the use of emoticons, such as the ‘smiling face’ or
the ‘sad face’.” ‘731 Patent, col. 1, lns. 30-33. Applicant further conceded that
“[s]ome instant messaging applications offer the minimal assistance of converting
or replacing a handful of widely used emoticon forming sequences of characters to
corresponding graphical symbols. For example, when the characters ‘:’ (colon),
‘=’ (equal sign) and ‘)’ (right parenthesis) are successfully entered, some instant
messaging applications automatically replace the entered characters with the
graphical symbol ‘☺’.” Id., col. 1, lns. 39-43; see also Exh. 1003, 6/29/07 Request
for Cert. of Correction filed in parent Application No. 09/932,592, issued as U.S.
Pat. No. 6,987,991 (which sought to include the ‘☺’ symbol mistakenly omitted).
The ‘731 Patent thereafter describes the supposed limitations of the prior art
as of the filing date and the problems that the inventor sought to address:
[F]ew email or instant messaging applications offer any assistance to a
user to enter and use emoticons in their communications…
Further, regardless of whether the character sequence is conventional
or unconventional, a user typically has to enter the emoticon
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
forming characters one at a time. This disadvantage is amplified
in situations where the user is conducting the textual or nonverbal communication using a communication device having
limited input facilities, such as wireless mobile phones.
Accordingly, facilities that are more user friendly in assisting a user to
employ
emoticons
in
their
communications,
especially
on
communication devices with limited input facilities, such as wireless
mobile phones, are desired.
‘731 Patent, col. 1, lns. 33-60 (emphasis supplied).
But the ‘731 Patent does not reflect, and the examiner during original
prosecution was never informed, that all of these identified problems had already
been addressed in the prior art, and the supposed improvements were already the
subject of widespread adoption in mobile phones and in associated publications.
Ultimately, the ‘731 Patent claims the use of an input key that can be pressed
to display emoticons that can be inserted into text messages on a mobile device.
But as described in more detail below, this simple functionality was both
anticipated by certain prior art references and obvious in view of the knowledge of
one of ordinary skill in the art well before the ‘731 Patent’s priority date.
III.
OVERVIEW OF THE PROSECUTION HISTORY
The ‘731 Patent is a continuation of Application Ser. No. 09/932,592, filed
Aug. 17, 2001, and issued as U.S. Patent No. 6,987,991 (“the ‘991 Patent”).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
During prosecution of the ‘991 Patent, the examiner rejected the claims in an
office action under § 103(a) as unpatentable over U.S. Patent No. 6,539,240
(“Watanabe”) in view of U.S. Patent Publication No. 2002/0156866 (“Schneider”).
See Exh. 1003, ‘991 Patent File History, 6/23/04 Office Action. After Applicant’s
response, the examiner rejected the claims in a final office action again under
§103(a) as unpatentable over those same references. See id., 2/9/05 Final Office
Action. The claims of the ‘991 Patent issued only after the Applicant incorporated
a narrowing limitation into all claims, directed to the embodiment described in the
Abstract, in which “current focus is place[d] on one of the displayed emoticons,
and the emoticon with the current focus is automatically selected upon elapse of a
predetermined amount of time after the current focus was placed.” See id., 4/11/05
Amendment; ‘731 Patent, Abstract. The amended claims issued as the ‘991 Patent.
5/9/05 Notice of Allowance.
Applicant thereafter re-filed the broader, original claims in a continuation
application (which matured into the ‘731 Patent at issue here). The examiner again
rejected the claims, under U.S.C. 103(a) as unpatentable over Watanabe in view of
Schneider, the same references cited in the prosecution of the parent. See Exh.
1002, ‘731 File History, 2/24/06 Office Action.
Applicant amended the claims, but not to include the narrowing limitation
directed to the “timeout” feature of the ‘991 Patent. Instead, Applicant amended
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
the claims to require a “list” of emoticons and a “mobile communication” device,
and distinguished Watanabe on the basis that it allowed the selection of “an image”
but not a “list” of images. See id., 6/26/06 Amendment at 7 (emphasis in original).
Fig. 2 of the ‘731 Patent describes the identified “list of emoticons 112”:
None of the prior art references identified in this Petition were cited during
the prosecution of the ‘731 Patent. As set forth in detail below, these references
and others disclosed the features of (1) displaying a list of emoticons (2) on a
mobile device—the sole features that were added to overcome the prior art
rejections during prosecution and which ultimately resulted in issuance of the ‘731
Patent.
IV.
OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104 (b)(1)-(2), Petitioner
challenges claims 1-25 of the ‘731 Patent.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
A.
Prior Art Patents and Printed Publications
Petitioner relies on the following patents and printed publications, none of
which were considered during the original prosecution of the ‘731 Patent:
●
Exhibit 1006 – Samsung SPH-A5000 Mobile Phone User’s Manual
(“SPH-A5000”), which was published in March 2001, is prior art against the
‘731 Patent under 35 U.S.C. § 102(a). (See Exhs. 1019 and 1020).
● Exhibit 1011 – U.S. Patent No. 6,975,304 to Hawkins et al. (“Hawkins”),
which issued on Dec. 13, 2005 and claims priority to U.S. Provisional
Application No. 60/297,817 filed on June 11, 2001, and therefore is prior art
against the ‘731 Patent under 35 U.S.C. § 102(e).
● Exhibit 1012 – Philips Savvy Phone User’s Guide (“Philips”), published
in 1999, is prior art against the ‘731 Patent under 35 U.S.C. § 102(b).2
● Exhibit 1015 – Japanese Patent Application No. 2000-270115 to
Kenwood (“Kenwood”) which published on September 29, 2000, is prior art
against the ‘731 Patent under 35 U.S.C. § 102(a).
● Exhibit 1016 - U.S. Patent No. 5,953,541 to King et al. (“King”), issued
Sept. 14, 1999, is prior art against the ‘731 Patent under 35 U.S.C. § 102(b).
2
Philips was published in 1999. The Philips Savvy Mobile Phone was introduced
in 1999 as described in WO 00/57617 (Exh. 1017, col. 1, lns. 16-23), and press at
the time confirm the sale of the phone in 1999. See Exhs. 1013-1014.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
● Exhibit 1017 – WO 00/57617 to Nokia (“Nokia”), published on Sep. 28,
2000 is prior art against the ‘731 Patent under 35 U.S.C. § 102(a).
● Exhibit 1018 – EP 1 018 679 A2 to Nokia (“Nokia II”), published July
12, 2000 and is prior art against the ‘731 Patent under 35 U.S.C. § 102(b).
● Exhibit 1021 – U.S. Patent No. 5,987,482 to Bates, assigned to IBM
(“IBM”), was issued on November 16, 1999, and therefore is prior art against
the ‘731 Patent under 35 U.S.C. § 102(b).
B.
Grounds for Challenge
Petitioner requests cancelation of the challenged claims on the following
statutory grounds:
I.
SPH-A5000 as Base Reference
− GROUND 1. Claims 1, 9-13, 15, 17-19, 21, and 23-24 are Unpatentable
Under 35 U.S.C. § 102(a) as Anticipated by SPH-A5000
− GROUND 2. Claims 2-8, 14, 16, 20, 22 and 25 are Unpatentable Under 35
U.S.C. § 103(a) as Obvious over SPH-A5000 in view of the Knowledge of One
of Ordinary Skill in the Art
− GROUND 3. Claims 2-8 and 14 are Unpatentable Under 35 U.S.C. § 103(a)
as Obvious over SPH-A5000 in view Nokia II
− GROUND 4. Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of King
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
− GROUND 5. Claim 20 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of IBM
− GROUND 6. Claim 22 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of Philips or Nokia
− GROUND 7. Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over SPH-A5000 in view of Kenwood or Nokia
II.
Philips as Base Reference
− GROUND 8. Claims 1, 9-15, 17-18 and 21-24 are Unpatentable Under 35
U.S.C. § 102(b) as Anticipated by Philips
− GROUND 9. Claims 2-6, 7-13, 19-20, and 25 are Unpatentable Under 35
U.S.C. § 103(a) as Obvious over Philips in view of the Knowledge of One of
Ordinary Skill in the Art
− GROUND 10. Claims 2-8 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of Nokia II
− GROUND 11. Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Philips in view of King
− GROUND 12. Claims 19-20 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of IBM
− GROUND 13. Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Philips in view of Kenwood or Nokia
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
III.
Hawkins as Base Reference
− GROUND 14. Claims 1, 4, 10-13, 15, 17-19, 21 and 23-24 are Unpatentable
Under 35 U.S.C. § 102(e) as Anticipated by Hawkins
− GROUND 15. Claims 2-10, 14, 20, 22 and 25 are Unpatentable Under 35
U.S.C. § 103(a) as Obvious over Hawkins in view of the Knowledge of One of
Ordinary Skill in the Art
− GROUND 16. Claims 2-9 and 14 are Unpatentable Under 35 U.S.C. § 103(a)
as Obvious over Hawkins in view of Nokia II
− GROUND 17. Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of King
− GROUND 18. Claim 20 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of IBM
− GROUND 19. Claim 22 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of Philips or Nokia
− GROUND 20. Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as Obvious
over Hawkins in view of Kenwood or Nokia
IV.
Kenwood as Base Reference
− GROUND 21. Claims 1, 14-15, 17-18, 21 and 23-25 are Unpatentable Under
35 U.S.C. § 102(a) as Anticipated by Kenwood
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
− GROUND 22. Claims 11-13 are Unpatentable Under § 103(a) as Obvious over
Kenwood in view of the Knowledge of One of Ordinary Skill in the Art 57
− GROUND 23. Claims 19-20 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Kenwood in view of IBM
As demonstrated below, for each of the statutory grounds, there is a
reasonable likelihood that Petitioner will prevail with respect to at least one of the
challenged claims. See 35 U.S.C. § 314(a)
V.
CLAIM CONSTRUCTION
Pursuant to 37 C.F.R. § 42.100(b), and solely for purposes of this review,
Petitioner construes the claim language such that the claims are given their
broadest reasonable interpretation in light of the specification of the ‘731 Patent.
Because the standard for claim construction at the Patent Office is different than
that used in a U.S. district court litigation, see In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004) and MPEP § 2111, Petitioner
expressly reserves the right to argue a different claim construction in the district
court proceeding for any term of the ‘731 Patent, as appropriate. 3 The following
example terms are construed a follows:
3
Accordingly, any interpretation or construction of the challenged claims in this
Petition, either implicitly or explicitly, should not be viewed as constituting, in
whole or in part, Petitioner’s own interpretation or construction as should be
applied in the copending district court action.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
“Emoticon.”
For purposes of this inter partes review, the limitation
“emoticon” may be construed, consistent with its plain and ordinary meaning and
the patent owner’s position expressed in the pending district court litigations, to
mean “pictorial representations of an expression or a person’s mood.” (See Exh.
1004, Varia Complaint, at ¶ 11; see also Exh. 1026, Declaration of Dr. Benjamin
Bederson, at ¶ 43) (hereinafter “Bederson Dec.”)).
“Responsive to a selection of said first input key.” For purposes of this
inter partes review, the limitation of claim 1 of “responsive to a selection of said
first input key” may be construed in accordance with its plain meaning. Inherent in
the broadest reasonable interpretation of the plain meaning is that the input key is
simply a key that, when pressed, displays a list of emoticons that may be selected.
According to this broadest reasonable interpretation, the claim does not include
any limitation requiring that the key be dedicated solely to the displaying of
emoticons. Rather, the key may be a multifunction key, which may have other uses
and/or such that multiple interactions may be necessary to access an emoticon list.
This interpretation is supported by the patent specification as well, which
contemplates that in some embodiments, the claimed “first input key” functionality
may be accessed using one of the standard keys on the phone keypad, such as the
*, #, or any of the number keys (which can serve differing purposes depending on a
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
current mode of the device). See ‘731 Patent, col. 6, lns. 39-59. (See Bederson
Dec., at ¶ 44-45).
This interpretation is also consistent with the patent holder’s apparent
interpretation in the pending district court action. In its complaint against
Petitioner, the patent holder has alleged infringement by a Galaxy S device which
requires multiple menu interactions, including the pressing of a generic menu key
to access an “insert smiley” option and then further pressing the “insert smiley”
option to display a list of emoticons. See Exh. 1004, Samsung Complaint, at ¶16.
Specifically, the patent holder there alleges “with reference to the Samsung Galaxy
S, when the user presses the ‘Insert smiley’ key while in text mode, a list of
emoticons for selection by the user is displayed on the screen… .” Id. To access
the identified screen, the user must take multiple actions: select the text field press the “Option key” select “Insert smiley.” Only then is a list of emoticons
displayed. See Galaxy Manual at 59.4 (See Bederson Dec., at ¶ 44-45).
“Text mode.” For purposes of this inter partes review, the limitation of
claim 1 of “text mode” may be construed in accordance with its plain meaning,
which may generally mean “a mode in which a textual message is being
composed.” This construction is supported by the patent specification, which
4
Accessed on the Samsung website at
http://www.samsung.com/us/support/owners/product/SGH-T959HABTMB; see
also http://www.youtube.com/watch?v=ZursYvJeb6g; starting at 0:25.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
indicates “while phone 100 is operating in the text mode, e.g. when a textual
message is being composed.”
‘731 Patent, col. 4, lns. 3-4.
The patent
specification further distinguishes between a “text or non-verbal mode” and a
“voice or verbal mode.” ‘731 Patent, col. 3, lns. 18-21 (“Wireless mobile phone
100 operates in at least two modes, a voice or verbal mode, and a text or nonverbal mode.”). (See Bederson Dec., at ¶ 47).
“Display a list of emoticons for selection.” For purposes of this inter partes
review, the limitation “display a list of emoticons for selection” may be construed
in accordance with its plain and ordinary meaning. (See Bederson Dec., at ¶ 46).
This is consistent with the embodiments described – some of which, as in the “list
of emoticons 112” of Fig. 2, allow for the display of multiple list members on
screen at once; in other instances, the specification describes separately displaying
the list members on screen one at a time and allowing the user to navigate through
the list members. See col. 7, lns. 53-60.
VI.
LEVEL OF ORDINARY SKILL IN THE ART
The level of ordinary skill in the art is evidenced by the references. See In re
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board did
not err in adopting the approach that the level of skill in the art was best
determined by the references of record). More specifically the level of ordinary
skill in the art of the ‘731 Patent is a person having a master’s degree in computer
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
science or computer engineering, with at least three years of experience in software
and user interface design. (See Bederson Dec., at ¶ 40).
VII. THERE IS A REASONABLE LIKELIHOOD
CHALLENGED CLAIMS ARE UNPATENTABLE
THAT
THE
Pursuant to 37 C.F.R. § 42.104(b)(4)-(5), all of the challenged claims are
unpatentable for the reasons set forth in detail below.
GROUND 1. Claims 1, 9-13, 15, 17-19, 21, and 23-24 are Unpatentable
Under 35 U.S.C. § 102(a) as Anticipated by SPH-A5000
Claims 1, 9-13, 15, 17-19, 21, and 23-24 are invalid as anticipated by SPHA5000, as shown in the claim chart below. A certified translation of SPH-A5000
is attached as part of Exhibit 1006, and is referenced in the claim charts below. 5
‘731 Claims vs. Samsung SPH-A5000 User Manual
1. A mobile communication apparatus comprising:
SPH-A5000 discloses “the phone 1 according to the preferred embodiment is
adapted for communication via a cellular network”. (SPH-A5000: 1; see also
Bederson Dec., at ¶52)
a display;
5
Nearly identical disclosures to that of the SPH-A5000 User Manual are also
provided in the Samsung SPH-N1016 User Manual, the Samsung SPH-N1018
User Manual, the Samsung SPH-N2000 User Manual, and the Samsung SPHA5019 User Manual (collectively, the “Samsung Manuals”). See Exhs. 1007 to
1010. The Samsung Manuals were published beginning in February 2001. See
Exhs. 1019 and 1020. The Samsung Manuals are prior art under 35 U.S.C. §
102(a), and each render the challenged claims invalid for the same reasons as SPHA5000. Translations of relevant pages of the Samsung Manuals are also attached;
however, only the SPH-A5000 is relied on in this Petition for the cited disclosures.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
SPH-A5000 discloses a display
embodied in the screen . (SPHA5000: 1; see also Bederson Dec., at
¶52)
a first input key; and
SPH-A5000 discloses a “Select” key for “selecting a function.” (SPH-A5000:
1; see also Bederson Dec., at ¶52)
operating logic associated with the first input key to display on said display a list
of emoticons for selection by a user, responsive to a selection of said first input
key,
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
SPH-A5000 discloses that the “Select”
key can be used to display a list of
emoticons for selection by the user.
(SPH-A5000: 37; see also Bederson
Dec., at ¶52) For example, the
instructions below demonstrate the
procedures to display a list of
emoticons and select the “(@.@)”
emoticon. (SPH-A5000: 37)
The user can then press the “Select”
key to display a list of emoticons.
Thereafter the user can navigate to the desired emoticon using the arrow keys:
It would be inherent to one of ordinary skill in the art that the functionality
described in the SPH-A5000 disclosure would necessarily be implemented with
some form of operating logic, comprising at least hardware (a processor and
memory) and software. (See Bederson Dec., at ¶53).
when the apparatus is operating in a text mode.
SPH-A5000 discloses a list of emoticons that can be displayed when the user is
entering text in an SMS message, which constitutes a text mode. (SPH-A5000:
37; see also Bederson Dec., at ¶52)
9. The apparatus of claim 1, wherein in addition to said first input key, said
apparatus further comprises a 12-key input key pad having 12 input keys
arranged in a 4×3 array configuration for entry of at least a selected one of
alphabet and numeric data.
SPH-A5000 discloses a 12-key input pad for entering at least numerical data, in
addition to the “Select” key. (SPH-A5000: 1; see also Bederson Dec., at ¶52)
SPH-A5000 also discloses a “Select” key for “selecting a function,” which
constitutes the claimed first input key. (SPH-A5000: 1; see also Bederson Dec.,
at ¶52)
10. The apparatus of claim 1, wherein said operating logic is designed to display
said emoticons for selection in a selected one of a first left-to-right then top-tobottom display arrangement, a second right-to-left then top-to-bottom display
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
arrangement, a third top-to-bottom then left-to-right display arrangement, and a
fourth top-to-bottom then right-to-left display arrangement.
SPH-A5000 discloses a list of emoticons that is displayed in an ordering that is
first left-to-right then top-to-bottom display. One of ordinary skill in the art
reviewing the SPH-A5000 would read the reference as disclosing one of these
claimed display orderings. (SPH-A5000: 37; see also Bederson Dec., at ¶52).
11. The apparatus of claim 1, wherein said operating logic is designed to place a
current focus on one of the one or more emoticons displayed for selection.
SPH-A5000 discloses that a
list of emotions is displayed
with a current focus on one
emoticon. Specifically, the
focus is shown in reversevideo, as indicated in the figure
shown. (SPH-A5000: 37; see
also Bederson Dec., at ¶52).
12. The apparatus of claim 11, wherein said operating logic is further designed
to change said placement of current focus to another one of said one or more
emoticons displayed for selection responsive to a user input.
SPH-A5000 discloses that the user can use the direction/arrow buttons to change
the placement of the current focus of the selected emoticon – responsive to that
user input, the placement of the current focus can be changed from one
emoticon to another. (SPH-A5000: 37; see also Bederson Dec., at ¶52).
13. The apparatus of claim 12, wherein said operating logic is designed to
perform said changes in accordance with the order the one or more emoticons
are displayed for selection.
SPH-A5000 discloses the user can use the direction buttons to select an
emoticon to include in the message, allowing the user to change the placement
of the current focus of the selected emoticon in any order, including in the order
in which the emoticons are displayed. (SPH-A5000: 37; see also Bederson
Dec., at ¶52)
15. The apparatus of claim 12, wherein said apparatus further comprises at least
one other input key, and said at least one other input key is employed to provide
said user input.
SPH-A5000 discloses the user can use the “Select” key to display a list of
emoticons, and the separate direction buttons to change the focus of the
displayed emoticons. (SPH-A5000: 37; see also Bederson Dec., at ¶52)
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
17. The apparatus of claim 11, wherein said operating logic is further designed
to select the emoticon with the current focus, responsive to a user input.
SPH-A5000 discloses a list of emoticons can be displayed with current focus on
one emotion, and allowing the user to select the emoticon having current focus
by pressing the “Select” key. (SPH-A5000: 37; see Bederson Dec., at ¶52)
18. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a plurality of characters.
SPH-A5000 discloses emoticons that each comprise a plurality of characters,
such as “(@.@).” (SPH-A5000: 37; see also Bederson Dec., at ¶52)
19. The apparatus of claim 18, wherein said placement of a current focus on a
first of displayed emoticons comprises highlighting all characters of the first
emoticon.
SPH-A5000 discloses a list of emoticons is displayed with a current focus on
one emoticon, in which all of the characters of the selected emoticon are
highlighted (reverse video). (SPH-A5000: 37; see also Bederson Dec., at ¶52)
21. The apparatus of claim 18, wherein said selecting of the emoticon with the
current focus comprises selecting all characters of the emoticon with the current
focus.
SPH-A5000 discloses a list of emoticons is displayed with a current focus on
one emoticon, allowing the user to select the emoticon to insert in the text,
including all of the characters of the emoticon being shown with the current
focus (in reverse video). (SPH-A5000: 37; see also Bederson Dec., at ¶52).
23. The apparatus of claim 1, wherein said apparatus further comprises: storage
medium having stored therein a plurality of programming instructions designed
to implement said operating logic; and a processor coupled to the storage
medium to execute the programming instruction.
It would be inherent in the reference to one of ordinary skill in the art that the
functionality described SPH-A5000 would necessarily require a storage
medium, such as a memory, with instructions that implement the operating
logic, and a processor for executing the instructions. (See Bederson Dec., at ¶86)
24. The apparatus of claim 1, wherein said mobile communication device is a
wireless mobile phone.
SPH-A5000 discloses a wireless mobile phone. (SPH-A5000).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 2. Claims 2-8, 14, 16, 20, 22 and 25 are Unpatentable Under
35 U.S.C. § 103(a) as Obvious over SPH-A5000 in view of
the Knowledge of One of Ordinary Skill in the Art
Claims 2-8, 14, 16, 20, 22 and 25 are invalid as obvious over SPH-A5000 in
view of the knowledge of one of ordinary skill in the art.
Each of these dependent claims relates to simple design choices in
implementing what the Applicant alleged to be the inventive aspect of his
invention – the use of an input key that can be pressed to display a list of
emoticons that can be inserted into text messages on a mobile device – that were
well within the knowledge of those of ordinary skill. Claims 2-8 and 14 merely
identify which key on a standard keypad is the input key, while claims 16, 20, 22
and 25 identify well-known graphical user interface techniques. These claims are
therefore invalid as obvious over SPH-A5000, as shown in detail in the claim chart
below. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 402-03 (2007) (“When
there is a design need . . . to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary skill
and common sense.”); see also id. at 401 (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
would improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond that person’s skill.”).
2. The apparatus of claim 1, wherein the first input key is an input key for
entering an “*” (asterisk) when the apparatus is operating in a voice mode.
See Ground 1 Claim 1 chart. SPH-A5000 discloses an asterisk key which can be
used for entering “*” when the apparatus is operating in voice mode – in other
words, that the “*” key has its standard phone functionality when in voice/phone
mode. (SPH-A5000: 1). It would have been obvious to one of ordinary skill in
the art to use keys on a standard 4x3 keypad on a mobile phone for the entry of
text and special symbols while in a non-voice mode, and any of such keys,
including the “*” key, could have been utilized as the first input key as a mere
design choice. (See Bederson Dec., at ¶54-55). See Examiner’s remarks during
prosecution, February 24, 2006 Office Action, 4 (finding this claim obvious).
3. The apparatus of claim 1, wherein the first input key is an input key for
entering a “#”, (pound) when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the “#” key.
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the digit keys.
5. The apparatus of claim 1, wherein said apparatus further comprises a 12-key
input key pad having 12 input keys arranged in a 4×3 array configuration for
entry of at least a selected one of alphabet and numeric data, and said first input
key being one of said 12 input keys.
See Ground 1 Claim 1 chart. SPH-A5000 discloses a 12-key input keypad
arranged in a standard 4×3 mobile phone keypad array configuration for
entering at least numerical data. (SPH-A5000: 1; see also Bederson Dec., at
¶65) It would have been obvious to one of ordinary skill in the art to enable one
of the 12-key input keys to be assigned alternate functions in connection with
the input of special characters, such as emoticons, for the same reasons as set
forth above for claim 2. (SPH-A5000: 1; see also Bederson Dec., at ¶65).
6. The apparatus of claim 5, wherein said first input key is the input key
occupying a fourth row and first column position of said 4×3 array
configuration.
SPH-A5000 discloses a 12-key input keypad arranged in a standard 4×3 mobile
phone keypad array configuration for entering at least numerical data. It would
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
have been obvious to one of ordinary skill in the art to enable one of the 12-key
input keys to be assigned alternate functions in connection with the input of
special characters, such as emoticons, for the same reasons as set forth above for
claim 2. (SPH-A5000: 1; see also Bederson Dec., at ¶65)
7. The apparatus of claim 6, wherein column positions of said 4×3 array
configuration are determined in a selected one of a left-to-right and a right-toleft manner.
SPH-A5000 discloses a 4×3 array input pad configured in a left-to-right manner
(as numbered sequentially). (SPH-A5000: 1; see also Bederson Dec., at ¶65)
8. The apparatus of claim 6, wherein row positions of said 4×3 array
configuration are determined in a selected one of a top-to-bottom and a bottomto-top manner.
SPH-A5000 discloses a 4×3 array input pad in a top-to-bottom manner (as
numbered sequentially). (SPH-A5000: 1; see also Bederson Dec., at ¶65)
14. The apparatus of claim 12, wherein said first input key is also employed to
provide said user input.
See Ground 1 Claim 12 chart. SPH-A5000 discloses using the “Select” key to
display a list of emoticons, and the direction buttons to change the focus of the
emoticons in the list. (SPH-A5000: 37). It would have been obvious to one of
ordinary skill in the art to employ the input key with an alternate function, for
the reasons set forth above in claim 2, to provide other user input including to
change placement of the current focus. (See Bederson Dec., at ¶67).
16. The apparatus of claim 11, wherein said operating logic is further designed
to automatically select the emoticon with the current focus upon occurrence of a
selected one of elapse of a predetermined amount of time after the first input key
was last selected, and selection another input key.
See Ground 1 Claim 11 chart. SPH-A5000 discloses the user can use the
direction buttons and the “Select” key to select an emoticon to include in the
message, therefore satisfying the claim limitation. (SPH-A5000: 37). It would
have been obvious to one of ordinary skill in the art to employ another input key
to allow the user to select an emoticon having the current focus, for reasons set
forth above in connection with claim 2. (See Bederson Dec., at ¶54-55).
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
See Ground 1 Claim 19 chart. SPH-A5000 discloses a list of emoticons is
displayed with a current focus on one, in which all of the characters are
highlighted. (SPH-A5000: 37). One of ordinary skill would understand that
highlighting could also be accomplished by underlining, italicizing, employing
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
bold face, or otherwise modifying the appearance of a currently-selected list
option to visually distinguish it from others, and that selection is a simple design
choice. (See Bederson Dec., at ¶73).
22. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a pixel map based single graphical symbol.
See Ground 1 Claim 1 chart. SPH-A5000 discloses emoticons that comprise a
plurality of characters. (SPH-A5000: 37) It would have been obvious to one of
ordinary skill in the art to also enable emoticons as pixel maps. (See Bederson
Dec., at ¶77). This claim was well known, and is admitted to be prior art in the
Background of the ‘731 Patent: “For example, when the characters ‘:’ (colon),
‘=’ (equal sign) and ‘)’ (right parenthesis) are successfully entered, some instant
messaging applications automatically replace the entered characters with the
graphical symbol ‘☺’.” ‘731 Patent, col. 1: 36-43; see also ‘731 Patent
Certificate of Correction. One would implement this well known feature in
SPH-A5000 to offer graphics and more options in messaging functions.
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
emoticons to be displayed for user selection.
See Ground 1 Claim 1 chart. One of ordinary skill in the art would understand
that adding items to or deleting items from a list would have been obvious and
well-known at the time. (See Bederson Dec., at ¶87). During the examination
of the parent ‘991 Patent, the Examiner took official notice that “the art of
add[ing] or delet[ing] an object in a display of a portable device is
conventionally well known. It would have been obvious to one of ordinary skill
in the art at the time the invention was made to add or delete emoticon[s] in the
apparatus of [the primary reference] so that the user can have his desire[d]
emoticons.” ‘991 Patent Prosecution history, 6/23/04 Office Action at 7.
GROUND 3. Claims 2-8 and 14 are Unpatentable Under 35 U.S.C. §
103(a) as Obvious over SPH-A5000 in view Nokia II
Claims 2-8 and 14 are invalid as obvious over SPH-A5000 in view of Nokia
II, as shown in the claim chart below.
For the reasons noted in Ground 2,
Petitioner does not believe a secondary reference is required for a finding of
obviousness, but such references are readily available, as shown in the claim chart
below, and in Grounds 4-7.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
2. The apparatus of claim 1, wherein the first input key is an input key for
entering an “*” (asterisk) when the apparatus is operating in a voice mode.
See Ground 1 Claim 1 chart. SPH-A5000 discloses an asterisk key which can be
used for entering “*” when the apparatus is operating in voice mode – in other
words, that the “*” key has its standard phone functionality when in voice/phone
mode. (SPH-A5000: 1; see also Bederson Dec., at ¶56-59).
Nokia II discloses: “In addition to the keys reserved for starting a call and using
menu functions, mobile phones often contain a familiar button-telephone-like
keyboard with 12 keys arranged in matrix of [f]our rows by three columns:
numbers 1-9 and *, 0 and #. For writing of SMS-messages, most of the number
keys (2-9, 0, and #) in Nokia 2110 mobile phones can be used to produce letters
and other symbols. In this case, a part of the producible symbols reside ‘under’
each key, e.g., in order first three letters, then the number of the numeric
keyboard and after these two or three special symbols. [and thereafter describing
various means for accessing these symbols]” Nokia II, ¶0002.
One of ordinary skill in the art would be motivated to combine SPH-A5000 with
Nokia II to designate one of the 12 standard keys, e.g., the “*” key, as the input
key because they are both related to efficient keyboard input on mobile devices,
and the use of special characters. Furthermore, one of ordinary skill in the art
would have been motivated to modify the system disclosed in SPH-A5000 to
include the features disclosed in Nokia II in order to increase efficiency of
keyboard input, in particular in instances in which the user can be presented
with more options than there are keys. The use of other keys as the input key in
SPH-A5000 would be a mere design choice. (See Bederson Dec., at ¶56-59).
3. The apparatus of claim 1, wherein the first input key is an input key for
entering a “#”, (pound) when the apparatus is operating in a voice mode.
See Ground 2 Claim 1 chart. SPH-A5000 discloses a pound key which can be
used for entering “#” when the apparatus is operating in voice mode – in other
words, that the “#” key has its standard phone functionality when in voice/phone
mode. (SPH-A5000: 1). This claim would have been obvious for the same
reasons as set forth above for claim 2. (See Bederson Dec., at ¶62).
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
See Ground 1 Claim 1 chart. SPH-A5000 discloses numerical keys which can
be used to enter digits when the apparatus is operating in voice mode – in other
words, that the number keys have standard phone functionality when in
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
voice/phone mode. (SPH-A5000: 1). This claim would have been obvious for
the same reasons as set forth above for claim 2. (See Bederson Dec., at ¶64).
5. The apparatus of claim 1, wherein said apparatus further comprises a 12-key
input key pad having 12 input keys arranged in a 4×3 array configuration for
entry of at least a selected one of alphabet and numeric data, and said first input
key being one of said 12 input keys.
See Ground 1 Claim 1 chart. SPH-A5000 discloses a 12-key input keypad
arranged in a standard 4×3 mobile phone keypad array configuration for
entering at least numerical data. (SPH-A5000: 1). It would have been obvious
to one of ordinary skill in the art to enable one of the 12-key input keys to be
assigned alternate functions in connection with the input of special characters,
such as emoticons, for the same reasons as set forth above for claim 2. (See
Bederson Dec., at ¶66).
6. The apparatus of claim 5, wherein said first input key is the input key
occupying a fourth row and first column position of said 4×3 array
configuration.
See Ground 1 Claim 5 chart. SPH-A5000 discloses a 12-key input pad arranged
in a standard 4×3 mobile phone keypad array configuration for entering at least
numerical data. (SPH-A5000: 1). It would have been obvious to one of
ordinary skill to enable one of the 12-key input keys to be assigned alternate
functions in connection with the input of special characters, such as emoticons,
for the reasons as set forth above for claim 2. (See Bederson Dec., at ¶66).
7. The apparatus of claim 6, wherein column positions of said 4×3 array
configuration are determined in a selected one of a left-to-right and a right-toleft manner.
SPH-A5000 discloses a 4×3 array input pad configured in a left-to-right manner
(as numbered sequentially). (SPH-A5000: 1; see also Bederson Dec., at ¶66)
8. The apparatus of claim 6, wherein row positions of said 4×3 array
configuration are determined in a selected one of a top-to-bottom and a bottomto-top manner.
SPH-A5000 discloses a 4×3 array input pad in a top-to-bottom manner (as
numbered sequentially). (SPH-A5000: 1; see also Bederson Dec., at ¶66)
14. The apparatus of claim 12, wherein said first input key is also employed to
provide said user input.
See Ground 1 Claim 12 chart. SPH-A5000 discloses the user can use the
“Select” key to display a list of emoticons, and the direction buttons to change
the focus of the emoticons in the displayed list. (SPH-A5000: 37). It would
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
have been obvious to one of ordinary skill in the art to employ the input key
with an alternate function, including as disclosed in Nokia II and for the reasons
set forth above in claim 2, to provide other user input including to change
placement of the current focus. (See Bederson Dec., at ¶68).
GROUND 4. Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over SPH-A5000 in view of King
Claim 16 is obvious over SPH-A5000 in view of King, as shown below.
16. The apparatus of claim 11, wherein said operating logic is further designed
to automatically select the emoticon with the current focus upon occurrence of a
selected one of elapse of a predetermined amount of time after the first input key
was last selected, and selection another input key.
See Ground 1 Claim 11 chart. SPH-A5000 discloses the user can use the
direction buttons and the “Select” key to select an emoticon to include in the
message, therefore satisfying the claim limitation. (SPH-A5000: 37). It would
have been obvious to one of ordinary skill in the art to employ another input key
to allow the user to select an emoticon having the current focus. (See Bederson
Dec., at ¶69-72; see also King at 21:33-38).
Additionally, it would have been obvious to one of ordinary skill in the art to
enable the selection of an emoticon after a predetermined amount of time has
elapsed. The use of a time-out, to automatically select a symbol having the
current focus, was well known in the art. (See Bederson Dec., at ¶69-72). For
example, as disclosed in King, “[a]fter the expiration of the minimum time-out
delay period … the currently indicated symbol is accepted as the next symbol of
the multiple-stroke interpretation of the current keystroke sequence, and the
visual indication of the symbol is removed from the key.” King, col. 21:33-38.
One of ordinary skill would be motivated to combine the references because
they are both related to efficient keyboard input on mobile devices, including
special characters. Furthermore, one of ordinary skill in the art would have been
motivated to modify SPH-A5000 to include features of King in order to increase
efficiency of keyboard input, in particular in instances in which the user can be
presented with more options than there are keys. (See Bederson Dec., at ¶6972).
GROUND 5. Claim 20 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over SPH-A5000 in view of IBM
Claim 20 is obvious over SPH-A5000 in view of IBM, as shown below.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
See Ground 1 Claim 19 chart. SPH-A5000 discloses a list of emoticons is
displayed with a current focus on one emoticon, in which all of the characters of
the selected emoticon are highlighted. (SPH-A5000: 37). One of ordinary skill
in the art would understand that highlighting could also be accomplished by
underlining, italicizing, employing bold face, or otherwise modifying the
appearance of a currently-selected list option. For instance, U.S. Patent No.
5,987,482 to Bates et al., assigned to IBM (“IBM”; Exh. 1021 hereto) addresses
the issue of distinguishing certain on-screen elements in the context of
computing, in this instance in connection with HTML. IBM discusses that
numerous different techniques could be employed to distinguish on-screen
elements from others, including underlining, colors, fonts, sizes, italics, and
other characteristics. See IBM, col. 9, lns. 5-18. (“Other formatting or display
characteristics may also be used to distinguish internal and external hypertext
link definitions. For example, different colors, font faces/sizes, styles (e.g.,
underline, italics, bold, etc.), and/or other display characteristics may be used.”).
One of ordinary skill would have been motivated to apply the known techniques
for distinguishing on-screen elements to assist in providing better
focus/guidance for a user of a mobile phone or other mobile computing device.
(See Bederson Dec., at ¶74-76).
GROUND 6. Claim 22 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over SPH-A5000 in view of Philips or Nokia
Claim 22 is invalid as obvious over SPH-A5000 in view of Nokia or Philips,
as shown in the claim chart below.
22. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a pixel map based single graphical symbol.
See Ground 1 Claim 1 chart. SPH-A5000 discloses emoticons that comprise a
plurality of characters. (SPH-A5000: 37). It would have been obvious to one of
ordinary skill in the art to also enable emoticons as pixel maps. This feature was
well known, and is admitted prior art in the Background of the ‘731 Patent:
“For example, when the characters ‘:’ (colon), ‘=’ (equal sign) and ‘)’ (right
parenthesis) are successfully entered, some instant messaging applications
automatically replace the entered characters with the graphical symbol ‘☺’.”
‘731 Patent, col. 1: 36-43. The use of pixel map-based graphics on cell phones
was widely known, e.g., as described in Philips at 17-18 (see claim chart herein
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
and Figure depicting “Emotion Icons”); and as described in Nokia in Fig. 5
below. (Nokia: col. 7, line 14; Figure 5) (See Bederson Dec., at ¶78-81). One of
ordinary skill in the art would be motivated to combine SPH-A5000 with Nokia
or Philips because they are all related to keyboard entry of special characters
such as emoticons on mobile devices. One of ordinary skill in the art would
have been motivated to modify the system disclosed in SPH-A5000 to include
the features disclosed in Nokia or Philips in order to increase the number of
characters available to users. (See Bederson Dec., at ¶82-85).
GROUND 7. Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over SPH-A5000 in view of Kenwood or Nokia
Claim 25 is invalid as obvious over SPH-A5000 in view of Kenwood or
Nokia, as shown in the claim chart below.
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
emoticons to be displayed for user selection.
See Ground 1 Claim 1 chart. One of ordinary skill in the art would understand
that adding items to or deleting items from a list would have been obvious and
well-known at the time. (See Bederson Dec., at ¶87). For example, Kenwood
discloses that “[a]s in the case of a fixed-form sentence, this emoticon can be
pre-registered in the terminal as an initial value, and can be inputted by writing it
oneself,” and therefore described the adding of emoticons by the user.
(Kenwood: Col. 4, lns. 43-45; Col. 3, lns. 22-35.). Nokia describes “[the user]
can enter the desired pattern by means of a graphical editor 35 (display is shown
in fig. 7) and store the manually entered graphic in a ‘User graphic’ memory 32
and use the graphic in the GMS editor.” (Nokia at p. 11, lns. 24-29)
One of ordinary skill in the art would be motivated to combine SPH-A5000 with
Kenwood or Nokia because they are all related to efficient keyboard input on
mobile devices, and the use of special characters and specifically emoticons.
Furthermore, one of ordinary skill in the art would have been motivated to
modify the system disclosed in SPH-A5000 to include the features disclosed in
Kenwood or Nokia in order to increase the number of characters available to a
user and to allow customization. (See Bederson Dec., at ¶88-93).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 8. Claims 1, 9-15, 17-18 and 21-24 are Unpatentable Under
35 U.S.C. § 102(b) as Anticipated by Philips
Claims 1, 9-15, 17-18 and 21-24 are anticipated by Philips, as shown below.
‘731 Claims vs. Philips Savvy User’s Guide
1. A mobile communication apparatus comprising:
Philips discloses a mobile phone that can send SMS messages. (Philips: 1, 4).
a display;
Philips discloses a display
embodied in the screen as
shown. (Philips: 4-5)
a first input key; and
Philips discloses that the right button is used to “switch to the option on the
right” when an alternate option is presented to the user. (Philips: 12). The right
button is an input key, and satisfies the claimed “first input key.” (See Bederson
Dec., at ¶94)
operating logic associated with the first input key to display on said display a list
of emoticons for selection by a user, responsive to a selection of said first input
key,
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Philips discloses a list of
emoticons for selection that
can be displayed if the user
presses the right button after
entering text in an SMS
message. (Philips: 17-18).
The user can then use the left
and right buttons to select an
emoticon to include in the
message. (Philips: 18) Philips
also discloses operating logic,
implemented using hardware
and software, to control the
operation of the device. One
of ordinary skill in the art
would have understood that
Philips inherently and
necessarily discloses operating
logic, in the form of both
hardware and software, which
controls the operation of the
described device. (See
Bederson Dec., at ¶95).
when the apparatus is operating in a text mode.
Philips discloses a list of emoticons that can be displayed when the user is
entering text in a short (SMS) message, which constitutes the claimed text
mode. (Philips: 17-18; see also Bederson Dec., at ¶94)
9. The apparatus of claim 1, wherein in addition to said first input key, said
apparatus further comprises a 12-key input key pad having 12 input keys
arranged in a 4×3 array configuration for entry of at least a selected one of
alphabet and numeric data.
Philips discloses a 12-key input pad having 12 keys arranged in a 4×3 array.
(Philips: 4). The keys of the 4×3 array can be used to enter both alphabet and
numeric data. (Philips: 4) Philips also discloses that the right button is used to
“switch to the option on the right.” (Philips: 12; see also Bederson Dec., at ¶94)
10. The apparatus of claim 1, wherein said operating logic is designed to display
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
said emoticons for selection in a selected one of a first left-to-right then top-tobottom display arrangement, a second right-to-left then top-to-bottom display
arrangement, a third top-to-bottom then left-to-right display arrangement, and a
fourth top-to-bottom then right-to-left display arrangement.
Philips discloses a list of emoticons that can be displayed when the user is
entering text in an SMS message; the emoticons are displayed in a top-to-bottom
and then left-to-right manner, therefore meeting this claim limitation. (Philips:
17-18; see also Bederson Dec., at ¶94)
11. The apparatus of claim 1, wherein said operating logic is designed to place a
current focus on one of the one or more emoticons displayed for selection.
Philips discloses the user can use the left and right buttons to select an emoticon
to include in the message; the current focus is indicated by the icon currently
displayed on screen. (Philips: 17-18; see also Bederson Dec., at ¶94)
12. The apparatus of claim 11, wherein said operating logic is further designed
to change said placement of current focus to another one of said one or more
emoticons displayed for selection responsive to a user input.
Philips discloses the user can use the left and right buttons to select an emoticon
to include in the message; the current focus is indicated by the icon currently
displayed on screen, and the icon in focus can be changed responsive to user
input. (Philips: 17-18; see also Bederson Dec., at ¶94)
13. The apparatus of claim 12, wherein said operating logic is designed to
perform said changes in accordance with the order the one or more emoticons
are displayed for selection.
Philips discloses the user can use the left and right buttons to navigate through
emoticons to include in the message; the current focus is indicated by the icon
currently displayed on screen, and the icon in focus can be changed responsive
to user input. The focus is changed in the order in which the icons are
displayed. (Philips: 17-18; see also Bederson Dec., at ¶94)
14. The apparatus of claim 12, wherein said first input key is also employed to
provide said user input.
Philips discloses the user can use at least the right button, which constitutes the
first input key as noted above in claim 1, to select an emoticon to include in the
message. (Philips: 18; see also Bederson Dec., at ¶94)
15. The apparatus of claim 12, wherein said apparatus further comprises at least
one other input key, and said at least one other input key is employed to provide
said user input.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Philips discloses the user can use at least the left button, which is not the first
input key, to select an emoticon to include in the message. (Philips: 18; see also
Bederson Dec., at ¶94)
17. The apparatus of claim 11, wherein said operating logic is further designed
to select the emoticon with the current focus, responsive to a user input.
Philips discloses the user can use the left and right buttons to choose an
emoticon to include in the message; the current focus is indicated by the icon
currently displayed on screen. The icon in focus can be changed responsive to
user input – the focus is changed in the order in which the icons are displayed.
The “OK” can be pressed to select the emoticon with the current focus. (Philips:
17-18; see also Bederson Dec., at ¶94)
18. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a plurality of characters.
Philips discloses emoticons that comprise a plurality of characters or a graphical
emoticon. (Philips: 18; see also Bederson Dec., at ¶94)
21. The apparatus of claim 18, wherein said selecting of the emoticon with the
current focus comprises selecting all characters of the emoticon with the current
focus.
Philips discloses the emoticon in focus can be selected using the “OK” key, and
that the entire emoticon (all characters) is selected. (Philips: 17-18; see also
Bederson Dec., at ¶94)
22. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a pixel map based single graphical symbol.
Philips discloses emoticons that comprise pixel-based graphical symbols.
(Philips: 18; see also Bederson Dec., at ¶94)
23. The apparatus of claim 1, wherein said apparatus further comprises: storage
medium having stored therein a plurality of programming instructions designed
to implement said operating logic; and a processor coupled to the storage
medium to execute the programming instruction.
It would be inherent to one of ordinary skill in the art that the functionality
described in Philips would necessarily require a storage medium, such as a
memory, with instructions that implement the operating logic, and a processor
for executing those instructions. (See Bederson Dec., at ¶122)
24. The apparatus of claim 1, wherein said mobile communication device is a
wireless mobile phone.
Philips discloses a wireless mobile phone. (Philips: 1, 4).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 9. Claims 2-6, 7-13, 19-20, and 25 are Unpatentable Under
35 U.S.C. § 103(a) as Obvious over Philips in view of the
Knowledge of One of Ordinary Skill in the Art
Claims 2-6, 7-13, 19-20, and 25 are invalid as obvious over Philips in view
of the knowledge of one of ordinary skill, as shown in the claim chart below.
See Ground 2 above; citing KSR, 550 U.S. 398, 402-03 (2007).
2. The apparatus of claim 1, wherein the first input key is an input key for
entering an “*” (asterisk) when the apparatus is operating in a voice mode.
See Ground 8 Claim 1 chart. Philips discloses an asterisk key which can be used
for entering “*” when the apparatus is operating in voice mode – in other words,
that the “*” key has its standard phone functionality when in voice/phone mode,
such as for DTMF tones. (Philips: 1, 4). Philips discloses the entry of text and
special symbols using the keys while in a non-voice mode (p. 6), and therefore
those keys, including the “*” key, could have been utilized as the first input key
as a design choice. (See Bederson Dec., at ¶96-97). See Examiner’s remarks,
February 24, 2006 Office Action, 4 (finding this claim obvious).
3. The apparatus of claim 1, wherein the first input key is an input key for
entering a “#”, (pound) when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the “#” key.
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the digit keys.
5. The apparatus of claim 1, wherein said apparatus further comprises a 12-key
input key pad having 12 input keys arranged in a 4×3 array configuration for
entry of at least a selected one of alphabet and numeric data, and said first input
key being one of said 12 input keys.
See Ground 8 Claim 1 chart. Philips discloses a 12-key input keypad arranged
in a standard 4×3 mobile phone keypad array configuration for entering at least
numerical data. It would have been obvious to one of ordinary skill in the art to
enable one of the 12-key input keys to be assigned alternate functions in
connection with the input of special characters, such as emoticons, for the same
reasons as set forth above for claim 2. (See Bederson Dec., at ¶107).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
6. The apparatus of claim 5, wherein said first input key is the input key
occupying a fourth row and first column position of said 4×3 array
configuration.
See claim 5, supra. The same analysis applies in connection with the selection
of a specific key of the array as performing the identified function, which would
be nothing more than an obvious design choice. (See Bederson Dec., at ¶107).
7. The apparatus of claim 6, wherein column positions of said 4×3 array
configuration are determined in a selected one of a left-to-right and a right-toleft manner.
Philips discloses a 4×3 array input keypad, which is configured in a left-to-right
and top-to-bottom manner. (Philips: 4; see also Bederson Dec., at ¶107)
8. The apparatus of claim 6, wherein row positions of said 4×3 array
configuration are determined in a selected one of a top-to-bottom and a bottomto-top manner.
Philips discloses a 4×3 array input keypad, which is configured in a left-to-right
and top-to-bottom manner. (Philips: 4; see also Bederson Dec., at ¶107)
10. The apparatus of claim 1, wherein said operating logic is designed to display
said emoticons for selection in a selected one of a first left-to-right then top-tobottom display arrangement, a second right-to-left then top-to-bottom display
arrangement, a third top-to-bottom then left-to-right display arrangement, and a
fourth top-to-bottom then right-to-left display arrangement.
See Ground 8 Claim 1 chart. Philips discloses a list of emoticons that can be
displayed when the user is entering text in an SMS message. (Philips: 17-18).
One of ordinary skill in the art would understand that the various list display
configurations could easily be included as a design choice, and that extending
the list to, for example, be configured in a top-to-bottom and then left-to-right
manner would be obvious. (See Bederson Dec., at ¶109).
11. The apparatus of claim 1, wherein said operating logic is designed to place a
current focus on one of the one or more emoticons displayed for selection.
Philips discloses the user can use the left and right buttons to select an emoticon
to include in the message; the current focus is indicated by the icon currently
displayed on screen. To the extent this is not considered a current focus, it
would have been obvious to one of ordinary skill at the time to incorporate a
focus for a displayed option, for example, by visually distinguishing that option
as it is displayed on the screen (by highlighting, reverse video, bold, or
otherwise) (Philips: 17-18; see also Bederson Dec., at ¶110)
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
12. The apparatus of claim 11, wherein said operating logic is further designed
to change said placement of current focus to another one of said one or more
emoticons displayed for selection responsive to a user input.
Philips discloses the user can use the left and right buttons to select an emoticon
to include in the message; the current focus is indicated by the icon currently
displayed on screen, and the icon in focus can be changed responsive to user
input. To the extent Philips is found not to have a current focus, the use of, and
movement of, a current focus on screen would be obvious as discussed in claim
11 above. (Philips: 17-18; see also Bederson Dec., at ¶111)
13. The apparatus of claim 12, wherein said operating logic is designed to
perform said changes in accordance with the order the one or more emoticons
are displayed for selection.
Philips discloses the user can use the left and right buttons to navigate through
emoticons to include in the message; the current focus is indicated by the icon
currently displayed on screen, and the icon in focus can be changed responsive
to user input. The focus is changed in the order in which the icons are
displayed. To the extent Philips is found not to have a current focus, the use of,
and movement of, a current focus on screen would be obvious as discussed in
claim 11 above. (Philips: 17-18; see also Bederson Dec., at ¶111)
19. The apparatus of claim 18, wherein said placement of a current focus on a
first of displayed emoticons comprises highlighting all characters of the first
emoticon.
Philips discloses placing a current focus by displaying the emoticon on the
screen, as indicated above. One of ordinary skill in the art would understand
that highlighting could also be used to distinguish an option on the screen, as
well as underlining, italicizing, employing bold face, or otherwise modifying the
appearance of a currently-selected list option to visually distinguish it from other
items on the screen. (See Bederson Dec., at ¶116).
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
Philips discloses placing a current focus by displaying the emoticon on the
screen, as indicated above. One of ordinary skill in the art would understand
that focus could also be accomplished by underlining, italicizing, employing
bold face, or otherwise modifying the appearance of a selected list option to
visually distinguish it from other items on screen. (See Bederson Dec., at ¶119).
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
emoticons to be displayed for user selection.
See Ground 8 Claim 1 chart. Philips discloses a list of emoticons that can be
displayed. (Philips: 17-18). One of ordinary skill in the art would understand
that adding items to or deleting items from a list would have been obvious and
well-known at the time. (See Bederson Dec., at ¶123). During the examination
of the parent ‘991 Patent, the Examiner took official notice that “the art of
add[ing] or delet[ing] an object in a display of a portable device is
conventionally well known. It would have been obvious to one of ordinary skill
in the art at the time the invention was made to add or delete emoticon[s] in the
apparatus of [the primary reference] so that the user can have his desire[d]
emoticons.” ‘991 Patent Prosecution history, 6/23/04 Office Action at 7.
GROUND 10. Claims 2-8 are Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of Nokia II
Claims 2-8 are invalid over Philips in view of Nokia II as shown below.
2. The apparatus of claim 1, wherein the first input key is an input key for
entering an “*” (asterisk) when the apparatus is operating in a voice mode.
See Ground 8 Claim 1 chart. Philips discloses an asterisk key which can be used
for entering “*” when the apparatus is operating in voice mode – in other words,
that the “*” key has its standard phone functionality when in voice/phone mode.
(Philips: 4). It would have been obvious to one of ordinary skill in the art to use
keys on a standard 4x3 keypad on a mobile phone for the entry of text and
special symbols while in a non-voice mode, and therefore any of such keys,
including the “*” key, could have been utilized as the first input key. (See
Bederson Dec., at ¶96-97). See Examiner’s remarks during prosecution,
February 24, 2006 Office Action, 4 (finding this claim obvious).
Nokia II discloses: “In addition to the keys reserved for starting a call and using
menu functions, mobile phones often contain a familiar button-telephone-like
keyboard with 12 keys arranged in matrix of [f]our rows by three columns:
numbers 1-9 and *, 0 and #. For writing of SMS-messages, most of the number
keys (2-9, 0, and #) in Nokia 2110 mobile phones can be used to produce letters
and other symbols. In this case, a part of the producible symbols reside ‘under’
each key, e.g., in order first three letters, then the number of the numeric
keyboard and after these two or three special symbols. [and thereafter describing
various means for accessing these symbols]” Nokia II, ¶0002.
One of ordinary skill in the art would be motivated to combine Philips with
Nokia II to designate one of the 12 standard keys, e.g., the “*” key, as the input
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
key because they are both related to efficient keyboard input on mobile devices,
and the use of special characters. Furthermore, one of ordinary skill in the art
would have been motivated to modify the system disclosed in Philips to include
the features disclosed in Nokia II in order to increase efficiency of keyboard
input, in particular in instances in which the user can be presented with more
options than there are keys. (See Bederson Dec., at ¶98-101)
3. The apparatus of claim 1, wherein the first input key is an input key for
entering a “#”, (pound) when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the “#” key.
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the digit keys.
5. The apparatus of claim 1, wherein said apparatus further comprises a 12-key
input key pad having 12 input keys arranged in a 4×3 array configuration for
entry of at least a selected one of alphabet and numeric data, and said first input
key being one of said 12 input keys.
See Ground 8 Claim 1 chart. Philips discloses a 12-key input keypad arranged
in a standard 4×3 mobile phone keypad array configuration for entering at least
numerical data. It would have been obvious to one of ordinary skill in the art to
enable one of the 12-key input keys to be assigned alternate functions in
connection with the input of special characters, such as emoticons, for the same
reasons as set forth above for claim 2. (See Bederson Dec., at ¶108).
6. The apparatus of claim 5, wherein said first input key is the input key
occupying a fourth row and first column position of said 4×3 array
configuration.
See claim 5, supra. The same analysis applies in connection with the selection
of a specific key of the array as performing the identified function, which would
be nothing more than an obvious design choice. (See Bederson Dec., at ¶108).
7. The apparatus of claim 6, wherein column positions of said 4×3 array
configuration are determined in a selected one of a left-to-right and a right-toleft manner.
Philips discloses a 4×3 array input keypad, which is configured in a left-to-right
and top-to-bottom manner. (Philips: 4; see also Bederson Dec., at ¶108)
8. The apparatus of claim 6, wherein row positions of said 4×3 array
configuration are determined in a selected one of a top-to-bottom and a bottomto-top manner.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Philips discloses a 4×3 array input keypad, which is configured in a left-to-right
and top-to-bottom manner. (Philips: 4; see also Bederson Dec., at ¶108)
GROUND 11. Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of King
Claim 16 is obvious over Philips in view of King, as shown below.
16. The apparatus of claim 11, wherein said operating logic is further designed
to automatically select the emoticon with the current focus upon occurrence of a
selected one of elapse of a predetermined amount of time after the first input key
was last selected, and selection another input key.
See Ground 8 Claim 11 chart. Philips discloses the user can use the left and
right buttons to select an emoticon and the “OK key” to insert the emoticon in
the message. (Philips: 18). It would have been obvious to one of ordinary skill
to employ another input key to allow the user to select an emoticon having the
current focus. (See Bederson Dec., at ¶112-5; see King at 21:33-38). Also, it
would have been obvious to one of ordinary skill in the art to enable the
selection of an emoticon after a predetermined amount of time has elapsed. See
Ground 4 above for the motivation to combine the references and a full
discussion of King, which applies equally here. (See Bederson Dec., at ¶112-5).
GROUND 12. Claims 19-20 are Unpatentable Under 35 U.S.C. § 103(a)
as Obvious over Philips in view of IBM
Claims 19-20 are obvious over Philips in view of IBM, as shown below.
19. The apparatus of claim 18, wherein said placement of a current focus on a
first of displayed emoticons comprises highlighting all characters of the first
emoticon.
See Ground 8 Claim 18 chart. Philips discloses placing a current focus by
displaying the emoticon on the screen, as indicated above. One of ordinary skill
in the art would understand that focus could also be accomplished by
highlighting, underlining, italicizing, bold face, or otherwise modifying the
appearance of a selected list option in a variety of ways. For instance, IBM
discusses distinguishing on-screen elements in the context of computing, and
describes numerous techniques that could be employed to distinguish on-screen
elements, including underlining, colors, fonts, sizes, italics, and bold. See
Ground 5 above for the relevant cited portions and motivation to combine the
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
references, which apply equally here. (See Bederson Dec., at ¶117-8, 120-1).
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
Philips discloses placing a current focus by displaying the emoticon on the
screen, as indicated above. See claim 19, supra.
GROUND 13. Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Philips in view of Kenwood or Nokia
Claim 25 is invalid as obvious over Philips in view of Kenwood or Nokia, as
shown in the claim chart below.
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
emoticons to be displayed for user selection.
See Ground 8 Claim 1 chart. Philips discloses a list of emoticons that can be
displayed to the user. (Philips: 17-18). One of ordinary skill in the art would
understand that adding items to or deleting items from a list would have been
obvious and well-known at the time. (See Bederson Dec., at ¶123). For
example, Kenwood discloses that “[a]s in the case of a fixed-form sentence, this
emoticon can be pre-registered in the terminal as an initial value, and can be
inputted by writing it oneself,” and therefore described the adding of emoticons
by the user. (Kenwood: Col. 4, lns. 43-45; see also Bederson Dec., at 125-126;
Col. 3, lns. 22-35.). Nokia similarly describes “[the user] can enter the desired
pattern by means of a graphical editor 35 (display is shown in fig. 7) and store
the manually entered graphic in a ‘User graphic’ memory 32 and use the graphic
in the GMS editor.” (Nokia at p. 11, lns. 24-29)
One of ordinary skill in the art would be motivated to combine Philips with
Kenwood or Nokia because they are all related to efficient keyboard input on
mobile devices, and the use of special characters and specifically emoticons.
Furthermore, one of ordinary skill in the art would have been motivated to
modify the system disclosed in Philips to include the features disclosed in
Kenwood or Nokia in order to increase the number of characters available to a
user and to allow customization. (See Bederson Dec., at ¶124).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
GROUND 14. Claims 1, 4, 10-13, 15, 17-19, 21 and 23-24 are
Unpatentable Under 35 U.S.C. § 102(e) as Anticipated by
Hawkins
Claims 1, 4, 10-13, 15, 17-19, 21 and 23-24 are anticipated by Hawkins.
Hawkins claims priority to and incorporates by reference U.S. Provisional Patent
Appln. No. 60/297,817 (hereinafter “Hawkins Provisional”), filed on June 11,
2001, and is prior art under at least 35 U.S.C. § 102(e). The Hawkins Provisional
provides support for the elements referenced in the claim chart below.
‘731 Claims vs. U.S. Patent No. 6,975,304 (“Hawkins”)
1. A mobile communication apparatus comprising:
Hawkins discloses a mobile device capable of sending SMS messages.
(Hawkins: Col. 1, lns. 19-21; col. 4: lns. 41- 50).
a display;
Hawkins discloses a display embodied
in the screen shown. (Hawkins: Col.
3, lns. 8-10; figure 1A; see also
Bederson Dec., at ¶127)
a first input key; and
Hawkins discloses multiple keys that
can result in the display of a list of
emoticons depending on the manner of
operation. “In one embodiment, the
“...” symbol key 630 is a dedicated
key for processing related to a request
for an alternate symbol linked to a base
symbol.” This key can constitute the
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
first input key. (Hawkins: Col. 5, lns.
11-13; figure 3A; see also Bederson
Dec., at ¶127)
“Upon the occurrence of the event of receiving 804 input indicating a request for
one or more alternate symbols linked to a base symbol, at least one alternate
symbol for [sic] is displayed 808 for the base symbol. … Requests may also be
indicated by pressing a key dedicated for processing alternate symbols such as
the “...” key 630 displayed on the keyboard in FIG. 3A. (Hawkins: Col. 6, line
55 to col. 7, line 3; see also Bederson Dec., at ¶127).
In a third embodiment, Hawkins discloses that the space and option keys can be
pressed in sequence to access the special characters, including emoticons.
Accordingly, the space key discloses the claimed first input key. “A user may
request an alternate symbol display view by typing a key sequence, for example
<option><space> after entering a base symbol.” Col 6:55-61. (See also
Hawkins provisional: 20-21; corresponding figures).
Further, Hawkins discloses that the emoticon list may be displayed by pressing
and holding the key corresponding to the base character for the emoticon list,
which is the “:” key. Hawkins, 6:67-7:3. (“Or the user may request an alternate
symbol for a base symbol by holding a key representing the base symbol down
or maintaining a display contact for a designated amount of time.”).
operating logic associated with the first input key to display on said display a list
of emoticons for selection by a user, responsive to a selection of said first input
key,
Hawkins discloses that a list of emoticons can be displayed: “Each of FIGS. 6A,
6B and 6C illustrate an example of a view of at least one alternate symbol
associated with a base symbol. In each of these examples, the view is embodied
as a pop-up menu displaying a list of alternate symbols. …
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
FIG. 6C illustrates a pop-up menu
display of examples of alternate
symbols that have a logical or
associational connection with the base
symbol of colon ‘:’ that the user has
typed. The semi-colon ‘;’ and the
emoticons ‘:-)’ indicating a smile or
happiness, ‘:-(‘ indicating sadness, and
the ‘;-)’ typically associated with a
smile with a wink or tongue in cheek
expression.
The semi-colon is typically associated with a colon either by sharing a common
syllable or being on the same key in typical desktop keyboard. By association,
the tongue in cheek emoticon uses a semi-colon so it is also linked or associated
with the colon. The other displayed emoticons have a colon as part of their short
sequences of symbols so they are logically or associationally connected to the
colon.” (Hawkins: Col. 7, lns. 4-29; figure 6C; see also Bederson Dec., at ¶127)
Hawkins also discloses that the list of emoticons can be displayed for selection
by the user by entering a “:” which is the base character for the emoticon list,”
and then typing a key sequence of the <option> and then <space> keys. “A user
may request an alternate symbol display view by typing a key sequence, for
example <option><space> after entering a base symbol.” Col 6:55-61. (See
also Hawkins provisional: 20-21; corresponding figures).
Further, Hawkins discloses that the emoticon list may be displayed by pressing
and holding the key corresponding to the base character for the emoticon list,
which is the “:” key. Hawkins, 6:67-7:3. (“Or the user may request an alternate
symbol for a base symbol by holding a key representing the base symbol down
or maintaining a display contact for a designated amount of time.”).
Hawkins also discloses operating logic, implemented using hardware and
software, to control the operation of the device. (Hawkins: Col. 7, lns. 7-26 and
56-67; see also Bederson Dec., at ¶128)
when the apparatus is operating in a text mode.
Hawkins discloses that “An example of a common short symbol sequence is an
emoticon used in e-mail messages to convey tone or feelings.” (Hawkins: Col.
6, lns. 41-43). The keys operate in the above-referenced fashion when the
device is in a text mode (when composing e-mail). (See Bederson Dec., at ¶127)
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
Hawkins discloses numerical keys inherently would be used for entering digits
when the phone is operating in a voice mode (at least in part because no other
keys are disclosed for operating phone functions in voice mode) – in other
words, that the number keys have standard phone functionality when in
voice/phone mode. (Hawkins: Figure 3A; see also Bederson Dec., at ¶127). As
noted above, the “first input key” of Hawkins may be the “symbol key,” which
doubles as the zero key. (“In one embodiment, the “...” symbol key 630 is a
dedicated key for processing related to a request for an alternate symbol linked
to a base symbol.”) (Hawkins: Col. 5, lns. 11-13).
10. The apparatus of claim 1, wherein said operating logic is designed to display
said emoticons for selection in a selected one of a first left-to-right then top-tobottom display arrangement, a second right-to-left then top-to-bottom display
arrangement, a third top-to-bottom then left-to-right display arrangement, and a
fourth top-to-bottom then right-to-left display arrangement.
Hawkins discloses a list of emoticons that can be displayed when the user is
entering text; displayed in a top-to-bottom and then left-to-right manner,
therefore meeting this claim limitation. (Hawkins: Col. 7, lns. 4-29; figure 6C).
11. The apparatus of claim 1, wherein said operating logic is designed to place a
current focus on one of the one or more emoticons displayed for selection.
Hawkins discloses a list of emoticons with a current focus on one emoticon
(shown in reverse video). (Hawkins: Col. 7, lns. 4-29; figure 6C).
12. The apparatus of claim 11, wherein said operating logic is further designed
to change said placement of current focus to another one of said one or more
emoticons displayed for selection responsive to a user input.
Hawkins discloses a list of emoticons with a current focus on one emoticon,
allowing the user to use the keyboard to change the placement of the current
focus to select an emoticon to insert in the text. (Hawkins: Col. 7, lns. 4-29; col.
5, lns. 31-34; figure 6C; see also Bederson Dec., at ¶127).
13. The apparatus of claim 12, wherein said operating logic is designed to
perform said changes in accordance with the order the one or more emoticons
are displayed for selection.
Hawkins discloses a list of emoticons with a current focus on one emoticon
(shown in reverse video), allowing the user to use the keyboard to change the
placement of the current focus, through the list of emoticons one-by-one in the
order in which the emoticons are displayed. (Hawkins: Col. 7, lns. 4-29; col. 5,
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
lns. 31-34; figure 6C).
15. The apparatus of claim 12, wherein said apparatus further comprises at least
one other input key, and said at least one other input key is employed to provide
said user input.
Hawkins discloses “the ‘...’ symbol key 630 is a dedicated key for processing
related to a request for an alternate symbol linked to a base symbol”, and
“application button 116 is associated with a scroll-up, scroll-down feature.”
(Hawkins: Col. 5, lns. 11-13; col. 5, lns. 31-34; figure 3A).
17. The apparatus of claim 11, wherein said operating logic is further designed
to select the emoticon with the current focus, responsive to a user input.
Hawkins discloses a list of emoticons with a current focus on one, allowing the
user to select by a key press the emoticon having current focus to insert in the
text. (Hawkins: Col. 7, lns. 4-29; figure 6C).
18. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a plurality of characters.
Hawkins discloses emoticons that comprise a plurality of characters. (Hawkins:
Col. 7, lns. 4-29; figure 6C).
19. The apparatus of claim 18, wherein said placement of a current focus on a
first of displayed emoticons comprises highlighting all characters of the first
emoticon.
Hawkins discloses a list of emoticons with a focus on one emoticon, with all of
the characters of the selected emoticon shown as highlighted. (Hawkins: Col. 7,
lns. 4-29; Figure 6C; see also Bederson Dec., at ¶127)
21. The apparatus of claim 18, wherein said selecting of the emoticon with the
current focus comprises selecting all characters of the emoticon with the current
focus.
Hawkins discloses a list of emoticons with a current focus on one highlighted
emoticon, allowing the user to select the emoticon to insert in the text, including
all of the characters of the emoticon with the current focus. (Hawkins: Col. 7,
lns. 4-29; figure 6C; see also Bederson Dec., at ¶127)
23. The apparatus of claim 1, wherein said apparatus further comprises: storage
medium having stored therein a plurality of programming instructions designed
to implement said operating logic; and a processor coupled to the storage
medium to execute the programming instruction.
Hawkins discloses a storage medium for storing the programming instructions to
implement the disclosed functionality, and a processor to execute the
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
programming instructions for the disclosed functionality. (Hawkins: Col. 4, lns.
56-67; figure 2; see also Bederson Dec., at ¶127)
24. The apparatus of claim 1, wherein said mobile communication device is a
wireless mobile phone.
Hawkins discloses a mobile phone. (Hawkins: Col. 3, lns. 40-44).
GROUND 15. Claims 2-10, 14, 20, 22 and 25 are Unpatentable Under
35 U.S.C. § 103(a) as Obvious over Hawkins in view of
the Knowledge of One of Ordinary Skill in the Art
Claims 2-10, 14, 20, 22 and 25 are invalid as obvious over Hawkins in view
of the knowledge of one of ordinary skill, as shown in the claim chart below. See
Ground 2 above; citing KSR, 550 U.S. 398, 402-03 (2007).
2. The apparatus of claim 1, wherein the first input key is an input key for
entering an “*” (asterisk) when the apparatus is operating in a voice mode.
See Ground 14 Claim 1 chart. Hawkins discloses an asterisk key which can be
used for entering “*” when the apparatus is operating in voice mode – in other
words, that the “*” key has its standard phone functionality when in voice/phone
mode. (Hawkins: Figure 3A). It would have been obvious to one of ordinary
skill in the art to use keys on a standard 4x3 keypad on a mobile phone for the
entry of text and special symbols while in a non-voice mode, and therefore any
of such keys, including the “*” key, could have been utilized as the first input
key, and any such key could be chosen as an obvious design choice. (See
Bederson Dec., at ¶129-130). See Examiner’s remarks during prosecution,
February 24, 2006 Office Action, 4 (finding this claim obvious).
3. The apparatus of claim 1, wherein the first input key is an input key for
entering a “#”, (pound) when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the “#” key.
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
See claim 2, supra. The same analysis applies in connection with the digit keys.
5. The apparatus of claim 1, wherein said apparatus further comprises a 12-key
input key pad having 12 input keys arranged in a 4×3 array configuration for
entry of at least a selected one of alphabet and numeric data, and said first input
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
key being one of said 12 input keys.
See Ground 14 Claim 1 chart. Hawkins discloses enabling specific keys on the
keyboard to act as shortcut keys. (Hawkins: Col. 6, lns. 18-34). A 12 input key
arrangement in a 4×3 array configuration was well known on mobile phones. It
would have been obvious to one of ordinary skill in the art to enable one of the
12-key input keys to be assigned alternate functions in connection with the input
of special characters, such as emoticons, for the same reasons as set forth above
for claim 2. (See Bederson Dec., at ¶140).
6. The apparatus of claim 5, wherein said first input key is the input key
occupying a fourth row and first column position of said 4×3 array
configuration.
See claim 5, supra. The same analysis applies in connection with the selection
of a specific key of the array as performing the identified function, which would
be nothing more than an obvious design choice. (See Bederson Dec., at ¶140).
7. The apparatus of claim 6, wherein column positions of said 4×3 array
configuration are determined in a selected one of a left-to-right and a right-toleft manner.
See claim 5, supra. The positioning of the keys in well known ordered manners
(such as left-to-right or right-to-left) would have been obvious design choices to
one of ordinary skill. (See Bederson Dec., at ¶142).
8. The apparatus of claim 6, wherein row positions of said 4×3 array
configuration are determined in a selected one of a top-to-bottom and a bottomto-top manner.
See claim 5, supra. The positioning of the keys in well known ordered manners
(such as bottom-to-top or top-to-bottom) would have been obvious design
choices to one of ordinary skill. (See Bederson Dec., at ¶142).
9. The apparatus of claim 1, wherein in addition to said first input key, said
apparatus further comprises a 12-key input key pad having 12 input keys
arranged in a 4×3 array configuration for entry of at least a selected one of
alphabet and numeric data.
See Ground 14 Claim 1 chart. Hawkins also discloses “the ‘...’ symbol key 630
is a dedicated key for processing related to a request for an alternate symbol
linked to a base symbol.” That key also doubles as a numeric (zero) key.
(Hawkins: Col. 5, lns. 11-13; figure 3A) . This claim would have been obvious
because the standard 4x3 mobile phone keyboard was well-known in the field.
See claim 5, supra. The positioning of the keys in well known ordered manners
(such as bottom-to-top or top-to-bottom), and the specific alternate functions of
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
each of those keys, would have been obvious design choices to one of ordinary
skill. (See Bederson Dec., at ¶144).
10. The apparatus of claim 1, wherein said operating logic is designed to display
said emoticons for selection in a selected one of a first left-to-right then top-tobottom display arrangement, a second right-to-left then top-to-bottom display
arrangement, a third top-to-bottom then left-to-right display arrangement, and a
fourth top-to-bottom then right-to-left display arrangement.
See Ground 14 Claim 1 chart. Hawkins discloses a list of emoticons that can be
displayed when the user enters text; the emoticons are displayed in a top-tobottom and then left-to-right manner, thus meeting this claim. (Hawkins: Col. 7,
lns. 4-29; figure 6C). Further, one of ordinary skill in the art would understand
that other list display configurations could easily be included as a design choice,
and that extending the list to, for example, be configured in a top-to-bottom and
then left-to-right manner would be obvious. (See Bederson Dec., at ¶146).
14. The apparatus of claim 12, wherein said first input key is also employed to
provide said user input.
See Ground 14 Claim 12 chart. Hawkins discloses “the ‘...’ symbol key 630 is a
dedicated key for processing related to a request for an alternate symbol linked
to a base symbol.” (Hawkins: Col. 5, lns. 11-13; figure 3A). One of ordinary
skill in the art would understand that the symbol key, or any of the other
identified keys, could be configured to assist in the selection of an emoticon.
(See Bederson Dec., at ¶147).
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
See Ground 14 Claim 19 chart. Hawkins discloses a list of emoticons with a
current focus on a highlighted emoticon. (Hawkins: Col. 7, lns. 4-29; figure
6C). One of ordinary skill in the art would understand that highlighting could
also be accomplished by underlining, italicizing, employing bold face, or
otherwise modifying the appearance of a currently-selected list option to
visually distinguish it from others. (See Bederson Dec., at ¶153).
22. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a pixel map based single graphical symbol.
See Ground 14 Claim 1 chart. Hawkins discloses symbols that comprise pixel
maps. (Hawkins: Col. 7, lns. 7-17; figure 6A-6B). It would have been obvious
to one of ordinary skill in the art to enable emoticons as pixel maps/graphical
symbols. (See Bederson Dec., at ¶156). This feature was well known, and is
admitted to be prior art in the Background of the ‘731 Patent: “For example,
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
when the characters ‘:’ (colon), ‘=’ (equal sign) and ‘)’ (right parenthesis) are
successfully entered, some instant messaging applications automatically replace
the entered characters with the graphical symbol ‘☺’.” ‘731 Pat., col. 1: 36-43.
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
emoticons to be displayed for user selection.
See Ground 14 Claim 1 chart. Hawkins discloses a list of emoticons that can be
displayed. (Hawkins: Col. 7, lns. 4-29; figure 6C). One of ordinary skill would
understand that adding items to/deleting items from a list would have been wellknown. (See Bederson Dec., at ¶165). During examination of the parent ‘991
Patent, the Examiner took official notice that “the art of add[ing] or delet[ing] an
object in a display of a portable device is conventionally well known. It would
have been obvious to one of ordinary skill in the art at the time the invention
was made to add or delete emoticon[s] in the apparatus of [the primary
reference] so that the user can have his desire[d] emoticons.” ‘991 Patent
Prosecution history, 6/23/04 Office Action at 7.
GROUND 16. Claims 2-9 and 14 are Unpatentable Under 35 U.S.C. §
103(a) as Obvious over Hawkins in view of Nokia II
Claims 2-9 and 14 are obvious over Hawkins and Nokia II as shown below.
2. The apparatus of claim 1, wherein the first input key is an input key for
entering an “*” (asterisk) when the apparatus is operating in a voice mode.
See Ground 14 Claim 1 chart. Hawkins discloses an asterisk key which one of
ordinary skill in the art would understand inherently would be used for entering
“*” when the phone is operating in a voice mode – in other words, that the “*”
key has its standard phone functionality when in voice/phone mode. (Hawkins:
Figure 3A). Hawkins also discloses enabling specific keys on the keyboard to
act as shortcut keys. (Hawkins: Col. 6, lns. 18-34)
Nokia II discloses: “In addition to the keys reserved for starting a call and using
menu functions, mobile phones often contain a familiar button-telephone-like
keyboard with 12 keys arranged in matrix of [f]our rows by three columns:
numbers 1-9 and *, 0 and #. For writing of SMS-messages, most of the number
keys (2-9, 0, and #) in Nokia 2110 mobile phones can be used to produce letters
and other symbols. In this case, a part of the producible symbols reside ‘under’
each key, e.g., in order first three letters, then the number of the numeric
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
keyboard and after these two or three special symbols. [and thereafter describing
various means for accessing these symbols]” Nokia II, ¶0002.
One of ordinary skill in the art would be motivated to combine Hawkins with
Nokia II to designate one of the 12 standard keys, e.g., the “*” key, as the input
key because they are both related to efficient keyboard input on mobile devices,
and the use of special characters. Furthermore, one of ordinary skill in the art
would have been motivated to modify the system disclosed in Hawkins to
include the features disclosed in Nokia II in order to increase efficiency of
keyboard input, in particular in instances in which the user can be presented
with more options than there are keys. (See Bederson Dec., at ¶131-134)
3. The apparatus of claim 1, wherein the first input key is an input key for
entering a “#”, (pound) when the apparatus is operating in a voice mode.
Hawkins discloses a pound key which one of ordinary skill in the art would
understand inherently would be used for entering “#” when the phone is
operating in a voice mode – in other words, that the “#” key has its standard
phone functionality when in voice/phone mode. (Hawkins: Figure 3A).
Hawkins also discloses enabling specific keys on the keyboard to act as shortcut
keys. (Hawkins: Col. 6, lns. 18-34). This claim would have been obvious for
the same reasons as set forth above for claim 2. (See Bederson Dec., at ¶137).
4. The apparatus of claim 1, wherein the first input key is an input key for
entering a digit when the apparatus is operating in a voice mode.
See Ground 14 Claim 1 chart. Hawkins discloses numerical keys inherently
would be used for entering digits when the phone is operating in a voice mode
(at least in part because no other keys are disclosed for operating phone
functions in voice mode) – in other words, that the number keys have standard
phone functionality when in voice/phone mode. (Hawkins: Figure 3A). Hawkins
also discloses enabling specific keys on the keyboard to act as shortcut keys.
(Hawkins: Col. 6, lns. 18-34) This claim would have been obvious for the same
reasons as set forth above for claim 2. (See Bederson Dec., at ¶139).
5. The apparatus of claim 1, wherein said apparatus further comprises a 12-key
input key pad having 12 input keys arranged in a 4×3 array configuration for
entry of at least a selected one of alphabet and numeric data, and said first input
key being one of said 12 input keys.
See Ground 14 Claim 1 chart. Hawkins discloses at least a 12-key input pad for
entering alphabet and numeric data. (Hawkins: Figure 3A) Hawkins also
discloses enabling specific keys on the keyboard to act as shortcut keys.
(Hawkins: Col. 6, lns. 18-34). It would have been obvious to one of ordinary
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
skill in the art to enable one of the 12-key input keys to be assigned alternate
functions in connection with the input of special characters, such as emoticons,
for the same reasons as set forth above for claim 2. (See Bederson Dec., ¶141).
6. The apparatus of claim 5, wherein said first input key is the input key
occupying a fourth row and first column position of said 4×3 array
configuration.
Hawkins discloses at least a 12-key input pad. (Hawkins: Figure 3A). Hawkins
also discloses enabling specific keys on the keyboard to act as shortcut keys.
(Hawkins: Col. 6, lns. 18-34). It would have been obvious to one of ordinary
skill in the art to enable one of the 12-key input keys to be assigned alternate
functions in connection with the input of special characters, such as emoticons,
for the same reasons as set forth above for claim 2. (See Bederson Dec., ¶141).
7. The apparatus of claim 6, wherein column positions of said 4×3 array
configuration are determined in a selected one of a left-to-right and a right-toleft manner.
Hawkins discloses at least a 12-key input pad. (Hawkins: Figure 3A). This
claim would have been obvious because the standard 4×3 mobile phone
keyboard, configured in left-to-right manner, was well-known in the field. As
described in Nokia II, “In addition to the keys reserved for starting a call and
using menu functions, mobile phones often contain a familiar button-telephonelike keyboard with 12 keys arranged in matrix of [f]our rows by three columns:
numbers 1-9 and *, 0 and #.” See Nokia II, ¶0002. (See Bederson Dec., ¶143).
8. The apparatus of claim 6, wherein row positions of said 4×3 array
configuration are determined in a selected one of a top-to-bottom and a bottomto-top manner.
Hawkins discloses at least a 12-key input pad configured in a top-to-bottom
manner. (Hawkins: Figure 3A). This claim would have been obvious because
the standard 4×3 mobile phone keyboard, configured in top-to-bottom manner,
was well-known in the field. As described in Nokia II, “In addition to the keys
reserved for starting a call and using menu functions, mobile phones often
contain a familiar button-telephone-like keyboard with 12 keys arranged in
matrix of [f]our rows by three columns: numbers 1-9 and *, 0 and #.” See Nokia
II, ¶0002. (See Bederson Dec., at ¶143).
9. The apparatus of claim 1, wherein in addition to said first input key, said
apparatus further comprises a 12-key input key pad having 12 input keys
arranged in a 4×3 array configuration for entry of at least a selected one of
alphabet and numeric data.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
See Ground 14 Claim 1 chart. Hawkins discloses at least a 12-key input pad,
with which a user can enter either alphabetic and numeric data. (Hawkins: Col.
5, lns. 8-10; col. 5, lns. 24-26; figure 3A) Hawkins also discloses “the ‘...’
symbol key 630 is a dedicated key for processing related to a request for an
alternate symbol linked to a base symbol.” (Hawkins: Col. 5, lns. 11-13; figure
3A) . This claim would have been obvious because the standard 4×3 mobile
phone keyboard, configured in left-to-right manner, was well-known in the field.
As described in Nokia II, “In addition to the keys reserved for starting a call and
using menu functions, mobile phones often contain a familiar button-telephonelike keyboard with 12 keys arranged in matrix of [f]our rows by three columns:
numbers 1-9 and *, 0 and #.” See Nokia II, ¶0002. (See Bederson Dec., ¶145).
14. The apparatus of claim 12, wherein said first input key is also employed to
provide said user input.
Per above, Hawkins discloses several methods for accessing an emoticon list. It
would have been obvious to one of ordinary skill to employ the first input key to
also change the focus as in the multi-tap context, including as disclosed in Nokia
II and for the reasons set forth above in claim 2. (See Bederson Dec., at ¶148)
GROUND 17. Claim 16 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Hawkins in view of King
Claim 16 is obvious over Hawkins in view of King, as shown below.
16. The apparatus of claim 11, wherein said operating logic is further designed
to automatically select the emoticon with the current focus upon occurrence of a
selected one of elapse of a predetermined amount of time after the first input key
was last selected, and selection another input key.
See Ground 14 Claim 11 chart. Hawkins discloses “the ‘...’ symbol key 630 is a
dedicated key for processing related to a request for an alternate symbol linked
to a base symbol.” (Hawkins: Col. 5, lns. 11-13; figure 3A). It would have been
obvious to one of ordinary skill in the art to employ another input key to allow
the user to select an emoticon having the current focus. (See Bederson Dec., at
¶149-152; see also King at 21:33-38). Additionally, it would have been obvious
to one of ordinary skill in the art to enable the selection of an emoticon after a
predetermined amount of time has elapsed. The use of a time-out, to
automatically select a symbol having the current focus, would have been well
known to one of ordinary skill in the art. See Ground 4 above for the
motivation to combine the references and a full discussion of King, which
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
applies equally here. (See Bederson Dec., at ¶149-152).
GROUND 18. Claim 20 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Hawkins in view of IBM
Claim 20 is obvious over Hawkins in view of IBM, as shown below.
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
See Ground 14 Claim 19 chart. Hawkins discloses a list of emoticons with a
current focus on a highlighted emoticon. (Hawkins: Col. 7, lns. 4-29; figure
6C; see also Bederson Dec., at ¶153). One of ordinary skill would understand
that highlighting could also be accomplished by underlining, italicizing,
employing bold face, or otherwise modifying the appearance of a selected list
option. See Ground 5 above for the relevant cited portions and motivation to
combine the references, which apply equally here. (See Bederson Dec., ¶154-5).
GROUND 19. Claim 22 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Hawkins in view of Philips or Nokia
Claim 22 is obvious over Hawkins in view of Nokia or Philips, as shown in
the claim chart below.
22. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a pixel map based single graphical symbol.
See Ground 14 Claim 1 chart. Hawkins discloses symbols that comprise pixel
maps. (Hawkins: Col. 7, lns. 7-17; figure 6A-6B; see also Bederson Dec., at
¶156) It would have been obvious to one of ordinary skill in the art to also
enable emoticons as pixel maps. This feature was well known, and is admitted
to be prior art in the Background of the ‘731 Patent: “For example, when the
characters ‘:’ (colon), ‘=’ (equal sign) and ‘)’ (right parenthesis) are successfully
entered, some instant messaging applications automatically replace the entered
characters with the graphical symbol ‘☺’.” ‘731 Patent, col. 1: 36-43. The use
of pixel map-based graphics on cell phones was widely known, e.g., as
described in Philips at 17-18 (see claim chart herein and Figure depicting
“Emotion Icons”); and as described in Nokia in Fig. 5 below. (Nokia: col. 7, line
14; Figure 5) (See Bederson Dec., at 161-164).
One of ordinary skill would be motivated to combine Hawkins with Nokia or
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Philips because they are both related to efficient keyboard input on mobile
devices, and the entry of special characters. One of ordinary skill in the art
would have been motivated to modify Hawkins to include the features disclosed
in Nokia or Philips in order to increase the number of characters available to
users. (See Bederson Dec., at ¶157-160).
GROUND 20. Claim 25 is Unpatentable Under 35 U.S.C. § 103(a) as
Obvious over Hawkins in view of Kenwood or Nokia
Claim 25 is obvious over Hawkins in view of Kenwood or Nokia, as shown:
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
emoticons to be displayed for user selection.
See Ground 14 Claim 1 chart. Hawkins discloses a list of emoticons that can be
displayed. (Hawkins: Col. 7, lns. 4-29; figure 6C). One of ordinary skill in the
art would understand that adding items to or deleting items from a list would
have been obvious and well-known at the time. Kenwood discloses that “[a]s in
the case of a fixed-form sentence, this emoticon can be pre-registered in the
terminal as an initial value, and can be inputted by writing it oneself,” and
therefore described the adding of emoticons by the user. (Kenwood: Col. 4, lns.
43-45; Col. 3, lns. 22-35). Nokia similarly describes “[the user] can enter the
desired pattern by means of a graphical editor 35 (display is shown in fig. 7) and
store the manually entered graphic in a ‘User graphic’ memory 32 and use the
graphic in the GMS editor.” (Nokia at p. 11, lns. 24-29). One of ordinary skill
would be motivated to combine Hawkins with Kenwood or Nokia because they
are all related to efficient keyboard input on mobile devices, and the use of
special characters including emoticons. One of ordinary skill would have been
motivated to modify Hawkins to include the features disclosed in Kenwood or
Nokia in order to increase the number of characters available to a user and to
allow customization. (See Bederson Dec., at ¶166-168).
GROUND 21. Claims 1, 14-15, 17-18, 21 and 23-25 are Unpatentable
Under 35 U.S.C. § 102(a) as Anticipated by Kenwood
Claims 1, 14-15, 17-18, 21 and 23-25 are invalid as anticipated by
Kenwood, as shown in the claim chart below. A certified translation of Kenwood
is attached as part of Exhibit 1009 and referenced in the charts below.
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
‘731 Claims vs. Kenwood
1. A mobile communication apparatus comprising:
Kenwood discloses a “a mobile communication terminal such as a PHS
(Personal Handy-phone System) terminal, cell phone terminal, etc.” (Kenwood:
Col. 1, lns. 28-30; see also Bederson Dec., at ¶169)
a display;
Kenwood discloses an LCD display. (Kenwood: Col. 2, lns. 43-45; Fig. 5).
a first input key; and
Kenwood discloses an operation key that functions as the claimed first input
key. “An operation key (18), for example a function key, is pressed while
creating the e-mail title or body. (It is pressed once while creating the title, and
twice while creating the body.) Then, as shown in Fig. 3(a), the characters
‘Fixed-form sentences’ are displayed on the screen of the LCD (22), and the
system transitions to the fixed-form sentence read mode.” (Kenwood: Col. 3,
lns. 55-60; Fig. 5; see also Bederson Dec., at ¶169). The list of emoticons are
displayed by pressing the numeric keys while in the fixed-form sentence mode.
Therefore, the numeric keys each qualify as the claimed first input key.
operating logic associated with the first input key to display on said display a list
of emoticons for selection by a user, responsive to a selection of said first input
key,
Kenwood discloses that a list
of emoticons can be
displayed for selection by the
user: “In the case of the
emoticons shown in Fig. 4,
the emoticons represent facial
expressions such as a ‘Smile’
by combining a plurality of
symbols. This plurality of
emoticons is classified into a
plurality of groups, and is
registered in the RAM (19)
by assigning each group to a
key on the ten-key numeric keypad. (One example is the classification of Fig. 4,
etc.) During a read, the ten-key numeric keypad is used to specify a group, and
an emoticon in the specified group is selected and read according to the number
of times the same numeric key is pressed. (Alternatively, it is according to the
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
number of times the Up/Down arrow is pressed. However, a group specification
key operation is calculated as one time.)” (Kenwood: Col. 4, lns. 29-41; col. 3,
ln. 55-col. 4, ln. 23; Fig. 4; see also Bederson Dec., at ¶169).
Kenwood discloses operating logic in the form of a processor, ROM, and
RAM. (See Fig. 5; see also Bederson Dec., at ¶170)
when the apparatus is operating in a text mode.
Kenwood discloses a list of emoticons that can be displayed when the user is
entering text in an email message, which constitutes the claimed text mode.
(Kenwood: Col. 3, lns. 55-60; see also Bederson Dec., at ¶169)
14. The apparatus of claim 12, wherein said first input key is also employed to
provide said user input.
Kenwood discloses the user can press the numeric key for the emoticon group,
and then press the numeric key multiple times to select an emoticon to include
in the message. (Kenwood: Col. 3, line 55 to col. 4, line 11; Fig. 4; see also
Bederson Dec., at ¶169) Kenwood also discloses an operation key, such as the
“Set” key, that functions as a first input key and which can provide user input.
(Kenwood: Col. 3, lns. 55-60; col. 4, lns. 7-8; see also Bederson Dec., at ¶169)
15. The apparatus of claim 12, wherein said apparatus further comprises at least
one other input key, and said at least one other input key is employed to provide
said user input.
Kenwood discloses the user can use an up/down arrow to select an emoticon to
include in the message. (Kenwood: Col. 4, lns. 29-41; Fig. 4; see also Bederson
Dec., at ¶169) Kenwood also discloses an operation key, such as the “Set” key,
that functions as a first input key and which can provide user input. (Kenwood:
Col. 3, lns. 55-60; col. 4, lns. 7-8; see also Bederson Dec., at ¶169)
17. The apparatus of claim 11, wherein said operating logic is further designed
to select the emoticon with the current focus, responsive to a user input.
Kenwood discloses using the arrow buttons to select an emoticon; the current
focus is indicated by the icon currently displayed on screen. The icon in focus
can be changed responsive to user input – the focus is changed in the order in
which the icons are displayed. The “set” can be pressed to select the emoticon
with the current focus. See cl. 15, supra; see also Bederson Dec., at ¶169)
18. The apparatus of claim 1, wherein each of said one or more emoticons
comprises a plurality of characters.
Kenwood discloses emoticons that comprise a plurality of characters.
(Kenwood: Col. 4, lns. 29-41; Fig. 4; see also Bederson Dec., at ¶169)
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
21. The apparatus of claim 18, wherein said selecting of the emoticon with the
current focus comprises selecting all characters of the emoticon with the current
focus.
Kenwood discloses the emoticon in focus can be selected using the “OK” key,
and that the entire emoticon (all characters) is selected. (See cl. 17, supra; see
also Bederson Dec., at ¶169)
23. The apparatus of claim 1, wherein said apparatus further comprises: storage
medium having stored therein a plurality of programming instructions designed
to implement said operating logic; and a processor coupled to the storage
medium to execute the programming instruction.
Kenwood discloses a storage medium for storing the programming instructions
to implement the disclosed functionality, and a processor to execute the
programming instructions for the disclosed functionality. (Kenwood: Col. 2,
lns. 33-45; Fig. 5; see also Bederson Dec., at ¶169)
24. The apparatus of claim 1, wherein said mobile communication device is a
wireless mobile phone.
Kenwood discloses a wireless mobile phone. (Kenwood: Col. 1, lns. 28-30; see
also Bederson Dec., at ¶169)
25. The apparatus of claim 1, wherein the apparatus further comprises facilities
for adding an emoticon to, or subtracting an emoticon from said one or more
emoticons to be displayed for user selection.
Kenwood discloses “[a]s in the case of a fixed-form sentence, this emoticon can
be pre-registered in the terminal as an initial value, and can be inputted by
writing it oneself.” (Kenwood: Col. 4, lns. 43-45; see also Bederson Dec., at
¶169). Thus, Kenwood discloses facilities for adding emoticons to the list.
GROUND 22. Claims 11-13 are Unpatentable Under § 103(a) as
Obvious over Kenwood in view of the Knowledge of One
of Ordinary Skill in the Art
Claims 11-13 are obvious over Kenwood in view of the knowledge of the
person of ordinary skill, as shown below. See Ground 2 above; citing KSR.
11. The apparatus of claim 1, wherein said operating logic is designed to place a
current focus on one of the one or more emoticons displayed for selection.
See Ground 21 Claim 1 chart. Kenwood discloses displaying a list of emoticons
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
for selection by the user, and the user of the number keys and arrow keys to
change focus, as cited above. It would have been obvious for a person of
ordinary skill in the art to review Kenwood and understand that one of the
emoticons must have a current focus. Kenwood, col. 4, lns. 29-42. The user
would not be able to understand which emoticon would be inserted into the
message when the “Set” key is pressed unless one of the emoticons had a focus.
If a single emoticon is displayed from the list one at a time, then that emoticon
would have the current focus. It would have been both obvious to one of
ordinary skill and necessary as a design feature for one of the emoticons
displayed for selection to have the current focus. Therefore, claim 11 would
have been obvious, if not anticipated. (See Bederson Dec., at ¶182).
12. The apparatus of claim 11, wherein said operating logic is further designed
to change said placement of current focus to another one of said one or more
emoticons displayed for selection responsive to a user input.
See claim 11, supra. Claim 12 is invalid for the same reasons, and because the
means for changing focus is disclosed (number keys or arrow keys). (See
Bederson Dec., at ¶183).
13. The apparatus of claim 12, wherein said operating logic is designed to
perform said changes in accordance with the order the one or more emoticons
are displayed for selection.
See claim 12, supra. Claim 13 is invalid for the same reasons, and because the
means for changing focus in the order in which the emoticons are displayed is
disclosed (number keys or arrow keys). (See Bederson Dec., at ¶183).
GROUND 23. Claims 19-20 are Unpatentable Under 35 U.S.C. § 103(a)
as Obvious over Kenwood in view of IBM
Claims 19-20 are obvious over Kenwood in view of IBM, as shown below.
19. The apparatus of claim 18, wherein said placement of a current focus on a
first of displayed emoticons comprises highlighting all characters of the first
emoticon.
See Ground 21 Claim 18 chart. Kenwood discloses placing a current focus by
displaying the emoticon on the screen, as indicated above. One of ordinary skill
in the art would understand that focus could also be accomplished by
highlighting, underlining, italicizing, bold face, or otherwise modifying the
appearance of a currently-selected list option. See Ground 5 above for the
relevant cited portions and motivation to combine the references, which apply
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
equally here. (See Bederson Dec., at ¶188-191).
20. The apparatus of claim 19, wherein said highlighting comprises a selected
one of underlying, italicizing and employing bold faces for the characters.
Kenwood discloses placing a current focus by displaying the emoticon on the
screen, as indicated above. See claim 19, supra.
VIII. FEES
Pursuant to 37 C.F.R. § 42.103(a), the Office is authorized to charge the
$27,200 Petition Fee, along with excess claim fees of $3000 (twenty-five claims
are identified for review, and therefore the excess claim fee a for the five additional
claims over and above the twenty claim limit is $3000) and any additional fees, as
set forth in 37 C.F.R. § 42.15(a), to Deposit Account 02-4377, ref: 072395.0208.
IX.
MANDATORY NOTICES
Real Parties-in-Interest [37 C.F.R. § 42.8(b)(1)]: Samsung Electronics
Co., Ltd. is the real party-in-interest.
Related Matters [37 C.F.R. § 42.8(b)(2)]: The following matters would
affect or be affected by a decision in this proceeding: Varia Holdings LLC v.
Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., and Samsung
Telecommunications America, LLC, Civil Action No. 1:12-cv-01899-PGG
(S.D.N.Y.); and Varia Holdings LLC v. Research In Motion Corp. and Research In
Motion Ltd., Civil Action No. 1:12-cv-00320-SLR-MPT (D. Del).
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
Counsel [37 C.F.R. § 42.8(b)(3)]: Lead Counsel: Neil P. Sirota (Reg. No.
38,306); Backup Counsel: Robert L. Maier (Reg. No. 54,291) and Bradley P.
Williams (Reg. No. 40,227).
Petitioner requests authorization to file a motion for Mr. Michael Barta to
appear pro hac vice. Mr. Barta has 10 years of experience working with the
Petitioner on patent litigation matters, including related to mobile phone interface
technology, and is familiar with the specific subject matter of this proceeding as he
is lead counsel in the co-pending district court litigation involving the ‘731 Patent.
Service Information [37 C.F.R. § 42.8(b)(4)]:
E-mail:
neil.sirota@bakerbotts.com
Post and Hand Delivery:
Neil P. Sirota
30 Rockefeller Plaza, 44th Floor
New York, New York 10112-4498
Phone: (212) 408-2548
Facsimile: (212) 408-2501
Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
Petition.
Please address all correspondence to counsel at the address above.
Petitioner consents to electronic service by e-mail at the e-mail address above.
X.
CERTIFICATION OF GROUNDS FOR STANDING
Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the patent for
which review is sought is available for inter partes review, and Petitioner further
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PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,167,731
certifies that Petitioner is not barred or estopped from requesting an inter partes
review challenging the patent claims on the grounds identified herein.
XI.
CONCLUSION
For the foregoing reasons, Petitioner respectfully requests that inter partes
review of the ‘731 patent be instituted, and that claims 1-25 be rejected.
March 15, 2013
Respectfully submitted,
BAKER BOTTS LLP
____________________________
Neil P. Sirota
Reg. No. 38,306
30 Rockefeller Plaza, 44th Floor
New York, New York 10112-4498
Phone: (212) 408-2548
Facsimile: (212) 408-2501
neil.sirota@bakerbotts.com
Bradley P. Williams
Reg. No. 40,227
2001 Ross Avenue
Dallas, Texas 75201-2980
Phone: (214) 953-6447
Facsimile: (214) 661-4447
brad.williams@bakerbotts.com
Robert L. Maier
Reg. No. 54,291
30 Rockefeller Plaza, 44th Floor
New York, New York 10112-4498
Phone: (212) 408-2538
Facsimile: (212) 408-2501
robert.maier@bakerbotts.com
ATTORNEYS FOR PETITIONER
SAMSUNG ELECTRONICS CO.,
LTD.
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CERTIFICATE OF SERVICE ON PATENT OWNER
UNDER 37 C.F.R. § 42.105(a)
Pursuant to 37 C.F.R. §§ 42.8(e) and 42.105(b), the undersigned certifies
that on the 15th day of March, 2013, a complete and entire copy of this Petition for
Inter Partes Review and all supporting exhibits were provided via Federal Express,
postage prepaid, to the Patent Owner and its known representatives by serving the
two correspondence addresses of record for the ‘731 Patent holder and the patent
holder’s counsel:
Varia Holdings LLC
956 East 8th. St.
Brooklyn, NY 11230
Varia Holdings LLC (Correspondent)
Schwabe, Williamson & Wyatt
1420 5th Ave, Suite 3010
Seattle, WA 98101
Michael Collins
Collins, Edmonds & Pogorzelski,
PLLC
1616 S. Voss Rd.
Suite 125
Houston, TX 77057
Andrew Paul Nemiroff
Cozen O'Connor
277 Park Avenue
New York, NY 10172
Respectfully submitted,
BAKER BOTTS LLP
____________________________
Neil P. Sirota
Reg. No. 38,306
30 Rockefeller Plaza, 44th Floor
New York, New York 10112-4498
Phone: (212) 408-2548
Facsimile: (212) 408-2501
neil.sirota@bakerbotts.com
Bradley P. Williams
Reg. No. 40,227
2001 Ross Avenue
Dallas, Texas 75201-2980
Phone: (214) 953-6447
Facsimile: (214) 661-4447
brad.williams@bakerbotts.com
Robert L. Maier
Reg. No. 54,291
30 Rockefeller Plaza, 44th Floor
New York, New York 10112-4498
Phone: (212) 408-2538
Facsimile: (212) 408-2501
robert.maier@bakerbotts.com
ATTORNEYS FOR PETITIONER
SAMSUNG ELECTRONICS CO.,
LTD.