So far in June, Zipit Wireless, Inc. has widely expanded its litigation over two homegrown patents, suing Alphabet (Google), BLU Products, Lenovo (Motorola Mobility), Nokia, Panasonic, Sony, and TCL (TTE Technology) (1:20-cv-00756) in a single District of Delaware complaint, HTC and ZTE (1:20-cv-02489) together in a Northern District of Georgia complaint, and Apple (1:20-cv-02488) and Microsoft (1:20-cv-02487) in separate, stand-alone complaints also filed in the Northern District of Georgia. Throughout this campaign, begun in October 2013 against BlackBerry, Zipit has targeted the provision of mobile devices capable of sending messages containing an "emoji/graphical symbol" over a Wi-Fi application.
All four new complaints highlight claims of two patents (7,292,870; 7,894,837) over which trials have begun before the Patent Trial and Appeal Board (PTAB). In response to August 2019 petitions filed by Google and LG Electronics (LGE), the Board is considering the validity of claims 20-21, and 24-30 of the '870 patent (IPR2019-01567) and claims 11-12, 14-16, and 20 of the '837 patent (IPR2019-01568). The institution decisions in those two inter partes review (IPRs) were handed down in early March 2020, prompting the parties to stipulate to a stay ("pending the final outcome of these IPRs") of a case that Zipit filed against LGE over those two patents in the District of New Jersey.
Zipit first filed against LGE in the District of South Carolina, where the defendant there (LG Electronics Inc.) moved to dismiss for lack of personal jurisdiction (or, in the alternative, for a transfer). The court granted Zipit leave to conduct limited, jurisdictional discovery, but the plaintiff voluntarily dismissed the case in February 2020, refiling against a US subsidiary of LGE in New Jersey instead.
Zipit may have preferred South Carolina to bring its suit because of prior litigation there against BlackBerry (from October 2013 through April 2017) and against Samsung (for a few uneventful months in 2017, after the BlackBerry case ended). Zipit asserted the '870 and '837 patents, each comprising a single-member family, against BlackBerry, as well as two others (8,086,678; 8,190,694) from a separate family of three. The case was stayed in light of IPRs against all four patents. While the '870 and '837 patents escaped those proceedings unscathed, the '678 patent saw all challenged claims cancelled (IPR2014-01508) and the '694 patent saw some of the challenged claims cancelled (IPR2014-01509).
BlackBerry filed appeals of the three adverse PTAB decisions, and shortly after the stay lapsed, BlackBerry filed a motion to impose a new stay while Zipit filed a quick motion for summary judgment of infringement of claims 1, 4, and 10 of the '837 patent. In June 2016, District Judge J. Michelle Childs denied the request to stay the case again, noting, among other things, that the parties disputed whether they were direct competitors and that the parties provided differing likelihoods that BlackBerry would file for bankruptcy ("Defendants allege that there is a 34% probability that they would declare bankruptcy within two years, whereas Plaintiff alleges that there is a 43% chance that Defendants will enter bankruptcy", a statement that the court later corrected, in response to a BlackBerry motion, to note that the 43% chance of bankruptcy was the estimate of third party Macroaxis.) That October, Judge Childs also denied the motion, ruling that Zipit had failed to come forward with affirmative evidence that the accused products satisfied each limitation of the asserted claims, relying rather on discovery responses of BlackBerry that one identified limitation of each claim was missing from the accused products. The court set a claim construction hearing date in April 2017, on the eve of which the parties sought dismissal without prejudice, which was changed to a dismissal with prejudice a couple of weeks later. (BlackBerry's appeals of the adverse PTAB results were likewise dismissed.)
The Samsung case saw a complaint filed in May 2017, a notice of voluntary dismissal with prejudice filed in September 2017, and little else.
With an estimated priority date in December 2003, the '870 patent issued in November 2007, around the time that Aeronix spun off Zipit Wireless, a press release announcing the move noting that Zipit Wireless would then be "positioned to take advantage of the intellectual property, products and assets related to the company's Zipit Wireless Messenger device, which was introduced in October 2004". Zipit pleads a version of the history of that device in its complaints, which further contend that Wi-Fi instant messaging with emoticons drove purchasing decisions: "Thanks to Wi-Fi based instant messaging, however, consumers no longer had to pay for individual instant messages or monthly service plans. As a result, by 2016, it was estimated that consumers saved $54 billion through the use of Wi-Fi instant messaging instead of from SMS-based instant messaging". Indeed, Zipit asserts that "[i]nstant messaging has been and continues to be the single most important smartphone feature", highlighting that "Oxford Dictionary's 'word' of the year for 2015 . . . was the 'face with tears of joy' emoji".
.and that "'World Emoji Day' . . . is held annually on July 17.
The '837 patent issued in February 2011 with estimated priority date in October 2007. Both patents name Frank Greer and Rafael Heredia as named inventors (with others); Greer, identifying himself as having been Zipit's CEO since March 2007, indicates that Heredia and he founded Zipit together and that it has two "primary business": "Managed IoT (Internet of Things) Services" and "Critical Communications". In August 2019, Zipit announced an integration of its platform with GRIDSMART ("a Cubic company [that] specializes in designing, developing and selling connected traffic management solutions that help municipalities keep traffic moving and make roads safer for cars, trucks, bicycles and pedestrians"). Heredia identifies himself as having been a "marketing manager" with Zipit since October 2014 (with a prior, 2012 stint with the company broken up by positions elsewhere).
USPTO records that multiple security interests have been granted in both the '870 and '837 patents (as well as others held by Zipit): to Square 1 Bank in May 2008; to venture capital firm Sunbridge Partners Technology Fund III, L.P., Meritus Ventures, L.P., and Windspeed Ventures III, L.P. in May 2008 as well; to Venture Lending & Leasing VI Inc. (an investment firm) in November 2011; and to Nexus Medical Partners, II, L.P. (apparently affiliated with the Nexus Group, a private equity firm) in July 2014.
Currently available USPTO records suggest that Zipit Wireless holds nine issued US patents. In its complaints, the plaintiff notes that it also holds related patents outside the US, including in Australia, France, Germany, Japan, and the United Kingdom. In its new complaints, Zipit also pleads defensively against any Alice challenge to the '870 and '837 patents.
In its Delaware complaint, the overlap across the defendants appears to be the allegation that certain of the defendants' accused smartphones arrive preloaded with an instant messaging application, Zipit calling out Google Hangouts in particular. That also appears to be the justification for suing HTC and ZTE together. The Apple complaint mentions iMessage; the Microsoft complaint, Microsoft Messaging and Skype. 6/4, Alphabet (Google), BLU Products, Lenovo (Motorola Mobility), Nokia, Panasonic, Sony, TCL (TTE Technology), District of Delaware; 6/11, Apple, HTC and ZTE, Microsoft, Northern District of Georgia.
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