Apple Countersues Zipit Wireless, Seeks Judgement of Noninfringement

On Friday in the Northern District of California, Apple countersued Zipit Wireless for declaratory judgment of noninfringement regarding two patents, U.S. Patent Nos. 7,292,870 (“the ’870 patent”) and 7,894,837 (“the ’837 patent”), after Zipit sued Apple in June for patent infringement. Magistrate Judge Joseph C. Spero is presiding over this case.

Zipit previously accused Apple of infringing the patents-in-suit, entitled, “Instant Messaging Terminal Adapted for Wi-Fi Access Points.” Apple stated that “[w]ithout any proper notice to Apple, Zipit voluntarily dismissed the Former Zipit Litigation without prejudice on June 24, 2020 and the action was terminated on June 25, 2020.” However, Apple added that the parties’ relationship went beyond the lawsuits since Zipit informed Apple of its alleged infringement “several years before filing suit.” 

Apple asserted that representatives from both companies met to negotiate in 2015, though they did not reach an agreement. Apple noted the difference between both their inability to come to an agreement and “Zipit’s dismissal of the Former Zipit Litigation without prejudice,” which supposedly “demonstrates that it is highly likely that Defendant Zipit will again assert infringement of the Zipit Patents against Apple.”

The company claims that it does not infringe upon either of Zipit’s patents. In regards to the ‘870 patent, especially claim 20, Apple alleges that none of its products, “[meet] or [embody] at least the following limitations as recited in the claims: ‘entering textual characters and graphical symbols with a data entry device of a handheld terminal to form instant messages for delivery to an instant messaging service’;…‘communicating instant messages with a wireless, Internet protocol access point, the instant messages being communicated with a communications module and wireless transceiver in the handheld terminal’”; and other elements as stated in the claim. 

Apple alleges that it does not infringe upon claim 20 of the patent and accuses it of describing a “data entry device” and “a display” as separate entities. However, the complaint states that “Apple’s iPhones do not have a separate ‘data entry device’ as they contain only a display.” Since Apple claims it only contains one of the entities in its iPhones, it alleged that it does not infringe on this claim or the patent. 

Moreover, Apple also claims that it does not infringe on the ’837 patent, especially claim 11, which states “[a] method for managing wireless network access and instant messaging through a wireless access point with a handheld instant messaging terminal comprising: generating textual characters and graphical symbols in response to manipulation of keys…displaying the generated textual characters and graphical symbols on a display of the handheld instant messaging terminal; generating data messages…in accordance with at least one instant messaging protocol that is compatible with an instant messaging service; wirelessly transmitting the generated data messages…”

The company says that its iPhones do not have a separate “data entry device” and “display” as described in the patent, rather, Apple asserts that its devices only have a display, which has separate keyboards for text characters and Emojis. Apple uses this as evidence that it does not infringe on the ‘837 patent.

Apple has sought a declaratory judgment of noninfringement that Apple has not infringed the ’870 or ’837 patents, for the court to declare this case exceptional, an award for costs and fees, and an award for relief.

Apple is represented by Fish & Richardson P.C.