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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`------------------------
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`------------------------
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`Safeway, Inc. and The Kroger Co.,
`Petitioners,
`
`v.
`
`Kroy IP Holdings, LLC
`Patent Owner.
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`------------------------
`
`Case: Unassigned
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`------------------------
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,054,830
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`US_ACTIVE-117199526.7
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`TABLE OF CONTENTS
`
`
`TABLE OF CONTENTS .......................................................................................... ii
`EXHIBIT LIST ........................................................................................................ iv
`I.
`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. § 42.22(a)) ...................................................................................................... 1
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)) .................................... 1
`III. OVERVIEW ..................................................................................................... 1
`A. Background .................................................................................................... 1
`B. The ‘830 Patent ............................................................................................. 2
`1. The Specification ........................................................................................ 3
`2. The Claims ................................................................................................. 5
`C.
`Summary of Argument .................................................................................. 7
`IV. CLAIMS FOR REVIEW AND TERMS FOR CONSTRUCTION ................. 7
`A. Claims for Review ......................................................................................... 7
`1. Claim 1 ....................................................................................................... 7
`2. Claim 19 ..................................................................................................... 8
`3. Claims 20-25 .............................................................................................. 8
`B. Terms Needing Construction ........................................................................ 8
`1.
`“sponsor-selected specific award unit item” means “a specific award and
`additional information selected by the sponsor” in this review .......................... 9
`2.
`“demographic … preferences” means “preferences associated with a
`group of consumers that has a particular set of qualities” in this review ......... 11
`3.
`“psychographic preferences” means “preferences associated with a
`consumer’s attitudes, interests, values, opinions, or behaviors” in this review11
`4.
`“a sponsor-selected consumer user” means “one or more consumer users
`selected by the sponsor” in this review ............................................................. 12
`5.
`“a sponsor-selected geographic location for fulfillment” means “one or
`more places selected by a sponsor for fulfillment” in this review .................... 12
`6.
`“inventory management system” means “system to manage award units”
`in this review ..................................................................................................... 13
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`7. The “host,” “sponsor,” and “provider” may be the same entity in this
`review ................................................................................................................ 15
`8. The preambles of claims 1 and 19 are not limiting in this review ........... 16
`V. REFERENCES CITED AS PRIOR ART ......................................................... 16
`VI.
`IDENTIFICATION OF CHALLENGE ......................................................... 17
`A. Barnett Anticipates Claims 1 and 19-22 ..................................................... 18
`B. Barnett Renders Claims 1 and 19-22 Obvious ............................................ 30
`C. Barnett Renders Claims 23-25 Obvious in View of Powell ....................... 31
`D. Narasimhan Anticipates Claims 1 and 19-25 .............................................. 35
`E. Narasimhan Renders Claims 1 and 19-25 Obvious .................................... 47
`F. Scroggie Anticipates Claims 1 and 19-25 ...................................................... 47
`G. Scroggie Renders Obvious Claims 1 and 19-25 ......................................... 58
`VII. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ..................................... 58
`A. Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) .......................................... 59
`B.
`Identification of Related Matters (37 C.F.R. § 42.8(b)(2)) ......................... 59
`C. Designation of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ........ 59
`D. Service Information (37 C.F.R. § 42.8(b)(4)) ............................................. 60
`VIII. CONCLUSION ........................................................................................... 60
`CERTIFICATION OF SERVICE............................................................................ 61
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`EXHIBIT LIST
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
`1011
`1012
`1013
`
`Description
`U.S. Patent No. 7,054,830 to Eggleston, et al. (“the ‘830 patent”)
`Proof of Service on Kroger on April 23, 2013
`Proof of Service on Safeway on April 23, 2013
`U.S. Patent No. 6,321,208 to Barnett et al. (“Barnett”)
`U.S. Patent No. 6,237,145 to Narasimhan et al. (“Narasimhan”)
`U.S. Patent No. 5,970,469 to Scroggie et al. (“Scroggie”)
`U.S. Patent No. 5,806,044 to Powell (“Powell”)
`Kroy IP July 26, 2013 Infringement Contentions to Safeway
`Kroy IP’s September 11, 2013 Amended Infringement
`Contentions to Kroger
`Declaration of Warren H. Lieberman, Ph.D.
`Excerpt from Prosecution History
`Kroy IP’s Opening Brief on Claim Construction
`Kroy IP’s Reply Brief on Claim Construction
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`I.
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED (37
`C.F.R. § 42.22(a))
`
`Safeway, Inc. and The Kroger Co. (Petitioners) petition for the institution of
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`inter partes review of U.S. Patent No. 7,054,830 to York Eggleston, et al. (the ‘830
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`patent, Ex. 1001) and cancellation of claims 1 and 19-25 of the ‘830 patent.
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`According to PTO records, the ‘830 patent is assigned to Kroy IP Holdings, LLC
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`(Kroy), which is currently asserting it against Petitioners in a concurrent litigation.
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`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a))
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`Petitioners certify that the ‘830 patent is available for review. Petitioners
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`further certify that they are not estopped from requesting inter partes review
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`challenging claims 1 and 19-25 on the grounds identified in this petition and
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`Petitioners were not served with a complaint for infringement more than a year
`
`ago. (Ex. 1002, 1013.)
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`III. OVERVIEW
`A. Background
`This patent relates to offering incentive programs and award fulfillment.
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`
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`(Ex. 1001, claims 1 and 19.) To offer incentive programs according to the ‘830
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`patent, a host may provide sponsoring companies with incentive programs,
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`retailers may provide prizes for the incentive programs, and consumers may
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`participate in a sponsor’s incentive program through the host. (Ex. 1001,
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`Abstract.) The claims recite targeting the incentives based on traits of a consumer
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`and a sponsor selecting a location for fulfillment.
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`
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`The ‘830 patent does not purport to have invented incentive programs or
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`award fulfillment. (Ex. 1001, 1:39-64; 4:33-54.) Incentive programs, similar to
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`Petitioners’ coupon programs and fuel discount programs that Kroy alleges
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`infringe claims 1 and 19-25, were well known before the ‘830 patent’s earliest
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`priority date. (Ex. 1008; Ex. 1009)
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`
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`The accompanying declaration of Dr. Warren H. Lieberman discusses the
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`prior art’s disclosure of the well-known functionalities recited in the claims of the
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`‘830 patent, and also provides some background and context for the patent. (Ex.
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`1010.) After receiving his Ph.D. in Operations Research from Yale, Dr. Lieberman
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`went on to work for American Airlines in 1984. (Ex. 1010, ¶ 4.) At the time
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`American was already offering its then cutting edge targeted incentive program,
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`the AAdvantage frequent fliers program. (Ex. 1010, ¶¶ 4, 17.) A wide variety of
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`industries followed suit, resulting in targeted incentive programs launching in
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`diverse industries throughout the late 1980s and early 1990s. (Id., ¶ 18.) These
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`systems were made possible by databases that tracked consumer-specific
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`information and applications that targeted incentives based on such information.
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`(Id., ¶ 19.)
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`B.
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`The ‘830 Patent
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`The Specification
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`1.
`Against this backdrop, in 1999 the application that ultimately issued as the
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`‘830 patent was filed. (Ex. 1001.1) Figure 2, shown below, is a schematic diagram
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`of the primary components of the ‘830 patent’s purported invention. (8:56-57.)
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`These primary components were well known in the prior art. Specifically, the
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`patent discloses a member retailer computer (16), sponsor computer (14), and
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`consumer computer (12) connected to the host computer (18), for example via the
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`Internet. (10:39-50.) The specification explains that these components are typical
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`off-the-shelf components. (11:1-2 (“consumer computer 12 is thus equipped
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`similarly to any typical personal computer”); 11:17-18 (“the sponsor computer
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`may also be client computer comparable to the consumer computer 12”); 11:34-35
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`(“The retailer computer 16 may also be a client computer of configuration similar
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`to the consumer computer 12 and the sponsor computer 14”); 12:4-5 (“The host
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`1 All citations in this section, “The ‘830 Patent,” are to Ex. 1001.
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`computer 18 may be any conventional server”); 7:32-35 (“The term ‘network,’ as
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`used herein, encompasses any system comprising a series of computers linked by
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`telecommunication networks”).)
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`
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`In addition to this conventional hardware, the ‘830 patent discloses well-
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`known functionalities in various embodiments. Figure 15, shown below, is a
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`schematic diagram depicting the logical connections of the supposed invention.
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`(9:26-30.) The storage device of the host computer (storage device 178 in Fig. 7)
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`“stores a consumer database 200, a sponsor database 202, and an award database
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`204.” (12:9-15.) Again, the system uses well-known components: “The databases
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`may be of common database types, such as Oracle databases.” (12:14-15.)
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`The specification further provides “an overview of the functions” allegedly
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`
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`accomplished by the system and method of the present invention. (12:16-17.) The
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`specification walks through functionality from the perspective of a consumer
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`(12:18-14:2), then from the perspective of a sponsor (14:3-15:23), then from the
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`perspective of a retailer (15:24-53). As discussed more below, all of these
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`functionalities were well known in the prior art.
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`The specification describes these functionalities with references to various
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`flow charts. (54-56). Figure 8 depicts steps by which a consumer may participate
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`in an incentive program. (15:57-17:5.) Figures 23 and 9-12 depict steps by which
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`a sponsor may offer incentive programs. (14:6-20:31.) For example, a sponsor
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`may buy a pre-packaged incentive program (18:61-19:29, Fig. 10), build an
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`incentive program (19:30-53, Fig. 11), or select and purchase prizes for an
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`incentive program (19:54-20:31, Fig. 12). Figure 13 then depicts steps by which a
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`retailer may participate in an incentive program. (20:32-21:27.) Figure 14 depicts
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`the steps by which a prize is awarded upon successful completion of an incentive
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`program. (21:28-22:30.) Although the specification provides further details on
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`certain aspects of various embodiments, most of these were also well known in the
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`prior art.
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`The Claims
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`2.
`Claims 1 and 19-25 recite systems and methods for incentive program
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`
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`participation and automated award fulfillment. Claim 1 recites a system
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`comprising: (1) a host computer coupled to a network; (2) a database accessible
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`from the host computer; and (3) an application program executed on the host
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`computer. (47:11-16.) The claim then recites the functionality of the application
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`program. (47:16-30.)
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`Similarly, claim 19 recites a method including: (1) providing a host
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`computer; (2) providing an incentive program on the host computer; (3) providing
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`a database on the host computer, and (4) providing automated award fulfillment.
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`(50:1-10.) Claim 19 then functionally recites how automated award fulfillment is
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`provided. (50:10-22.)
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`Claims 20-25 which depend from claim 19 recite additional functionalities,
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`except for claim 23 which recites providing a card with memory for storing data.
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`(50:35-38.)
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`The specification discloses that each of the technological components in
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`both the system of claim 1 and the method of claim 19 are generic components.
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`(12:4-5 (host computer); 7:32-35 (network); 12:14-15 (database); 7:25-28
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`(application program).) The “card comprising memory for storing data” recited in
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`claim 23 may likewise be a typical (e.g., magnetic stripe) card. (13:32-34 (“The
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`card may be any type of electronic payment card, such as a card with a magnetic
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`stripe, similar to an ATM card or credit card, or a microchip-embedded smart
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`card.”).)
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`As set forth below, these claim limitations all recite general functionality
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`that was well-known in the prior art.
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`Summary of Argument
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`C.
`First, this petition discusses the claims for review and proposes terms for
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`construction. Second, this petition lists the cited references and shows that each
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`reference is prior art to the ‘830 patent. Third, the petition discusses several
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`different grounds of unpatentability. Finally, the petition provides the required
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`mandatory notices.
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`IV. CLAIMS FOR REVIEW AND TERMS FOR CONSTRUCTION
`A. Claims for Review
`Petitioners request review of just eight claims: claims 1 and 19-25.
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`
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`Claim 1
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`1.
`Claim 1 is a system claim reciting physical components that make up the
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`
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`system and functionality of an application program and related code:
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`1. A system for incentive program participation and automated
`award fulfillment, comprising:
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`a host computer coupled to a network; a first database
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`accessible from said host computer; and
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`fulfillment application program
`an automated award
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`executed on said host computer for participation in incentive
`programs of a plurality of providers in communication with an
`inventory management system associated with each of said
`plurality of providers wherein said automated award fulfillment
`application program provides sponsor-selected fulfillment, said
`automated award fulfillment application program comprising:
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`code adapted to provide a sponsor-selected specific
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`award unit item, said sponsor-selected specific award unit
`item being tailored to demographic and psychographic
`preferences of a sponsor-selected consumer user, and
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`to provide
`adapted
`code
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`geographic location for fulfillment.
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`a
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`sponsor-selected
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`Claim 19
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`2.
`Claim 19, a method claim for providing an incentive program and automated
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`award fulfillment, closely tracks the functionality recited in claim 1.
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`Claims 20-25
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`3.
`Method claims 20-25 depend from claim 19 and recite additional limitations.
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`Terms Needing Construction
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`B.
`In an inter partes review, claims of an unexpired patent (e.g., the ‘830
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`
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`patent) should be given their broadest reasonable construction2 in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b). Under
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`this standard, claim terms are given their ordinary and customary meaning as
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`understood by one of ordinary skill in the context of the entire disclosure. In re
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`2 The Phillips standard applies in litigation, often resulting in narrower
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`constructions. Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).
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`Petitioners reserve all rights to present different constructions in litigation.
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`The Federal Rules of Evidence apply in this proceeding. 37 C.F.R. § 42.62.
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`Thus, Kroy’s statements regarding the claims’ scope are party admissions relevant
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`to the broadest reasonable interpretation of the claims. FRE 801(d)(2).
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`Against this backdrop, the following terms and phrases from the claims
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`require construction for this review proceeding: (1) “sponsor-selected specific
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`award unit item,” (2) “demographic … preferences,” (3) “psychographic
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`preferences,” (4) “a sponsor-selected consumer user,” (5) “a sponsor-selected
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`geographic location for fulfillment,” and (6) “inventory management system.” The
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`Board should also construe the terms “host,” “sponsor,” and “provider” as not
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`required to be separate entities and the preambles as not limiting. The broadest
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`reasonable construction should also be applied to any claim terms not specifically
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`addressed below.
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`1.
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`“sponsor-selected specific award unit item” means “a
`specific award and additional information selected by the
`sponsor” in this review
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`
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`The specification never defines the term “award unit item.” In fact, it never
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`uses this term outside of the claims. However, the specification broadly defines
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`“award” as encompassing “all types of incentives, including merchandise,
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`coupons, points, cash, services and other forms of incentives.” (Ex. 1001, 7:44-
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`47.) The specification also explains that “the prize or reward and all of the
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`corresponding identifying or classifying information can be characterized as an
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`award unit.” (Id., 41:20-22.) The specification explains that a sponsor may select
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`award units for its incentive programs. (Id., 41:31-43.) Indeed, Kroy argued in the
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`concurrent litigation that “[t]he word ‘item’ does not affect the scope of this claim
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`limitation.” (Ex. 1013 p. 8.) Kroy’s argument concedes that under the broadest
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`reasonable construction an “award unit item” is not limited to a retail item.
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`The specification never uses the term “sponsor-selected” outside of the
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`claims nor does it limit what would constitute a sponsor selection as claimed.
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`Kroy argued in litigation that “sponsor-selected specific award unit item” should
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`be construed to cover an award unit “selected by the sponsor to be associated with
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`a particular incentive program.” (Ex. 1012, p. 29.) As such, Kroy admits that this
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`term does not require the sponsor to select the award for a specific consumer (i.e.,
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`because the sponsor may select an award unit for an entire incentive program).
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`Kroy even contends that “Reward Points that can only be redeemed at certain gas
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`stations as award unit items as selected by Safeway” meets the limitation. (Ex.
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`1008, p. 6.) Kroy’s arguments and infringement contentions serve as an admission
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`as to the reasonableness of construing “sponsor-selected” to not require a sponsor
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`selection for a particular consumer or purpose.
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`Given the term’s use in the context of the claims, the patent’s disclosure, and
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`Kroy’s arguments reflecting the alleged understanding of a skilled artisan, the term
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`“sponsor-selected specific award unit item” should be construed to mean “a
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`specific award and additional information selected by the sponsor” for this review.
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`2.
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`“demographic … preferences” means “preferences
`associated with a group of consumers that has a particular
`set of qualities” in this review
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`The specification never expressly defines or limits “demographic
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`preferences.” Instead the specification merely discloses that both psychographic
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`and demographic information may be obtained through “consumer responses to
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`inquiries” or through “a consumer’s participation in each of the sponsor’s incentive
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`programs, such as survey-completion and question-and-answer incentive
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`programs.” (Ex. 1001, 13:18-22, 41:62-67.)
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`In litigation, under the Phillips standard for claim construction, Kroy argued
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`that “demographic … preferences” should be construed to mean “preferences
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`associated with a group of consumers that has a particular set of qualities.” (Ex.
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`1012, p. 30-31.) Thus, by Kroy’s admission, the broadest reasonable construction
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`must encompass this construction. As such, and because the specification does not
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`otherwise define the term, “demographic … preferences” should be construed to
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`mean “preferences associated with a group of consumers that has a particular set of
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`qualities” for this review.
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`3.
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`“psychographic preferences” means “preferences associated
`with a consumer’s attitudes, interests, values, opinions, or
`behaviors” in this review
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`Like the term “demographic,” the specification often uses the term
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`“psychographic” but provides no definition or limitation as to what constitutes
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`“psychographic preferences.” Kroy advocated for construing “psychographic
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`preferences” as “preferences associated with a consumer’s attitudes, interest,
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`values, opinions, or behaviors” in the parallel litigation. (Ex. 1012, 32-33.) The
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`broadest reasonable construction must be at least as broad.
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`4.
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`“a sponsor-selected consumer user” means “one or more
`consumer users selected by the sponsor” in this review
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`
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`The patent never uses the terms “sponsor-selected” or “consumer user”
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`outside of the claims. Kroy argued in the parallel litigation that “the only aspect of
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`the phrase potentially requiring clarification is the article ‘a,’ which means ‘one or
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`more’.” (Ex. 1012, p. 33.) Kroy proposed that, if construed, the term means “one
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`or more consumer users selected by the sponsor.” (Id.) Kroy cannot dispute the
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`reasonableness of its own proposed construction.
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`In view of the specification’s broad disclosure and Kroy’s arguments in
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`litigation, the term “a sponsor-selected consumer” should be construed to mean
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`“one or more consumer users selected by the sponsor” for this review.
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`5.
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`“a sponsor-selected geographic location for fulfillment”
`means “one or more places selected by a sponsor for
`fulfillment” in this review
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`
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`The specification never uses the terms “sponsor-selected” or “geographic
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`location for fulfillment” outside of the claims. The specification broadly discloses
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`that an award database may be queried to determine available geographic locations
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`of prizes of the type won by the consumer. (Ex. 1001, 21:61-63.)
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`
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`Kroy advocated for this construction in litigation, arguing that “the sponsor
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`may designate the available locations for redemption in various ways, and that the
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`invention is not limited to providing awards redeemable at only one specific store
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`location.” (Ex. 1012, p. 36, citing Ex. 1001, 39:40-52.) Kroy went on to argue
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`that the specification discloses “designating geographic locations, for example, by
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`providing a ZIP code at which the award is available to be redeemed.” (Id., p. 37,
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`citing Ex. 1001, 39:40-52.) Kroy acknowledged that the specification discloses
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`embodiments that specify a particular store, but argued that a sponsor may
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`designate the fulfillment location (i.e., place) “in other ways (e.g., ZIP code, name
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`of retailer, multiple stores of a retail network), and need not designate only one
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`location at which an award can be redeemed.” (Id., p. 39-40.) Thus, according to
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`Kroy’s arguments, a skilled artisan could understand the limitation to be met by
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`any geographic constraint placed on an award by a sponsor.
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`
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`In view of the foregoing, a skilled artisan would understand the broadest
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`reasonable construction of “a sponsor-selected geographic location for fulfillment”
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`to be “one or more places selected by a sponsor for fulfillment.”
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`6.
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`“inventory management system” means “system to manage
`award units” in this review
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`The ‘830 patent’s specification never uses the term “inventory management
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`system” outside of the claims. The specification discloses that proprietary retailer
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`inventory systems can be used for retailers to provide current inventory numbers,
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`such as Stock Keeping Units (SKUs), type of inventory, and the like. (Ex. 1001,
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`15:44-47.) The specification also discloses an award database that may include
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`records for each award, and sub-records for each award that include the
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`information necessary to identify an award and associate a fulfillment option with
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`the award. (Ex. 1001, 39:35-57.) Dr. Lieberman’s declaration establishes that a
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`skilled artisan would understand “an inventory management system associated
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`with each of a plurality of providers” to refer broadly to a system to manage award
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`units to encompass the disclosed systems. (Ex. 1010, ¶ 34.)
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`Kroy argued in litigation that an “inventory management system” should not
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`be limited to inventory systems for tracking merchandise. (Ex. 1012, p. 26 (“the
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`claimed invention is not limited to tracking awards in the form of ‘merchandise.
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`Other types of awards are disclosed and contemplated.”).) Kroy further argued
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`that “an ‘award unit can then be allocated from inventory to ensure availability,’
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`which confirms that the system may track ‘award units’ and not just
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`‘merchandise.’” (Ex. 1013, p. 7.) Kroy even contended that a system to track
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`points was “an inventory management system (purchases equate to points, and
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`purchase history equate to type of coupons or rewards given to user).” (Ex. 1008,
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`p. 5.) Kroy’s arguments and contentions evidence that “inventory management
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`system” should be construed at least as broadly as “system to manage award units”
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`for this review.
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`7.
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`The “host,” “sponsor,” and “provider” may be the same
`entity in this review
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`The terms “host” and “sponsor” are expressly defined in the specification,
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`whereas the term provider is not. (Ex. 1001, 7:51-53, 8:10-97.) Notably, the
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`definitions never expressly require any of the host, sponsor, or provider to be
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`separate entities. (Ex. 1010, ¶ 35.) Thus, under the broadest reasonable
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`construction, the “host,” “sponsor,” and “provider” may be the same entity. In re
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`Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (Under the broadest reasonable
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`interpretation, limitations are not to be read into the claims from the specification.).
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`The terms’ use in the context of the claims confirms the broadest reasonable
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`construction. Claim 2, which depends from claim 1, recites “wherein said plurality
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`of providers comprise at least one of a host, a retailer, a merchant, and a sponsor.”
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`(Ex. 1001, 47:31-33.) Thus, claim 2 could suggest that these terms do not require
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`separate entities. Kroy agreed in its claim construction briefing in the parallel
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`litigation. (Ex. 1012, p. 24 (“Indeed, claim 2 confirms that the patentee intended
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`“provider” to encompass all of these types of incentive program participants.”).)
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`Given the term’s use in the claims, Dr. Lieberman’s analysis, and Kroy’s
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`arguments reflecting the alleged understanding of a skilled artisan, the broadest
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`reasonable interpretation of “inventory management system” is “system to manage
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`award units.”
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`8.
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`The preambles of claims 1 and 19 are not limiting in this
`review
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`The preamble of claim 1 recites “[a] system for incentive program
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`participation and automated award fulfillment.” The preamble for claim 19 tracks
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`that of claim 1, but in a method claim format. Kroy has conceded to the court that
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`the preamble is not limiting. (Ex. 1012, p. 18 (“the preamble of claim 1 is not
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`necessary to give life, meaning or vitality to the claim because the body of the
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`claim fully defines its metes and bounds”).) Thus, the preamble should not limit
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`the claims during inter partes review under the broadest reasonable construction.
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`V. REFERENCES CITED AS PRIOR ART
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`Each of the references cited in this petition is available prior art. The ‘830
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`patent’s earliest potential priority claim is to an October 20, 1997 provisional
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`application.3 (Ex. 1001.) Kroy has not established an earlier date of invention.
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`Because the following issued patents each have an application date before October
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`20, 1997, each is prior art to the ‘830 patent under pre-AIA 35 U.S.C. § 102(e):
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`U.S. Patent No. 6,321,208 to Barnett et al. (Barnett, Ex. 1004), filed on April
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`19, 1995;
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`3 Petitioners do not concede that the ‘830 patent is entitled to this priority date.
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`VI.
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`U.S. Patent No. 6,237,145 to Narasimhan et al. (Narasimhan, Ex. 1005),
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`filed on August 14, 1996;
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`U.S. Patent No. 5,970,469 to Scroggie et al. (Scroggie, Ex. 1006), filed on
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`March 26, 1996; and
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`U.S. Patent No. 5,806,044 to Powell (Powell, Ex. 1007), filed on February
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`20, 1996.
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`IDENTIFICATION OF CHALLENGE
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`Claims 1 and 19-25 of the ‘830 patent are unpatentable under 35 U.S.C.
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`§§ 102 and 103. In particular, the claims are invalid on the following grounds:
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`Barnett anticipates claims 1 and 19-22.
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`Barnett renders claims 1 and 19-22 obvious.
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`Barnett renders claims 23-25 obvious in view of Powell.
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`Narasimhan anticipates claims 1 and 19-25.
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`Narasimhan renders claims 1 and 19-25 obvious.
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`Scroggie anticipates claims 1 and 19-25.
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`Scroggie renders claims 1 and 19-25 obvious.
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`For each ground of rejection, Petitioners state how the construed claim is
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`unpatentable by identifying where each element, as properly construed, is found in
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`the prior art. For obviousness grounds, Petitioners evaluate the scope and content
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`of the prior art, any differences between the art and the claims, and the knowledge
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` Petition for Inter Partes Review of U.S. Patent No. 7,054,830
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`of a person of ordinary skill in the art in accordance with Graham v. John Deere
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`Co., 383 U.S. 1 (1966) and KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) per
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`37 C.F.R. § 42.104(b)(4). Kroy has provided no evidence, and Petitioners are
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`aware of none, supporting secondary considerations of nonobviousness. For each
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`obviousness ground, Petitioners provide a rational underpinning to support the
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`references’ combination. See KSR, 550 U.S. 398 at 418. This discussion and
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`accompanying evidence shows that Petitioners have a reasonable likelihood of
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`success on each of the proposed grounds.
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`A. Barnett Anticipates Claims 1 and 19-22
`Barnett discloses a “method and system for electronic distribution of product
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`redemption coupons to remote personal computers located at users’ homes.” (Ex.
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`1004, Abstract.) Figure 1 below, with annotations, illustrates an embodiment of
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`Barnett’s system for electronic distribution