Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 25
` Filed: March 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571.272.7822
`
`
`
` Paper No. 25
` Filed: March 6, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`
`INTRODUCTION
`I.
`We instituted inter partes review pursuant to 35 U.S.C. § 314 to
`review claims 1−5 of U.S. Patent No. 9,414,199 B2 (“the ’199 patent”),
`owned by Uniloc 2017 LLC. We have jurisdiction under 35 U.S.C. § 6.
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a) and
`37 C.F.R. § 42.73. For the reasons discussed below, Petitioner has not
`shown by a preponderance of the evidence that claims 1−5 of the ’199 patent
`are unpatentable.
`
`II. BACKGROUND
`THE ’199 PATENT
`A.
`1. Disclosure
`The ’199 patent is directed to methods and systems for delivery of
`
`information, such as advertisements, from a server to user devices based on
`“the current location” as well as “predicted future locations” of the devices.
`Ex. 1001, [57], 1:30–33, 2:39, 3:10–19. The server gathers location
`information from user devices “[o]ver time” and “uses the gathered location
`information to periodically predict future locations of the devices.” Id.
`at 1:33–36, 3:15–19. Upon determining that a “device is likely to be in one
`[or more] predetermined locations within [a] predetermined maximum
`amount of time with at least the predetermined minimum likelihood,” the
`server performs one or more actions, such as “sending a promotion or
`advertisement” to the device. Id. at 1:37–46. For example, a department
`store manager seeking to send a promotional code to anyone who is at least
`50% likely to visit a competing store within one hour can specify the
`“locations of all competing stores within a five-mile radius” as the “one or
`more predetermined locations,” “50% as the predetermined minimum
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`likelihood,” and “one hour as the predetermined maximum amount of time.”
`Id. at 1:52–61. “The manager can also specify days and times at which the
`actions are applicable,” for example, during store hours. Id. at 1:61–64.
`In a disclosed embodiment, server 106 maintains location data
`record 300 for user device 102A, which includes location reports 304
`identifying location 306 of the device at various dates and times. Id.
`at 4:22–29, Fig. 3. Server 106 also stores location-based action records 400,
`each with trigger event 402. Id. at 4:34–42. “[T]rigger event 402 specifies,
`as a condition for performance of action 404 . . . , that user device 102A
`must be determined to be at least as likely as threshold likelihood 502 . . . to
`be at any of applicable locations 506 within an amount of time represented
`by threshold time 504.” Id. at 4:54–58. “In essence, trigger event 402 asks
`whether user device 102A is likely to be in any of a number of locations
`within a predetermined amount of time in the future.” Id. at 4:44−47.
`Server 106, in processing location-based action record 400, generally
`uses two predictive patterns to determine “the likelihood of user
`device 102A . . . be[ing] in a particular place at a particular time.” Id.
`at 5:4–7, 5:15–19. Specifically, server 106 analyzes location data
`record 300 of user device 102A for “location patterns” associated with:
`(1) “times of day, days of the week, days of the month, and days of the
`year,” and (2) “other locations of user device 102A.” Id. at 5:15–22, 5:32–
`34. If trigger event 402 of location-based action record 400 is satisfied,
`server 106 performs action 404, such as sending a message to user
`device 102A. Id. at 4:59–64, 6:8–12; see id. at 4:29–33.
`2. Prosecution History
`During prosecution of the ’199 patent, the Examiner issued a Final
`
`Rejection of claims 1–5—as subsequently issued—under 35 U.S.C. § 103
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`over U.S. Patent Application Publication Nos. 2013/0036165 A1 (“Tseng”)
`and 2005/0249175 A1 (“Nasu”). Ex. 1002, 55–56, 70–72. Patent Owner
`appealed the rejection to the Board. Id. at 46.
`
`On June 1, 2016, the Board reversed the Examiner’s rejection. Id.
`at 19–24. The Board explained that “in the context of” claim 1 and the
`specification, the term “predetermined likelihood” “refers to the probability
`or the percentage likelihood that a mobile device will be at a predicted
`location in the future.” Id. at 23. The Board disagreed with the Examiner
`that the term could “be broadly interpreted to encompass” Tseng’s “interest
`value” and “relevance score,” because—in contrast to the claimed
`“predetermined likelihood”—these elements relate to a user’s personal
`interest in and preference for different categories of items. Id. at 22–24, 43.
`The Examiner then issued a Notice of Allowability. Id. at 4–8.
`ILLUSTRATIVE CLAIM
`B.
`Challenged claim 1, reproduced below, is the sole independent claim
`of the ’199 patent, and is illustrative of the recited subject matter:
`1. A method for delivering information to two or more user
`devices, the method comprising:
`retrieving the information from one or more data records that
`associate the information with one or more predetermined
`locations, a predetermined maximum amount of time, a
`predetermined likelihood, and one or more predetermined
`actions; and
`for each of the two or more user devices:
`predicting whether the user device will be at any of the one or
`more predetermined locations within the predetermined
`maximum amount of time with at least the predetermined
`likelihood; and
`in response to the predicting that the user device will be at any
`of the one or more predetermined locations within the
`predetermined maximum amount of time with at least the
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`predetermined likelihood, performing the one or more
`predetermined actions;
`wherein at least one of the actions includes delivering the
`information to the user device.
`Ex. 1001, 8:7–25. We refer to the steps of claim 1 as the retrieving
`step, the predicting step, and the performing step, respectively.
`PROCEDURAL HISTORY
`C.
`Petitioner, Apple Inc., filed a Petition for inter partes review
`challenging claims 1−5 of the ’199 patent. Paper 1 (“Pet.”). Patent Owner,
`Uniloc 2017 LLC, filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`On March 8, 2018, we determined that Petitioner had shown a reasonable
`likelihood of prevailing on its unpatentability challenge as to all the
`challenged claims, but not on all asserted grounds. Paper 10 (“Dec. on
`Inst.”). On April 24, 2018, the Supreme Court held that a decision to
`institute under U.S.C. § 314 may not institute on fewer than all claims
`challenged in a petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355
`(2018). In light of the Board’s Guidance on the Impact of SAS on AIA Trial
`Proceedings, posted to the Office’s website on April 26, 2018, 1 we modified
`our Institution Decision to institute on all claims and all grounds. Paper 13.
`During trial, Patent Owner filed a Patent Owner Response (Paper 14
`(“PO Resp.”)) and Petitioner filed a Reply (Paper 15 (“Reply”)). Patent
`Owner requested authorization to file a Sur-reply, which we granted.
`(Paper 18 (“Sur-reply”)). We heard oral argument on December 4, 2018, a
`transcript of which is filed in the record. Paper 24 (“Tr.”).
`
`
`1 See https://www.uspto.gov/patents-application-process/patent-trial-and-
`appeal-board/trials/guidance-impact-sas-aia-trial.
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`EVIDENCE OF RECORD
`D.
`The Petition relies upon U.S. Patent Application Publication Nos.:
`2009/0125321 A1 (published May 14, 2009) (Ex. 1007, “Charlebois”);
`2010/0082397 A1 (published Apr. 1, 2010) (Ex. 1004, “Blegen”);
`2010/0151882 A1 (published June 17, 2010) (Ex. 1008, “Gillies”);
`2012/0089465 A1 (published Apr. 12, 2012) (Ex. 1009, “Froloff”);
`2012/0226554 A1 (published Sept. 6, 2012) (Ex. 1006, “Schmidt”); and
`2012/0259704 A1 (published Oct. 11, 2012) (Ex. 1005, “Monteverde”).
`In addition, Petitioner supports its contentions with the Declaration of
`Gabriel Robins, Ph.D. (Ex. 1003) (“Robins Decl.”).
`INSTITUTED GROUNDS OF UNPATENTABILITY
`E.
`The following grounds of unpatentability are at issue. Pet. 3;
`Paper 13.
`References
`Challenged Claims Basis
`1, 2
`§ 103 Blegen and Monteverde
`3–5
`§ 103 Blegen, Monteverde, and Schmidt
`§ 103 Charlebois and Gillies
`1−5
`§ 103 Charlebois, Gillies, and Froloff
`1−5
`
`III. ANALYSIS
`A. CLAIM CONSTRUCTION
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b) (2017);2 see Cuozzo Speed Techs., LLC v. Lee, 136 S.
`Ct. 2131, 2144–46 (2016). We presume a claim term carries its “ordinary
`
`
`2 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
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`and customary meaning,” which is the meaning “the term would have to a
`person of ordinary skill in the art” at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation
`omitted).
`In our Decision on Institution, on the “underdeveloped” record on the
`issue before us at that stage of the proceeding, we preliminarily disagreed
`with Patent Owner’s assertion in the Preliminary Response that the phrase
`“within the predetermined maximum amount of time,” in the predicting step
`of independent claim 1, is limited to a “predetermined maximum amount of
`time” that extends from the present. Dec. on Inst. 6, 9 & n.1. In other
`words, we preliminarily determined that the claim language and the
`specification had not been shown, based on the pre-institution briefing, to
`support the notion that a window of time from which the “predetermined
`maximum amount of time” is derived must extend from the present time.
`We reasoned that the specification may reasonably convey that the disclosed
`predetermined amount of time may begin at any time “in the future.” Id. at
`8–9.
`
`Both parties briefed the scope of this phrase. Patent Owner argues
`that the word “within” in the claim language carries significance. PO
`Resp. 6. In particular, Patent Owner posits that the plain and ordinary
`meaning of “within” and the surrounding claim language convey a temporal
`reference for deriving the predetermined maximum amount of time from a
`window of time. Id. According to Patent Owner, the claim language refers
`to a duration of time (i.e., “predetermined maximum amount of time”) that
`begins with the predicting calculation and ends when the “predetermined
`maximum amount of time” expires. Id. This plain and ordinary reading of
`the claim language, Patent Owner argues, means that the “predetermined
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`maximum amount of time” is a duration of time “starting from the present.”
`Id. at 7.
`Petitioner, in contrast, argues that the specification contradicts Patent
`Owner’s position. Reply 5−6. In particular, Petitioner focuses on an
`example, which Petitioner refers to as the “department store” example, in
`which a store manager requests a transmission of advertisements to users
`who are likely to visit a competitor of the department store “within the
`hour,” or the “manager can also specify days and times at which the actions
`are applicable, e.g., only during hours at which the new department store is
`open.” Reply 5 (citing Ex. 1001, 1:52−64). According to Petitioner, the
`department store example offers two options for a “predetermined maximum
`amount of time”: (1) a one-hour duration that starts from the present or (2) a
`time period (or time window) that begins and ends in the future. Id. at 5−6.
`Petitioner proffers another example in the specification, the “restaurant”
`example, in which the “predetermined maximum amount of time,” according
`to Petitioner, can be specified as “week days from 11:30 am to 2:00 pm,”
`which includes time windows starting in the future. Id. at 6 (citing Ex. 1001,
`2:17−27).
`Having reviewed the full record developed at trial, including the
`parties’ respective positions and the evidence cited in support, we now agree
`with Patent Owner’s interpretation of the claim language—“within the
`predetermined maximum amount of time” in the predicting step—as
`requiring that the duration of time or time period starts when the predicting
`is performed. The claim language alone supports this interpretation. The
`retrieving step of claim 1 requires that a record associate the information,
`e.g., an advertisement, with four elements: one or more predetermined
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`locations, a predetermined maximum amount of time, a predetermined
`likelihood, and one or more predetermined actions. The predicting step, in
`turn, requires, for each user device, predicting “whether the user device will
`be at any of the one or more predetermined locations within the
`predetermined amount of time with at least the predetermined likelihood.”
`Finally, in response to the predicting step, the action(s) are performed.
`The method of claim 1 thereby refers to the “predetermined maximum
`amount of time” in two separate events. The first event refers to the data
`record that contains the “predetermined maximum amount of time.” In this
`instance, the “predetermined maximum amount of time” has been recorded
`in this data record at some point prior to the method beginning because the
`claim recites retrieving the data record that includes the “predetermined
`maximum amount of time.” The second event is the predicting step. This
`step uses the “predetermined maximum amount of time” from the data
`record in the retrieving step to determine whether the user device will be at a
`particular location, in the period of time specified by the “predetermined
`maximum amount of time,” with at least the predetermined likelihood.
`Focusing here on the role of the “predetermined maximum amount of time”
`in the predicting step, the method is concerned with the potential future
`location of the user device. The future location is circumscribed by the
`duration of the “predetermined maximum amount of time.” And because the
`claim requires determining whether the user will be at a predetermined
`location “within the predetermined maximum amount of time,” the range of
`locations predicted must at least begin with the current location of the user
`device, i.e., the location at the time when the predicting starts. Thus, both
`parties are right that the word “within” connotes a window of time. The
`claim language, however, informs us that the window of time starts at the
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`time when the predicting is performed and ends with a future time, when the
`predetermined maximum amount of time expires.
`The ’199 patent specification also confirms this interpretation of the
`claim language. In the Summary of the Invention, the specification provides
`three examples of predicting the user’s location by introducing the concept
`of a “current context”: “the server considers the user device’s location
`history in a current context.” Ex. 1001, 1:47−49. This current context is
`further described as having three implementations: a current day/current
`time application, current location application, and combination of current
`day/current time and current location. Id. at 1:49−50, 1:65−66, 2:18−19.
`For each of these three implementations, the specification provides an
`example that shows the application of these “current context” applications.
`Each of these implementations either discloses or implies that the
`“predetermined maximum amount of time” involves a now-starting time
`window, i.e., a period of time that begins when the predicting step is
`performed.
`The first implementation is the “department store” example, where the
`manager of the department store requests that anyone who is at least 50%
`likely to visit a competitor’s store “within one hour should be sent a
`promotional code entitling that person to a discount.” Id. at 1:50−56. The
`manager specifies “one hour as the predetermined maximum amount of
`time.” Id. at 1:60–61. The specification goes on: “The manager can also
`specify days and times at which the actions are applicable, e.g., only during
`hours at which the new department store is open.” Id. at 1:61−64. This
`example explicitly describes the “one hour” as the “predetermined maximum
`amount of time” that the predicting step uses to determine the potential
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`customer’s location within that time. The predicting starts by taking into
`account the current time and goes forward, into the future, up to one hour.
`As an additional feature, the manager can also specify days and times at
`which the actions are applicable, e.g., by specifying operating hours of the
`department store. Id. at 1:61−64. The focus of this additional feature is
`whether the actions are applicable. This additional feature, however, does
`not change and is not a substitute for the “predetermined maximum amount
`of time” of one hour, on which the predicting is based. Rather, the
`predicting continues to rely on one hour as “the predetermined maximum
`amount of time.” The additional feature only affects whether the
`promotional code will be delivered. For instance, in carrying out this
`feature, the system would not send a promotional code after the department
`store closes at 5 pm, notwithstanding that user devices, at 5 pm, may be
`found 50% likely to be at competing stores within the hour. Thus, we are
`not persuaded by Petitioner’s argument that this option supports the
`contention that the specification discloses predicting “within the
`predetermined maximum amount of time” using a future-starting window.
`See Reply 5.
`As for the second implementation, the specification continues with the
`“department store” example described above. Ex. 1001, 1:66−2:4. In this
`second example, the department store manager’s concern is that a current
`customer, after learning about a new product in the department store,
`“immediately go[es]” to a discount store to buy the new product at a lower
`price. Id. (emphasis added). In this implementation, “the server can deliver
`a promotional code to the user device, encouraging the user of the user
`device to buy the product in the department store rather than at the
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`competitor.” Id. at 2:7−9. In this example, the predicting step indicates that
`the user device is at the department store, but is likely that it “will soon be
`heading to a competitor of the department store.” Id. at 2:4−6 (emphasis
`added). This example implies that the predicting step will take into account
`a “predetermined maximum amount of time” beginning with the current
`time from the perspective of when the calculation is performed—again, a
`now-starting window.
`The third implementation, which Petitioner refers to as the
`“restaurant” example, also continues with the department store
`implementation, and adds the option for the manager to “specify other
`nearby restaurants as the predetermined locations[,] but limit the
`applicability of those locations to week days from 11:30 am to 2:00 pm, for
`example.” Id. at 2:20−27 (emphasis added); see Reply 6. This example,
`again, “continu[es] . . . the above example,” which informs us that the
`“predetermined maximum amount of time” of one hour has not changed.
`But more importantly, the example is directed to another feature: specifying
`the “applicability” of the predetermined locations to specific days and times.
`Much like the previous example where the applicability of the actions is set
`as an additional feature, here too the feature is to constrain further whether
`the predetermined locations will trigger an action. To illustrate, the server
`would send a promotional code to a user device that has a 50% likelihood of
`being at a competing restaurant within the hour, when performing the
`prediction at 11:30 am on Friday, but may not send a code when performing
`the prediction at 11:30 am on Saturday. Again, we understand this example
`as providing additional features, and not changing or substituting the earlier
`disclosure of a “predetermined maximum amount of time” of one hour.
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`Thus, we are not persuaded by Petitioner’s arguments that this “restaurant”
`example supports a “predetermined maximum amount of time” that
`encompasses a future-starting window of time. See Reply 6.
`Our reading of the specification and the scope of the claim language
`further aligns with a stated benefit of the invention: “the information
`presented to a user device in the manner described herein can actually
`influence the future location of the user device by offering an alternative trip
`the user can take rather than the trip typically taken in the current context.”
`Ex. 1001, 2:31−35 (emphasis added). In other words, predicting where the
`user device will be during a now-starting window and sending an
`advertisement as a result of the prediction would potentially change the
`user’s location also within that now-starting window. Petitioner does not
`explain, nor do we find, how that objective of affecting a trip typically taken
`in the current context could be accomplished with a future-starting window.
`Petitioner argues that the specification does not explain any
`scheduling feature for the predicting step, such that a now-starting window
`is required by the claims. Reply 6−7. The argument is not persuasive as we
`have not relied on any scheduling feature, but rather we have relied on the
`natural reading of the claim. We have also considered the specification, of
`which the claim is a part. The context of the specification confirms the
`scope of “within” as used in the claim language and as explained above.
`Petitioner further argued at the hearing that a future-starting window
`is not precluded from claim scope because the specification does not
`expressly disclaim or define the phrase “within the predetermined maximum
`amount of time.” Tr. 9:14−20. But there is no requirement that the
`specification define or expressly limit the claimed invention for the meaning
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`of the claim to be evident to a person of ordinary skill in the art. “Even
`when guidance is not provided in explicit definitional format, ‘the
`specification may define claim terms by implication such that the meaning
`may be found in or ascertained by a reading of the patent documents.’”
`Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed.
`Cir. 2004) (internal single quotation marks and citations omitted).
`Furthermore, it is not persuasive to argue that the specification does not
`preclude a certain broad reading of the claim language or that the proposed
`construction is not inconsistent with the specification, because the role of the
`specification, in the appropriate inquiry, focuses on what and how the
`inventor describes the invention in the specification, i.e., an interpretation
`that is consistent with the specification. In re Smith Int’l, Inc., 871 F.3d
`1375, 1382–83 (Fed. Cir. 2017) (The “broadest reasonable interpretation . . .
`is an interpretation that corresponds with what and how the inventor
`describes his invention in the specification.”).
`Petitioner also refers to other portions of the specification that
`allegedly confirm a claim scope that includes a future-starting window.
`Reply 7. There are two relevant citations to the specification in Petitioner’s
`argument. The first one states: “In essence, trigger event 402 asks whether
`user device 102A is likely to be in any of a number of locations within a
`predetermined amount of time in the future.” Ex. 1001, 4:44−47 (emphasis
`added). Petitioner argued at the hearing that this portion of the specification
`refers to a “predetermined maximum amount of time in the future,” as
`supporting the notion that the “within” claim language encompasses
`performing the predicting step with a future-starting window.
`Tr. 27:17−28:3. According to Petitioner, the use of the future tense can be
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`interpreted to mean that a future-starting window is not unreasonable. Id.
`On the full record now before us, we are not persuaded that this portion of
`the specification supports Petitioner’s contention.
`The sentence of the specification Petitioner relied upon refers to the
`determination of the future location of the user device constrained by the
`duration of the “predetermined amount of time.” Ex. 1001, 4:44−47.
`Granted, the claim and the specification use the future tense when referring
`to predicting “whether the user device will be at any . . . predetermined
`location[] within the predetermined maximum amount of time.” Id. at
`8:15−17 (emphasis added), see also id. at 4:34−37 (“if user device 102A is
`predicted to be in any of a number of locations in the future within a
`predetermined amount of time by a predetermined threshold likelihood”).
`After all, as discussed above with the “restaurant” and the “department
`store” examples, the one hour ends one hour into the future. Thus, a future
`location of the user device is envisioned, hence the future tense. But using
`the future tense in this sense does not ipso facto imbue the “within” phrase
`with a meaning that encompasses future-starting windows. This would
`expand the use of the word “within” beyond what the specification describes
`and not in accordance with the plain and natural reading of the claim
`language. The claim language only ascribes the future tense to the location
`of the user device: “whether the user device will be at any of the one or
`more predetermined locations.” The word “within” has no tense implied,
`and only restricts the future locations of the user devices to those occurring
`inside the period of time that has been predetermined. Therefore, the fact
`that the specification and the claim have recitations of future tense does not
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`persuade us that the “within” phrase is broad enough to encompass a
`future-starting window of time.
`The second portion of the specification on which Petitioner relied
`states: “There are generally two (2) predictive patterns checked by server
`106 in determining the likelihood of user device 102A to be in a particular
`place at a particular time.” Id. at 5:16−19 (emphasis added). Again, there is
`nothing in this passage that discloses or implies a future-starting window.
`The specification explains further the “particular time” for the first
`predictive pattern by explaining that “[i]f the current time is 12:00 pm and it
`is currently a work week day, server 106 can determine that the likelihood of
`user device 102A going to that same place within the next hour to be three in
`five, or 60%.” Ex. 1001, 5:25−28 (emphasis added). The specification also
`explains for the second predictive pattern that “server 106 tries to answer the
`question, ‘Given that user device 102A is at its current location, what are the
`odds that user device 102A will be in another given location within the
`predetermined amount of time according to the location history of user
`device 102A?’” Id. at 5:35−39 (emphasis added). In both of these
`explanations, the “particular time” alluded to earlier in the specification
`refers to a time within the predetermined amount, e.g., one hour, which
`expressly starts from the current time of 12:00 pm in the first predictive
`pattern, and impliedly starts when the prediction occurs in the second
`predictive pattern because the example refers to a current location. Thus,
`we view the specification as consistently describing the predicting step as
`determining where the user device will be, starting from the time the
`prediction occurs and ending when the “predetermined maximum amount of
`time” expires.
`
`
`
`16
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`Petitioner further argues that the prosecution history contradicts Patent
`Owner’s position that the claim is directed to a now-starting window.
`Reply 8−10. Petitioner posits that during prosecution, the applicant took the
`opposite position when distinguishing prior art. Id. at 8. Specifically,
`according to Petitioner, the Examiner found that Tseng (Exhibit 1018)
`disclosed the “predetermined maximum amount of time” limitation. Id.
`(citing Ex. 1002, 72−74; Ex. 1018 ¶ 50). And, according to Petitioner, the
`applicant argued that Tseng only disclosed a current time window, not a
`future-starting window. Id. at 8−9 (citing Ex. 1002, 31 (“Thus, the time
`window taught by Tseng is not a time window in which a device is predicted
`to be somewhere in the future but is instead only compared to the current
`time.”)).
`Patent Owner counters that the relevant argument distinguished Tseng
`from the claimed invention based on Tseng’s failure to determine where the
`device will be, and was not directed to the “predetermined maximum amount
`of time.” Sur-reply 6. We agree with Patent Owner. The prosecution
`history passage that Petitioner relies on does not address whether the alleged
`“predetermined maximum amount of time” in Tseng was or was not a
`future-starting window. Applicant’s statements during prosecution
`addressed Tseng’s time window as only being concerned with the location of
`the device currently, with no mention of future locations of the device. See
`Ex. 1002, 31 (“Applicant finds no evidence in Tseng of any appreciation for
`predicting a future state of a device.”). In evaluating these statements, we
`recognize that the applicant’s mention of a “time window” appears to refer
`to the “predetermined maximum amount of time.” But applicant clarified
`that whatever the Examiner pointed to in Tseng as a “time window” showed
`
`
`
`17
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`that Tseng pertains “to the current state of the device.” Id. That is, a
`temporal reference that only takes into account the current location does not
`disclose or teach the required predicting of future locations.
`Petitioner further urges us to consider the impact of Dr. Robins’s
`“unrebutted” opinion regarding the predicting step. Reply 12−13. We
`recognize that Petitioner filed a declaration in support of its Petition, while
`Patent Owner did not. However, we do not discount Patent Owner’s
`arguments on claim construction merely because no expert testimony
`supports those arguments, particularly when the arguments are based on the
`intrinsic record. We also do not credit expert testimony that is at odds with
`the claim language or the specification—as is Dr. Robins’s relevant
`testimony. See Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d
`1379, 1382 (Fed. Cir. 2008) (“A court may look to extrinsic evidence so
`long as the extrinsic evidence does not contradict the meaning otherwise
`apparent from the intrinsic record.” (citation omitted)). For instance,
`Dr. Robins opines that the “predetermined maximum amount of time is
`‘lunch time on weekdays’ from 11:30 am to 2:00 pm,” as disclosed in the
`“restaurant” example. Robins Decl. ¶ 45. Dr. Robins explains that this time
`window “specifies the maximum amount of time during which a lunch offer
`will be sent to the user device.” Id. (citing Ex. 1001, 2:17−27). But as we
`explained above, this time period serves to limit the applicability of the
`predetermined locations in the prediction, but does not refer to the
`“predetermined maximum amount of time.” Dr. Robins does not explain
`how the specification’s description of limiting applicability of the
`predetermined locations in any way also implicates the “predetermined
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