Trials@uspto.gov
`571.272.7822
`
`Paper No. 10
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` Filed: March 8, 2018
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`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–5 of U.S. Patent No. 9,414,199 B2 (Ex. 1001,
`
`“’199 patent”). Paper 1 (“Pet.”). Uniloc Luxembourg S.A. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
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`

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`IPR2017-01993
`Patent 9,414,199 B2
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`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
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`instituted unless “the information presented in the petition . . . and any
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`response . . . shows that there is a reasonable likelihood that the petitioner
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`would prevail with respect to at least 1 of the claims challenged in the
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`petition.” For the reasons given below, we determine Petitioner has
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`demonstrated a reasonable likelihood that it would prevail in establishing
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`that claims 1–5 of the ’199 patent are unpatentable. We institute an inter
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`partes review of these claims on certain asserted grounds of unpatentability.
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`I. BACKGROUND
`
`A. THE ’199 PATENT
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`1. Disclosure
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`
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`The ’199 patent is directed to methods and systems for delivery of
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`information, such as advertisements, from a server to user devices based on
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`“the current location” as well as “predicted future locations” of the devices.
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`Ex. 1001, [57], 1:30–33, 2:39, 3:10–19. The server gathers location
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`information from user devices “[o]ver time” and “uses the gathered location
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`information to periodically predict future locations of the devices.” Id.
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`at 1:33–36, 3:15–19. Upon determining that a “device is likely to be in one
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`[or more] predetermined locations within [a] predetermined maximum
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`amount of time with at least the predetermined minimum likelihood,” the
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`server performs one or more actions, such as “sending a promotion or
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`advertisement” to the device. Id. at 1:37–46. For example, a department
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`store manager seeking to send a promotional code to anyone who is at least
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`50% likely to visit a competing store within one hour can specify the
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`“locations of all competing stores within a five-mile radius” as the “one or
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`more predetermined locations,” “50% as the predetermined minimum
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`likelihood,” and “one hour as the predetermined maximum amount of time.”
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`Patent 9,414,199 B2
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`Id. at 1:52–61. “The manager can also specify days and times at which the
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`actions are applicable,” for example, during store hours. Id. at 1:61–64.
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`In a disclosed embodiment, server 106 maintains location data
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`record 300 for user device 102A, which includes location reports 304
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`identifying location 306 of the device at various dates and times. Id.
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`at 4:22–29, Fig. 3. Server 106 also stores location-based action records 400,
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`each with trigger event 402. Id. at 4:34–42. Trigger event 402 specifies, “as
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`a condition for performance of action 404 . . . , that user device 102A must
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`be determined to be at least as likely as” predetermined threshold
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`likelihood 502 to be at “any of a number of locations within” threshold
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`time 504, “a predetermined amount of time in the future.” Id. at 4:44–58.
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`Server 106, in processing location-based action record 400, generally
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`uses two predictive patterns to determine “the likelihood of user
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`device 102A . . . be[ing] in a particular place at a particular time.” Id.
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`at 5:4–7, 5:15–19. Specifically, server 106 analyzes location data
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`record 300 of user device 102A for “location patterns” associated with:
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`(1) “times of day, days of the week, days of the month, and days of the
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`year,” and (2) “other locations of user device 102A.” Id. at 5:15–22, 5:32–
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`34. If trigger event 402 of location-based action record 400 is satisfied,
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`server 106 performs action 404, such as sending a message to user
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`device 102A. Id. at 4:59–64, 6:8–12; see id. at 4:29–33.
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`2. Prosecution History
`
`
`
`During prosecution of the ’199 patent, the Examiner issued a Final
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`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”)
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`and 2005/0249175 A1 (“Nasu”). Ex. 1002, 55–56, 70–72. Patent Owner
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`appealed the rejection to the Board. Id. at 46.
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`IPR2017-01993
`Patent 9,414,199 B2
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`On June 1, 2016, the Board reversed the Examiner’s rejection. Id.
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`at 19–24. The Board explained that “in the context of” claim 1 and the
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`specification, the term “predetermined likelihood” “refers to the probability
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`or the percentage likelihood that a mobile device will be at a predicted
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`location in the future.” Id. at 23. The Board disagreed with the Examiner
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`that the term could “be broadly interpreted to encompass” Tseng’s “interest
`
`value” and “relevance score,” because—in contrast to the claimed
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`“predetermined likelihood”—these elements relate to a user’s personal
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`interest in and preference for different categories of items. Id. at 22–24, 43.
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`The Examiner then issued a Notice of Allowability. Id. at 4–8.
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`B. ILLUSTRATIVE CLAIM
`
`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
`predetermined likelihood, performing the one or more
`predetermined actions;
`wherein at least one of the actions includes delivering the
`information to the user device.
`
`
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`IPR2017-01993
`Patent 9,414,199 B2
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`Ex. 1001, 8:7–25. We refer to the steps of claim 1 as the retrieving
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`step, the predicting step, and the performing step, respectively.
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`C. EVIDENCE OF RECORD
`
`The Petition relies upon U.S. Patent Application Publication Nos.:
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`2009/0125321 A1 (published May 14, 2009) (Ex. 1007, “Charlebois”);
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`2010/0082397 A1 (published Apr. 1, 2010) (Ex. 1004, “Blegen”);
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`2010/0151882 A1 (published June 17, 2010) (Ex. 1008, “Gillies”);
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`2012/0089465 A1 (published Apr. 12, 2012) (Ex. 1009, “Froloff”);
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`2012/0226554 A1 (published Sept. 6, 2012) (Ex. 1006, “Schmidt”); and
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`2012/0259704 A1 (published Oct. 11, 2012) (Ex. 1005, “Monteverde”).
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`In addition, Petitioner supports its contentions with the Declaration of
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`Gabriel Robins, Ph.D. (Ex. 1003).
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`D. ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner asserts the following grounds of unpatentability. Pet. 3.
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`References
`Challenged Claims Basis
`1, 2
`§ 103 Blegen and Monteverde
`3–5
`§ 103 Blegen, Monteverde, and Schmidt
`1–5
`§ 103 Charlebois and Gillies
`1–5
`§ 103 Charlebois, Gillies, and Froloff
`
`II. ANALYSIS
`
`A. CLAIM CONSTRUCTION
`
`The Board interprets claim terms of an unexpired patent using the
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`“broadest reasonable construction in light of the specification of the patent.”
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`37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`
`2131, 2144–46 (2016). We presume a claim term carries its “ordinary 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).
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`1. “predetermined maximum amount of time” and “within the
`predetermined maximum amount of time” (Claim 1)
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`Independent claim 1 of the ’199 patent recites a “predetermined
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`maximum amount of time.” Ex. 1001, 8:11–8:24. The predicting and
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`performing steps recite the term in the following context: “predicting
`
`whether[/that] the user device will be at any of the one or more
`
`predetermined locations within the predetermined maximum amount of time
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`with at least the predetermined likelihood.” Id. (emphasis added).
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`Petitioner does not propose a construction of either a “predetermined
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`maximum amount of time” or “within the predetermined maximum amount
`
`of time.” See Pet. 7. Patent Owner “does not . . . seek” a construction of
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`“predetermined maximum amount of time” and contends that “within the
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`predetermined maximum amount of time” “requires no construction.”
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`Prelim. Resp. 10 n.4, 15. Yet Patent Owner further represents that one of
`
`ordinary skill in the art, having reviewed the specification, “would readily
`
`recognize that use of the term ‘maximum’ (defining only an upper limit) and
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`the modifying couplet ‘within the . . .’ confirms this phrase refers to a
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`predetermined maximum quantity of time extending from the present (e.g., a
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`predetermined number of days, hours, minutes, and/or seconds, etc.).” Id.
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`at 15–17. According to Patent Owner, because the “predetermined
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`maximum amount of time” extends from the present, rather than “sometime
`
`in the future,” it is “inherently dynamic”—“not static or fixed”—“in that the
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`time it encompasses continually changes as time progresses.” Id. at 17–18,
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`23–24. As support, Patent Owner asserts that in “an example from the
`
`specification,” the “predetermined maximum amount of time” is “within the
`
`next hour.” Id. at 16. Patent Owner applies this proffered claim
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`interpretation in its non-obviousness arguments. Id. at 17–18, 20, 23–24.
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`Patent 9,414,199 B2
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`Patent Owner’s assertions require that we address two aspects of the
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`meaning and scope of “predetermined maximum amount of time” and
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`“within the predetermined maximum amount of time.” First, we consider
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`whether the claimed “amount of time” means a “quantity of time,” e.g., a
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`“number of days, hours, minutes, and/or seconds, etc.”—as Patent Owner
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`alleges. Id. at 16–17, 20 (third emphasis added). As evidenced by THE
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`MERRIAM-WEBSTER DICTIONARY (2005), one definition of “amount” is “the
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`total number or quantity.” Ex. 3001, 16; see also Ex. 3002 (THE
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`MERRIAM-WEBSTER DICTIONARY (2016)), 24 (including the same
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`definition). Moreover, the specification uses the term consistently with this
`
`plain meaning. In two examples in the specification, the “predetermined
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`maximum amount of time” and threshold time 504, which is described to
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`“specif[y] a predetermined threshold amount of time,” are set to “one
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`hour”—i.e., a number or quantity of hours. Ex. 1001, 1:50–51, 1:59–61,
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`4:48–50, 5:65–67. Therefore, the term “amount” in “predetermined
`
`maximum amount of time,” as used in the ’199 patent, has its ordinary and
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`customary meaning of “the total number or quantity.”
`
`Second, we address whether the “predetermined maximum amount of
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`time” must “extend[] from the present”—and cannot “commenc[e] . . . in the
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`future”—as Patent Owner contends. Prelim. Resp. 16–17, 23–24. On this
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`issue, we disagree with Patent Owner at this stage of the proceeding.
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`Beginning with the claims, Patent Owner’s arguments directed to the
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`claim language focus on the terms “maximum” and “within,” yet Patent
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`Owner offers insufficient explanation and evidence as to why and how these
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`terms support its proposed interpretation. Id. at 15–16. Having reviewed the
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`claim language and Patent Owner’s assertions, we do not agree that they do.
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`Nor does the remaining language of claim 1 support Patent Owner’s
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`position. The plain language of claim 1, on its face, does not require or even
`
`imply that the “predetermined maximum amount of time” runs from the
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`present or current time, as opposed to a time in the future. The claim makes
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`no reference to the present or current time—much less specify that the
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`“predetermined maximum amount of time” must extend therefrom.
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`Rather, the predicting and performing steps employ the future tense,
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`referring to where a user device “will be . . . within the predetermined
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`maximum amount of time”—without limitation on when this “amount of
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`time” starts. Ex. 1001, 8:15–23 (emphasis added). On this record, we
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`determine that the plain language of claim 1 is broad enough to encompass
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`the “predetermined maximum amount of time” starting in the future.
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`Turning to the written description, Patent Owner supports its position
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`that the “predetermined maximum amount of time” extends from the present
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`with a citation to a specification passage, which refers to server 106A
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`determining “the likelihood of user device 102A going to [a certain] place
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`within the next hour.” Prelim. Resp. 16 (citing “EX1002 p. 22 (quoting the
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`specification, as originally filed, at ¶ 41)”); Ex. 1002, 212 (¶ 41) (emphasis
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`added); Ex. 1001, 5:22–31 (emphasis added). The specification, however,
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`describes this passage as merely an “example” of patterns that server 106
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`considers. Ex. 1001, 5:16–31. Patent Owner acknowledges as much in
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`characterizing the passage as an “example from the specification.” Prelim.
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`Resp. 16. We are not persuaded that this example in the specification limits
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`the broader claim language. Ex. 1001, 5:22–31; see also id. at 7:40–8:5
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`(“The above description is illustrative only and is not limiting.”).
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`Moreover, in our view at this stage of the proceeding, other
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`disclosures in the specification conflict with Patent Owner’s narrow
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`proposed interpretation. For example, the specification refers to predicting
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`whether user device 102A will be “in any of a number of locations in the
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`future within a predetermined amount of time” and “is likely to be in any of
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`a number of locations within a predetermined amount of time in the future.”
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`Id. at 4:34–37, 4:44–47 (emphases added). These passages reasonably
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`convey that the disclosed predetermined amount of time may begin at any
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`time “in the future” and, thus, do not support limiting the recited
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`“predetermined maximum amount of time” to extending from the present, as
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`Patent Owner argues.
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`Accordingly, on the record developed at this preliminary stage of the
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`proceeding,1 there is insufficient support in the ’199 patent specification for
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`narrowing the meaning or scope of “within the predetermined maximum
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`amount of time” to extending from the present. Thus, we disagree with
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`Patent Owner that the term’s broadest reasonable interpretation, in light of
`
`the specification, is so limited. We, however, agree with Patent Owner that
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`the ordinary and customary meaning, consistent with the specification, of the
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`claim term “amount” is “the total number or quantity.”
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`2. Other Claim Terms
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`On this record, no other claim terms require an express construction to
`
`resolve the issues presented by the patentability challenges. See Nidec
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`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017) (holding that only terms “that are in controversy” must be
`
`construed and “only to the extent necessary to resolve the controversy”).
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`1 We note that these claim interpretation issues are underdeveloped at this
`juncture, given that Petitioner did not address the issues and Patent Owner’s
`analysis features a single citation to the specification. See Prelim. Resp. 15–
`16. The parties have the opportunity to present a full claim construction
`analysis—with evidentiary support—in their briefing during trial.
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`B. LEGAL STANDARDS FOR OBVIOUSNESS
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`A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if
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`“the differences between the claimed invention and the prior art are such that
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`the claimed invention as a whole would have been obvious before the
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`effective filing date . . . to a person having ordinary skill in the art.” To
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`establish obviousness, it is the petitioner’s “burden to demonstrate both that
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`a skilled artisan would have been motivated to combine the teachings of the
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`prior art references to achieve the claimed invention, and that the skilled
`
`artisan would have had a reasonable expectation of success in doing so.” In
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`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
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`(quotations omitted). Accordingly, the petitioner must “articulate[]
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
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`(citation omitted). The “factual inquiry” into the reasons for “combin[ing]
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`references must be thorough and searching, and the need for specificity
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`pervades.” In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016)
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`(quotations omitted). An obviousness determination cannot be reached
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`where the record lacks “explanation as to how or why the references would
`
`be combined to produce the claimed invention.” TriVascular, Inc. v.
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`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016).
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`C. ALLEGED OBVIOUSNESS OVER BLEGEN AND MONTEVERDE
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`Petitioner argues that claims 1 and 2 of the ’199 patent would have
`
`been obvious over Blegen alone or in view of Monteverde. Pet. 8–29.
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`Patent Owner disputes Petitioner’s assertions. Prelim. Resp. 16–21.
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`1. Overview of Blegen
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`
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`Blegen is directed to systems and methods for targeting
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`advertisements to mobile device users based on “geo-temporal models,”
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`which are mathematical models of location information at different times.
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`Ex. 1004, [57], ¶¶ 14, 80. Blegen creates the geo-temporal models by
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`collecting and analyzing “time-stamped location information” for mobile
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`devices and uses the models to “predict locations of mobile devices during
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`specified time periods.” Id. at [57], ¶¶ 3, 14, 48, 80. Advertisements are
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`“selected based on the predicted locations” and provided to the devices for
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`presentation during the specified time periods. Id. ¶ 3; see id. ¶¶ 67–68, 86.
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`
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`In embodiments, Blegen’s system features geo-temporal targeting
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`server 228, which includes prediction component 346. Id. ¶¶ 46, 53, 67,
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`Fig. 3. Prediction component 346 uses the geo-temporal model to “predict[]
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`geographic locations in which . . . mobile device 310 will be located at
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`specified time periods”—such as “Sep[tember] 26, 2008, in the afternoon”
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`or “between 3:00 p.m. and 4:30 p.m.” Id. ¶¶ 61, 67–68, 85. Prediction
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`component 346 also determines confidence levels “associated with [the]
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`predictions of device locations” for the “various specified time periods.” Id.
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`¶¶ 67, 85–86, Fig. 6. Prediction component 346 “compare[s] the confidence
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`levels . . . against a predetermined confidence level threshold” (e.g., 80% or
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`90%) to determine if the confidence level “associated with a prediction” that
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`the device “will be” at a location is “above” or “exceeds” the threshold. Id.
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`If so, advertisements are “selected for presentation in [the] . . . location” and
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`the selected advertisements are “provided for presentation to the user during
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`the specified . . . time period.” Id. ¶¶ 67–68, 85; see id. ¶¶ 70, 78, Figs. 4, 6.
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`
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`Blegen further explains how advertisements appropriate for
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`presentation at specified locations and times are selected. Id. ¶¶ 3, 36–37,
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`44, 67, 71, 85. In one embodiment, the system includes ad server 226 and
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`ad source 224, featuring storage 225 that supports “advertisement (ad)
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`database 227,” a relational database that includes “attributes corresponding
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`to” advertisement identifiers that identify advertisements in storage 225. Id.
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`¶¶ 35–36, 42, Fig. 2. The attributes can “indicate situations,” for example,
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`“particular geographical regions,” “in which the advertisement should be
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`provided.” Id. ¶¶ 36–37, 44. “[T]o select appropriate advertisements to
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`present to users at particular times and in specified geographic locations,” ad
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`server 226 queries the database “using geo-temporal targeting information in
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`the query definition.” Id. ¶ 44; see id. ¶ 71.
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`2. Overview of Monteverde
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`Monteverde discloses a system that targets users with “time-specific
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`commercial offers based on the location and time-based routines of the
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`user.” Ex. 1005 ¶ 7. In Monteverde, “goods or services associated with [a]
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`commercial offer can only be obtained” or “used” “during an offer period,”
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`for example, a “breakfast coupon” that “can only be used during morning
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`hours” or “breakfast hours.” Id. at [57], ¶¶ 5, 11, 74.
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`Monteverde’s system provides the commercial offers to users who are
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`“commonly located” and, thus, are “likely to be located” at or near the
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`vendor’s location “at the time of day in which the commercial offer is most
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`relevant.” Id. at [57], ¶¶ 7, 74; see id. ¶ 69. The system periodically records
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`the user’s location and determines, based on past location information, “a
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`probability score indicating the likelihood that the user will be located in the
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`offer area during the offer period.” Id. ¶¶ 75–77, Fig. 10; see id. ¶ 11. “If
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`the probability score is above a predetermined threshold,” “the commercial
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`offer is transmitted to the user.” Id. ¶ 76; see id. ¶ 11, Fig. 10.
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`3. Independent Claim 1
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`
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`Petitioner argues that independent claim 1 of the ’199 patent would
`
`have been obvious over Blegen alone or in view of Monteverde. See
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`Pet. 13–28; Ex. 1003 ¶¶ 58–101. In particular, Petitioner alleges that Blegen
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`“discloses,” “suggests,” or “renders obvious” each limitation of claim 1.
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`Pet. 22, 24–28. Petitioner identifies Blegen’s “particular geographical
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`regions” or “specified geographic locations” as the recited “predetermined
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`locations”; its “specified time period” as the claimed “predetermined
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`maximum amount of time”; and its “predetermined confidence level
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`threshold” as the recited “predetermined likelihood.” Id. at 14–21, 25.
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`Alternatively, Petitioner contends that the recitation “for each of the
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`two or more devices” is “disclose[d]” by Monteverde, and that the
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`retrieving, predicting, and performing steps and the recitation “wherein at
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`least one of the actions includes delivering the information to the user
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`device” would have been obvious over Blegen “in view of Monteverde.” Id.
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`at 22–28. Petitioner argues that Monteverde’s “offer area,” “offer period,”
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`and “predetermined threshold” for a “probability score” correspond to the
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`claimed “predetermined locations,” “predetermined maximum amount of
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`time,” and “predetermined likelihood,” respectively. Id. at 22–24, 26.
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`a. Proposed Combination and Reasons to Combine
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`
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`In light of issues presented with Petitioner’s combination of Blegen
`
`and Monteverde and supporting reasoning—which impact the teachings of
`
`Monteverde relevant to this ground—our analysis of claim 1 first addresses
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`the sufficiency of the proposed combination and motivation to combine.
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`i. “predetermined maximum amount of time”
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`
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`In its alternative obviousness arguments that rely on Monteverde,
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`Petitioner proposes to “modify Blegen to incorporate” Monteverde’s
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`teachings regarding “specif[ying] . . . an ‘offer period’[] for each
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`advertisement.” Pet. 11–12, 24; Ex. 1003 ¶ 77. To support this proposed
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`modification, Petitioner represents, and Dr. Robins opines, that both Blegen
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`and Monteverde disclose that using “time attributes” to target advertisements
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`augments “the relevance of advertisements.” See Pet. 12; Ex. 1003 ¶ 77;
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`Ex. 1004 ¶ 14. Petitioner refers to Monteverde’s disclosures that an “offer
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`period,” specified by the vendor, allows its system to target “time-specific
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`offer[s]” to users who are likely to be at the vendor’s location when the offer
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`is “most relevant.” Ex. 1005 ¶¶ 5, 76, 79; see Pet. 12, 24; Ex. 1005, [57],
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`¶¶ 7, 11. According to Petitioner and Dr. Robins, an ordinarily skilled
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`artisan would have recognized that “targeting the advertisement to users who
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`are likely to be at the location within the ‘offer period’”—as Montverde
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`teaches—“enhance[s]” the “relevance and value” of the advertisement.
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`Pet. 12; Ex. 1003 ¶ 77. Therefore, Petitioner asserts that such an artisan
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`would integrate Monteverde’s offer period into Blegen “to ensure that the
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`advertisement is sent when a user is predicted to be at the predetermined
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`locations when the offer is valid.” Pet. 12.
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`
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`In light of this argument and evidence, Petitioner provides sufficient
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`reasoning, with rational underpinning and evidentiary support, for the
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`proposed combination of Blegen with Monteverde’s offer period.
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`ii. Other Modifications and Supporting Reasoning
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`
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`Petitioner’s analysis of its alternative obviousness arguments relying
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`on Blegen in view of Monteverde refers to numerous disclosures of
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`Monteverde in addition to its offer period, discussed above. See Pet. 22–28.
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`Moreover, Petitioner offers reasoning to support the combination of Blegen
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`and Monteverde, in general. With supporting testimony from Dr. Robins,
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`Petitioner argues that Blegen and Monteverde are in the “same field” of
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`“directed advertising to mobile devices” and “disclose the same approach”
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`of “targeting advertisements based on . . . predicted locations” using a user’s
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`“time-stamped location history.” Id. at 11; Ex. 1003 ¶¶ 66, 76. According
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`to Petitioner, “[g]iven that Blegen and Monteverde are in a common field of
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`endeavor and disclose similar time- and location-based targeted advertising
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`systems, a [person of ordinary skill in the art] would have recognized that
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`Monteverde’s targeted advertising features could be added to and would
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`benefit Blegen’s system.” Pet. 11; see Ex. 1003 ¶ 66. Petitioner concludes
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`that such a person “would have found the combination of the references to
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`be an obvious combination of familiar elements according to known
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`methods that does no more than yield predictable results.” Pet. 11.
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`
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`For the reasons given below, we determine that Petitioner’s alternative
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`obviousness assertions relying on Blegen combined with Monteverde—other
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`than Monteverde’s offer period, addressed above—are deficient and
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`insufficient to satisfy the reasonable likelihood threshold for institution.
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`First—with the exception of Monteverde’s offer period, discussed above—
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`Petitioner fails to meet its burden, under governing precedent and our
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`regulations, to articulate with particularity in the Petition2 a combination or
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`modification of Blegen with Monteverde’s teachings. See Pet. 11–29;
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
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`(“[T]he Petitioner has the burden from the onset to show with particularity
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`why the patent it challenges is unpatentable.” (emphasis added)); Liberty
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`Mut. Ins. Co. v. Progressive Cas. Ins. Co., Case CBM2012-00003, slip op.
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`at 14–15 (PTAB Oct. 25, 2012) (Paper 8) (representative) (“[I]t is the
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`responsibility of the Petitioner to clearly articulate [the proposed
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`combination].”); 35 U.S.C. § 312(a)(3) (“A petition [must] . . . identif[y],
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`. . . with particularity, . . . the grounds . . . and the evidence that supports the
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`2 Positions of Dr. Robins that are not presented in the Petition are not
`entitled to consideration. See 37 C.F.R. § 42.6(a)(3); Cisco Sys., Inc. v.
`C-Cation Techs., LLC, Case IPR2014-00454, slip op. at 7–10 (PTAB
`Aug. 29, 2014) (Paper 12) (informative).
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`grounds for the challenge to each claim” (emphasis added)); 37 C.F.R.
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`§§ 42.22(a)(2), 42.104(b)(4) (“The petition must specify where each element
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`of the claim is found in the prior art . . . relied upon” (emphasis added)).
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`Although Petitioner refers to disclosures of Monteverde throughout its
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`analysis, Petitioner makes only one vague assertion that Monteverde’s
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`“targeted advertising features” allegedly “could be added to . . . Blegen’s
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`system”—without identifying what specific features of Monteverde an
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`artisan could and would add to Blegen. Pet. 11; Ex. 1003 ¶ 66.
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`
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`Second, Petitioner fails to explain and show adequately why an artisan
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`would combine Blegen with Monteverde’s teachings other than its offer
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`period. Petitioner’s proffered reasons to combine Monteverde are
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`excessively generic and lack the specificity that our governing precedent
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`requires of a motivation to combine. See Nuvasive, 842 F.3d at 1381–82
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`(“[T]he factual inquiry whether to combine references must be thorough and
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`searching, and the need for specificity pervades . . . .” (quotations and
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`alterations omitted)); Magnum Oil, 829 F.3d at 1380 (“[A] petitioner cannot
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`employ mere conclusory statements” and “must instead articulate specific
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`reasoning, based on evidence of record . . . .”). Petitioner’s assertions are
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`insufficient to substantiate a reason that would have prompted an artisan to
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`combine a specific element or teaching of Monteverde with Blegen—as
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`required to support an obviousness showing. See KSR, 550 U.S. at 418 (“[I]t
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`can be important to identify a reason that would have prompted a person of
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`ordinary skill . . . to combine the elements in the way the claimed new
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`invention does.” (emphasis added)); Magnum Oil, 829 F.3d at 1381 (“[I]t
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`was [petitioner’s] burden to demonstrate . . . that a skilled artisan would
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`have been motivated to combine the teachings of the prior art references to
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`achieve the claimed invention . . . .” (emphasis added) (quotations omitted)).
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`In particular, Petitioner’s argument that Blegen and Monteverde are in
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`“a common field of endeavor and disclose similar time- and location-based
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`targeted advertising systems” asserts no more than that the two references
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`are in the same field and their disclosed systems share broad and general
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`similarities. Pet. 11; see Ex. 1003 ¶¶ 66, 76. This contention, without more,
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`is inadequate to provide sufficiently specific reasoning, with rational
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`underpinning, to combine Blegen with Monteverde—much less a particular
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`teaching or element of Monteverde. See TRW Auto. US LLC v. Magna
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`Elecs., Inc., Case IPR2014-00257, slip op. at 4 (PTAB Aug. 28, 2014)
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`(Paper 18) (“That each reference may be in the field of ‘vehicular vision’ is
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`insufficient, in and of itself, to provide a reason with rational[] underpinning
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`. . . to combine specific teachings of such references.”).
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`Further, Petitioner—despite making the bare assertion that an artisan
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`would have recognized that Monteverde’s “targeted advertising features . . .
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`would benefit Blegen’s system”—never identifies or demonstrates
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`adequately any benefit gained by adding a feature of Monteverde to Blegen.
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`Pet. 11; Ex. 1003 ¶ 66; see Nuvasive, 842 F.3d at 1384–86 (holding an
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`obviousness determination to be unsupported where the alleged motivation
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`to combine was “to obtain additional information” without any explanation
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`as to “why the additional information would benefit [a skilled artisan]”).
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`
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`Third, particularly given that Petitioner never clearly articulates a
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`proposed combination of Blegen with teachings of Monteverde—other than
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`its offer period—Petitioner also fails to explain and demonstrate sufficiently
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`how any such combination would operate, as required to support an
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`obviousness showing. See Personal Web Techs., LLC v. Apple, Inc.,
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`848 F.3d 987, 994 (Fed. Cir. 2017) (holding an obviousness determination to
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`be improper where the record lacked a “clear, evidence-supported account”
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`of “how th