UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-1993
`PATENT 9,414,199
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`I.
`II.
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`V.
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`
`
`INTRODUCTION
`THE ’199 PATENT
`Effective Filing Date of the ’199 Patent
`Overview of the ’199 Patent
`
`THE PETITION FAILS TO PROVE OBVIOSUNESS
`Claim Construction
`1.
`“predetermined likelihood”
`2.
`“within the predetermined maximum amount of time”
`No prima facie obviousness for “predicting whether the user
`device will be at any one or more predetermined locations
`within the predetermined maximum amount of time with at
`least the predetermined likelihood”
`1.
`Blegen is deficient
`2. Monteverde’s so-called “offer period” is deficient
`3.
`Charlebois is deficient
`4.
`Gillies does not cure Charlebois’ conceded deficiencies
`5.
`Patent Owner offers no substantive response to Froloff
`No Prima Facie Obviousness for Dependent Claims 2‒5
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`VIII. CONCLUSION
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`
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`IPR2017-1993
`U.S. Patent 9,414,199
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`Table of Contents
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`1
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`2
`3
`4
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`6
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`14
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`23
`27
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`ii
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`IPR2017-1993
`U.S. Patent 9,414,199
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. §42.120, Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. (the “Patent Owner” or “Uniloc”) submit Uniloc’s Response to the Petition for
`Inter Partes Review (“Pet.” or “Petition”) of United States Patent No. 9,414,199
`(“the ’199 patent” or “EX1001”) filed by Apple Inc. (“Petitioner”) in IPR2017-1993.
`The Petition should be denied because it applies an erroneous claim
`construction and fails to satisfy the All Elements Rule. See Ethicon Endo-Surgery,
`Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 n.1 (Fed. Cir. 1998) (holding every
`element and limitation must be met by a component in the qualifying reference);
`Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569,
`(Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v. Mentor
`Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying Petition as tainted
`by reliance on an incorrect claim construction).
`
`II. THE ’199 PATENT
` Effective Filing Date of the ’199 Patent
`The ’199 patent is titled “Predictive Delivery of Information Based on Device
`History.” The ’199 patent issued on August 9, 2016 from United States Patent
`Application No. 14/188,063, which claims priority under 35 U.S.C. § 119 to
`provisional Application No. 61/774,305, filed on March 7, 2013. The Petition does
`not dispute the effective filing date of the ’199 patent is March 7, 2013.
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`1
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`IPR2017-1993
`U.S. Patent 9,414,199
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` Overview of the ’199 Patent
`The ’199 Patent discloses various embodiments for location-based services
`and methods for delivery of information to a user device based a variety of factors
`including, for example, the present location of the device and the location history of
`the device. See, e.g., EX1002 (Prosecution History), pp. 20, 48‒49.1 In certain
`preferred embodiments, a server gathers locational information from a user device
`over time to collect location histories of the device and to periodically predict future
`locations of the device. For example, a server may be programmed to determine that
`there is at least a minimum likelihood that a user device will be at one of several
`locations within a maximum amount of time. The server may be further programed
`to perform certain actions in response to such a predicative determination. An
`example of such actions is sending a promotion or advertisement to the user device
`(e.g., as an SMS message).
`During prosecution, when successfully conceiving the Board to overturn an
`Examiner’s prior finding of unpatentability, Applicant highlighted several technical
`advantages of the claimed invention over “conventional location-based services.”
`EX1002, p. 49. One such advantage included the ability to present information to a
`user device in a manner that “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.” Id.
`
`
`1 All citations to Exhibit 1002 (“EX1002”) are made to the page numbering in the
`footer added by Petitioner.
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`2
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`The ’199 patent issued with one independent claim, copied below for the
`convenience of the Board:
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`IPR2017-1993
`U.S. Patent 9,414,199
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`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
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`for each of the two or more user devices:
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`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
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`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;
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`V.
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`wherein at least one of the actions includes delivering the
`information to the user device.
`THE PETITION FAILS TO PROVE OBVIOSUNESS
`Petitioners have the burden of proof to establish they are entitled to their
`requested relief. 37 C.F.R. § 42.108(c). To satisfy this burden under a theory of
`obviousness, Petitioners “must specify where each element of the claim is found in
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`Petitioners have not met this burden.
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`3
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`The Petition is stylized as presenting the following grounds:
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`IPR2017-1993
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`US. Patent 9,414,199
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`
`
`Ble. en2 and Monteverde3
`Ble en, Monteverde, and Schmidt4
`Charlebois5 and Gillies6
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`Charlebois, Gillies, and Frolo]
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`A.
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`Claim Construction
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`For all claim terms, Uniloc requests that the Board adopt the broadest
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`reasonable construction in light of the specification. In re Man Mach. Interface
`
`Techs. LLC, 822 F.3d 1282, 1287 (Fed. Cir. 2016) (emphasis original), citing
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`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir- 2015) (“A
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`construction that is unreasonably broad and which does not reasonably reflect the
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`plain language and disclosure will not pass muster”).
`
`1.
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`“predetermined likelihood”
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`The Petition purports to seek specific construction of only a single phrase:
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`“predetermined likelihood.” That phrase appears in claim 1
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`in the context of
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`“predicting whether the user device will be at any one or more predetermined
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`locations within the predetermined maximum amount of time with at least the
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`predetermined likelihood.” Thus,
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`the “predetermined likelihood” is expressly
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`defined as a threshold probability calculated from two antecedent factors: “one or
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`2 US. Patent Publication No- 2010/0082397 (“Blegen” or “EX100 ”).
`3 US. Patent Publication No. 2012/0259705 (“Monteverde” or “EX1005”).
`4 US. Patent Publication No. 2012/0226554 (“Schmidt” or “EX1006”).
`5 US. Patent Publication No- 2009/0125321 (“Charlebois” or “EX1007”).
`6 US. Patent Publication No. 2010/0151881 (“Gilles” or “EX1008”).
`7 US. Patent Publication No. 2012/0089465 (“Frolofl’’ or “EX1009”).
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`IPR2017-1993
`U.S. Patent 9,414,199
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`more predetermined locations” and “within the predetermined maximum amount of
`time.” No construction is necessary for this term because it is unambiguously
`defined within the claim language itself, using clear terms that are consistent with
`the specification.
`Contrary to what the Petition suggests, the Board did not conclude during
`prosecution that this term required construction beyond the plain language of the
`claim itself. Rather, the Board simply reversed an Examiner’s conclusion that
`“predetermined likelihood” can be based on something other than what is recited.
`More specifically, the Board found the Examiner had erroneously relied on
`distinguishable computations based, instead, on “a user’s personal preference of
`different categories (e.g., shopping items),” “interest value,” or “relevance score.”
`EX1002, p. 22. Those distinguishable computations did not teach the claimed
`“predetermined likelihood” because they were based on something other than the
`two recited factors–i.e., “whether the user device will [1] be at any one or more
`predetermined locations [2] within the predetermined maximum amount of time.”
`The Board further held that the specification as originally filed confirms that
`“‘predetermined likelihood’ refers to the probability or the percentage likelihood that
`a mobile device will be at a predicted location in the future.” Id. The Board found
`the following block quotation from the specification to be instructive:
`
`For example, the user of user device 102A might have lunch at the
`same place at least three (3) days each work week–typically at
`about 12:30 pm. If the current time is 12:00 pm and it is currently
`a work week day, server 106 can determine that the likelihood of
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`5
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`IPR2017-1993
`U.S. Patent 9,414,199
`user device 102A going to that same place within the next hour to
`be three in five, or 60%.
`
`Id. p. 22 (underlining by Board), quoting the specification, as originally filed, at
`¶ 41. This disclosed example identifies the “likelihood” as a 60% probability that the
`user device will be at a specific lunch location (i.e., “one or more predetermined
`locations”) within the next hour (i.e., “within the predetermined maximum amount
`of time”).
`2.
`“within the predetermined maximum amount of time”
`Uniloc submits that the phrase “… within the predetermined maximum
`amount of time” simply means what it says. One having ordinary skill in the art,
`having reviewed the specification, would readily recognize that the plain and
`ordinary meaning is a predetermined maximum quantity of time (e.g., a
`predetermined number of days, hours, minutes, and/or seconds, etc.) starting from
`when the “predicting” calculation is executed.
`The claim language in question appears in the broader context of “predicting
`whether the user device will be at any of the one or more predetermined locations
`within the predetermined maximum amount of time ….” This limitation offers two
`temporal points of reference defining the relevant duration of time: (1) the
`“predicting” calculation itself and (2) the expiration of the “predetermined maximum
`amount of time.” No other temporal reference point is recited or even implied. There
`can be no question, therefore, that the “within” clause modifies and makes explicit
`reference to a duration defined to start concurrent with the “predicting” calculation
`itself.
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`IPR2017-1993
`U.S. Patent 9,414,199
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`This interpretation is consistent with common, everyday usage of the terms in
`question. When a quantity of time is modified only by the word “within,” the plain
`and ordinary meaning is that specified duration starting from the present. If a
`restaurant host informs a patron that a table will be available within 30 minutes, for
`example, one would logically understand that to mean within 30 minutes of when
`the host made that statement. One could imagine the surprise if the patron returns 30
`minutes later, expecting to be seated, and the host then states that he previously
`meant, but did not specifically say, within 30 minutes starting at 6:00 pm the next
`day. In the absence of qualifying language that specifies a reference time other than
`the present (e.g., starting at 6:00 pm the next day), the meaning of “within” followed
`by a quantity of time has a commonly understood meaning. Nothing in the intrinsic
`evidence unambiguously requires departing from this plain and ordinary meaning.
`Consistent with the plain and ordinary meaning of the claim language, the
`remainder of the specification of the ’199 patent confirms that the “predicting”
`calculation has a current context that applies a predetermined maximum quantity of
`time starting from when the “predicting” calculation is executed. For example, the
`description appearing under the heading Summary of the Invention states “[t]o make
`a prediction regarding future locations of the user device, the server considers the
`user device’s location history in a current context. One part of the current context is
`the current day and the current time. … Another part of the current context is the
`current location of the user device.” Id. 1:47–70 and 65–66. (emphasis added).
`In the Detailed Description section, the example embodiments of “predicting”
`calculations are consistently described in this same current context. For example,
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`IPR2017-1993
`U.S. Patent 9,414,199
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`one embodiment is described in part as follows: “[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%.” Id. 5:25–28 (emphasis added). There can be no question that this
`embodiment uses “within [a quantity of time]” to refer to a predetermined duration
`starting concurrent with the server determination/calculation. As explained above,
`during prosecution the Office quoted this example embodiment as instructive of the
`claim language in question. See § V.A.1, supra (quoting EX1002, p. 22).
`The ’199 patent describes another example embodiment, in part, as follows:
`In other words, 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?” For example, a user may have the
`tendency to shop in a large department store to get help from
`sales clerks and then go around the corner to a discount shop to
`buy merchandise at a great discount. The presence of user device
`102A in the large department store can indicate that user device
`102A is likely to be in the discount shop in the near future.
`EX1001, 5:34–35. In this alternative example, the server again makes a real-time
`predicting calculation based upon the near-term duration starting concurrent with the
`calculation. Id. 5:32–64.
`This interpretation of the claim language is also unmistakably confirmed in
`the specification by the explanation that “threshold time 504” represents the duration
`“between the current time and the future time.” Id. 5:58–60. Consistent with that
`explanation, the specification states elsewhere that “[t]hreshold time 504 specifies a
`predetermined threshold amount of time into the future.” Id. 4:48–50. The phrase
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`IPR2017-1993
`U.S. Patent 9,414,199
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`“into the future” unmistakably connotes a threshold amount of time extending from
`the present into the future. Consistent with this understanding, a particular example
`defines the threshold time 504 as “one hour” and the current time as 5:45 pm, such
`that the relevant duration extends from 5:45 pm (when the “predicting” trigger event
`is executed) through 6:45 pm:
`It is helpful to consider the example of a trigger event 402 (FIG.
`5) in which threshold likelihood 502 represents 70%, threshold
`time 504 represents one hour, and applicable locations 506
`represent various locations of a retail business. This trigger can
`be satisfied (i) if user device 102A goes to the retail business in
`a predictable pattern, such as every Friday evening at around
`6:30 pm and it’s currently 5:45 pm, [or] (ii) if user device 102A
`typically visits a competitor retail business before visiting the
`subject retail business and user device 102A is currently at the
`competitor retail business.
`Id. 5:65–6:7.
`The description in the ’199 patent of location analysis logic 924 further
`confirms this interpretation: “location analysis logic 924 determines the likelihood
`that user device 102A will be in a particular location within a predetermined amount
`of time.” Id. 7:21–24. Because this statement provides no starting reference point
`beyond the determination itself, there can be no question that use of the word
`“within” in this context refers to the predetermined amount of time measured relative
`to the time of determination. The claim language uses the same construct.
`As shown by the non-exhaustive examples above, the specification
`thematically invokes a “current context” and repeatedly and consistently confirms
`that the plain and ordinary meaning of “within the predetermined maximum amount
`of time” means a predetermined maximum quantity of time starting from when the
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`IPR2017-1993
`U.S. Patent 9,414,199
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`“predicting” calculation is executed. “When a patent ‘repeatedly and consistently’
`characterizes a claim term in a particular way, it is proper to construe the claim term
`in accordance with that characterization.” Profoot, Inc. v. Merck & Co., 663 F.
`App’x 928, 932 (Fed. Cir. 2016) (quoting GPNE Corp. v. Apple Inc., 830 F.3d 1365,
`1370 (Fed. Cir. 2016)). Indeed, nowhere does the ’199 patent explicitly state that the
`“predetermined maximum amount of time” starts at a time other than the
`“predicting” calculation.8
`In its Institution Decision, the Board agreed with Patent Owner that “the term
`‘amount’ in “predetermined maximum amount of time,” as used in the ’199 patent,
`has its ordinary and customary meaning of ‘the total number or quantity.’” Paper 10
`at 7. Based on the record available at that time, however, the Board preliminary held
`that “the disclosed predetermined amount of time may begin at any time ‘in the
`future’ and, thus, do not support limiting the recited ‘predetermined maximum
`amount of time’ to extending from the present, as Patent Owner argues.” Id. at 9.
`
`
`8 Although Petitioner does not offer a claim construction or corresponding
`arguments, the Petition erroneously suggests in asserting certain references that the
`“predetermined maximum amount of time”—as recited in the “retrieving”
`limitations—can be a time period starting in the future (i.e., sometime after
`significant time has lapsed since the “predicting” calculation) ostensibly because
`“the ’199 Patent discloses an offer for ‘lunch time on weekdays’ from ‘11:30 am to
`2:00 pm.’” See, e.g., Pet. 56 (citing EX1001 2:17-27). However, the example cited
`by Petitioner is explicitly described in the thematic “current context” in terms of the
`“current day and time and the current location of the user device.” EX1001 2:17-27.
`Accordingly, consistent with all other examples disclosed in the ’199 patent, the
`“predicting” calculation in that example would be triggered precisely at 11:30 am,
`such that the predetermined maximum amount of time would start concurrently with
`that “predicting” calculation and extend for two-and-a-half hours until 2:00 pm.
`
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`IPR2017-1993
`U.S. Patent 9,414,199
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`It is not entirely correct that only Patent Owner has presented arguments based
`on this interpretation of the plain and ordinary meaning. The Petition and its attached
`declaration present certain arguments based on an explicit claim interpretation that
`“within the predetermined maximum amount of time” means “a maximum time
`period calculated from the current time ….” See, e.g., Pet. at 68 and 70 (emphasis
`added); EX1003 ¶ 209.9 In doing so, Petitioner and its declarant do not characterize
`such a claim construction as unreasonable, let alone attempt to explain why the
`Board should reject such a construction and, consequently, also reject the arguments
`in the Petition explicitly relying upon such a construction.
`Given that Petitioner has the burden of proof, it would be improper to place
`the burden on Uniloc to defend a claim interpretation that the Petition itself relies
`upon in presenting certain arguments. This is especially true here because, as the
`Board correctly recognized, the Petition presents no argument or explanation
`abrogating such a claim interpretation. Paper 10 at 9 n.1 (“We note that these claim
`interpretation issues are underdeveloped at this juncture, given that Petitioner did
`not address the issues.”).
`
`
`9 To be clear, Patent Owner does not construe “predetermined maximum amount of
`time” to mean “a maximum time period calculated from the current time to the
`predicted time of arrival at a predetermined location,” as Petitioner proposes in the
`alternative. At least one problem with such a construction is that the claim language
`does not define the “predetermined maximum amount time” as expiring based on a
`calculated time of arrival. Rather, as the intrinsic evidence confirms, the
`“predetermined maximum amount of time” is simply a quantity of time (e.g., one
`hour) that must encompass the specific time(s) (occurring within the relevant
`duration) which correspond to the predicted location(s) of the user device.
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`IPR2017-1993
`U.S. Patent 9,414,199
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`Petitioner should not be allowed to lie behind the log and save its contrary
`claim construction arguments (to the extent it has any) for its reply brief only. Such
`gamesmanship circumvents the word-count limitation of a Petition. It also severely
`prejudices Patent Owner by forcing it to only guess as to what Petitioner may argue
`to defend a claim construction applied in the Petition in presenting alternative
`arguments. Further, it is questionable whether the Board can raise claim construction
`arguments sua sponte on behalf of Petitioner. In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO’s position
`that the Board is free to adopt arguments on behalf of petitioners that could have
`been, but were not, raised by the petitioner.”). Nevertheless, in anticipation of
`Petitioner attempting to newly adopt claim construction arguments raised sua sponte
`by the Board in its Institution Decision, Patent Owner addresses those arguments
`herein out of an abundance of caution.
`The Board (though not the Petition) preliminary argues that because the claim
`language employs the future tense in “referring to where a user device ‘will be …’”
`(Paper 10 at 8), claim 1 encompasses starting the “predetermined maximum amount
`of time” at an unspecified time in the future. The “will be” claim language, however,
`does not refer to a starting point for determining when the “predetermined maximum
`amount of time” expires. Rather, as the Board appears to recognize, the “will be”
`language explicitly refers to a present prediction of where the device “will be”
`located within the relevant duration–i.e., sometime after that duration has already
`started and before expiration of the predetermined maximum amount of time. The
`“will be” language cited in the Institution Decision, therefore, does not support an
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`IPR2017-1993
`U.S. Patent 9,414,199
`
`interpretation that ambiguously untethers the start of the “predetermined maximum
`amount of time” away from the “predicting” calculation itself.
`The Board (though not the Petition) also preliminary argues that certain
`disclosure in the specification of the ’199 patent suggests the recited “predetermined
`maximum amount of time” starts sometime after the “predicting” calculation. Paper
`10 at 8–9. Specifically, the Institution Decision points to the disclosure of
`“predicting whether user device 102A will be ‘in any of a number of locations in the
`future within a predetermined amount of time’ and ‘is likely to be in any of a number
`of locations within a predetermined amount of time in the future.’ Id. at 4:34–37,
`4:44–47 (emphases added).” Id. at 9.
`The Board appears to have has misunderstood the quoted passage. As with the
`“will be” language addressed above, the phrase “in the future” does not refer to a
`starting point for determining when the “predetermined maximum amount of time”
`expires. Rather, the surrounding context explicitly and unambiguously confirms that
`the phrase describes multiple moments occurring “within” the relevant duration–i.e.,
`sometime after that duration has already started and before expiration of the
`predetermined maximum amount of time. Further, the plural reference to “any of a
`number of locations in the future within a predetermined amount of time” confirms
`that this is a reference to multiple moments within the relevant duration, as opposed
`to a single reference to when that duration starts.
`The Board’s preliminary observations appear to imbue the phrase “in the
`future” with meaning that does not fit the surrounding context of the quoted passage.
`It is axiomatic that the predicted device locations must correspond to moments “in
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`IPR2017-1993
`U.S. Patent 9,414,199
`
`the future” relative to when the predicting calculation is executed (i.e., relative to
`when the duration starts). It is also axiomatic that the relevant duration expires at
`some point “in the future” relevant to when the predicting calculation is executed.
`But the quoted passages simply do not describe the relevant duration itself as starting
`at an unspecified time in the future.
`For the foregoing reasons, the phrase “… within the predetermined maximum
`amount of time” should be construed to mean “a predetermined maximum quantity
`of time starting from when the ‘predicting’ calculation is executed.” As will be
`shown, Petitioner attempts raise obviousness challenges that are inconsistent with
`such a construction. Petitioner has not and cannot prove obviousness through
`application of an erroneous construction. See Mentor Graphics Corp., v. Synopsys,
`Inc., IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11,
`2015), aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569
`(Fed. Cir. 2016) (finding Petitioner’s claim construction unreasonable in light of the
`specification, and therefore, denying Petition as tainted by reliance on an incorrect
`claim construction).
`
` No prima facie obviousness for “predicting whether the user device
`will be at any one or more predetermined locations within the
`predetermined maximum amount of time with at least the
`predetermined likelihood”
`
`The Petition fails to establish prima facie obviousness at least for “predicting
`whether the user device will be at any one or more predetermined locations within
`the predetermined maximum amount of time with at least the predetermined
`likelihood,” as recited in independent claim 1 (and hence all challenged claims). The
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`IPR2017-1993
`U.S. Patent 9,414,199
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`deficiencies in the Petition arise, at least in part, due to challenges that fail to
`recognize that the phrase “… within the predetermined maximum amount of time”
`should be construed to mean a predetermined maximum quantity of time starting
`from when the “predicting” calculation is executed.
`1.
`Blegen is deficient
`Blegen is deficient at least because, as the Petition recognizes, the Blegen
`model relies on a “specified time period” defined by fixed start and stop times that
`both occur in the future, such as an afternoon on a future date. Blegen states, for
`example, that “prediction component 346 may predict, based on a geo-temporal
`model, that a User A will be interacting with mobile device 310 during a specified
`time period such as, for example, between 3:00 p.m. and 4:30 p.m. on Sep. 26,
`2008.” EX1004 at ¶ 67.
`This distinguishable aspect of Blegen is undisputed. The Board observed that
`“Petitioner contends that one of ordinary skill in the art would have understood that
`the “specified time period” in Blegen, for instance, “‘afternoon’ on a future date,”
`meets this claim element “because it specifies the maximum time window for the
`predicted arrival of the user at a predetermined location to trigger an advertisement.”
`Id. at 17; Ex. 1003 ¶ 70.” Paper 10 at 18–19.
`As explained above in addressing claim construction (§ V.A.2), the claimed
`prediction is not a calculation based on a time period having a fixed starting
`reference point that is distinct from, and occurs later than, the calculation itself (e.g.,
`starting on a future date, after significant time has lapsed since the calculation).
`Rather, the claimed prediction reflects the thematic current context of the
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`specification by applying a predetermined maximum quantity of time based on and
`starting from when the ‘predicting’ calculation is executed. See generally § V.A.2,
`supra.
`The Petition cites to no portion of Blegen allegedly teaching this current
`context consistently and repeatedly disclosed in the ’199 patent and reflected in the
`claim language. Indeed, the Petition at least tacitly concedes that Blegen is deficient
`by alleging that a disparate reference is needed if the claim language is construed to
`require a current context. Id.
`The “predicting” limitation further recites “predicting whether the user device
`will be at any one or more predetermined locations within the predetermined
`maximum amount of time with at least the predetermined likelihood.” The claimed
`“predetermined likelihood” explicitly pertains to the duration defined by the
`“predicting” calculation and the statement “within the predetermined maximum
`amount of time.” Id. Accordingly, the argument based on Blegen fails at least
`because the alleged “predetermined confidence level threshold” identified in the
`Petition pertains to a distinguishable “specified time period” that admittedly starts
`sometime in the future, as explained above.
`For at least the foregoing reasons, the Petition’s application of Blegen fails to
`prove obviousness for “predicting whether the user device will be at any one or more
`predetermined locations within the predetermined maximum amount of time with at
`least the predetermined likelihood.”
`
`16
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`

`IPR2017-1993
`U.S. Patent 9,414,199
`2. Monteverde’s so-called “offer period” is deficient
`Due to the procedural history in this matter, Patent Owner only addresses
`herein the deficiencies of the Petition with respect to its reliance on Monteverde’s
`so-called “offer period.” The Board stated the following in its original Institution
`Decision: “we determine that Petitioner’s alternative obviousness assertions relying
`on Blegen combined with Monteverde–other than Monteverde’s offer period,
`addressed above–are deficient and insufficient to satisfy the reasonable likelihood
`threshold for institution.” Paper 10 at 14. In response to SAS Inst., Inc. v. Iancu, No.
`16-969, 2018 WL 1914661, at *10, 584 U.S. __ (U.S. Apr. 24, 2018), however, the
`Board modified its Decision on Institution “to institute the grounds challenging
`claims 1 and 2 as obvious over Blegen and Monteverde and claims 3–5 as obvious
`over Blegen, Monteverde, and Schmidt as fully presented in the Petition (i.e.,
`without limiting the combination with Monteverde to Monteverde’s teaching of an
`offer period).” Paper 13 at 3.
`Given this procedural backdrop, in addressing Petitioner’s alternative
`argument that the “predicting” limitation would have been obvious over Blegen in
`view of Monteverde, Patent Owner strictly limits its present Response to Petitioner’s
`reliance upon Monteverde’s so-called “offer period” only. Patent Owner’s decision
`to not substantively address the newly-instituted challenges (based on a combination
`with Monteverde other than its offer period) should in no way be interpreted as a
`concession that those challenges have any merit. Patent Owner simply recognizes
`that the Board found the Petition itself to be deficient and, consequently, present
`
`17
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`

`IPR2017-1993
`U.S. Patent 9,414,199
`
`circumstances do not warrant substantively responding to those challenges
`previously denied in the Board’s original Institution Decision. See Paper 10.10
`Notably, the Petition makes no distinction between the “specified time period”
`in Blegen and the “offer period” in Monteverde. On the contrary, Petitioner
`confirms–by relying on another reference in presenting an alternative theory based
`on a differing claim construction–that a combination based on Blegen and
`Montervde alone fails to prove obviousness, at least to the extent the claim language
`is construed to require a current context (as discussed above). See § V.A.2, supra.
`The Board’s explicit reference to “the ‘future start’ time of Monteverde’s offer
`period” (Paper 10 at 23, emphasis added) confirms ther