`Paper No. 15
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`____________________
`
`Case No. IPR2017-01993
`Patent No. 9,414,199
`____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`

`

`IPR2017-01993 (Patent No. 9,414,199)
`TABLE OF CONTENTS
`
`
`B.
`
`C.
`
`I.
`II.
`
`Page
`INTRODUCTION .......................................................................................... 1
`CLAIM CONSTRUCTION: THE PLAIN MEANING OF “WITHIN
`THE PREDETERMINED MAXIMUM AMOUNT OF TIME” DOES
`NOT EXCLUDE A FUTURE TIME PERIOD ............................................. 3
`A.
`Patent Owner’s Construction Improperly Imports A Limitation
`From One Embodiment And Excludes Another Embodiment ............ 5
`Patent Owner’s Construction Contradicts The Prosecution
`History .................................................................................................. 8
`Patent Owner Relies On Unsupported Attorney Arguments
`Untethered To The Record Evidence ................................................. 11
`III. GROUNDS 1 AND 2: BLEGEN, MONTEVERDE, AND SCHMIDT
`RENDER OBVIOUS CLAIMS 1-5 UNDER THE CORRECT
`CLAIM INTERPRETATION ...................................................................... 13
`IV. GROUND 3: CHARLEBOIS AND GILLIES RENDER OBVIOUS
`CLAIMS 1-5 UNDER EITHER CLAIM INTERPRETATION .................. 14
`A.
`“Within The Predetermined Maximum Amount of Time” ................ 14
`1.
`Gillies Discloses A Future Time Window ............................... 14
`2.
`Gillies Also Discloses A Time Window Starting At The
`Time Of Prediction................................................................... 15
`Patent Owner Fails To Distinguish Gillies .............................. 16
`3.
`Patent Owner Fails To Distinguish The Charlebois-Gillies
`Combination On Other Grounds ........................................................ 19
`1.
`The “Predicting … With At Least The Predetermined
`Likelihood” Limitation ............................................................ 19
`The “Location” Limitation ....................................................... 21
`2.
`V. GROUND 4: CHARLEBOIS, GILLIES, AND FROLOFF RENDER
`OBVIOUS CLAIMS 1-5 .............................................................................. 22
`VI. CONCLUSION ............................................................................................. 25
`
`
`B.
`
`i
`
`

`

`IPR2017-01993 (Patent No. 9,414,199)
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases
`Acumed LLC v. Stryker Corp.,
`483 F.3d 800 (Fed. Cir. 2007) .............................................................................. 5
`Elcommerce.com, Inc. v. SAP AG,
`745 F.3d 490, vacated on other grounds by 564 Fed. App’x 599 (Fed.
`Cir. 2014) .................................................................................................... 6-7, 12
`Genentech, Inc. v. Chiron Corp.,
`112 F.3d 495 (Fed. Cir. 1997) ..................................................................... 11, 17
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) .......................................................................... 12
`In re Gleave,
`560 F.3d 1331 (Fed. Cir. 2009) .......................................................................... 21
`In re Natures Remedies, Ltd.,
`315 Fed. App’x. 300 (Fed. Cir. 2009) ................................................................ 12
`Lockwood v. Am. Airlines,
`107 F.3d 1565 (Fed. Cir. 1997) .......................................................................... 19
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .......................................................................... 10
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013 (Fed. Cir. 2017) ............................................................................ 3
`Oatey Co. v. IPS Corp.,
`514 F.3d 1271 (Fed. Cir. 2008) ............................................................................ 8
`Omega Eng’g, Inc. v. Raytek Corp.,
`334 F.3d 1314 (Fed. Cir. 2003) .......................................................................... 10
`Phillip v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ................................................................... 4, 5, 8
`
`ii
`
`

`

`IPR2017-01993 (Patent No. 9,414,199)
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`
`Spectra–Physics, Inc. v. Coherent, Inc.,
`827 F.2d 1524 (Fed. Cir. 1987) .......................................................................... 18
`Rules
`37 C.F.R. 42.100(b) ................................................................................................. 13
`
`
`
`iii
`
`

`

`
`
`Ex. No.
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`IPR2017-01993 (Patent No. 9,414,199)
`
`UPDATED EXHIBIT LIST
`
`Description
`
`U.S. Patent No. 9,414,199 (“the ’199 Patent”)
`
`Prosecution File History of U.S. Patent No. 9,414,199
`
`Declaration of Dr. Gabriel Robins
`
`U.S. Patent Publication No. 2010/0082397 (“Blegen”)
`
`U.S. Patent Publication No. 2012/0259705
`(“Monteverde”)
`
`U.S. Patent Publication No. 2012/0226554 (“Schmidt”)
`
`U.S. Patent Publication No. 2009/0125321
`(“Charlebois”)
`
`U.S. Patent Publication No. 2010/0151882 (“Gillies”)
`
`U.S. Patent Publication No. 2012/0089465 (“Froloff”)
`
`Chawla, Robins, and Zhang, “Object Localization Using
`RFID,” IEEE International Symposium on Wireless
`Pervasive Computing - ISWPC 2010, Italy, May 2010,
`pp. 301-306
`
`Chawla, Robins, and Zhang, “Efficient RFID-Based
`Mobile Object Localization,” IEEE International
`Conference on Wireless and Mobile Computing,
`Networking and Communications, Canada, October,
`2010, pp. 683-690
`
`Chawla and Robins, “An RFID-based object localization
`framework,” Int. J. Radio Frequency Identification
`Technology and Applications, Vol. 3, 2011
`
`Previously
`Submitted
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`iv
`
`

`

`IPR2017-01993 (Patent No. 9,414,199)
`
`Strang et al., “Location- and Context-Awareness,” First
`International Workshop on Location- and Context-
`Awareness, Germany, May 2005
`
`Hazas et al, “Location- and Context-Awareness,”
`Second International Workshop on Location- and
`Context-Awareness, Ireland, May 2006
`
`Hightower et al., “Location- and Context-Awareness,”
`Third International Workshop on Location- and
`Context-Awareness, Ireland, Sep. 2007
`
`Curriculum Vitae of Dr. Gabriel Robins
`
`Declaration of Luann L. Simmons In Support of
`Petitioner's Motion for Pro Hac Vice Admission
`Pursuant to 37 C.F.R. §42.10(c)
`
`U.S. Patent Publication No. 2013/0036165 (“Tseng”)
`
`Merriam Webster’s Collegiate Dictionary (10th Ed.
`1998)
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`
`
`
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`
`v
`
`

`

`
`I.
`
`IPR2017-01993 (Patent No. 9,414,199)
`
`INTRODUCTION
`Petitioner Apple Inc. submits this Reply to Patent Owner’s Response (Paper
`
`No. 14, “Resp.”). Patent Owner’s arguments for patentability improperly imports a
`
`nonexistent limitation from the specification into the claims. The dispute in this
`
`case centers on the claim limitation: “predicting whether the user device will be at
`
`any of the one or more predetermined locations within the predetermined
`
`maximum amount of time ….” The parties agree that this limitation should be
`
`afforded its plain and ordinary meaning. Nevertheless, Patent Owner urges the
`
`Board to adopt a narrow construction that limits the “predicting” step to a time
`
`duration starting from the present time. Petitioner, on the other hand, contends that
`
`the claims do not place such a temporal limit on the start time, and that the
`
`“predetermined maximum amount of time” can refer to a time window starting in
`
`the future.
`
`Petitioner’s position is supported by the claim language, the patent
`
`specification, the prosecution history, and unrebutted expert testimony. Patent
`
`Owner’s narrow construction, on the other hand, would require the Board to import
`
`a limitation from one embodiment of the specification at the expense of another
`
`embodiment, and to define the claim term in a manner directly contradictory to
`
`statements made by the applicant during prosecution. Thus, for the reasons stated
`
`1
`
`

`

`
`below, the Board should maintain its preliminary interpretation from the Institution
`
`IPR2017-01993 (Patent No. 9,414,199)
`
`Decision and decline to adopt Patent Owner’s unreasonably narrow construction.
`
`If the Board maintains its interpretation of the “predicting” step from the
`
`Institution Decision, it is undisputed that all challenged claims (Claims 1-5) are
`
`invalid based on Grounds 1 and 2 (Claims 1-2 are obvious over Blegen alone or in
`
`view of Monteverde, and Claims 3-5 are obvious over Blegen, Monteverde, and
`
`Schmidt). Each of Patent Owner’s arguments regarding Grounds 1 and 2 is
`
`premised on its narrow and incorrect claim construction.
`
`If the Board accepts Patent Owner’s construction, all challenged claims are
`
`still invalid over either Ground 3 (Claims 1-5 are obvious over Charlebois and
`
`Gillies) or Ground 4 (Claims 1-5 are obvious over Charlebois, Gillies, and
`
`Froloff). As the Board found in the Institution Decision, Gillies describes
`
`predicting the user’s likely location in a time window that can start in the past,
`
`present, or future. Similarly, Froloff discloses location prediction using a “time
`
`radius” that starts from the present. Thus, under any proposed interpretation of the
`
`“predetermined maximum amount of time” limitation, all claims are invalid.
`
`Accordingly, for the reasons stated in the Petition and in this Reply,
`
`Petitioner respectfully requests cancellation of Claims 1-5 of U.S. Patent No.
`
`9,414,199 (the “’199 Patent”).
`
`2
`
`

`

`IPR2017-01993 (Patent No. 9,414,199)
`
`
`II. CLAIM CONSTRUCTION: THE PLAIN MEANING OF “WITHIN
`THE PREDETERMINED MAXIMUM AMOUNT OF TIME” DOES
`NOT EXCLUDE A FUTURE TIME PERIOD
`Only claim terms “that are in controversy” must be construed and “only to
`
`the extent necessary to resolve the controversy.” Nidec Motor Corp. v. Zhongshan
`
`Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). In this case, there
`
`is only one claim term in dispute—“within the predetermined maximum amount of
`
`time.” Resp., 6-14. And the only dispute for this term is whether it excludes a
`
`time period starting in the future.1 The record evidence supports Petitioner’s
`
`position that it does not.
`
`Patent Owner agrees that the term “within the predetermined maximum
`
`amount of time” should be afforded its plain and ordinary meaning. Resp., 6. Yet
`
`Patent Owner proffers an explicit construction of the term as “a predetermined
`
`maximum quantity of time starting from when the ‘predicting’ calculation is
`
`executed.” Id., 14 (emphasis added). Specifically, Patent Owner argues that the
`
`word “within” limits the term to a “specified duration starting from present.” Id.,
`
`6-7.
`
`
`1 Petitioner agrees with the Board’s decision to construe “amount” as “the total
`
`number or quantity” and contends that this construction does not impact any of the
`
`grounds presented in the Petition.
`
`3
`
`

`

`
`
`IPR2017-01993 (Patent No. 9,414,199)
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`The Board has already rejected Patent Owner’s position in the Institution
`
`Decision. Analyzing the surrounding claim language, the Board explained that
`
`“[t]he claim makes no reference to the present or current time.” Institution
`
`Decision (Paper No. 10), 8. “Rather, the predicting and performing steps employ
`
`the future tense.” Id. (analyzing the “will be” phrase of Claim 1). The Board’s
`
`analysis of the claim language properly accounts for “the context in which a term
`
`is used in the asserted claim.” Phillip v. AWH Corp., 415 F.3d 1303, 1314 (Fed.
`
`Cir. 2005).2 As the Board correctly concluded, nothing in the claim language
`
`limits the start time to the present or current time. For reasons set forth below,
`
`Patent Owner’s narrow construction should be rejected for violating several basic
`
`rules of claim construction.
`
`
`2 While the Board’s current rules require application of the Broadest Reasonable
`
`Interpretation (“BRI”) standard, Phillips is instructive here because the BRI
`
`standard requires a construction that is no narrower than the Phillips construction.
`
`Thus, Petitioner’s arguments in Section II demonstrate that it would be improper to
`
`read the claim term narrowly, as proposed by Patent Owner, under either the
`
`Phillips standard or the broader BRI standard.
`
`4
`
`

`

`
`
`IPR2017-01993 (Patent No. 9,414,199)
`
`A.
`
`Patent Owner’s Construction Improperly Imports A Limitation
`From One Embodiment And Excludes Another Embodiment
`Patent Owner commits the “cardinal sin[] of patent law” by importing into
`
`its construction a limitation from one of two disclosed embodiments in the
`
`specification. See Phillips, 415 F.3d at 1320. Specifically, Patent Owner cites
`
`portions of the specification discussing a time duration that starts from the present
`
`time. Resp., 7-10. But Patent Owner fails to identify any statement in the
`
`specification that limits the claim scope to this embodiment. See id. In the
`
`absence of a clear definition or an unambiguous disavowal, it is improper to
`
`“import a feature from a preferred embodiment into the claims.” Acumed LLC v.
`
`Stryker Corp., 483 F.3d 800, 805 (Fed. Cir. 2007).
`
`As explained in the Petition, the specification discloses two embodiments of
`
`“the predetermined maximum amount of time”: (1) a time duration starting from
`
`the current time and (2) a time window in the future. Petition, 5; Ex-1003, ¶¶44-
`
`45, 73-77, 95-97. In the context of its “department store” example, the
`
`specification explains that a store manager can request the transmission of
`
`advertisements to users who are likely to visit a “competition of the department
`
`store within one 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.” Ex-1001, 1:52-64. These two embodiments are alternatives: one
`
`uses a one-hour time duration that starts from the present, and the other uses a time
`
`5
`
`

`

`
`period in the future. Similarly, for the “restaurant” example, the specification
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`IPR2017-01993 (Patent No. 9,414,199)
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`explains that the “predetermined maximum amount of time” can be specified as
`
`“week days from 11:30 am to 2:00 pm,” which include time windows in the future.
`
`Id., 2:17-27.
`
`Nothing in the specification limits the claimed invention to either
`
`embodiment. To justify its narrow construction, Patent Owner attempts to
`
`combine the patent’s two embodiments into one using an explanation that appears
`
`nowhere in the specification. Resp., 10 n.8. Patent Owner argues that, in the
`
`restaurant example, the “‘predicting’ calculation … 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.” Id. According to Patent Owner, because the disclosed system can
`
`only predict user location over a period starting from the time of prediction, the
`
`prediction calculation would have to be scheduled and repeated precisely at 11:30
`
`am every day. See id. This scheduling feature is not disclosed in the specification,
`
`and Patent Owner does not cite any evidence demonstrating why a skilled artisan
`
`would have read the patent’s disclosure in this manner. Because “[a]ttorney
`
`argument is not evidence,” Patent Owner’s unsupported argument has no bearing
`
`on claim construction and should be disregarded. See Elcommerce.com, Inc. v.
`
`6
`
`

`

`
`SAP AG, 745 F.3d 490, 503, 506, vacated on other grounds by 564 Fed. App’x 599
`
`IPR2017-01993 (Patent No. 9,414,199)
`
`(Fed. Cir. 2014).
`
`Other parts of the specification confirm that the “predetermined maximum
`
`amount of time” can cover a future time window. See e.g., Ex-1001, 4:44-47 (“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.”)
`
`(emphasis added); 5:16-19 (“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.”) (emphasis added). Patent Owner’s attempt
`
`to explain away these passages relies on circular logic. See Resp., 12-13. Starting
`
`with the premise that the word “within” limits the starting time to the present time,
`
`Patent Owner argues that these “in the future” passages indicate only that the user
`
`will be at one or more predetermined locations “after that duration has already
`
`started ….” See id. But the fact that the specification and claims use future tense
`
`to discuss the time window as a whole demonstrates that the word “within” does
`
`not require a concurrent starting time, but can encompass a time window starting in
`
`the future. See Institution Decision, 8-9; Petition, 17, 26-27, 56-57; Ex-1003,
`
`¶¶70, 73, 160. Nothing in the specification limits the prediction of user location to
`
`only a time duration that starts in the present. To the contrary, the patent
`
`specification explicitly references time windows that could occur “in the future,”
`
`7
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`

`

`
`such as “during hours at which the new department store is open” or “week days
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`IPR2017-01993 (Patent No. 9,414,199)
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`from 11:30 am to 2:00 pm.” Ex-1001, 1:52-64, 2:17-27, 4:44-47.
`
`Thus, Patent Owner’s proposed construction violates two basic rules of
`
`claim interpretation: (1) it imports a limitation from a disclosed embodiment and
`
`(2) it excludes another embodiment. See Phillips, 415 F.3d at 1320; Oatey Co. v.
`
`IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret
`
`claim terms in a way that excludes embodiments disclosed in the specification.”).
`
`B.
`
`Patent Owner’s Construction Contradicts The Prosecution
`History
`To distinguish prior art cited in the Petition, Patent Owner argues that the
`
`term “within predetermined maximum amount of time” limits the claims to a time
`
`duration extending from the “current” time when prediction is performed. Resp.,
`
`6-9. During prosecution, however, Uniloc took the opposite position, stating
`
`unequivocally that the claim scope encompasses “a time window in which a device
`
`is predicted to be somewhere in the future.” Ex-1002, 31 (Appeal Reply dated
`
`1/19/16, 5) (emphasis added).
`
`In the Final Office Action issued during prosecution, the Examiner rejected
`
`all pending claims as being obvious over Tseng (US 2013/0036165, Ex-1018) in
`
`view of Nasu (US2005/0249175). Ex-1002, 72-74. The Examiner stated that
`
`Tseng disclosed the “predetermined maximum amount of time” limitation. Id., 72
`
`(citing Ex-1018, ¶50). Uniloc appealed the Examiner’s rejection to the Board. Id.,
`
`8
`
`

`

`
`46-56, 27-33. In its Reply Brief, Uniloc argued that Tseng was deficient because it
`
`IPR2017-01993 (Patent No. 9,414,199)
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`disclosed only a time window starting from the current time, not a time window in
`
`the future as required by the claims. Id., 31. Specifically, Uniloc stated:
`
`The Examiner’s Answer cites a teaching in Tseng of
`“predicting whether the user device will be at any of the one or
`more predetermined locations within the predetermined
`maximum amount of time” at pages 4-5 …. However, Tseng
`describes clearly in paragraph [0053] that the time window is
`evaluated using the current time. Applicant finds no evidence
`in Tseng of any appreciation for predicting a future state of a
`device. All factors mentioned in paragraph [0053] of Tseng
`appear to pertain to the current state of the device: current
`location, current time, the user’s current interests, etc. 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.
`
`Id. (emphasis added). Based in part on Tseng’s alleged failure to disclose “a time
`
`window … in the future,” Uniloc argued that the pending claims were allowable
`
`over the prior art. Id., 31-32. In other words, Uniloc attempted to distinguish
`
`Tseng by arguing that the claims cover only “a time window … in the future,” not
`
`9
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`

`

`
`a “time window … using the current time.” See id.3
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`IPR2017-01993 (Patent No. 9,414,199)
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`Uniloc’s prosecution statements constitute a clear admission that the scope
`
`of Claim 1 must encompass “a time window … in the future.” Ex-1002, 31. To
`
`“promote[] the public notice function of the intrinsic evidence and protect[] the
`
`public’s reliance on definitive statements made during prosecution,” a patentee
`
`must be held to its description of the claimed invention during prosecution.
`
`Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed. Cir. 2003); see also
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (the
`
`Board should “consult the patent’s prosecution history” in interpreting claim
`
`language under the BRI standard). Having attempted to distinguish prior art for
`
`allegedly failing to disclose “a time window … in the future,” Patent Owner cannot
`
`now argue that the claims exclude a prediction method that uses a future time
`
`window. Accordingly, Patent Owner’s narrow construction should be rejected for
`
`directly contradicting statements made during prosecution.
`
`
`3 The Board did not reach this issue and resolved the appeal on another ground.
`
`Ex-1002, 18-24. Uniloc’s prosecution arguments were factually incorrect because
`
`Tseng discloses both a current time window and a future time window. See id., 43-
`
`44; Ex-1018, [0050]-[0051], [0053].
`
`10
`
`

`

`
`
`IPR2017-01993 (Patent No. 9,414,199)
`
`C.
`
`Patent Owner Relies On Unsupported Attorney Arguments
`Untethered To The Record Evidence
`Patent Owner relies on unsupported attorney arguments to justify its narrow
`
`construction. For example, Patent Owner uses a restaurant reservation example to
`
`argue that the “plain and ordinary meaning” of “within” requires starting from the
`
`present time. Resp., 7 (arguing that if a restaurant host tells a patron that food will
`
`be ready “within” 30 minutes, the patron would know that 30 minutes starts from
`
`the current time). This example is irrelevant to the claim construction question
`
`before the Board.
`
`First, Patent Owner’s example treats Claim 1 as a close-ended claim that
`
`precludes specifying a start time. But the transitional phrase of “comprising” used
`
`by Claim 1 of the ’199 Patent indicates “that the named elements are essential, but
`
`other elements may be added and still form a construct within the scope of the
`
`claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
`
`Nothing in the claim precludes specifying a starting time for a future time window.
`
`Using Patent Owner’s own example, there is no reason why the claims cannot
`
`cover a predetermined time window “within 30 minutes starting at 6:00 pm the
`
`next day.” See Resp., 7.
`
`Second, there is no evidence in the record that the word “within” requires a
`
`time duration starting from the present. See, e.g., Ex-1019, 1359 (dictionary
`
`definition of “within”). It is common to use “within” to describe a future time
`
`11
`
`

`

`
`window. For example, a runner may announce that he or she wants to finish a
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`IPR2017-01993 (Patent No. 9,414,199)
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`marathon within three hours; that statement does not indicate that the runner will
`
`begin immediately. When an events promoter states that he or she expects the
`
`tickets to the Super Bowl to sell out within minutes, the statement is again referring
`
`to a future time period. These common usages of “within” do not require a time
`
`duration starting from the present.
`
`Third and most importantly, Patent Owner’s attorney arguments reflect only
`
`how Patent Owner’s counsel reads the claims in a lay context. They do not
`
`constitute evidence of how a person of ordinary skill in the art would have
`
`understood the claim term in the context of the patent. See, e.g., Elcommerce.com,
`
`745 F.3d at 506 (“[a]ttorney argument is not evidence”); In re Natures Remedies,
`
`Ltd., 315 Fed. App’x. 300, 305 (Fed. Cir. 2009) (“Attorney argument … cannot
`
`take the place of record evidence.”). Claims must be viewed “in light of the
`
`specification as it would be interpreted by one of ordinary skill in the art.” In re
`
`Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (emphasis
`
`added). The only such evidence in the record is the unrebutted testimony from
`
`Petitioner’s expert, Dr. Robins. See, e.g., Ex-1003, ¶¶45, 73-77, 95-97, 160.
`
`Dr. Robins explained that an embodiment of the “within the predetermined
`
`maximum amount of time” limitation is a future time window of “‘11:30 am to
`
`2:00 pm’—which specifies the maximum amount of time … [for] a lunch offer.”
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`12
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`Id., ¶45 (citing Ex-1001, 2:17-27). Dr. Robins then compared this embodiment to
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`similar teachings from prior art references. See, e.g., id., ¶97. Patent Owner did
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`not cross examine Dr. Robins, and did not present any rebuttal expert testimony.
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`Thus, the only evidence in the record of how a skilled person would have
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`understood the claim term in view of the specification is the expert testimony
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`presented by Petitioner.
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`The claim language in dispute must be “given its broadest reasonable
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`construction in light of the specification.” 37 C.F.R. 42.100(b) (emphasis added).
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`Patent Owner fails to explain how a “broadest” construction could exclude a
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`disclosed embodiment and directly contradict statements from the file history.
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`Thus, Patent Owner’s narrow construction should be rejected. As long as the
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`“within the predetermined maximum amount of time” term does not exclude the
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`future time window embodiment described by the specification, Petitioner
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`contends that no explicit construction is required to adjudicate the invalidity
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`grounds presented in the Petition.
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`III. GROUNDS 1 AND 2: BLEGEN, MONTEVERDE, AND SCHMIDT
`RENDER OBVIOUS CLAIMS 1-5 UNDER THE CORRECT CLAIM
`INTERPRETATION
`The claim construction dispute set forth in Section II is dispositive with
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`respect to Grounds 1 and 2. For these grounds, Patent Owner’s only argument is
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`that the disclosed time period starts in the future, not from the present time (or the
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`time of the “predicting” step). Resp., 14-19. This argument fails because, as
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`explained above, the term “within the predetermined maximum amount of time”
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`does not exclude a time window starting in the future after completion of the
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`“predicting” step. Under the correct interpretation of the claim language, there is
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`no dispute that (1) Blegen, alone or in view of Monteverde, render obvious Claim
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`1 and 2, and (2) Blegen, alone or in view of Monteverde, and further in view of
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`Schmidt render obvious Claims 3-5. Petition, 8-40; Institution Decision, 18-28.
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`IV. GROUND 3: CHARLEBOIS AND GILLIES RENDER OBVIOUS
`CLAIMS 1-5 UNDER EITHER CLAIM INTERPRETATION
`A.
`“Within The Predetermined Maximum Amount of Time”
`The Charlebois-Gillies combination discloses the “within the predetermined
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`maximum amount of time” limitation under either Patent Owner’s narrow
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`construction, or the Board’s and Petitioner’s correct interpretation.
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`1. Gillies Discloses A Future Time Window
`Patent Owner concedes that Gillies discloses a “predicting” step that uses a
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`future time window. Resp., 23-24 (acknowledging that Gillies discloses a “time
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`period (D1) … defined to start at a future time on an upcoming Saturday” having a
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`“9:00 am start time and 6:00 pm end time”). Accordingly, there is no dispute that
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`the Charlebois-Gillies combination discloses the “time” limitation under the
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`correct claim interpretation.
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`2. Gillies Also Discloses A Time Window Starting At The
`Time Of Prediction
`Gillies discloses that its time period can be specified as a duration extending
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`from the present. Petition, 56-57 (citing Ex-1008, [0032], [0037]; Ex-1003, ¶160);
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`see also Petition, 60-61.
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`Specifically, Gillies states that its “time period may be in the past, present,
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`or future.” Ex-1008, [0032] (emphasis added). Gillies discloses an equation for
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`calculating a “location time criteria” using a set of N target areas (Ln), time periods
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`(Dn), and presence or absence requirements (PAn). Id., [0033]; Institution
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`Decision, 30. Each time period (Dn) is “defined by a start time TSn and an end
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`time TEn,” wherein “TSn and TEn may each be defined in the past, present, or
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`future ….” Ex-1008, [0037] (emphasis added). An advertisement is transmitted to
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`the user when the “location time criteria” (or LTC) matches or exceeds a
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`predetermined threshold. Id., [0053]-[0054]; Petition, 60-61.
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`When the start time (TSn) is defined in the “present,” as explicitly taught by
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`Gillies, the “location time criteria” calculation uses a time duration that starts at the
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`time of calculation. Ex-1008, [0037]; Petition, 56-57.4 The “predetermined
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`maximum amount of time” would simply be the difference between the present
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`time (TSn) and end time (TEn). Id. Accordingly, as explained by Dr. Robins, “a
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`POSITA would have understood from Gillies’ disclosure that its time period can
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`be specified as a duration extending from the present.” Ex-1003, ¶160; see also
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`Institution Decision, 33-34 (finding that a skilled person would be able to
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`determine the quantity of time between the start and end times using “common
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`knowledge and basic math”).
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`Thus, even if the Board construes the claims as limited to prediction using a
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`time window starting from the present, as proposed by Patent Owner, Gillies
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`discloses the “within the predetermined maximum amount of time” limitation
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`under this narrow construction.
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`3.
`Patent Owner Fails To Distinguish Gillies
`Patent Owner attempts to distinguish Gillies’ teaching of a present time
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`duration. See Resp., 24-27. These arguments are unsupported.
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`4 The “present” time disclosed by Gillies is the time of the “predicting” step
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`because Gillies discloses using the “location time criteria” calculation to determine
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`the probability that a user will be at a predetermined location within the time
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`period. Petition, 43 (citing Ex-1008, [0030], Fig. 8, [0119]-[0124]).
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`First, Patent Owner argues that Petitioner “waived” its reliance on Gillies by
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`discussing the “location time criterion” calculation in the context of the
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`“retrieving” step, not for the “predicting” step. Resp., 24-25. This argument is
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`baseless because it ignores the fact that the “predicting” step’s “predetermined
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`maximum amount of time” limitation finds its antecedent basis in the “retrieving”
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`step. See Ex-1001, Claim 1. The claimed method first retrieves data associated
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`with a time window (whether present or future), then performs prediction using
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`that time window. See id. Accordingly, it is entirely appropriate for Petitioner to
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`first analyze the “predetermined maximum amount of time” limitation in the
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`context of the “retrieving” step before addressing the “predicting” step. Moreover,
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`in addressing the “predicting” step, the Petition explicitly points to Gillies’
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`disclosure of the “location time criteria” calculation, and incorporates by reference
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`the analysis for the “retrieving” step. Petition, 60-61 (citing to Ex-1008, [0053]
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`and “Section VIII.C.4.b”). Patent Owner’s “waiver” argument is therefore
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`unfounded.
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`Second, Patent Owner cannot distinguish Gillies based on its disclosure of
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`multiple time periods. See Resp., 26. Claim 1 of the ’199 Patent is open ended
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`and thus not limited to a single time period. See Genentech, 112 F.3d at 501
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`(“‘Comprising’ is a term of art used in claim language which means that the named
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`elements are essential, but other elements may be added and still form a construct
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`within the scope of the cla