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 PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`I.
`II.
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`INTRODUCTION
`THE ’199 PATENT
`Effective Filing Date of the ’199 Patent
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`Overview of the ’199 Patent
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`IV. THE PETITION IS IMPERMISSIBLY REDUNDANT
`V.
`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
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`1.
`“predetermined likelihood”
`2.
`“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 is deficient
`3.
`Charlebois is deficient
`4.
`Gilles is deficient
`5.
`Froloff is deficient
`No Prima Facie Obviousness for Dependent Claims 2‒5
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`VII. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`VIII. CONCLUSION
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`Table of Contents
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`IPR2017-1993
`U.S. Patent 9,414,199
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc USA, Inc. and
`Uniloc Luxembourg S.A. (the “Patent Owner” or “Uniloc”) submit Uniloc’s
`Preliminary Response to the Petition for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 9,414,199 (“the ’199 patent” or “Ex. 1001”) filed by
`Apple Inc. (“Petitioner”) in IPR2017-1993.
`In view of the reasons presented herein, the Petition should be denied in its
`entirety as failing to meet the threshold burden of proving there is a reasonable
`likelihood that at least one challenged claim is unpatentable. As a procedural
`deficiency, the Petition should be denied as presenting a virtually limitless number
`of possible redundant challenges against claims 1-5, without providing the requisite
`justification for such redundancy.
`Notwithstanding the redundancies in the Petition, and because the Board has
`yet to decide which grounds it intends to dismiss as impermissibly redundant, Uniloc
`addresses each redundant ground and provides specific examples of how Petitioner
`failed to establish that it is more likely than not that it would prevail with respect to
`at least one of the challenged ’199 Patent claims. Accordingly, Uniloc respectfully
`requests that the Board decline institution of trial on claims 1–5 of the ’199 Patent.
`
`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
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`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.
` 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
`
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`1 All citations to Exhibit 1002 (“EX1002”) are made to the page numbering in the
`footer added by Petitioner.
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`device by offering an alternative trip the user can take rather than the trip typically
`taken in the current context.” Id.
`The ’199 patent issued with one independent claim, copied below for the
`convenience of the Board:
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`1. A method for delivering information to two or more user
`devices, the method comprising:
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`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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`wherein at least one of the actions includes delivering the
`information to the user device.
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`IV. THE PETITION IS IMPERMISSIBLY REDUNDANT
`The Board has repeatedly held that multiple grounds for unpatentability for
`the same claim will not be considered unless the petition itself explains the relative
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`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
`Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012). Redundant
`grounds place a significant burden on both the Board and the Uniloc, causing
`unnecessary delay, compounding costs to all parties involved, and compromising the
`ability to complete review within the statutory deadline. see Liberty Mutual, Paper
`No. 7 at 2; 37 C.F.R. § 42.1(b); 37 C.F.R. § 42.208. As such, analyzing the Petition
`and eliminating redundant grounds streamlines the proceeding. Idle Free Sys., Inc.
`v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4–5 (PTAB June 11, 2013); Liberty
`Mut., CBM2012-00003, Paper 7 at 2. The burden is especially onerous when the
`redundancies are multiplied as they are in the present Petition.
`The Petition submits twelve different references and relies on a virtually
`limitless number of possible combinations in presenting its redundant challenges.
`See Pet. at iii-iv (List of Exhibits).2 Petitioner’s gamesmanship approach of slinging
`allegedly equally-sufficient redundant challenges, like spaghetti against the wall in
`the hope that something might stick, falls squarely within the Board’s regulations
`and accompanying case law admonishing such unjustified redundancy.
`Petition presents multiple instances of both horizontal and vertical
`redundancies; and the analysis for both types focuses on whether the petitioner has
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`2 In presenting its obviousness-based changes, Petitioner cites to only six of the
`twelve alleged prior art references submitted as exhibits. This practice runs afoul of
`the Board’s instruction that “petitioners, ‘should avoid submitting a repository of all
`the information that a judge could possibly consider, and instead focus on concise,
`well-organized, easy-to-follow arguments supported by readily identifiable evidence
`of record.’ The Petition widely misses that mark.” Apple, Inc. v. ContentGuard
`Holdings, Inc., IPR2015-00356, at 18-19, citing 77 Fed. Reg. at 48,763.
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`articulated the relative strength and weaknesses of each ground. EMC Corp. v.
`PersonalWeb Techs., LLC, IPR2013-00087, Paper 25 at 3–4 (PTAB June 5, 2013).
`Petitioner makes no attempt to differentiate the redundant grounds in terms of their
`relative strengths and weaknesses.
`The Petition portrays Ground 1 and 2 as presenting a single obviousness
`challenge addressing claims 1-5 collectively. However, closer scrutiny of the
`arguments presented in Grounds 1 and 2 confirms the Petition actually presents at
`least the following redundant challenges against independent claim 1 (and hence its
`dependent claims): (1) an anticipation challenge relying on the primary reference
`(Blengen) alone; (2) an anticipation challenge relying on the secondary reference
`(Monteverde) alone; and (3+) a virtually
`limitless number of possible
`“combinations” where the teachings of the primary and secondary references are
`presented as alternative theories to one another.
`This impermissible approach is unmasked by repeated statements in the
`Petition alleging the equally sufficient disclosure in both the “primary” and
`“secondary” references. See, e.g., Pet. 22 (“To the extent Patent Owner argues that
`Blegen does not disclose any of the limitations—such as [1a.ii]—those limitations
`are obvious in view of Monteverde.”) (emphasis added, citations omitted); id. at 14
`(“Monteverde also discloses the preamble of Claim 1.”); id. at 23 (Monteverde
`discloses retrieving advertisement data associated with the parameters recited in
`Element [1a].”), etc. The Petition fails to justify such overt redundancy by explicitly
`identifying either Blegen or Monteverde as the stronger reference with respect to any
`particular limitation.
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`The Board in Eizo Corp. v. Barco N.V.3 flatly rejected a similar attempt to
`hedge bets and unnecessarily multiply the work of both the Board and the Uniloc.
`There, there Board found insufficient the petitioner’s “conclusory assertion” that
`“[t]o the extent [the first prior art reference] may not explicitly teach” the limitation,
`the second prior art reference “explicitly teaches this limitation.” The Board
`explained that “such an assertion fails to resolve the exact differences sought to be
`derived from” the second prior art reference. Id. Here, the same reasoning proscribes
`Petitioner’s attempt to disguise two alternative and admittedly redundant
`anticipation theories as an omnibus obviousness theory.
`Petitioner multiples its procedural error by further presenting Grounds 3 and
`4 as facially-redundant theories to Grounds 1 and 2. The only alleged explanation
`for the horizontal redundancy of Ground 3 (challenging claims 1-5) relative to
`Grounds 1 and 2 (collectively challenging claims 1-5) is that Ground 3 relies on a
`“different set” of references. Pet. 71. Rather than explain why the “set” of references
`in Grounds 1 and 2 more closely satisfies any claim limitation at issue in some
`respects than the “different set” in Ground 3, and vice versa, Petitioner identifies
`certain limitations as allegedly equally disclosed by the redundant combinations
`proposed. Id. This is admittedly impermissible horizontal redundancy. Ford Motor
`Co. v. Paice LLC et al., No. IPR2014-00570 (PTAB Nov. 26, 2014), Paper 17
`(“[T]he proper focus of a challenge based on multiple grounds is not simply whether
`a difference exists between the grounds. Rather, the petitioner must explain some
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`3 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
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`meaningful advantage for proceeding on multiple grounds in terms of their variant
`strengths and weaknesses as applied to the challenged claim.”).
`The cryptic statement in the Petition that “the grounds cite different references
`that each provides stronger disclosure with respect to at least certain claim elements”
`is unavailing. Pet. 71. The Petition does not identify one ground as being stronger in
`any particular respect relative to another ground. At most, the Petition merely argues
`that Grounds 1 and 2 rely on a primary reference (Blegen) as allegedly disclosing a
`limitation, while redundant Ground 3 relies on a secondary reference (Gillies) for
`the same limitation. Id. The reliance on a primary reference in one ground and a
`secondary reference in another ground is not an explanation of the relative strength
`and weakness between those facially-redundant grounds. On the contrary, the
`assertion that the respective disclosures relied upon in those grounds are equally
`sufficient is a party admission that the redundancy is unjustified.
`Ground 3 should also be denied as internally presenting vertically redundant
`challenges. In Ground 3, the Petition argues the primary reference (Charlebois),
`renders obvious each limitation of independent claim 1. The secondary reference
`(Gilles) is then redundantly offered as an allegedly independently effective
`alternative for each limitation of independent claim 1. Neither reference is compared
`relative to the other has having any relative strengths or weaknesses. This is
`precisely the type of vertical redundancy admonished by the Board in Liberty Mut.
`and Eizo Corp.
`Ground 4 is presented as a textbook vertically-redundant challenge with
`respect to Ground 3—i.e., it relies on the same combination of references and then
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`adds a third reference (Froloff) as a fallback position (for one limitation only). While
`Petitioner alleges Ground 4 addresses the claims in the event that Patent Owner
`proposes a particular construction for the term “predetermined maximum amount of
`time,” Petitioner does not even allege, much less explain with specificity, that any
`of the multiple redundant challenges presented in Grounds 1-3 would somehow be
`weaker in any respect under such a construction. Further, Petitioner at least tacitly
`admits Ground 4 is cumulative and unnecessary if Patent Owner does not adopt
`Petitioner’s speculative “narrow” construction for the term “predetermined
`maximum amount of time.”4
`Petitioner clearly is gaming the system by attempting to play the odds with an
`unworkable number of redundant grounds, which Petitioner must have known would
`severely prejudice Uniloc’s ability to respond. Had Petitioner truly had a rational
`basis to submit around a half-dozen challenges against claim 1 alone, surely it would
`have carefully articulated the requisite bidirectional explanation of relative strengths
`and weaknesses of each. Instead, Petitioner merely threw in a paragraph at the end
`of its Petition, as an apparent afterthought, and in the hopes that such de minimis
`effort would be enough to force Uniloc and the Board to then sort through the
`redundant grounds and determine, in the absence of any explanation from Petitioner,
`the relative strengths and weaknesses of each. This is precisely the wasteful and
`harassing approach repeatedly admonished by the Board in Liberty Mut. and its
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`4 Patent Owner does not presently seek any particular construction of the term
`“predetermined maximum amount of time” apart from the broadest reasonable
`interpretation in light of the specification.
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`progeny. Because the Petition squarely invokes § 325(d), the Board should limit the
`substantive analysis to one of the myriad of redundant grounds (e.g., the one
`Petitioner chose to raise first, which is based primarily—if not exclusively—on
`Blegen).
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`V.
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`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Notwithstanding the impermissible redundancies in the Petition, and because
`the Board has yet to decide which grounds it intends to dismiss as impermissibly
`redundant, Uniloc addresses each redundant ground and provides specific examples
`of how Petitioner failed to establish that it is more likely than not that it would prevail
`with respect to at least one of the challenged ’199 Patent claims.
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§ 42.108(c). Because the Petition only presents a theory of obviousness, Petitioner
`must demonstrate a reasonable likelihood that at least one of the challenged patent
`claims would have been obvious in view of the references cited in the Petition.
`Petitioner “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). The Board
`should reject the Petition because Petitioner fails to meet this burden for any of the
`redundant grounds.
`The Petition is stylized as presenting the following grounds:
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`Reference(s)
`Ground Claims Statute
`Blegen5 and Monteverde6
`1
`1-2
`103
`Blegen, Monteverde, and Schmidt7
`2
`3-5
`103
`Charlebois8 and Gillies9
`3
`1-5
`103
`Charlebois, Gillies, and Froloff10
`4
`1-5
`103
` Claim Construction
`For all claim terms, Uniloc requests that the Board adopt the broadest
`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
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“A
`construction that is unreasonably broad and which does not reasonably reflect the
`plain language and disclosure will not pass muster.”).
`“predetermined likelihood”
`1.
`The Petition purports to seek specific construction of only a single phrase:
`“predetermined likelihood.” That phrase appears in claim 1 in the context of
`“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.” Thus, the “predetermined likelihood” is expressly
`defined as a threshold probability calculated from two antecedent factors: “one or
`more predetermined locations” and “within the predetermined maximum amount of
`time.” No construction is necessary for this term because it is unambiguously
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`5 U.S. Patent Publication No. 2010/0082397 (“Blegen” or “EX1004”).
`6 U.S. Patent Publication No. 2012/0259705 (“Monteverde” or “EX1005”).
`7 U.S. Patent Publication No. 2012/0226554 (“Schmidt” or “EX1006”).
`8 U.S. Patent Publication No. 2009/0125321 (“Charlebois” or “EX1007”).
`9 U.S. Patent Publication No. 2010/0151881 (“Gilles” or “EX1008”).
`10 U.S. Patent Publication No. 2012/0089465 (“Froloff” or “EX1009”).
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`defined within the claim language itself, using clear terms that are consistent with
`the speciation.
`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 speciation 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
`user device 102A going to that same place within the next hour to
`be three in five, or 60%.
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`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”).
`
`Notably, Petitioner states it relies on the Charlebois reference only to the
`extent “Patent Owner argues that the claimed ‘predetermined likelihood’ is a
`threshold that is based solely on a probability of the user’s destination and time of
`arrival.” Pet. 54. Uniloc offers no such construction here and, consequently, the
`redundant ground based on Charebois is admittedly irrelevant and unnecessarily
`redundant.
`Moreover, Petitioner neglects to explain whether, and why (not), it agrees
`with its speculative construction allegedly necessitating redundancy based on
`Charebois. At least one issue with such a construction is that a “predetermined
`location” is not necessarily a “destination” and vice versa. For example, a
`“predetermined location” may be a specific point along an expected route toward a
`remotely-located destination. On the other hand, not every “destination” is a
`“predetermined location” because a destination may be simply where the device
`ceases to travel (e.g., because of a flat tire), regardless whether that particular
`location had been predetermined. In addition, it is axiomatic that predicting the
`actual “time of arrival” (i.e., one moment in time) is distinguishable from predicting
`arrival “within the predetermined maximum amount of time” (i.e., any moment
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`within that timeframe). One would expect the corresponding “likelihood”
`percentages to be quite different for those distinguishable predictions.
`“predetermined maximum amount of time”
`2.
`The Petition also at least tacitly offers a construction for the phrase
`“predetermined maximum amount of time,” ostensibly as speculation of what Uniloc
`might argue. More specifically, Petitioner states the Froloff reference is offered in
`combination (in Ground 4) only “in the event Patent Owner argues that a
`predetermined maximum amount of time [means] a maximum time period calculated
`from the current time to the predicted time of arrival at a predetermined location.”
`Pet. 68; see also id. at 70. Uniloc offers no such construction here and, consequently,
`the redundant ground based on Froloff is admittedly irrelevant and unnecessarily
`redundant.
`For this term as well, Petitioner again neglects to explain whether, and why
`(not), it agrees with its speculative construction. As explained above, the claim
`language does not require predicting a specific time of arrival (i.e., one moment in
`time). Rather, the claim language requires predicting the likelihood of arrival at “one
`or more predetermined locations within the predetermined maximum amount of
`time.”
`Uniloc submits that the phrase “within the predetermined maximum amount
`of time” simply means what it says and requires no construction. Nevertheless, to
`avoid any confusion introduced by the Petition, one having ordinary skill in the art,
`having reviewed the specification, would readily recognize that use of the term
`“maximum” (defining only an upper limit) and the modifying couplet “within the
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`…” confirms this phrase refers to a predetermined maximum quantity of time
`extending from the present (e.g., a predetermined number of days, hours, minutes,
`and/or seconds, etc.). In the example from the specification emphasized by the Board
`during prosecution, the “predetermined maximum amount of time” is “within the
`next hour.” EX1002 p. 22 (quoting the specification, as originally filed, at ¶ 41).
`
` 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).
`While the Petition is stylized as presenting four grounds, the Petition in fact argues
`that no less than five different references each render obvious the “predicting”
`limitations. This shotgun approach is procedurally defective for the reasons
`articulated above. Nevertheless, given that the Board has not yet had the opportunity
`to address which grounds will be denied as impermissibly redundant, Uniloc
`addresses herein example deficiencies for each one of the five redundant challenges.
`Blegen is deficient
`1.
`In its primary argument challenging the “predicting” limitations, the Petition
`relies on the following two quotations from Blegen: (1) “[a]s device location
`information is collected, the information can be analyzed to create a mathematical
`model of device location information at different times that can be used to predict
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`locations of the mobile device during specified time periods[;]” and (2) “[u]sing the
`geo-temporal model, a device location can be predicted for a specified time period
`and advertisements can be selected based on the predicted location.” Pet. at 24
`(quoting EX1004 at ¶¶ 14 and 64).
`The quoted teachings of Blegen do not establish prima facie obviousness
`because the outcome of the quoted model is merely a predicted location. This is
`distinguishable from the claimed prediction, however, which refers to a threshold
`percentage likelihood that the device will be at one or more predetermined locations
`within the predetermined maximum amount of time: “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.” Blegen does
`not contemplate the specifically-claimed prediction regarding the “predetermined
`likelihood” threshold.
`Another point of distinction is that the Blegen model relies on a “specified
`time period” defined by fixed start and stop times that both occur in the future. See,
`e.g., EX1004 at ¶ 67 (“For example, 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.”). The claimed prediction, however, is not a calculation based on
`a fixed period of time that has yet to occur. Rather, the claimed prediction applies a
`quantity of time (i.e., “the predetermined maximum amount of time”) extending
`from the present (e.g., a predetermined number of days, hours, minutes, and/or
`seconds, etc.). Furthermore, the claimed “predetermine maximum amount of time”
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`is inherently dynamic (i.e., not static or fixed) at least in that the time it encompasses
`continually changes as time progresses. The claimed invention, therefore, provides
`technical advantages over distinguishable fixed-time models—like that applied in
`Blegen—which continually require updating specific time periods because those
`periods eventually become irrelevant after they occur.
`These deficiencies in Blegen are not cured by the Petition’s unexplained
`reference to the “analysis for Element [1a] in Section VIII.A.4.b.” Pet. 25. The
`referenced analysis purports to address the distinct “associate” limitations; and the
`Board and the Uniloc should not be expected to piece together, in the absence of any
`explanation from Petitioner, how that same analysis might also apply to the
`“predicting” limitations.
`In any event, the referenced analysis is unavailing. In addressing what
`Petitioner refers to as Element [1a], Petitioner points to Blegen’s “disclos[ure] that
`a ‘confidence level’ is ‘an index or attribute that provides information regarding how
`well the user meets a set of criteria established by an advertisement provider.’” Pet.
`19 (quoting EX1004 at ¶ 67). The quoted passage of Blegen describes the
`“confidence level” as being based on how a user interacts with a device so that an
`advertisement targeted for presentation to that user, at a fixed specified time
`commencing at some point in the future, will not go unnoticed. See EX1004 at ¶ 67.
`This is distinguishable on its face (and for reasons explained above) from the claimed
`threshold probability based, instead, on “whether the user device will be at any one
`or more predetermined locations within the predetermined maximum amount of
`time.”
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`For at least the foregoing reasons, the Petition’s application of Blegen fails to
`establish 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.”
`2. Monteverde is deficient
`Evidently recognizing Blegen is deficient in several respects, though
`unwilling to overtly admit any substantive weakness, the Petition purports to offer
`Monteverde as a fallback theory for the same “predicting” limitations. Pet. 26 (“To
`the extent Patent Owner argues that Blegen does not disclose this limitation, it is
`obvious in view of Monteverde for reasons stated in Sections VIII.A.3 and
`VIII.A.4.b.”); cf. Eizo Corp. v. Barco N.V., IPR2014-00358, Paper 11 (P.T.A.B. July
`23, 2014) (admonishing this very type of redundancy). In doing so, the Petition does
`not specifically address the “predicting” limitations, but rather it relies exclusively
`on its alleged application of Monteverde to the distinct “associate” limitations. Here
`again, the Board and the Uniloc should not be expected to piece together (in the
`absence of any coherent explanation in the Petition) how the analysis allegedly
`addressing one limitation might also apply to another limitation. The ambiguity and
`deficiency are especially glaring here, where two references are supposedly offered
`in combination, yet there is no limitation-specific analysis for each proposed
`combination.
`While Uniloc is under no burden to rebut a theory that Petitioner failed to
`clearly articulate, the cited portions of Monteverde are unavailing to the specific
`“predicting” limitations. The referenced analysis alleges Monteverde’s “‘offer
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`period’ is a predetermined maximum amount of time, as required by Element [1a.ii],
`because the ‘goods or services associated with the commercial offer can only be
`obtained during [the] offer period.’” Pet. 22.
`As a procedural matter, Petitioner makes no distinction between the “specified
`time period” in Blegen and the “offer period” in Monteverde. Neither is characterized
`in the Petition as being stronger or weaker with respect to the “predicting” limitations
`(or any other limitation for that matter). On the contrary, Petitioner confirms its
`backup theory is unnecessarily redundant by similarly characterizing both Blegen’s
`“specified time period” and Monteverde’s “offer period” as applying a fixed period
`of time defined by future start and stop times.
`Because the Petition at least tacitly concedes that Monteverde is cumulative
`with Blegen, it follows that Blegen and Monteverde are both substantively deficient
`for analogous reasons. As explained above, among other shared deficiencies, the
`fixed-time model applied in both references is distinguishable from the claimed
`prediction which, instead, dynamically applies a single quantity of time (e.g., a
`predetermined number of days, hours, minutes, and/or seconds, etc.).
`This patentable di