Apple Inc. v. BillJCo LLC
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`IPR2022-00129 (U.S. Pat. No. 8,566,839)
`IPR2022-00131 (U.S. Pat. No. 8,639,267)
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`February 23, 2023
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`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 1
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`IPR2022-00129 (U.S. Pat. No. 8,566,839)
`IPR2022-00131 (U.S. Pat. No. 8,639,267)
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`February 23, 2023
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`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 1
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`U.S. Patent No. 8,566,839
`Petition at 4-5
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`Title: System and Method for Automated Content Presentation Objects
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`Instituted Grounds
`• Ground 1: Claims 1-3, 8, 21, 23-27, 32, 45,47, 48 are obvious over Lutnick
`• Ground 2: Claims 20 and 44 are obvious over Lutnick in view of Rankin
`• Ground 3: Claims 23 and 47 are obvious over Lutnick in view of Evans
`• Ground 4: Claims 24 and 48 are obvious over Lutnick in view of Bluetooth Core
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`Summary of Technology:
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`A way to present information to a user through an object that
`includes information and instructions for presenting that
`information. The instructions include trigger information, such that
`when a trigger event is identified, the information can be presented.
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`APPLE - IPR2022-00129
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`Claim 1 of ’839 Patent
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`1. A method for information presentation by a receiving
`data processing system, said method comprising:
`receiving, by said receiving data processing
`said object
`containing
`system,
`an
`object,
`information and instructions for presenting said
`information, said instructions including an event
`specification to be monitored by said receiving data
`processing system for triggering when to present said
`information,
`said event
`specification including a
`whereabouts condition and a condition for detecting
`a particular user action by a user of said receiving
`data processing system, said whereabouts condition
`determining if a location of said receiving data
`processing system is in a vicinity of another data
`processing system;
`storing, by said receiving data processing system,
`said information in a memory of said receiving data
`processing system;
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`processing, by said receiving data processing
`system, said instructions upon said receiving, by said
`receiving data processing system, said object;
`configuring, by said receiving data processing
`system, a trigger event for said event specification in
`response to said processing, by said receiving data
`processing system, said instructions;
`monitoring, by said receiving data processing
`system, said trigger event
`in response to said
`configuring, by said receiving data processing system,
`said trigger event;
`recognizing, by said receiving data processing
`system, said trigger event, after said monitoring, by
`said receiving data processing system, said trigger
`event; and
`presenting, by said receiving data processing system,
`said information, based at
`least
`in part by said
`whereabouts condition, upon said recognizing, by said
`receiving data processing system, said trigger event.
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`APPLE - IPR2022-00129
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`Prior Art – Lutnick
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`Lutnick Overview
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`(EX1005, [0183])
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`(EX1005, [0290])
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`(EX1005, [0119])
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`Lutnick’s promotions = “information”
`Lutnick’s instructions for presenting promotions = “instructions”
`Lutnick’s promotions and instructions together = “object”
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`Lutnick Overview, cont’d
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`Lutnick discloses at least three user actions that constitute
`“a condition for detecting a particular user action”
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`Achieving a
`Winning Outcome
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`Coming Within Range
`of a Beacon or Device
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`Buying, Testing,
`Interacting
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`(Petition, 27; Pet. Reply, 17-19; EX1005, [0250])
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`* * *
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`(Pet. Reply, 22; EX1005, [0257])
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`(Petition, 27; Pet. Reply, 19-21; EX1005, [0256])
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`Patent Owner’s Constructions
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`Term / Phrase
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`Patent Owner’s Proposal(s)
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`Petitioner’s Proposal
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`object
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`Plain and Ordinary Meaning.
`No Construction Needed.
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`“a self-contained object with both the
`information for presentation and the
`instructions describing under what
`conditions to present that information”
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`What is a Self-contained Object?
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`• An object that includes information and instructions such that the
`device can use the information and instructions together.
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`•
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`•
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`The claims only require receipt of an object that includes
`information and instructions.
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`The claims do not require transmission of one packet with
`information and instructions together.
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`APPLE - IPR2022-00129
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`Self-contained Object Example
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`•
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`If a person orders a desk, the desk
`can be shipped in two parts:
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`– A first shipment corresponding to
`the legs or base
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`– A second shipment corresponding
`to the desktop
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`• The person still receives a desk
`even though the desk is sent in two
`shipments
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`• The claims do not preclude:
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`– A first transmission comprising
`promotions
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`– A second transmission
`comprising instructions
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`– The object being formed at the
`mobile device
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`EX2008, 32:8-13 (“The first transmission containing promotions
`and the second transmission containing instructions “could also
`be done back-to-back and . . . Then the . . . Object could be
`formed on the mobile device. . . It can be packaged as an
`object on the mobile device.).
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`Issues
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`• Whether Lutnick explicitly discloses the claimed object
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`•
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`If not, Whether a POSITA would find it obvious
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`• Whether Lutnick discloses a condition for detecting a particular
`user action
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`What is Not at issue
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`•
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`•
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`•
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`•
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`Lutnick discloses that the casino server sends a promotion (i.e., information)
`that is received by the mobile gaming device (“MGD”) and presented to the user
`(Petition, 20-21; Pet. Reply, 4; EX1005, [0099], [0290])
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`Lutnick discloses that the casino server also sends instructions to the MGD
`for when to present the promotion (Petition, 21-22; Pet. Reply, 5-6; EX1005, [0119], [0128], [0289])
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`Lutnick teaches that the promotions and the instructions for presenting them
`are stored on the MGD. (Petition, 20-22; Pet. Reply, 4-6; EX1005, [0099], [0119], [0128], [0289], [0290])
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`Petitioner’s arguments related to the patentability of dependent claims
`2-3, 9, 20-21, 23-24, 26-27, 32, 44, 45, 47, and 48.
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`APPLE - IPR2022-00129
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`Obviousness – Object
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`What are the Issues Related to Object?
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`Lutnick’s Self-Contained
`Object Can be Formed
`at the MGD
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`Lutnick’s Object includes Information and Instructions
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`Lutnick’s MGD receives
`and stores promotions
`(Petition, 20-21; Pet. Reply, 4)
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`Lutnick’s MGD receives and stores
`instructions for presenting the promotions
`(Petition, 21-22; Pet. Reply, 5-6)
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`* * *
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`* * *
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`(EX1005, [0119])
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`(EX1005, [0128])
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`(EX1005, [0290], see also [099])
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`The Asserted Claims Do Not Limit Where
`the Object is Formed
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`Claim 1 of the ’839 patent recites:
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`•
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`receiving, by said receiving data processing system, an object, said object
`containing information and instructions for presenting said information
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`Claim 1 does not require the object be formed prior to receipt. (Pet. Reply, 2)
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`•
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`•
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`“it would be simpler to do it [send the information and instructions] as a single package
`but they could also be done back-to-back . . . then the . . . object could be formed on
`the mobile device . . . it [the information and instructions] can be packaged as an object
`on the mobile device.” (La Porta Deposition Transcript, EX2008, 32:8-13)
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`Lutnick teaches that the promotions and the instructions for presenting them are stored
`on the MGD. (Petition, 20-22; Pet. Reply, 4-6; EX1005, [0099], [0119], [0128], [0289], [0290])
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`Lutnick ExpresslyDiscloses Receipt
`of a Single Object that Includes
`Information and Instructions
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`Lutnick Discloses Presenting Promotions in
`Areas with Poor Connectivity
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`• Lutnick has to have the promotions
`and instructions together in order to
`present the promotion if there is poor
`connectivity.
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`(Petition, 21-22; Pet. Reply, 5-6)
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`(EX1005, [0289])
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`Lutnick’s Object includes Information and Instructions
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`Lutnick’s MGD can receive information and instructions simultaneously (Pet. Reply, 9)
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`(EX1005, [0048])
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`Lutnick’s MGD can receive information and
`instructions simultaneously (Pet. Reply, 9)
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`•
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`•
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`The MGD receives information and
`instructions from the casino server.
`(Petition, 20-22; Pet. Reply, 4-6; EX1005,
`[0099], [0119], [0128], [0289], [0290])
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`Lutnick discloses that the information
`and instructions from casino server to
`MGD can be sent simultaneously.
`(Pet. Reply, 9; EX1005, [0048])
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`Patent Owner Does Not Dispute That the Casino
`Server Receives the Object from the Marketer Device
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`•
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`•
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`Lutnick discloses that information and
`instructions are sent together from the
`marketer device to the casino server.
`(EX1005; Petition, 24; Pet. Reply, 7-8)
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`PO’s interpretation would require the
`casino server to separate the
`instructions from the information when
`relaying the instructions and information
`to the mobile gaming device.
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` PO fails to cite to any portion of Lutnick
`that describes such process.
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`(EX1005, [0183])
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`Lutnick’s Object Includes Information
`and Instructions
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`Lutnick’s MGD receives information and instructions directly from the
`marketer device. (Petition, 24; Pet. Reply, 7-8)
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`(EX1005, [0066])
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`(Pet. Reply, 7-8; EX1005, [0066])
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`APPLE - IPR2022-00129
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`POSITA Would Modify Lutnick’s
`Transmission to be a Single Object
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`A POSITA Would Modify Lutnick’s Object to
`Include Information and Instructions
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`It is beneficial for the MGD to receive instructions with a promotion in case of
`connectivity issues or battery issues (Petition, 22-25; Pet. Reply, 13-15)
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`(EX1005, [0289])
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`* * *
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`(EX1005, [0290])
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`Instructions Can Be Tags or Time Stamps
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`Lutnick discloses that instructions that dictate the presentation
`of a promotion can be sent with a promotion (Pet. Reply, 12-13)
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`(EX1005, [0093])
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`(EX1005, [0094])
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`APPLE - IPR2022-00129
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`PO’s Arguments Are Not Persuasive
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`PO argues “The mobile gaming device is only one of the possible display devices,
`and has the limited responsibility of displaying the advertisement.” (POR, 10)
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`As Petitioner has established and previously shown, the MGD is not merely
`a display device, but has the responsibilities of:
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`• Receiving and storing promotions (Petition, 20-21; Pet. Reply, 4)
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`• Receiving and storing instructions for presenting the information (Petition, 21-22; Pet. Reply, 5-6)
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`• Determining when and which promotion to display (Petition, 22-24; Pet. Reply, 6-7)
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`• Displaying the promotion (Petition, 37-38)
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`APPLE - IPR2022-00129
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`PO’s Arguments Are Not Persuasive
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`PO argues that “Petitioner’s expert identifies no reason, suggestion or motivation
`in Lutnick for combining transmission of a promotion with programming, except for
`his unsupported opinion that it would be ‘simpler’ to do so” (POR, 13)
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`•
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`PO’s position is incorrect, as Petitioner and Petitioner’s expert has provided substantial
`evidence that it would be obvious to combine the transmission of a promotion with
`instructions for presenting the promotion. (POR, 24-25; La Porta Declaration,
`EX1003, ⁋⁋ 89-90; La Porta Deposition Transcript, EX2008, 29:3-34:9; Pet. Reply, 10-16; La Porta
`Supplemental Declaration, EX1027, ⁋⁋ 38-51)
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`APPLE - IPR2022-00129
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`A POSITA Would Modify Lutnick’s Object to Include
`Information and Instructions
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`To summarize, Lutnick discloses:
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`•
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`•
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`•
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`•
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`The MGD receives and stores promotions (Petition, 20-21; Pet. Reply, 4; EX1005, [0099], [0290])
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`The MGD receives and stores instructions (Petition, 21-22; Pet. Reply, 5-6; EX1005, [0119],
`[0128], [0289])
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`The promotions sent to the MGD can include some instructions (e.g., tag, label, timestamp)
`that define whether a promotion is displayed (Pet. Reply, 12-13; EX1005, [0093], [0094])
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`Several benefits for including the instructions with the promotions (e.g., connectivity issues,
`low battery issues) (Petition, 22-25; Pet. Reply, 13-15; EX1005, [0289], [0290])
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`The record clearly establishes that a POSITA would find it obvious to modify a
`transmission to include both promotions and instructions for presenting the promotions
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`Obviousness – Condition for
`Detecting a Particular User Action
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`Condition for Detecting a Particular User Action
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`Petitioner has established that Lutnick discloses several possibilities of “a
`particular user action” that is detected
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`•
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`Achieving a winning outcome (Petition, 27; Pet. Reply, 17-19; EX1005, [0250])
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`• Coming within range of a beacon or device (Petition, 27; Pet. Reply, 19-21; EX1005, [0256])
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`•
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`Buying, testing, or interacting with an object (Pet. Reply, 22; EX1005, [0257])
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`PO does not dispute that Lutnick teaches these processes
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`PO ONLY disputes whether any of these processes constitutes a “user action”
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`PO’s Arguments Are Not Persuasive
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`For achieving a winnable outcome, the PO alleges that this is not “a particular user
`action” because “it is a category of responses by the mobile gaming device, not the
`user” and that whether a user wins is “a random outcome.” (POR, 18)
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`•
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`Playing any of the various games
`requires user action in the form of a
`user input
`(Petition, 27; Pet. Reply, 17-19; EX1005, [0138];
`La Porta Deposition Transcript, EX2008, 44:17-51:6)
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`(EX1005, [0138])
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`APPLE - IPR2022-00129
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`PO’s Arguments Are Not Persuasive
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`For coming within range of a beacon, the PO alleges that this is not “a particular
`user action” because it allegedly conflates the “‘whereabouts’ condition with the
`separate requirement for a ‘condition for detecting a particular user action.’” (POR, 19)
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`* * *
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`•
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`A proximity trigger is different than the
`whereabouts condition. The
`whereabouts condition can be the user
`coming within range of the beacon and
`the user action can be the user coming
`within a defined distance of the beacon
`(Petition, 27; Pet. Reply, 19-21; EX1005, [0256];
`La Porta Deposition Transcript, EX2008, 42:18-43:12)
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`(EX1005, [0256])
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`PO’s Arguments Are Not Persuasive
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`For coming within range of a beacon, the PO also alleges that this is not “a particular user action”
`because the particular user action is “not just any type of action” but instead “the claims require an
`action by a user of the receiving data processing system.” Thus, PO alleges that “a user must interact
`with the receiving data processing system” to satisfy this limitation. (Sur-Reply, 16)
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`* * *
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`•
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`•
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`First, there is no requirement that the
`user action must be performed on the
`receiving data processing system.
`(Pet. Reply, 22; EX1005, [0256])
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`Second, the user must have the MGD
`on them in order to trigger the promotion.
`Thus, the user is interacting with
`the MGD.
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`(Pet. Reply, 22; EX1005, [0256])
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`(EX1005, [0256])
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`APPLE - IPR2022-00129
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`Summary of Arguments
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`The challenged claims are obvious in view of Lutnick
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`•
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`•
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`•
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`•
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`Lutnick discloses the MGD receiving a self-contained object
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`Lutnick explicitly discloses the MGD receiving a single object
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`A POSITA would find it obvious to modify Lutnick’s transmission of promotions to also
`include the instructions for presenting the promotions
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`Lutnick discloses a condition for detecting a particular user action
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`APPLE - IPR2022-00129
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`U.S. Patent No. 8,639,267
`Petition at 4-5
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`Title: System and Method for Location Based Exchanges of Data
`Facilitating Distributed Locational Applications
`The Board instituted inter partes review of claims
`1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 (asserted claims)
`• Ground 1: asserted claims are obvious over Haberman
`• Ground 2: asserted claims are obvious over Haberman and Boger
`• Ground 3: asserted claims are obvious over Vanluijt
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`Summary of Technology:
`
`A method for presenting information to a user (i.e., performing a privileged action) based
`on the user’s defined privileges and location information of the user.
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`If the user grants permission to an entity, device, service, application, etc., the user’s
`device may receive, process, and display information that satisfies the permission that
`was received by the user’s device from a nearby sending data processing system
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`APPLE - IPR2022-00129
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`Claim 1 of ’267 Patent
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`1. A method for automatic location based exchange
`processing by a mobile data processing system, the
`method comprising:
`presenting a user interface to a user of the
`mobile data processing system, the user interface
`for configuring privilege data relating the mobile
`data processing system with a remote data
`processing system, the privilege data stored local
`to the mobile data processing system and
`searched upon receipt of whereabouts data
`received for processing by the mobile data
`processing system;
`receiving, for processing by the mobile data
`processing system, the whereabouts data including
`an originating identity of the whereabouts data;
`
`searching, by the mobile data processing system,
`the privilege data stored local to the mobile data
`processing system for a matching privilege upon
`the receiving, for processing by the mobile data
`processing system, the whereabouts data, wherein
`the matching privilege is configured for relating
`the originating identity of the whereabouts data
`with a destination identity of the whereabouts
`data to permit trigger of a privileged action for the
`receipt
`of whereabouts
`data
`received
`for
`processing by the mobile data processing system;
`and
`
`performing the privileged action at the mobile
`data processing system upon finding the matching
`privilege, after the searching, by the mobile data
`processing system, the privilege data stored local to
`the mobile data processing system.
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`Ground 1:
`Obviousness over Haberman
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`APPLE - IPR2022-00129
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`Haberman Overview
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`* * *
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`37
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`(EX1004, [0117], [0118], [0166], Figure 14)
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`APPLE - IPR2022-00129
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`Disputes
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`• Whether the preferences described in Haberman are the
`same as the claimed privilege-based limitations
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`• Whether the Haberman discloses the claimed
`“destination identity”
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`APPLE - IPR2022-00129
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`What is Not at issue
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`• Whether a generic preference is the same as the
`privilege-based limitations
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`• That a destination identity is the “identity of the mobile device
`granting the privilege” (Petition, 23-25; Sur-Reply, 11)
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`• Patentability of the dependent claims
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`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`39
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 39
`
`
`
`Haberman Discloses the
`Privilege-Based Limitations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 40
`
`
`
`What Are the “privilege-based limitations”?
`
`“privilege
`data”
`
`“matching
`privilege”
`
`“privileged
`action”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 41
`
`
`
`Patent Owner’s Construction
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`privilege
`
`1. A security related concept that delegates permissions to
`users, programs, processes, or services to perform certain
`functions. (POR, 9)
`2. A right granted to users, programs, processes, or
`services to perform certain functions on a computer. (POR, 12)
`3. A granted authorization to perform a function. (POR, 12)
`4. A right given to a user, application, system, etc. to
`perform certain functions on a computer. (POR, 13)
`5. A right granted to users, programs, processes, or
`services to perform certain functions on a computer. (POR, 15)
`6.
`“[A] ‘preference’ is not a “privilege.’”, (Sur-Reply, 9)
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 42
`
`
`
`Haberman’s Preference Profile
`Meets the “Privilege” Limitations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 43
`
`
`
`Haberman’s Preference Profile
`
`(EX1004, [0025], [0176], [0181]; Petition, 24)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 44
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`PO offers three rebuttals:
`
`• PO alleges that privilege and preference have different meanings in
`computer science (POR, 9-14)
`
`• PO alleges that Haberman’s “preference profile” is an optional feature (POR, 9-14; 23)
`
`• PO alleges that Haberman fails to disclose a granting of rights (POR, 24-25)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 45
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`PO alleges that privilege and preference have different meanings in
`computer science (POR, 9-14)
`
`PO has continually avoided analyzing Haberman’s preference profile
`
`The issue is whether Haberman’s
`preference profile is the same as the
`privilege based limitations
`
`The issue is not whether a
`generic preference is the same
`as a generic privilege
`
`We need to look at the teachings of Haberman, not just one word in isolation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 46
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`Haberman’s preferences
`are not optional
`
`When the preferences profile is used,
`the preferences are not optional
`
`(Sur-Reply, 13-14)
`
`(EX1004, [0179], [0176])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 47
`
`
`
`POSITA Interprets Haberman’s Preference
`as a Privilege
`
`Testimony of Dr. Tom LaPorta
`
`Q.
`
`Is it your opinion that a preference of a user is the same thing as a
`permission in computer science?
`A. So if we're talking about computer science in general I wouldn't
`necessarily say that’s always the case. In the way this claim is written
`and from what I read in the patent, that that's basically what it is.
`
`* * *
`
`Q. So is it your opinion that, in computer science, a permission is
`synonymous with a preference?
`A. So, in general, in computer science a permission is not the same as a
`preference, but I believe it is in this -- in this patent.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`(EX2009, 40:20-41:3, 46:5-10)
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 48
`
`
`
`Haberman Discloses
`“Destination Identity”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 49
`
`
`
`Patent Owner’s Construction
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`destination
`identity
`
`“[T]he identity of that which grants
`a permission” POR, 17
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 50
`
`
`
`“Destination Identity”
`
`PO’s construction of “destination identity” as “the identity of that with which
`grants a permission” reads in a limitation to the claims that was removed
`during prosecution.
`
`(Pet. Reply, 4)
`
`(Pet. Reply, 6 (citing EX1003, 88))
`
`PO’s construction cannot be correct.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 51
`
`
`
`“Destination Identity”
`
`Claim Language:
`
`“the matching privilege is configured for relating the originating identity of the
`whereabouts data with a destination identity of the the whereabout data”
`
`• All devices in range of the broadcast will receive the message, the matching
`privilege dictates whether a particular destination device will take an action
`based on the receipt of the transmission
`
`• Accordingly, it relates the originating identify of the whereabouts data with the
`destination identity of that device
`
`52
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 52
`
`
`
`Haberman Discloses “destination identity”
`
`(Petition, 23)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1004, [0026], [0036]
`
`(EX1004, [0026], [0036])
`
`53
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 53
`
`
`
`Applying PO’s Construction…
`
`PO alleges that Haberman does not disclose a granting of rights or
`authorizations
`
`(Pet. Reply, 11-12)
`
`(Sur-Reply, 17)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 54
`
`
`
`Ground 2:
`Obviousness over Haberman
`and Boger
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 55
`
`
`
`PO Has Failed to Rebut Petitioner’s Position
`
`If the Board finds that Haberman discloses the privilege-based limitations,
`the combination of Haberman and Boger renders the asserted claims obvious.
`
`•
`
`•
`
`
`
`
`
`Boger teaches the claimed “destination identity.” (Petition, 35-38)
`
`PO has conceded that Boger’s AM_ADDR is the same as the claimed “destination identity.”
`
`PO has never challenged this position.
`(PO Prelim. Resp. 7-8; Sur-Reply 17-18
`(Both never address Petitioner’s arguments regarding
`AM_ADDR of Boger and “destination identity”))
`
`PO’s entire argument hinges on
`whether Haberman discloses the
`privilege-based limitations.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(POR, 25)
`
`56
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 56
`
`
`
`Ground 3:
`Obviousness over Vanluijt
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 57
`
`
`
`Vanluijt Overview
`
`* * *
`
`(Petition, 44-49, EX1006 [0032], [0058], Fig. 1)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 58
`
`
`
`Vanluijt’s Preference Data Meets
`the “Privilege” limitations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 59
`
`
`
`Vanluijt’s Preference Data
`
`(EX1006, [0058])
`
`(Petition at 48-49)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 60
`
`
`
`Vanluijt Renders the Challenged Claims Obvious
`
`PO’s rebuttals are not persuasive:
`
`• PO alleges that privilege and preference have different meanings in
`computer science (POR 28-29, Sur-Reply, 19-20)
`
`• PO alleges that Vanluijt’s “preference profile” is an optional feature (Sur-Reply, 20)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`61
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 61
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`PO alleges that Vanluijt’s “preference profile” is an optional feature (Sur-Reply, 20)
`
`Vanluijt explicitly states information is presented only if it satisfies a preference.
`Petition, 54-55; Pet. Reply, 14-15
`
`(EX1006, [0058])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 62
`
`
`
`Vanluijt Discloses
`“Destination Identity”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 63
`
`
`
`Vanluijt’s Destination Identity
`
`PO alleges that Vanluijt does not disclose the claimed “destination identity”:
`
`• “A user merely establishes types of information he or she wishes to receive . . . .
`Nothing in Vanluijt, however, discloses granting rights as is claimed.” (POR, 30)
`
`(EX1006, [0058])
`
`(Petition, 55)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 64
`
`
`
`Summary of Arguments
`
`1.
`1
`
`The challenged claims are obvious in view of Haberman,
`Haberman + Boger, and Vanluijt under their plain and ordinary
`meaning and this has not been disputed.
`
`2. Even under PO’s proposed constructions, the challenged claims are
`2
`obvious in view of Haberman, Haberman + Boger, and Vanluijt.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 65
`
`
`
`No Nexus Between the Challenged Claims and
`Objective Indicia of Non-Obviousness
`
`PO has failed to establish a nexus between the claimed invention and any
`alleged copying. (Pet. Reply, 22-23)
`•
`PO’s only evidence of copying are unsolicited emails from inventor William Johnson to an agent of
`Petitioner’s legal team with a list of publicly available applications. (Pet. Reply, 23)
`
`•
`
`PO has failed to provide any evidence that developers of iBeacon had access to PO’s proprietary
`information. (Pet. Reply, 23)
`
`Based on the issuance dates of the ’839 and ’267 Patents, it would be impossible
`for Petitioner to have copied the claimed invention. (EX2024-2026)
`•
`’839 Issuance date = October 22, 2013. EX1002, Issue Notification dated October 2, 2013.
`
`•
`
`•
`
`’267 Issuance date = January 28, 2014. EX1002, Issue Notification dated January 8, 2014.
`
`Date of iBeacon announcement = June 23, 2013.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 66
`
`
`
`No Nexus Between the Challenged Claims and
`Objective Indicia of Non-Obviousness
`
`PO has failed to establish a nexus between the claimed invention and any
`alleged commercial success. (Pet. Reply, 22-23)
`•
`PO only offers conclusory statement that the commercial success of iBeacon is directly
`attributable to the combination of features. (Pet. Reply, 24)
`
`•
`
`PO’s license agreements only show one of thirty-plus patents that were included in the terms of
`the license. (Pet. Reply, 24)
`
`PO’s license agreements are irrelevant to the secondary considerations.
`Pet. Reply, 23-26.
`
`•
`
`•
`
`•
`
`PO provides three license agreements to support its position. (EX2021-EX2023)
`
`Each license is for 30+ patents, including the ’839 and ’267 Patents
`
`PO fails to provide any evidence of the importance of the ’839 and ’267 Patents to the license
`agreements
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`67
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 67
`
`
`
`’839: PO’s Motion to Strike
`
`Petitioner’s construction of object is consistent with the record
`•
`PO alleges that Petitioner has offered a new claim construction for object.
`(Motion, 5; PO Reply to Motion, 1-2)
`
`•
`
`Petitioner’s Expert clearly opined that the information and instructions can be sent in separate
`transmission and that the self-contained object can be formed at the mobile device
`
`A. So the way I read it was what I wrote here in
`my opinion how it should be construed, I would
`say it was supposed to be self-contained. But
`it doesn’t make a difference in my analysis if
`it’s sent at
`the same time or
`they’re sent
`back-to-back or something like that.
`It’s –
`you know,
`I understand the – now that
`the
`court
`didn’t
`adopt
`this
`–
`adopt
`this
`construction. But yes,
`it should have both
`information and instructions.
`
`A. So it’s motivation because it would be simpler
`to do it as a single package but they could
`also be done back-to-back and, you know, then
`the quote, unquote, object could be formed on
`the mobile device. I mean, it can be packaged
`as an object on the mobile device.
`
`(EX2008, 19:14-23)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(EX2008, 32:8-13)
`
`68
`
`APPLE - IPR2022-00129
`EXHIBIT 1028 - PAGE 68
`
`
`
`’839: PO’s Motion to Strike
`
`Petitioner did not submit any new theories in the Petitioner’s Reply
`
`•
`
`•
`
`•
`
`PO only previously identified a single issue as an alleged “new
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