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`571-272-7822
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`Paper # 37
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`Entered: March 29, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`______________
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`______________
`
`Record of Oral Hearing
`Held: February 23, 2023
` ______________
`
`
`
`Before LYNNE H. BROWNE, STACEY G. WHITE, and GARTH D. BAER,
`Administrative Patent Judges
`
`
`
`
`
`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`APPEARANCES:
`
`Petitioner:
`
`Larissa S. Bifano
`Joseph Wolfe
`DLA PIPER LLP
`One Liberty Place
`1650 Market Street, Suite 5000
`Philadelphia, Pennsylvania 19103
`larissa.bifano@dlapiper.com 
`joseph.wolfe@dlapiper.com
`
`Patent Owner:
`
`Courtland C. Merrill
`Joseph M. Kuo
`SAUL EWING ARNSTEIN & LEHR LLP
`33 South 6th Street, Suite 4750
`Minneapolis, Minnesota 55402
`(612) 225-2943
`courtland.merrill@saul.com
`joseph.kuo@saul.com
`
`
`The above entitled matter came on for hearing on Thursday,
`February 23, 2023, commencing at 3:30 p.m. at Arizona State University
`Sandra Day O'Connor College of Law, Phoenix, Arizona.
`
`2
`
`

`

` 
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`PROCEEDINGS
`- - - - - -
`JUDGE BAER: Okay. Good afternoon, everybody and we're certainly glad
`
`to have you all here. We appreciate our guests being here and counsel as well, so
`thank you for making the effort to be here.
`We have our hearing for two cases today, this is IPR2022-00129 and IPR2022-
`00131. This is between Petitioner Apple and the Patent Owner Billjco. The
`patents at issue are, as Avery had said to us, are the
`'839 patent and the '267 patent. I'm Judge Baer, and joining me also are Judge
`White and Judge Browne. Let's go ahead and get the parties' appearances, if we
`could, please. Who do we have for Petitioner Apple?
`
`MS. BIFANO: I'm Larissa Bifano, and this is my colleague Joseph Wolfe
`from the law firm of DLA Piper for Petitioner Apple.
`
`JUDGE BAER: Thank you, Ms. Bifano. Will you be presenting --
`
`MS. BIFANO:
`I will present both patents.
`JUDGE BAER: Presenting both, thank you. And who do we have for
`patent owner?
`MR. MERRILL: Good afternoon, I'm Courtland Merrill on behalf of the
`Patent Owner Billjco.
`MR. KUO: And I'm Joe Kuo on behalf of Billjco as well.
`JUDGE BAER: And will you both be presenting today?
`MR. MERRILL: We both will, yes.
`JUDGE BAER: Great.
`MR. MERRILL:
`I will present on the '839 and he will present on the '267.
`JUDGE BAER: Great. Thank you. All right. Again, We appreciate you
`making the effort to be here, thank you. We set forth our procedure in our hearing
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`order, but just a few things to set forth before we get started. As we said, the
`parties will each have 60 minutes. You can also reserve rebuttal time to present
`your cases. We do have the full record in front of us. We have your slides in
`front of us, but when you're referring to slides, if you would tell us what slide
`number you're on first, that will help us keep the record clear, and also because
`they're appearing up there, so we don't have to turn around and see what you're
`referring to up there.
`But, again, we do have all the information in front of us.
`With that, we are ready to begin, but we want to make sure you don't have any
`questions. Does counsel for petitioner have any questions for us before we get
`going?
`No, your Honor.
`MS. BIFANO:
`JUDGE BAER: And counsel for patent owner?
`MR. MERRILL: No, we do not.
`JUDGE BAER: Great. With that, we will get going. Counsel for
`petitioner, you may begin.
`First of all, do you want to reserve any rebuttal
`time?
`
`I'd like to reserve 20 minutes, please.
`MS. BIFANO:
`JUDGE BAER: Great. And I will try to remind you of your time.
`MS. BIFANO: Oh, you'll have the time?
`JUDGE BAER: We'll keep it up here.
`MS. BIFANO: Oh, great. Perfect.
`JUDGE BAER:
`I'll try to remind you when you've got 10 minutes and 5
`minutes, that kind of thing. We're going to put 20 minutes of rebuttal time on,
`so we'll give you 40 minutes. And you may begin whenever you're ready.
`MS. BIFANO: Good afternoon. My name is Larissa Bifano. I'm here
`representing Apple, Inc., in these two IPR petitions involving the '839 patent and
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`the '267 patent. So, what are we talking about today? We've heard some different
`types of technologies and trademarks throughout the course of the day, but now
`we're in the software realm.
`So, we're dealing today with two patents that relate
`to what the patent owner has referred to as a location-based exchange, LBS. So,
`what is that? This is where you have mobile devices that are proliferating
`everywhere, you know, everyone has their mobile device, they go everywhere with
`it. And trying to capitalize on that, you have beacons that are positioned in the
`environment that are transmitting messages, and the mobile devices receive them.
`And both of these inventions deal with how the mobile device communicates with
`those beacons in different flavors.
`
`So, the first patent that I'll address today is the '839 patent, so moving to
`slide 2 -- I have my clicker -- there we go. Great. So slide -- slide 2, so we have
`the '839 patent, it's titled "System and Method for Automated Content Presentation
`Objects." So this is a way that you can present information to a user through an
`object.
`Now, what's an object? An object is something that has information and
`instructions on when to present the object. The instructions also include trigger
`information to tell the device when it should be displaying this object -- the
`presentation to the user.
`Moving to slide 3, we'll see the claim, the representative claim that's at issue --
`whoops -- it's Claim 1 of the '839 patent, and I've highlighted two aspects of Claim
`1 that are at issue today we're going to talk a lot about. The first is this object,
`which I've already referenced, and this object containing information and
`instructions for presenting the information. The second item that we'll talk a lot
`about is the condition for detecting a particular user action by a user of said
`proceeding data processing system. And today, while there were several
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`references in the instituted decisions -- so I'm on slide 5 now -- the main reference
`we're going to discuss today is the Lutnick reference. So what's the Lutnick
`reference? It's a system for managing promotions. So, what is this reference
`talking about? Basically, it's a setup inside a casino. The casino operators want to
`obviously get the casino patrons to spend more money in the casino, so they send -
`- they want to send promotions to the casino patrons while they're moving through
`the casino. So, what they did was they developed this system that is shown on this
`slide, in slide 5 that has a marketer device that transmits information to a casino
`server, and that information describes the promotions that are going to be run on
`the mobile device, and also describes when those promotions are going to be run
`on the mobile device and which player should view them. Then that information is
`transferred to the mobile gaming device, which is, in our example, the mobile
`device, which then displays those promotions when the instructions are met or
`when a trigger happens. So, lining this up against the claims, Lutnick's
`promotions are the information, the instructions for presenting the promotions or
`the instructions, and then the promotions/instructions together are the object.
`Further, on slide 6, as we discussed, the claim also requires this triggering. So
`what does Lutnick disclose about triggering? So we have three -- there's oodles
`and oodles of specification in Lutnick that talk about the different types of
`triggering, but we need a trigger that's based on a user action. So we've
`highlighted three here in this slide.
`So, the first is achieving a winning outcome.
`So it's winning at some game within the casino. And at that point the casino
`operator says this person is going to be happy so if I send a little promotion maybe
`they'll do something more and they'll spend more money in the casino, so that's
`when they send the promotion.
`A second one is when you come within range of the beacon or device. And
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`the example that Lutnick uses, you know, casinos have not just gambling, but
`there's stores, jewelry stores, other types of stores. You go into a jewelry store, it
`knows that you entered the proximity -- that you are approximate to the beacon,
`and it does a promotion for here's 20 percent off your jewelry purchase.
`Another thing that the Lutnick patent discusses is buying, testing, or
`interacting with something at a store, so –
`JUDGE BAER: Ms. Bifano, before you get to that third one, I notice on
`your slide there's a big difference there, right. In the first two examples you cite
`your petition and the third one you only cite your petitioner reply.
`MS. BIFANO:
`Yes.
`JUDGE BAER:
`Is it correct that you're conceding that you did not, in the
`petition, reference this third example, which was the buying, testing, and
`interacting?
`Yes.
`MS. BIFANO:
`JUDGE BAER: So, wouldn't that then be a new argument?
`MS. BIFANO:
`It's in response to patent owner's arguments that neither
`
`of these two examples are a user -- a user action. So patent owner makes
`arguments that achieving a winning outcome is not a user action and coming
`within range of the beacon is not a user action, so, we added another example.
`JUDGE BAER:
`I guess I'm having difficulty with your characterization as
`not a new argument, but a response to their argument. I mean, some things are
`certainly responses to arguments if they're presenting a different claim
`construction, say that sort of thing. This doesn't strike me as one of those things.
`And the reason why that doesn't strike me as one of those things, is because if their
`argument is, well, the reference doesn't teach the element, you say, well, we're just
`responding to that element, or that argument, rather. It doesn't really sound like a
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`response. So, my question to you is what is the difference between a new
`argument and just responding to their argument? And under sort of your
`articulation of just responding to their argument, how is it that not everything
`would qualify?
`MS. BIFANO: Well, I think if there was a
`change in the theory of the case, so if we had changed -- I mean, essentially, what
`we're arguing here is that Lutnick discloses several examples in which a user action
`would trigger the display of a promotion. There's several examples of those. And
`we give several examples. They take -- they take issue with some of the examples,
`so, we provided another example.
`JUDGE BAER: But if this isn't a change in theory I guess I'm not
`understanding what is. So maybe you could articulate for me what would be a
`change in theory that wouldn't encompass this sort of example.
`MS. BIFANO:
`So, it would be that -- I'm trying to think of one -- I
`mean, because I don't think this is a change in theory. This is simply citing to
`another example within the specification, what -- our theory is still the same, that
`Lutnick discloses these triggers, and here's just another example of them.
`If you're saying, then, well, you knew that we had to disclose which -- what
`triggers we were going to rely on and shame on the petitioner for not putting the
`third one into the petition, I can understand that, but we're responding to their
`argument, adding something that's in the reference as it is.
`We're not adding
`in another reference, so we didn't cite to another reference as an example or cite to
`some other state of the art that is different.
`We're citing to a paragraph within the reference within the whole section
`that talks about all the triggers that you can use. It's just another example that I
`think is helpful for the Board in determining the patentability of the claim.
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`8
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`

`

` 
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`JUDGE BAER: Fair enough. Thank you.
`MS. BIFANO: Okay. Okay. So, moving on -- if there aren't any other
`questions -- okay.
`So, moving on to claim construction. So this is on slide 7. So one, I think, the big
`issue for this patent is what is an object. So patent owner has said that it's the plain
`and ordinary meaning, and no construction is necessary. Petitioner has proposed
`the construction of the self-contained object with both the information for
`presentation and instructions describing under what conditions to present that
`information. That is taken directly from the patent owner's file history.
`They
`define the term this way. They use it to distinguish over prior art.
`There's a
`prior art reference called Mousseau that was used by the examiner to reject the
`claim. The Mousseau reference only disclosed transmitting information data items
`-- information, data items, messages, and data grams. It did not disclose also
`transmitting instructions. So that's why they say you have to transmit or receive
`both instructions and information.
`JUDGE WHITE: In this context, what would the "self-contained" mean?
`How would you know that something is self-contained?
`MS. BIFANO:
`Sure. That's a really great question. So self-contained in
`this context, in computer science and in this invention, would be that the device
`can use them together to present the promotion. So they come together, they can
`be accessed together, such that when a trigger occurs, the information and
`instructions are going to be accessible to the device, so that the promotion can be
`displayed when they're supposed to be displayed. So that's called self-contained.
`JUDGE WHITE: So, if I send one piece of information and then 30
`minutes later I send the other, would that still be self-contained or could you use
`them together?
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`9
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`MS. BIFANO:
`You could. I think that timing in terms of Lutnick and
`the casino and why you may be -- I don't know, I don't go to the casino, so I don't
`know how long people spend there, maybe 30 minutes is sufficient time -- but I
`think the timing -- so the point I think you're getting at is can you send it in two
`separate messages and how spaced apart do they need to be?
`And I think they need to be -- like, you can send them in back-to-back
`messages, which we'll discuss, and that's how the Internet works, that's how data is
`transmitted over the Internet. So patent owner's argument that it has to be in one
`single data packet sort of contradicts how this technology would actually function.
`So, yes, you can send them in two messages, and if we looked at -- let's see -- I'll
`just finish. You can send them in two messages. 30 minutes is probably fine in
`terms of the Lutnick reference, because someone is gambling in a casino, but
`probably you will want them to be closer in time together, so that if something
`happens, say they were gambling and they won, you would want it to be displayed
`together.
`So then –
`JUDGE WHITE: So, there would be unique two transmissions that you see
`as one self-contained unit for this purpose?
`MS. BIFANO:
`As long as they're timed close enough so they can be
`used together as a self-contained object to present the promotion, which is what
`Lutnick discloses.
`JUDGE WHITE: So, it's based on use, not based on how it gets there is
`your view?
`Yes.
`MS. BIFANO:
`JUDGE WHITE: I understand.
`JUDGE BAER: So, it's the timing between the information and the -- the
`information and the instruction, it's the time between them that makes it a single
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`

`

` 
`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`object or not; it's the delay between the two?
`MS. BIFANO:
`I would say -- no, I don't think that's necessarily true.
`It's that they can be used together to perform the function that they need to
`
`perform.
`JUDGE BAER: So even if one thing is delivered, say, on Tuesday, and
`the next thing is delivered on a Wednesday, as long as the instructions are used
`together with the information, that would be a single object; is that correct?
`MS. BIFANO:
`Yes.
`JUDGE BAER: So, then I'm not sure I would understand what wouldn't
`qualify as a single object? Assuming you have information and instructions, and
`they were linked to each other, what wouldn't qualify as a single object?
`MS. BIFANO:
`It would be -- so, you know, you've said one day, and I
`would assume that in the Lutnick reference that we're in a casino and people are
`there for over 24 hours, right, and then it would work. But if a person's already left
`the casino, like if it's a week later, if it's -- again, I'm not familiar with patronizing
`casinos, so I don't know how long people spend there -- but if it's without -- outside
`of that range and it's working in terms of the Lutnick invention, then yes, it
`wouldn't be. There is a -- there is -- and it's almost like if you would send a
`downloaded movie.
`Like say I want to watch, for example, I just recently
`watched the Elvis movie and I watched it over three days, because I can't sit for
`that long to watch a movie consistently for two and a half hours. But I wouldn't
`say that I would be -- you know, part of it came on one day, the other day, and the
`next day, and you would say I had watched one entire movie, but it was spread out
`over those three days, and that's -- it's not that I -- I streamed it on, what did I
`stream it on, probably Apple, and that's how I watched it, but I didn't download it, I
`streamed it from the Internet, so portions of it came on different days, but I still
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`think you can say it's one movie, it's a self-contained movie that I couldn't play
`through the entire time.
`JUDGE BAER: But don't the claims otherwise instruct that the
`instructions and the object are related outside of this one objectness?
`MS. BIFANO: Well, they're used together to present the promotion, is
`
`that –
`
`JUDGE BAER: Right –
`MS. BIFANO:
`Yes.
`JUDGE BAER:
`-- they're used together to present the promotion, so in
`the context of these claims, when you have something that is used together with the
`promotion, the promotion –
`MS. BIFANO:
`Yes.
`JUDGE BAER:
`-- plus the instructions, what I'm saying is, isn't
`
`everything going to then qualify as an object and then aren't we reading the
`necessary object out of the claims?
`MS. BIFANO:
`No, I don't think that you're reading it out of the claims,
`because you still need to have both of them together to do the job that needs to be
`done, which is to present the promotion.
` So, the prior art didn't disclose the
`instructions. So you still need something, some software program that is going to
`have both of them together, and that is the object.
`JUDGE WHITE: So then is it your view that they become an object when
`it becomes used? It's not an object until you use it?
`MS. BIFANO: Well, it can be or it can be assembled when the device
`receives it. So say they come in back-to-back messages, like they come as the
`Internet would send messages or data transmission happens, they're not going to
`come in the same packet. And then once they get to the device, the device can form
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
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`them together or once they have arrived. I mean, I think probably several days is
`not the right example, it's within seconds of each other that they're being
`transmitted.
`JUDGE BAER: You mean in Lutnick, it's being –
`MS. BIFANO:
`Yes.
`JUDGE BAER: Okay.
`MS. BIFANO:
`Yes. Yes. Okay. All right. We covered a lot of
`topics just there. So, let me keep on schedule, let's see here. Okay. So let's just -
`- let's -- I'm going to skip ahead to slide 14. And this is what we just were talking
`about a little bit that this self-contained object can be formed at the mobile gaming
`device. So, we know -- everyone agrees instructions are stored at the mobile
`gaming device, the promotions are stored at the mobile gaming device, and -- oh,
`sorry, that's slide 15.
`Moving to slide 16. And there's nothing in the claim that says -- that limits
`where the object is formed, that it has to be formed prior to receipt -- at the device
`it has to be received. The limitation is receiving by the data processing system is
`object.
`Our expert testified during his deposition that this is how data is
`transferred. It can be transferred in back-to-back communications, and then
`packaged as an object on the mobile device. This is contrary, I think, to the patent
`owner's position, where they say it has to come in one single packet, so I think
`that's the crux of the dispute here. Okay. So -- so what if you disagree -- so I'm on
`slide 17 -- you disagree and you say, you know what, I don't buy this back-to-back,
`they're serial transmissions, it has to be in one object, what does Lutnick disclose?
`So, our first point is on slide 18, where we -- this poor connectivity example. So, in
`this example in Lutnick, if the user -- the person going around the casino is in an
`area of poor connectivity, and that's when the promotion would want to be
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`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`displayed, instructions and the promotion are not together on the device, and
`transmitted together on a device, the promotion will not be able to displayed,
`because one part will be missing.
`So, this is a teaching that it is Lutnick's
`intention to have these being transmitted together.
`JUDGE BAER: And by "together," do you mean under patent owner's
`construction of –
`Yes.
`MS. BIFANO:
`-- in a single packet?
`JUDGE BAER:
`Yes. Okay. And then moving to slide 19. So patent
`MS. BIFANO:
`
`owner, I'm assuming, is going to get up and say that there's nothing -- there's no
`explicit statement. The words are not in Lutnick that says that the casino server
`transmits the instructions and information together in one packet to the mobile
`gaming device. So they're likely going to say that. Well, there is disclosure in
`Lutnick. There's lots of boilerplate in Lutnick, where they say that some of these
`steps may be performed simultaneously, despite being described as occurring in
`serial, so it does disclose it.
`So even if those words are not verbatim in Lutnick,
`Lutnick discloses that they can be done simultaneously. Further, on slide 20, so
`there's also no dispute between the parties that the marketer device, the one that
`creates the promotions and sends the instructions, that those are sent -- patent
`owner says that those are sent together from the marketer device, the casino server.
`The issue is the casino server then sending -- what's it sending to the mobile
`gaming device? There's a gap in terms of what Lutnick discloses. Now, patent
`owner claims that you would separate them. So they come together -- they come
`together in this little package to get to the casino server, and then some -- for some
`reason, it's not disclosed in Lutnick, they're separate.
`And then they're sent
`separately to the mobile gaming device.
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`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`And there's -- patent owner fails to cite anything in Lutnick that supports that.
`
`And it's sort of why would you do that?
`And we'll get to that when we
`get to obviousness. But then the other point we would like to make is on slide 21,
`that the patent -- Lutnick also discloses you can take out that central server, you
`don't need it.
`You can just do direct communication from the marketer device
`to the mobile gaming device. So if you take that out, we already have -- we know
`that the marketer device is sending these things as one package. They can go
`directly to the mobile gaming device. And then we have this single object, single
`transmission receipt at the mobile gaming device.
`Now, let's go into you still don't buy it, you're still not convinced. So now
`let's talk about why it would be obvious to put them together. So, again, on slide
`23, this poor connectivity example, you know, if you move into an area that has
`poor cell service, this casino wants you to get these promotions, like, they want
`you to go spend money. They're going to want to make sure that you get them and
`you get them when you need them, so you spend more money. So, they're going
`to make sure it would be obvious to put them together, so that you get them at the
`right time.
`Also, if your battery is dying and maybe, you know, you can't -- your phone,
`maybe it's an older phone at the time of this invention, is it going to let you connect
`to the Internet at that time? You still wouldn't be able to prepare -- to display that
`promotion, so you have to have it at the same time. Moving on to the next slide,
`on slide 24.
`Lutnick also discloses that tags or timestamps can be included with the promotions,
`so if those contain the promotions, why can't then it be obvious to include
`instructions with those promotions as well?
`JUDGE BAER: Ms. Bifano, are the tags, are they instructions
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`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`themselves? Do you assert that they are instructions themselves?
`MS. BIFANO:
`I think they can be instructions themselves. I think it's
`not as clear that they are saying the timing, but they certainly are saying, for
`example, when a promotion is old.
`So, when you wouldn't do a promotion, like
`if the time has expired for it. But it's not doing it in response to the trigger. So, I
`think there is an argument there to say that they also could be construed as
`instructions, but it's certainly, even if you don't believe that they are instructions, it
`would be obvious if you're included those additional things why not also include
`those instructions with the message.
`Okay. Let's see, where are we? There we go. Okay. So then patent owner also --
`we're on slide 25 -- also argues that the gaming device is only one of a possible
`number of display devices, and it doesn't have -- it has limited responsibilities, so it
`can't be doing both the instructions and the presentation. And that's just -- it's just
`not true.
`There's -- sure, there are plenty of other -- I mean, we're in a casino,
`we want people to spend money, there's plenty of devices there to tell people to --
`to -- what promotions are available. There’re other display devices, but the --
`Lutnick does teach that the mobile device has both of these stored on there, and it
`can trigger the display of a promotion when those instructions are met. And then
`patent owner also takes issue with our expert saying it would be simpler to send
`them together, you know, and I think it certainly would be simpler to send them
`together, than if they've already come from the marketer device, they're put in one
`package, they're sent to the casinos server. Why do we add the extra step to pull
`them apart when, first of all, it's not disclosed that they're pulled apart, and why it
`would be easier from all aspects of data transmission and computer science to keep
`them together, so –
`JUDGE BAER: And by pulled apart, do you mean in time or in data
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`
`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
`space?
`I think in both is what patent owner would say.
`MS. BIFANO:
`So, yeah, I think it's pretty clear from the record that it would be obvious, even if
`the board does not find that it's disclosed, that, first, that a self-contained object
`would have to have the packet come together in the same time, in the same bundle.
`
`And then if it -- if Lutnick doesn't disclose that, I think it would be obvious
`to do that because the teaching -- you have these teachings of the timestamps and
`the tags, it's already sent to the casino server together, so it would be obvious to
`just pass it along as the same piece of data that's already structured, and it is just
`simpler to do it that way.
`Okay. So, to summarize, you know, we know that these promotions, instructions
`they're on the mobile gaming device. We know that there are several benefits to
`keeping them together, the low battery, the making sure that they are able to be
`presented when the casino would want them to be presented. And some of them
`also have these instructions, somewhat instructions of these time -- time label --
`sorry, tag label and timestamp associated with them.
`So that's the object. Do you have any questions about the object before we move
`to the conditions?
`(No response.)
`Okay. Great. So I'm on slide 29 now. I'll get there.
`MS. BIFANO:
`Okay. So the conditions protecting a particular user action.
`Again, we have put three, four together as examples, the achieving a winning
`outcome, coming in within range, and then buying, testing, or interacting with an
`object. So, moving to slide 30. So, for achieving the winnable outcome, the patent
`owner alleges that this isn't a user action. So they're saying, I guess, that it's either
`a game of chance, so the win is because it's chance, it's not the user doing
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`

`

`IPR2022-00129 (Patent 8,566,839 B2)
`IPR2022-00131 (Patent 8,639,267 B2)
`
` 
`something. But I don't know, when I play a game I think I won. And if I win I feel
`like I won. So I would say that that's a user action, pretty clearly. And Lutnick
`gives lots of examples of different types of games that can be played that are more
`skill-type games and are not necessarily, like, luck-based games. So I would think
`that achieving a winning outcome is pretty clearly a user action.
`Okay. And our next example on slide 31, so this one's a little more complicated.
`Well, these are patent owner's arguments as to why it's not -- a user action is more
`complicated, because this loops in some other language in the claim. So here we
`also have to look at what this event specification that is transmitted that includes a
`whereabouts condition, and a condition for detecting particular user action.
`Now, patent owner says when we say, oh, this proximity that you're close to the
`beacon, that's a person walking