Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Date: May 23, 2022
`
`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
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Date: May 23, 2022
`
`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
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-00129
`Patent 8,566,839 B2
`
`
`I.
`INTRODUCTION
`A. Background and Summary
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48
`(“the challenged claims”) of U.S. Patent No. 8,566,839 B2 (Ex. 1001, “the
`’839 patent”). BillJCo, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 5, “Prelim. Resp.”) to the Petition.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
`decision to institute may not institute on fewer than all claims challenged in
`the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence
`of record, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that at least one of the challenged claims of the ’839 patent is
`unpatentable. Accordingly, we institute an inter partes review as to the
`challenged claims of the ’839 patent on all the grounds of unpatentability in
`the Petition.
`B. Real Parties in Interest
`The parties identify themselves as the only real parties in interest.
`Pet. 1; Paper 4, 2.
`C. Related Matters
`The parties indicate that the ’839 patent is the subject of the following
`district court cases: 1) BillJCo, LLC v. Apple Inc., No. 6:21-cv-00528 (W.D.
`Tex.) (“District Court Litigation”); 2) BillJCo, LLC v. Cisco Systems, Inc.,
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`No. 2:21-cv-00181 (E.D. Tex.); and 3) BillJCo, LLC v. Hewlett Packard
`Enterprise Company, No. 2:21-cv-00183 (E.D. Tex.). Pet. 1; Paper 4, 2.
`D. The ’839 Patent
`The ’839 patent relates to “managing information for automatic
`presentation or distribution.” Ex. 1001, 1:31–37. The ’839 patent states that
`“[c]onventional advertising formats are handled with a specialized operating
`system for how to process the advertisement so that the source . . . ensures or
`maximizes its messaging while the recipient . . . is also able to control to a
`somewhat lesser extent when presentation is desired.” Id. at 4:33–38.
`According to the ’839 patent, “[t]he problem is the same advertisement may
`be treated differently at a different operating system,” and, thus, “[t]he
`originator . . . of the advertisement loses automatic control over how the
`advertisement should be presented at any operating system.” Id. at 4:38–42.
`To address this alleged deficiency, the ’839 patent describes
`“encoding information associated with the advertisement for how any
`receiving operating system is to present it.” Id. at 4:42–49. This technique
`“has the advantage of supporting heterogeneous operating systems with
`unique advertisement presentation capabilities based on a recipient’s
`preferences relative to an originator[’s] . . . intent, while doing so according
`to privileges, and in a ‘user-friendly’ manner.” Id. at 4:49–54.
`E. Illustrative Claim
`Of the challenged claims, claims 1 and 25 are independent. Claim 1 is
`
`reproduced below.
`1. A method for information presentation by a receiving
`data processing system, said method comprising:
`receiving, by said receiving data processing system, an
`object, said object containing information and instructions for
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`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;
`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.
`Ex. 1001, 64:59–65:26.
`F. Evidence
`Petitioner submits the following evidence:
`
`Evidence
`Declaration of Thomas La Porta, Ph.D. (“La Porta
`Declaration”)
`
`Exhibit
`No.
`1003
`
`4
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`Exhibit
`No.
`1005
`
`1006
`
`1007
`1026
`
`Evidence
`Lutnick, US 2008/0167106 A1, published July 10, 2008
`(“Lutnick”)
`Rankin, US 2002/0137462 A1, published Sept. 26, 2002
`(“Rankin”)
`Specification of the Bluetooth System: Wireless Connections
`Made Easy, Volume 0 (Nov. 4, 2004) (“Bluetooth Core”)
`Evans, US 6,327,535 B1, issued Dec. 4, 2001 (“Evans”)
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1–3, 8, 21, 23–27, 32,
`45, 47, 48
`20, 44
`23, 47
`24, 48
`
`Reference(s)/Basis
`35 U.S.C. §
`Lutnick
`103
`Lutnick, Rankin
`103
`Lutnick, Evans
`103
`Lutnick, Bluetooth Core
`103
`II. ANALYSIS
`
`A. 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 15–20. Section
`314(a) states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Under § 314(a), we have discretion to deny institution of an inter partes
`review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).
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`We consider several factors when determining whether to deny institution
`under § 314(a) based on a parallel district court proceeding, specifically
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”).
`1. Factor 1 – Whether the court granted a stay or evidence
`exists that one may be granted if a proceeding is instituted
`Under the first Fintiv factor, we consider “whether the court granted a
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Id. at 6. Petitioner argues that it “intends to move to stay the [District Court
`Litigation], and the opportunity for . . . simplification increases the
`likelihood that the [District Court] will grant a stay in view of IPR
`institution.” Pet. 62. Patent Owner argues that “a stay is not likely to be
`granted on a contested motion,” because the District Court grants stays in a
`low percentage of cases. Prelim. Resp. 15–16.
`Neither party identifies any statements by the District Court or other
`evidence that specifically addresses a stay of the District Court Litigation.
`See Pet. 62; Prelim. Resp. 15–16. We decline to speculate based on the
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`record in this case whether the District Court would grant a stay of the
`District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a
`result, we determine that the first Fintiv factor is neutral.
`2. Factor 2 – Proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`Under the second Fintiv factor, we consider the “proximity of the
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11 at 6. Petitioner argues that the District
`Court “tentatively set trial for February 13, 2023,” but “[t]here is no
`guarantee trial will commence” on that date. Pet. 62–63. According to
`Petitioner, “‘a court’s general ability to set a fast-paced schedule is not
`particularly relevant,’ especially where ‘the forum [W.D. Tex.] itself has not
`historically resolved cases so quickly.’” Id. at 63. Patent Owner argues that
`the “trial date is extremely reliable,” because the District Court and parties
`“have kept to the scheduling order fairly closely.” Prelim. Rep. 16–17.
`The current trial date in the District Court Litigation is February 13,
`2023, which we “generally take . . . at face value absent some strong
`evidence to the contrary.” Ex. 1022, 4; see Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 at 13 (PTAB May 13, 2020) (informative)
`(“Fintiv II”). The projected statutory deadline for a final written decision in
`this case is in May 2023. Because the trial date in the District Court
`Litigation is a few months before the projected statutory deadline for a final
`written decision in this case, we determine that the second Fintiv factor
`slightly favors exercising our discretion to deny institution.
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`3. Factor 3 – Investment in the parallel proceeding by the
`court and the parties
`Under the third Fintiv factor, we consider the “investment in the
`parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6.
`Petitioner argues that “no discovery has taken place,” and although a claim
`construction hearing “is scheduled for February 10, 2022, it is unclear when
`the [District Court] will issue a [claim construction] order.” Pet. 64–65.
`Patent Owner argues that the District Court issued a claim construction order
`that construes three terms in the ’839 patent. Prelim. Resp. 18. Patent
`Owner also argues that Petitioner filed the Petition six months after Patent
`Owner served its complaint in the District Court Litigation. Id. at 17.
`The evidence of record indicates that the District Court and the parties
`invested minimal resources in the District Court Litigation as to issues of
`unpatentability involving the ’839 patent. The District Court issued a claim
`construction order that addresses three terms in the ’839 patent. Ex. 2003,
`2–3. But, for two of the three terms, the District Court stated only that those
`terms have their “[p]lain and ordinary meaning.” Id. And the evidence of
`record indicates that fact discovery is ongoing, expert discovery has not
`begun, and the deadline for dispositive motions is not until November 2022.
`Ex. 1022, 3. Further, Petitioner exercised reasonable diligence in filing the
`Petition about six weeks after serving its preliminary invalidity contentions.
`Pet. 68; Ex. 2006, 81. Thus, we determine that the third Fintiv factor weighs
`against discretionary denial of institution.
`4. Factor 4 – Overlap between issues raised in the petition
`and in the parallel proceeding
`Under the fourth Fintiv factor, we consider the “overlap between
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
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`at 6. Petitioner argues that “the Petition challenges the validity of claims
`25–27, 32, 44, 45, 47, and 48, which are not being asserted in the [District
`Court] [L]itigation.” Pet. 65. Petitioner also states that “if the Board
`institutes IPR, Petitioner will not assert invalidity of the challenged claims in
`the [D]istrict [C]ourt [L]itigation using the grounds asserted in this
`[P]etition.” Id. Patent Owner argues that “Petitioner’s stipulation is quite
`limited in scope” and only mitigates “concerns of duplicate efforts and of
`potentially conflicting decisions ‘to some degree.’” Prelim. Resp. 18.
`Patent Owner also argues that because Petitioner relies on more references
`and more combinations in the District Court Litigation than in the Petition,
`instituting an inter partes review would decrease “efficiency” and increase
`“the possibility of conflicting decisions.” Id. at 18–19.
`The Petition challenges claims 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47,
`and 48, and relies on Lutnick, Rankin, Evans, and Bluetooth Core. Pet. 4.
`Petitioner’s invalidity contentions in the District Court Litigation address
`claims 1–3, 8, 20, 21, 23, and 24, and rely on Lutnick, Evans, and Bluetooth
`Core. Pet. 65; Ex. 2006, 7, 13. Nonetheless, Petitioner’s stipulation that it
`will not pursue the grounds asserted in the Petition in the District Court
`Litigation mitigates to some degree concerns of duplicative efforts and
`potentially conflicting decisions. Ex. 1012; see Sand Revolution II, LLC v.
`Continental Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at
`12 (PTAB June 16, 2020) (informative). Thus, we determine that the fourth
`Fintiv factor weighs marginally against discretionary denial of institution.
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`5. Factor 5 – Whether the petitioner and the defendant in the
`parallel proceeding are the same party
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11 at 6. Here, Petitioner is the defendant in the District Court
`Litigation. Pet. 66; Prelim. Resp. 19. But, as we discussed for the second
`factor, the trial date in the District Court Litigation is only a few months
`before the projected statutory deadline for a final written decision in this
`case. Under these circumstances, we determine that the fifth Fintiv factor
`slightly favors exercising our discretion to deny institution.
`6. Factor 6 – Other circumstances that impact the Board’s
`exercise of discretion, including the merits
`Under the sixth Fintiv factor, we consider “other circumstances that
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 6. Petitioner argues that the ’839 patent “has never been
`challenged in a PTAB post-issuance proceeding,” the Office “did not
`consider the prior art references asserted in this [P]etition . . . during
`prosecution,” and “the strength of Petitioner’s patentability challenges on the
`preliminary record favor institution.” Pet. 66–67. Patent Owner argues that
`“Petitioner made a weak showing on the merits.” Prelim. Resp. 20. Patent
`Owner also argues that “an IPR will not provide the parties with an in-depth
`analysis of the ‘839 patent” because “more art and bases for challenging the
`claims of the ‘839 patent were raised in the [District Court] Litigation.” Id.
`As discussed below, on this record and at this stage of the proceeding,
`Petitioner presents a reasonably strong case that the challenged claims are
`unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground
`raised in the petition seem particularly strong on the preliminary record, this
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`fact has favored institution.”). For example, Petitioner’s evidence shows
`that Lutnick teaches an “object containing information and instructions for
`presenting said information” and an “event specification including a
`whereabouts condition and a condition for detecting a particular user
`action,” which are the only limitations that Patent Owner disputes at this
`stage of the proceeding. See Section II.D.1. Thus, we determine that the
`sixth Fintiv factor weighs against discretionary denial of institution.
`7. Summary
`Based on our holistic view of the Fintiv factors, we decline to exercise
`our discretion under § 314(a) to deny the Petition.
`B. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “at least a bachelor’s degree in computer science, computer engineering,
`or an equivalent, and two years of experience relating to wireless
`communications.” Pet. 5–6 (citing Ex. 1003 ¶¶ 39–40). Petitioner’s
`description of the level of ordinary skill in the art is supported by the
`testimony of Petitioner’s declarant, Dr. Thomas La Porta. Ex. 1003
`¶¶ 39–40. Patent Owner does not propose a description of the level of
`ordinary skill in the art or dispute Petitioner’s description. We adopt
`Petitioner’s description for purposes of this Decision.
`C. Claim Construction
`In an inter partes review proceeding, a claim of a patent is construed
`using the same standard used in a civil action under 35 U.S.C. § 282(b),
`including construing the claim in accordance with the ordinary and
`customary meaning of the claim as understood by one of ordinary skill in the
`art and the prosecution history pertaining to the patent. 37 C.F.R.
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`§ 42.100(b). Petitioner proposes construing the phrase “object containing
`information and instructions for presenting said information” in claim 1 and
`a similar phrase in claim 25 to mean “a self-contained object with both the
`information for presentation and the instructions describing under what
`conditions to present that information.” Pet. 8–10. Patent Owner does not
`propose an express construction for any claim terms. We determine that no
`claim terms require express construction for purposes of this Decision.
`D. Obviousness of Claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48 over
`Lutnick
`Petitioner argues that claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48
`would have been obvious over Lutnick. Pet. 10–48. For the reasons
`discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48
`would have been obvious over Lutnick.
`1. Claim 1
`Claim 1 recites “[a] method for information presentation by a
`receiving data processing system.” Ex. 1001, 64:59–60. Petitioner presents
`evidence that Lutnick teaches a method for displaying promotions on a
`mobile gaming device. Pet. 14–15 (citing Ex. 1005, code (57), ¶¶ 92, 193).
`At this stage of the proceeding, Petitioner shows sufficiently that Lutnick
`teaches the preamble of claim 1.1
`Claim 1 recites “receiving, by said receiving data processing system,
`an object, said object containing information and instructions for presenting
`
`
`1 Because Petitioner presents evidence that the prior art teaches the
`recitations in the preamble of claim 1, at this stage of the proceeding, we
`need not decide whether the preamble is limiting.
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`said information.” Ex. 1001, 64:61–63. Petitioner presents evidence that
`Lutnick’s mobile gaming device receives a promotion and instructions for
`presenting the promotion. Pet. 20–22 (citing Ex. 1005 ¶¶ 119, 128, 184,
`290). Petitioner also presents evidence that Lutnick “describes situations
`where it would be beneficial to pre-download a program or software and
`promotions, for example in case there are connectivity issues between” a
`mobile gaming device and a casino server. Id. at 22–23 (citing Ex. 1005
`¶ 289). According to Petitioner, a person of ordinary skill in the art would
`have appreciated or found it obvious that “in this scenario, the promotions
`are transmitted with the program or software, such that this package is a
`‘self-contained’ object because it is a single package including both the
`program or software and the promotions.” Id. at 22–25 (citing Ex. 1003
`¶¶ 86–90).
`Patent Owner argues that the portions of Lutnick cited by Petitioner
`teach transmitting a promotion and instructions to a casino server or a
`marketer device, not to a mobile gaming device. Prelim. Resp. 6–7. On this
`record, Patent Owner’s argument is unavailing. Petitioner identifies specific
`portions of Lutnick that teach transmitting a promotion and instructions to a
`mobile gaming device. Pet. 20–22 (citing Ex. 1005 ¶¶ 119, 128, 184, 290).
`For example, Lutnick teaches that “the casino server may transmit
`instructions to a mobile gaming device” that “tell the mobile gaming device
`to present a promotion when, or only when the mobile gaming device is in a
`particular area of a casino.” Ex. 1005 ¶ 119 (emphasis added).
`Patent Owner argues that Lutnick only teaches “data transmission
`(i.e., information about best time to run) to be compiled on the casino’s
`server for subsequent evaluation, not ‘instructions’ actually causing a
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`promotion to display on a mobile gaming device.” Prelim. Resp. 7–8. On
`this record, Patent Owner’s argument is unavailing. Petitioner identifies
`specific portions of Lutnick that teach transmitting instructions for
`presenting a promotion on a mobile gaming device. Pet. 20–22 (citing
`Ex. 1005 ¶¶ 119, 128, 184, 290). For example, Lutnick teaches that “the
`casino server may transmit instructions to a mobile gaming device” that “tell
`the mobile gaming device to present a promotion when, or only when the
`mobile gaming device is in a particular area of a casino.” Ex. 1005 ¶ 119
`(emphases added).
`Patent Owner argues that “[n]othing within the cited disclosures of
`Lutnick describes or suggests an advantage to combining transmission of a
`promotion with programming for displaying the promotion within a
`combined object.” Prelim. Resp. 9. Further, according to Patent Owner,
`“combining promotions with a program would have been contrary to
`convention wisdom at the time of the invention” because “doing so could
`make transmission more difficult, e.g., due to size.” Id. at 9–10.
`On this record, Patent Owner’s argument is unavailing. Even if
`Lutnick does not teach transmitting a promotion and instructions in a single
`object, Petitioner presents evidence indicating that a person of ordinary skill
`in the art would have found it obvious to do so. Pet. 22–25 (citing Ex. 1003
`¶¶ 86–90). For example, Petitioner presents evidence that transmitting a
`promotion and instructions in a single object would have allowed the mobile
`gaming device to display a promotion even when there are connectivity
`issues between the mobile gaming device and a casino server. Pet. 24 (citing
`Ex. 1003 ¶ 90; Ex. 1005 ¶ 289). Further, even if transmitting a promotion
`and instructions in a single object would have increased the size of the
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`transmission, that alone does not negate Petitioner’s rationale for doing so.
`See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
`2000) (“The fact that the motivating benefit comes at the expense of another
`benefit, however, should not nullify its use as a basis to modify the
`disclosure of one reference with the teachings of another.”).
`Claim 1 recites “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.” Ex. 1001, 64:63–65:5.
`Petitioner presents evidence that Lutnick teaches presenting a promotion
`when a mobile gaming device is in proximity of a specific location (i.e., a
`whereabouts condition). Pet. 25–26 (citing Ex. 1005 ¶¶ 141, 241, 255–256).
`Petitioner also presents evidence that Lutnick teaches presenting a
`promotion when a user of a mobile gaming device achieves a winning
`outcome (i.e., a particular user action).2 Id. at 26–27 (citing Ex. 1005
`¶¶ 250–254).
`Patent Owner argues that “winning a game is not a ‘particular user
`action by a user of said receiving data processing system’; instead, it is a
`category of responses by the mobile gaming device, not the user.” Prelim.
`
`2 Petitioner also presents evidence that Lutnick teaches presenting a
`promotion based on a user’s advertising preferences or based on a user
`coming into range of a beacon. Pet. 26–27. For purposes of this Decision,
`we need not rely on those teachings. Patent Owner may present any
`arguments regarding those teachings again in the Response after institution.
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`Resp. 13. On this record, Patent Owner’s argument is unavailing. Lutnick
`teaches that “a promotion may be presented to a player if the player has
`achieved a winning outcome.” Ex. 1005 ¶ 250 (emphasis added). Lutnick’s
`use of the phrase “the player has achieved” indicates that the promotion is
`triggered by the user’s action, not just a response by the mobile gaming
`device. Id.
`Claim 1 recites “storing, by said receiving data processing system,
`said information in a memory of said receiving data processing system.”
`Ex. 1001, 65:6–8. Petitioner presents evidence that Lutnick teaches
`downloading a promotion to a mobile gaming device. Pet. 29–30 (citing
`Ex. 1005 ¶¶ 289–290). At this stage of the proceeding, Petitioner shows
`sufficiently that Lutnick teaches this limitation of claim 1.
`Claim 1 recites “processing, by said receiving data processing system,
`said instructions upon said receiving, by said receiving data processing
`system, said object.” Ex. 1001, 65:9–11. Petitioner presents evidence that
`Lutnick’s mobile gaming device executes instructions for presenting a
`promotion. Pet. 30–31 (citing Ex. 1005 ¶¶ 55–56). At this stage of the
`proceeding, Petitioner shows sufficiently that Lutnick teaches this limitation
`of claim 1.
`Claim 1 recites “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.”
`Ex. 1001, 65:12–15. Petitioner presents evidence that Lutnick teaches
`triggering a promotion when a mobile gaming device is in proximity of a
`specific location. Pet. 32–34 (citing Ex. 1005 ¶¶ 184, 209, 255–256, 392).
`
`16
`
`
`
`IPR2022-00129
`Patent 8,566,839 B2
`
`At this stage of the proceeding, Petitioner shows sufficiently that Lutnick
`teaches this limitation of claim 1.
`Claim 1 recites “monitoring, by said receiving data processing system,
`said trigger event in response to said configuring, by said receiving data
`processing system, said trigger event.” Ex. 1001, 65:16–18. As discussed
`above, Petitioner presents evidence that Lutnick teaches triggering a
`promotion when a mobile gaming device is in proximity of a specific
`location. Pet. 32–35 (citing Ex. 1005 ¶¶ 184, 209, 255–256, 392). Petitioner
`also presents evidence that a person of ordinary skill in the art “would have
`appreciated that, in order to cause the promotion to be ‘triggered’ based on a
`player’s location, the [mobile gaming device] monitors the event that
`triggers the promotion display.” Id. at 34–35 (citing Ex. 1003 ¶ 109). At
`this stage of the proceeding, Petitioner shows sufficiently that Lutnick
`teaches this limitation of claim 1.
`Claim 1 recites “recognizing, by said receiving data processing
`system, said trigger event, after said monitoring, by said receiving data
`processing system, said trigger event.” Ex. 1001, 65:20–22. Petitioner
`presents evidence that Lutnick teaches recognizing when a mobile gaming
`device is in proximity of a specific location. Pet. 36–37 (citing Ex. 1005
`¶¶ 255–256, 277, 392). At this stage of the proceeding, Petitioner shows
`sufficiently that Lutnick teaches this limitation of claim 1.
`Claim 1 recites “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.” Ex. 1001, 65:23–26. Petitioner presents evidence that Lutnick
`teaches presenting a promotion when a mobile gaming device is in proximity
`
`17
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`
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`IPR2022-00129
`Patent 8,566,839 B2
`
`of a specific location. Pet. 37–38 (citing Ex. 1005 ¶¶ 242, 256, 392). At this
`stage of the proceeding, Petitioner shows sufficiently that Lutnick teaches
`this limitation of claim 1.
`2. Claims 2, 3, 8, 21, 23–27, 32, 45, 47, and 48
`Independent claim 25 recites limitations similar to those discussed
`above for claim 1. Dependent claims 2, 3, 8, 21, 23, 24, 26, 27, 32, 45, 47,
`and 48 depend, directly or indirectly, from claims 1 or 25. Petitioner
`presents evidence that Lutnick teaches the limitations of claims 2, 3, 8, 21,
`23–27, 32, 45, 47, and 48. Pet. 13–48. Other than the arguments discussed
`above for claim 1, Patent Owner does not raise any separate arguments
`regarding claims 2, 3, 8, 21, 23–27, 32, 45, 47, and 48.
`3. Summary
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1–3, 8, 21, 23–27, 32, 45, 47,
`and 48 would have been obvious over Lutnick.
`E. Obviousness of Claims 20 and 44 over Lutnick and Rankin
`Petitioner argues that claims 20 and 44 would have been obvious over
`Lutnick and Rankin. Pet. 49–51. Petitioner identifies evidence indicating
`that the Lutnick and Rankin combination teaches the limitations of claims 20
`and 44, and that a person of ordinary skill in the art would have had reason
`to combine these references. Id. Other than the arguments discussed above,
`at this stage of the proceeding, Patent Owner does not raise any arguments
`relating to this asserted ground. On this record, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 20 and 44 would
`have been obvious over Lutnick and Rankin.
`
`18
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`
`
`IPR2022-00129
`Patent 8,566,839 B2
`
`
`F. Obviousness of Claims 23 and 47 over Lutnick and Evans
`Petitioner argues that claims 23 and 47 would have been obvious over
`Lutnick and Evans. Pet. 51–56. Petitioner identifies evidence indicating
`that the Lutnick and Evans combination teaches the limitations of claims 23
`and 47, and that a person of ordinary skill in the art would have had reason
`to combine these references. Id. Other than the arguments discussed above,
`at this stage of the proceeding, Patent Owner does not raise any arguments
`relating to this asserted ground. On this record, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 23 and 47 would
`have been obvious over Lutnick and Evans.
`G. Obviousness of Claims 24 and 48 over Lutnick and Bluetooth
`Core
`Petitioner argues that claims 24 and 48 would have been obvious over
`Lutnick and Bluetooth Core. Pet. 56–61. Petitioner identifies evidence
`indicating that the Lutnick and Bluetooth Core combination teaches the
`limitations of claims 24 and 48, and that a person of ordinary skill in the art
`would have had reason to combine these references. Id. Other than the
`arguments discussed above, at this stage of the proceeding, Patent Owner
`does not raise any arguments relating to this asserted ground. On this
`record, Petitioner demonstrates a reasonable likelihood of prevailing in
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