DOCKET NO.: 337722-000231
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Jonathan Hicks, Reg. No. 75,195
`DLA Piper LLP (US)
`
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`BILLJCO LLC,
`
`Patent Owner
`
`IPR2022-00129
`
`DECLARATION OF THOMAS LA PORTA, PH.D.
`REGARDING CLAIMS 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48
`OF U.S. PATENT NO. 8,566,839
`
`APPLE
`EXHIBIT 1003 - PAGE 0001
`
`
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Jonathan Hicks, Reg. No. 75,195
`DLA Piper LLP (US)
`
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`BILLJCO LLC,
`
`Patent Owner
`
`IPR2022-00129
`
`DECLARATION OF THOMAS LA PORTA, PH.D.
`REGARDING CLAIMS 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48
`OF U.S. PATENT NO. 8,566,839
`
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`I, Thomas La Porta, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Thomas F. La Porta, and I have been retained by counsel
`
`for Petitioner Apple Inc. (“Petitioner”) to analyze U.S. Patent No. 8,566,839 (“’839
`
`patent”) and to provide my opinions regarding the patentability of claims 1–3, 8,
`
`20, 21, 23–27, 32, 44, 45, 47, and 48 of the ’839 patent.
`
`2.
`
`I am being compensated at my normal consulting rate of $550 per
`
`hour for my time. My compensation is not contingent on the outcome of this
`
`proceeding, or of any proceedings relating to the ’839 patent.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`3.
`
`I am the Director of the School of Electrical Engineering and
`
`Computer Science at Penn State University. I am also an Evan Pugh Professor and
`
`the William E. Leonhard Professor in the Department of Computer Science and
`
`Engineering and the Department of Electrical Engineering at Penn State
`
`University. I was the founding Director of the Institute of Networking and Security
`
`Research at Penn State. I have worked on telecommunications networks since
`
`1986.
`
`4.
`
`I received my B.E. and M.E. in Electrical Engineering from The
`
`Cooper Union for the Advancement of Science and Art in 1986 and 1987,
`
`1
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`respectively, and my Ph.D. in Electrical Engineering from Columbia University in
`
`1992.
`
`5.
`
`I joined AT&T Bell Labs (which later became Bell Labs, Lucent
`
`Technologies) in 1986 after receiving my B.E. degree, and pursued my M.E.
`
`degree part-time. In my first job at Bell Labs, I tested the performance and
`
`interoperability of many data communication devices within the AT&T network. I
`
`transferred into Bell Labs Research in 1990 to pursue research full-time.
`
`6.
`
`Starting in 1994, I performed research directed towards mobile and
`
`wireless networks. During this period, I worked extensively on signaling protocols
`
`and call processing for mobile telephony networks and mobile data applications. A
`
`large portion of my work was directed at architectures, protocols, and software for
`
`enabling different types of serviced on wireless networks.
`
`7.
`
`In 1997, I became the Director of the Mobile Networking Research
`
`Department within Bell Labs Research. This group, which included approximately
`
`30 researchers and support developers, carried out basic research on mobile
`
`networks including cellular telephony, mobile Internet, integrated networks and
`
`mobile data services. In 2000, I was named the Director of the Advanced Mobile
`
`Networking Department within the Wireless Business Unit of Lucent
`
`Technologies. My role in this job was to work with development organizations to
`
`turn technology into products.
`
`2
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`8.
`
`During both my development and research careers, I interacted
`
`extensively with computer scientists and engineers responsible for the design,
`
`development, and testing of mobile telephony and data networking products with a
`
`focus on wireless networks. As a research manager, I oversaw a department that
`
`executed many large-scale joint projects with development organizations to release
`
`products for Lucent Technologies. Examples of such joint projects include, the
`
`control software for Lucent Technologies’ 3G network access controllers used for
`
`interconnecting CDMA base stations, processor overload controls in Lucent
`
`Technologies’ cellular soft switches, the industry’s first multi-protocol Home
`
`Location Register, servers and protocols for enabling services and interactive text
`
`messaging via cellular networks, the first systems to interwork 2G and 3G
`
`networks of different types with all-IP networks, and mobile Internet services.
`
`These interactions exposed me to a wide range of computer scientists and
`
`engineers working on wireless network technologies and applications.
`
`9.
`
`As the Director of both the Networking Research Department in Bell
`
`Labs and the Advanced Mobile Networking Department within the Wireless
`
`Business Unit of Lucent Technologies, I met extensively with product managers
`
`and marketing organizations for the Wireless Business Unit of Lucent
`
`Technologies and representatives of many cellular service providers. In these
`
`3
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`meetings, I would often present new concepts and product directions that the
`
`company was advancing in the wireless market.
`
`10.
`
`I also taught as an adjunct member of the faculty at Columbia
`
`University in 1993 and from 1996-2001. I taught graduate classes in networking
`
`protocol design (1993) and mobile computing and networking (1996-2001). As
`
`such, I am familiar with the curricula taught to Electrical Engineers and Computer
`
`Scientists from the early 1990s until today.
`
`11.
`
`I am a co-inventor on at least 39 United States Patents and 18 foreign
`
`patents, of which the large majority pertain to mobile telecommunications. Two of
`
`my patents, one of which helped enable the mobile Internet, were awarded the
`
`Thomas Alva Edison Patent Award by the Research and Development Council of
`
`New Jersey. For my early work I was recognized with an Eta Kappa Nu
`
`Outstanding Young Electrical Engineer Award and the Bell Labs Distinguished
`
`Staff Award.
`
`12. While at Bell Labs, I led my research department into creating new
`
`network, service and software architectures for building some of the first wireless
`
`mobile data services. One example was building the first system that allowed for
`
`simple mobile phones to engage in two-way messaging (now called text
`
`messaging) which led to several published papers and five patents.
`
`4
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`13. After joining Penn State I continued my work on wireless networks
`
`and services including several that were based on location based services. This
`
`included work on using the location of a user to provide access to services and
`
`preserving privacy for users while enabling location-based services.
`
`14. Because of my expertise on security in wireless networks, I was
`
`appointed to The President’s National Security Telecommunications Advisory
`
`Committee. My role on this Committee was to identify security risks for current
`
`and evolving cellular networks.
`
`15. Based on this experience, and my continuing work at Penn State
`
`University, I have intimate knowledge of wireless and mobile networks and
`
`services. I have been highly recognized as an expert in such systems. I was
`
`recognized with the Bell Labs Distinguished Member of Technical Staff award in
`
`1996. My award letter stated in part, “[y]our contributions to wireless call
`
`processing have profoundly impacted Lucent. You are very well-known as
`
`demonstrated by your three best paper awards…”. I was named a Bell Labs
`
`Fellow in 2000, “[f]or outstanding contributions in mobile wireless networks in the
`
`area of call processing, signaling, mobility management, and applications.” I was
`
`named an IEEE Fellow in 2002 “for contributions to systems for advanced
`
`broadband, mobile data and mobile telecommunication networks.”
`
`5
`
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`16.
`
`I previously served as the Editor-in-Chief of IEEE Personal
`
`Communications Magazine and was the founding Editor-in-Chief of IEEE
`
`Transactions on Mobile Computing. I have published about 300 technical papers
`
`in this field.
`
`17. My research is supported primarily by the Department of Defense and
`
`the National Science Foundation. I was the Director of a center funded by the U.S.
`
`Army Research Lab studying network science as it relates to communication
`
`networks. I also led a recently concluded project funded by the Defense Threat
`
`Reduction Agency to improve network reliability against attack by weapons of
`
`mass destruction.
`
`18. Additional information regarding my professional qualifications,
`
`experience, and publications are set forth in my curriculum vitae, a copy of which
`
`is attached as Appendix A.
`
`III. MATERIALS CONSIDERED
`
`19.
`
`For purposes of forming my opinions as stated in this declaration, I
`
`have reviewed the following documents:
`
`
`
`
`
`
`
`
`
`U.S. Patent No. 8,566,839 and its file history.
`
`U.S. Patent Application Publication 2008/0167106 (“Lutnick”).
`
`U.S. Patent Application Publication 2002/0137462 (“Rankin”).
`
`Specification of the Bluetooth System: Wireless connections made
`easy,” version 2.0 + EDR.
`
`6
`
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`
`
`
`
`
`
`
`
`
`
`A redline comparison of the ’839 patent specification to the ’064
`application.
`
`A redline comparison of the ‘’839 patent specification to the ’041
`application.
`
`U.S. Patent No. 8,639,267.
`
`U.S. Patent No. 8,600,341.
`
`Exhibits identified in the Table of Exhibits for Petition for Inter
`Partes Review of U.S. Patent 8,566,839.
`
`20.
`
`Petitioner’s counsel has asked me to consider whether certain
`
`references disclose or suggest, alone or in combination, the features recited in
`
`certain claims of the ’839 patent. I have also been asked to consider the state of the
`
`art and the prior art available before the time of the alleged invention of the ’839
`
`patent. My opinions are provided in this declaration.
`
`21. My opinions in this declaration are based on my review of the
`
`documents above, my understanding as an expert in the relevant field, and my
`
`education, training, research, knowledge, and personal and professional
`
`experience.
`
`22.
`
`To my knowledge, I have no financial interest in Petitioner. Counsel
`
`for Petitioner has informed me that BillJCo purports to own the ’839 patent. To the
`
`best of my knowledge, I have no financial interest in BillJCo and, to my
`
`recollection, have had no contact with BillJCo or the named inventors of the ’839
`
`7
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`patent, William J. Johnson and Jason M. Johnson. To the best of my knowledge, I
`
`do not have any financial interest in the ’839 patent.
`
`23.
`
`To the extent any mutual funds or other investments that I own have a
`
`financial interest in the Petitioner, the Patent Owner, or the ’839 patent, I am not
`
`aware of, and do not control, any financial interest that would affect or bias my
`
`judgment.
`
`IV. LEGAL STANDARDS
`
`24.
`
`Petitioner’s counsel has informed me that, in an inter partes review
`
`proceeding, a patent claim may be deemed unpatentable if it is shown by a
`
`preponderance of the evidence that the claim was either anticipated by a prior art
`
`patent or publication or rendered obvious by one or more prior art patents or
`
`publications.
`
`25.
`
`Petitioner’s counsel has informed me that a claim is unpatentable if
`
`the differences between the subject matter of the patent and the prior art are such
`
`that the subject matter as a whole would have been obvious to a person of ordinary
`
`skill in the art, or a “POSITA”, at the time of the invention.
`
`26.
`
`Petitioner’s counsel has informed me that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including
`
`the following:
`
`8
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` The level of ordinary skill in the art at the time the application was
`
`filed;
`
` The scope and content of the prior art; and
`
` What differences, if any, existed between the claimed invention and
`
`the prior art.
`
`27.
`
`Petitioner’s counsel has informed me that a single reference can
`
`render a patent claim obvious if any differences between that reference and the
`
`claims would have been obvious to a person of ordinary skill in the art.
`
`Alternatively, the teachings of two or more references may be combined in the
`
`same way as disclosed in the claims, if such a combination would have been
`
`obvious to one having ordinary skill in the art. In determining whether a
`
`combination based on either a single reference or multiple references would have
`
`been obvious, I understand from Petitioner’s counsel that it is appropriate to
`
`consider the following factors:
`
` Whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield
`
`predictable results;
`
` Whether a POSITA could implement a predictable variation, and
`
`would see the benefit of doing so;
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`9
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` Whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of
`
`success by those skilled in the art;
`
` Whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
` Whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent;
`
`and
`
` Whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`28.
`
`Petitioner’s counsel has informed me that a POSITA has ordinary
`
`creativity and is not an automaton.
`
`29.
`
`Petitioner’s counsel has informed me that all prior art references are to
`
`be looked at from the viewpoint of a POSITA.
`
`30.
`
`Petitioner’s counsel has informed me that, in considering obviousness,
`
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered, and that obviousness is analyzed from the
`
`perspective of a POSITA at the time of the invention.
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`10
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`V.
`
`OVERVIEW OF THE ’839 PATENT
`
`31.
`
`The ’839 patent, titled “System and Method for Automated Content
`
`Presentation Objects,” was filed on May 14, 2010, and issued on October 22, 2013.
`
`32.
`
`The ’839 patent issued from U.S. Patent Application No. 12/800,394
`
`(“’394 application”), filed on May 14, 2010. The ’394 application is a
`
`continuation-in-part of Application No. 12/590,831 (“’831 application”), filed on
`
`November 13, 2009, the ’831 application is a continuation-in-part of Application
`
`No. 12/287,064 (“’064 application”), filed on October 3, 2008, and the ’064
`
`application is a continuation-in-part of Application No. 12/077,041 (“’041
`
`application”), filed on March 14, 2008.
`
`A.
`
`Summary of the ’839 Patent
`
`33.
`
`The ’839 patent provides in the ‘Technical Field’ section of the
`
`specification that it relates generally to “managing information for automatic
`
`presentation or distribution,” and more specifically describes managing an
`
`“information” or “messaging” repository “containing heterogeneous formats for
`
`automatically being presented and/or distributed for certain application events
`
`associated with determined data processing system conditions.” ’839 patent
`
`(EX1001), 1:31-37.
`
`34.
`
`I have reviewed the “Summary” section of the ’839 patent
`
`specification. That section (i.e., column 3 line 10 to column 6 line 56) describes a
`
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`significant amount of subject matter that is not referenced in the challenged claims.
`
`That section does describe a “MADR” or “presentation” object that “contains data
`
`along with associated methods for processing.” ’839 patent (EX1001), 3:47-50.
`
`That section further describes that a “mobile station data processing system”
`
`(“MS” ) may be “prepackaged” with these objects, or these objects “may be
`
`shared” between other MSs or “distributed to different types of MSs by services.”
`
`Id., 4:1-6.
`
`35.
`
`The patent also refers to “ADvertising messages (ADs)” that are
`
`associated with an application and can be used for “automated presentation” based
`
`on a “whereabouts conditions.” Id., Abstract, 50:19-22. I note that, other than the
`
`claims, this is the only instance where the language “whereabouts condition”
`
`appears in the ’839 patent specification.
`
`B.
`
`Prosecution History
`
`36.
`
`I understand the ’394 application was filed on March 14, 2010 and
`
`included claims 1-20, of which only claim 1 was independent. In an Office Action
`
`dated March 4, 2013, the Examiner rejected pending claims 1-20 under 35 U.S.C.
`
`§ 103 based on U.S. Patent Application Publication 2001/0005864 and U.S. Patent
`
`Application Publication 2010/0146160. In a response dated May 1, 2013, the
`
`Applicant amended claim 1 and other claims and added new claims 21-26.
`
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`37.
`
`In response to the references cited in the rejection, the Applicant
`
`stated that the “disclosed ‘object’ is a self contained object with both the
`
`information for presentation and the instructions describing under what conditions
`
`to present that information.” ’839 Patent File History (EX1002), 11 (emphasis
`
`added). The Applicant then distinguished the recited “object” from the prior art,
`
`stating that the “Examiner’s interpretation of objects [in the prior art] are not like
`
`the present application objects which additionally contain the instructions.” Id.
`
`(emphasis added).
`
`38. A Notice of Allowance (“NOA”) subsequently issued on June 4,
`
`2013. The NOA included an examiner amendment to amend claims 1 and 26 and
`
`add new claims 27-49. ’839 Patent File History (EX1002).
`
`C.
`
`Level of Ordinary Skill in the Art
`
`39.
`
`In my opinion, a person having ordinary skill in the art (“POSITA”)
`
`for the ’839 patent 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. Additional education in wireless systems can
`
`remedy a deficiency in experience, and vice versa.
`
`40. As of the filing date of the earliest application that the ’839 patent
`
`claims priority to (i.e., March 14, 2008), including up to and including the filing
`
`13
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`date of the application resulting in the ’839 patent, I was a person of ordinary skill
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`in the art.
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`D.
`
`Priority Date
`
`41.
`
`In forming the opinions in this declaration, I have reviewed each of
`
`the ’064 application and the ’041 application. I understand that the ’839 patent
`
`claims priority to these two applications as a continuation-in-part application.
`
`42.
`
`In my opinion, the ’839 patent is not entitled to an earlier priority date
`
`based on either the ’064 application or the ’041 application. I do not offer any
`
`opinion as to whether the ’839 patent can claim priority to the ’831 application.
`
`43.
`
`In my opinion, there is no written support in either of the ’064
`
`application and the ’041 application for at least the following limitations recited in
`
`the challenged claims:
`
`
`
`
`
`“receiving … an object … containing information and [originator]
`
`instructions for presenting said information” (claims 1, 25).
`
`“said [originator] 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” (claims 1,
`
`25).
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`14
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`44.
`
`The lack of written support is apparent when reviewing a redline
`
`comparison showing description that was added to the ’839 patent. As shown in
`
`EX1013 (showing a redline to the disclosures of the ’839 patent and the ’064
`
`application) and EX1011 (showing a redline to the disclosures of the ’839 patent
`
`and the ’041 application), significant disclosure was added to the ’839 patent,
`
`including previously undisclosed description supporting the challenged claims of
`
`the ’839 patent.
`
`45. As a specific example, the summary of the invention section of the
`
`’839 patent was modified such that column 3 line 10 to column 6 line 41 (i.e., the
`
`entire summary of the invention section including the description of the “MADR”
`
`and “presentation” “object” that “contains data along with associated methods for
`
`processing”) is entirely new to the ’839 patent specification. EX1013; see also
`
`generally EX1011.
`
`46.
`
`Further, the descriptions of the ’064 application and the ’041
`
`application do not contain any disclosure for the limitations recited in claims 1 and
`
`25 identified above, including an object “containing information and [originator]
`
`instructions for presenting said information” and the “event specification”
`
`limitation. See generally U.S. Patent No. 8,639,267 (EX1009) (issued patent to the
`
`’041 application, U.S. Patent No. 8,600,341 (EX1010) (issued patent to the ’064
`
`application). Indeed, neither of those applications even recite the language “event
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`specification,” “whereabouts condition,” and “presentation information” or
`
`“information for presentation.” Id.
`
`47. Accordingly, because the subject matter of the challenged claims
`
`lacks support in the earlier filed ’064 application and the ’041 application, the ’839
`
`patent is not entitled to a priority date based on either of the filing dates of those
`
`two applications.
`
`E.
`
`Exemplary Claim
`
`48.
`
`In my opinion, claim 1 of the ’839 patent is exemplary. Generally,
`
`claim 1 describes “receiving” an “object” that contains “information and
`
`instructions for presenting said information,” and then “presenting” the
`
`“information, based at least in part” by a “whereabouts condition” upon
`
`“recognizing” a “trigger event.” Id., 64:59-65:26. Claim 1 recites additional steps
`
`prior to “presenting” the “information,” such as “storing” the “information” in a
`
`memory and “processing” the “instructions.” 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 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
`
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`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;
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`storing, by said receiving data processing system, said information in a
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`memory of said receiving data processing system;
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`processing, by said receiving data processing system, said instructions
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`upon said receiving, by said receiving data processing system, said object;
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`configuring, by said receiving data processing system, a trigger event
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`for said event specification in response to said processing, by said receiving
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`data processing system, said instructions;
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`monitoring, by said receiving data processing system, said trigger event
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`in response to said configuring, by said receiving data processing system, said
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`trigger event;
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`recognizing, by said receiving data processing system, said trigger
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`event, after said monitoring, by said receiving data processing system, said
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`trigger event; and
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`presenting, by said receiving data processing system, said information,
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`based at least in part by said whereabouts condition, upon said recognizing,
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`by said receiving data processing system, said trigger event.
`
`17
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`APPLE
`EXHIBIT 1003 - PAGE 0018
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`IPR2022-00129
`Patent 8,566,839
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`VI. CLAIM CONSTRUCTION
`
`49.
`
`Petitioner’s counsel has informed me that claims subject to inter
`
`partes review are construed according to the ordinary and customary meaning of
`
`the claim as understood by a POSITA and the prosecution history of the patent
`
`being construed.
`
`50.
`
`In my opinion, the term “object [ ] containing information and
`
`[originator] instructions for presenting said information” recited in claims 1 and 25
`
`should be construed to mean “a self-contained object with both the information for
`
`presentation and the instructions describing under what conditions to present that
`
`information.”
`
`51. During prosecution of the ’394 application, Applicant stated in
`
`response to examiner identified prior art in a non-final office action that the
`
`“disclosed ‘object’ is a self contained object with both the information for
`
`presentation and the instructions describing under what conditions to present that
`
`information.” ’839 Patent File History (EX1002) (Response Dated May 1, 2013),
`
`11 (emphasis added). The Applicant also stated that the “Examiner’s interpretation
`
`of objects [in the prior art] are not like the present application objects which
`
`additionally contain the instructions.” Id. (emphasis added).
`
`52.
`
`Further, the Applicant amended claim 1 as shown below and included
`
`an identical limitation for new claim 26:
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`18
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`APPLE
`EXHIBIT 1003 - PAGE 0019
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`IPR2022-00129
`Patent 8,566,839
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`’839 Patent File History (EX1002) (Response Dated May 1, 2013), 11.
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`53.
`
`In my opinion, the Applicant clearly and unambiguously argued that
`
`the prior art did not disclose an “object” as recited in claims 1 and 25 because the
`
`prior art did not disclose a “self contained object” that included “both” the
`
`information for presentation and the instructions. The Applicant further amended
`
`claim 1 in a manner consistent with its arguments.
`
`54.
`
`Thus, in my opinion, based on Applicant’s statements made during
`
`prosecution of the ’394 application, the “object” limitation recited in claims 1 and
`
`25 should be construed as “a self-contained object with both the information for
`
`presentation and the instructions describing under what conditions to present that
`
`information.” 1
`
`1 For purposes of my analysis in this declaration, it is my opinion that the Lutnick
`
`reference, alone or in combination with other references, discloses the challenged
`
`claims under an interpretation of “object” where the information and instructions
`
`can be received separately from each other for at least the same reasons provided
`
`in this declaration.
`
`19
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`APPLE
`EXHIBIT 1003 - PAGE 0020
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`IPR2022-00129
`Patent 8,566,839
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`55.
`
`For purposes of this declaration, I have applied the ordinary and
`
`customary meaning of the claims when read in light of the ’839 patent and the
`
`prosecution history of the ’839 patent, as understood by a POSITA at the time of
`
`the invention.
`
`VII. SUMMARY OF OPINIONS
`
`56.
`
`In my opinion, the challenged claims of the ’839 patent, including
`
`claims 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48, are invalid as obvious to a
`
`person of ordinary skill in the art as of the “Critical Date,” i.e., November 13,
`
`2009, the filing date of the ’831 application. I understand from counsel that,
`
`assuming Patent Owner can show that the ’839 patent is entitled to a priority date
`
`based on the earliest filed application, i.e., March 14, 2008, the references
`
`discussed in this declaration are still prior art to the ’839 patent.
`
`57.
`
`This declaration reflects my opinions that I have formed to date
`
`including based on my review of the materials identified in Section III. I reserve
`
`the right to revise, supplement, or amend my opinions based on new information
`
`that becomes available to me, and by further continuing analysis of the materials
`
`identified in Section III.
`
`20
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`APPLE
`EXHIBIT 1003 - PAGE 0021
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`IPR2022-00129
`Patent 8,566,839
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`A.
`
`Ground 1: Claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48 are obvious
`over Lutnick
`
`58. U.S. Patent Application Publication 2008/0267106 (“Lutnick”) was
`
`not considered during prosecution of the ’839 patent and is highly relevant to
`
`claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48 of the ’839 patent.
`
`1.
`
`Overview of Lutnick
`
`59.
`
`Lutnick, entitled “System for Managing Promotions,” was filed
`
`January 9, 2007, published on July 10, 2008, and eventually issued as U.S. Patent
`
`No. 9,600,959 on March 21, 2017. Lutnick discloses an object containing
`
`information and instructions for presenting the information, as well as location-
`
`based triggering of presentation information and, in my opinion, renders obvious
`
`all challenged claims.
`
`60.
`
`Lutnick is directed towards a system and method of featuring and
`
`displaying promotions on mobile gaming devices or “MGD.” Lutnick (EX1005),
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`Abstract, [0092], [0193]. Mobile gaming devices can include various devices such
`
`as “a Blackberry®, iPod®, personal digital assistant, mobile phone, …, or any
`
`other suitable device.” Id., [0184] ; see also id., [0185] (describing “gaming
`
`devices” as including a “personal computer” and a “mobile device” and may
`
`include a “personal digital assistant, a cell phone, a laptop computer, a
`
`Blackberry®, and so on.”). Promotions can include various types of messages,
`
`21
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`APPLE
`EXHIBIT 1003 - PAGE 0022
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`Patent 8,566,839
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`including advertisements, announcements, warnings, statements of information,
`
`offers of discounts, coupons, requests, etc. Id., [0193].
`
`61.
`
`Lutnick discloses that various triggers, including location triggers,
`
`can be used to cause the promotions to be displayed on the mobile gaming device.
`
`For example, “a promotion may be triggered as a mobile gaming device comes into
`
`proximity of a store” or when a “stationary gaming device is within a pre-
`
`determined distance of the mobile gaming device.” Id., [0256], [0392].
`
`Lutnick, Figure 1 (annotated).
`
`22
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`APPLE
`EXHIBIT 1003 - PAGE 0023
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`62. Referring to Figure 1 of Lutnick (reproduced and annotated above),
`
`the system 100 “may function within the confines of a casino” or other associated
`
`areas, such as retail shops, restaurants, exhibits, showrooms, etc. Lutnick
`
`(EX1005), [0183]. The system 100 includes a server 105 (annotated in blue) that
`
`“may be in communication with one or more mobile gaming devices,” such as
`
`mobile gaming device 110 (annotated in red). Id. Within the system 100, “the
`
`casino server [105] may transmit instructions to a mobile gaming device [110]”
`
`that “may tell the mobile gaming device 110 to present a promotion when, or only
`
`when the mobile gaming device 110 is in a particular area of a casino.” Id., [0119].
`
`In addition, “the instructions may indicate where the mobile gaming device 110
`
`should be before a promotion may be presented.” Id., [0128]. Lutnick further
`
`discloses the mobile gaming devices may pre-download promotions that are
`
`displayed in case of potential connection disruptions to a server. Id., [0289].
`
`63. Once the instructions have been received and stored, the mobile
`
`gaming device can determine its location or position. For example, Lutnick
`
`discloses that a beacon may be utilized, which is “a device which generates a
`
`signal which may be used as a reference signal by another device or person, e.g., so
`
`that the other device may determine its own location or position.” Lutnick
`
`(EX1005), [0141]. The beacon “may emit a continuous, periodic, sporadic, or other
`
`type of signal.” Id. When the device “comes into proximity of any retailer, such as
`
`23
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`APPLE
`EXHIBIT 1003 - PAGE 0024
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`IPR2022-00129
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`a store, a restaurant, a roadside stand, a gas station, a car repair shop,” the display
`
`of the promotion on the mobile gaming device is triggered. Id. (EX1005), [0256].
`
`“The promotion may show images or video depicting products in the store,” “may
`
`present text descriptions of store items,” or “may describe available discounts
`
`within the store.” Id. Another promotion that could be triggered is a “promotion
`
`that serves to encourage a player to play at a stationary gaming device.” Id.,
`
`[0392].
`
`64. An exemplary promotion that could be displayed on a mobile gaming
`
`device is shown below in Figure 6 of Lutnick.
`
`Lutnick, Figure 6.
`
`24
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`APPLE
`EXHIBIT 1003 - PAGE 0025
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`IPR2022-00129
`Patent 8,566,839
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`2.
`
`Claims 1 and 25 are obvious over Lutnick
`
`65.
`
`Independent claim 1 is a method claim and independent claim 25 is a
`
`system claim. Independent claim 1 recites a method for information presentation
`
`that is performed by a receiving data processing system. In particular, claim 1
`
`recites receiving an object that contains information and inst
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