Apple Inc. v. BillJCo LLC
`
`IPR2022-00129 (U.S. Pat. No. 8,566,839)
`IPR2022-00131 (U.S. Pat. No. 8,639,267)
`
`February 23, 2023
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 1
`
`
`
`IPR2022-00129 (U.S. Pat. No. 8,566,839)
`IPR2022-00131 (U.S. Pat. No. 8,639,267)
`
`February 23, 2023
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`1
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 1
`
`
`
`U.S. Patent No. 8,566,839
`Petition at 4-5
`
`Title: System and Method for Automated Content Presentation Objects
`
`Instituted Grounds
`• Ground 1: Claims 1-3, 8, 21, 23-27, 32, 45,47, 48 are obvious over Lutnick
`• Ground 2: Claims 20 and 44 are obvious over Lutnick in view of Rankin
`• Ground 3: Claims 23 and 47 are obvious over Lutnick in view of Evans
`• Ground 4: Claims 24 and 48 are obvious over Lutnick in view of Bluetooth Core
`
`Summary of Technology:
`
`A way to present information to a user through an object that
`includes information and instructions for presenting that
`information. The instructions include trigger information, such that
`when a trigger event is identified, the information can be presented.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 2
`
`
`
`Claim 1 of ’839 Patent
`
`1. A method for information presentation by a receiving
`data processing system, said method comprising:
`receiving, by said receiving data processing
`said object
`containing
`system,
`an
`object,
`information and instructions for presenting said
`information, said instructions including an event
`specification to be monitored by said receiving data
`processing system for triggering when to present said
`information,
`said event
`specification including a
`whereabouts condition and a condition for detecting
`a particular user action by a user of said receiving
`data processing system, said whereabouts condition
`determining if a location of said receiving data
`processing system is in a vicinity of another data
`processing system;
`storing, by said receiving data processing system,
`said information in a memory of said receiving data
`processing system;
`
`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.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`3
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 3
`
`
`
`Prior Art – Lutnick
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`4
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 4
`
`
`
`Lutnick Overview
`
`(EX1005, [0183])
`
`(EX1005, [0290])
`
`(EX1005, [0119])
`
`Lutnick’s promotions = “information”
`Lutnick’s instructions for presenting promotions = “instructions”
`Lutnick’s promotions and instructions together = “object”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`5
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 5
`
`
`
`Lutnick Overview, cont’d
`
`Lutnick discloses at least three user actions that constitute
`“a condition for detecting a particular user action”
`
`Achieving a
`Winning Outcome
`
`Coming Within Range
`of a Beacon or Device
`
`Buying, Testing,
`Interacting
`
`(Petition, 27; Pet. Reply, 17-19; EX1005, [0250])
`
`* * *
`
`(Pet. Reply, 22; EX1005, [0257])
`
`(Petition, 27; Pet. Reply, 19-21; EX1005, [0256])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 6
`
`
`
`Patent Owner’s Constructions
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`object
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`
`“a self-contained object with both the
`information for presentation and the
`instructions describing under what
`conditions to present that information”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 7
`
`
`
`What is a Self-contained Object?
`
`• An object that includes information and instructions such that the
`device can use the information and instructions together.
`
`•
`
`•
`
`The claims only require receipt of an object that includes
`information and instructions.
`
`The claims do not require transmission of one packet with
`information and instructions together.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`8
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 8
`
`
`
`Self-contained Object Example
`
`•
`
`If a person orders a desk, the desk
`can be shipped in two parts:
`
`– A first shipment corresponding to
`the legs or base
`
`– A second shipment corresponding
`to the desktop
`
`• The person still receives a desk
`even though the desk is sent in two
`shipments
`
`• The claims do not preclude:
`
`– A first transmission comprising
`promotions
`
`– A second transmission
`comprising instructions
`
`– The object being formed at the
`mobile device
`
`EX2008, 32:8-13 (“The first transmission containing promotions
`and the second transmission containing instructions “could also
`be done back-to-back and . . . Then the . . . Object could be
`formed on the mobile device. . . It can be packaged as an
`object on the mobile device.).
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Issues
`
`• Whether Lutnick explicitly discloses the claimed object
`
`•
`
`If not, Whether a POSITA would find it obvious
`
`• Whether Lutnick discloses a condition for detecting a particular
`user action
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`10
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 10
`
`
`
`What is Not at issue
`
`•
`
`•
`
`•
`
`•
`
`Lutnick discloses that the casino server sends a promotion (i.e., information)
`that is received by the mobile gaming device (“MGD”) and presented to the user
`(Petition, 20-21; Pet. Reply, 4; EX1005, [0099], [0290])
`
`Lutnick discloses that the casino server also sends instructions to the MGD
`for when to present the promotion (Petition, 21-22; Pet. Reply, 5-6; EX1005, [0119], [0128], [0289])
`
`Lutnick teaches that the promotions and the instructions for presenting them
`are stored on the MGD. (Petition, 20-22; Pet. Reply, 4-6; EX1005, [0099], [0119], [0128], [0289], [0290])
`
`Petitioner’s arguments related to the patentability of dependent claims
`2-3, 9, 20-21, 23-24, 26-27, 32, 44, 45, 47, and 48.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`11
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 11
`
`
`
`Obviousness – Object
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 12
`
`
`
`What are the Issues Related to Object?
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`13
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 13
`
`
`
`Lutnick’s Self-Contained
`Object Can be Formed
`at the MGD
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 14
`
`
`
`Lutnick’s Object includes Information and Instructions
`
`Lutnick’s MGD receives
`and stores promotions
`(Petition, 20-21; Pet. Reply, 4)
`
`Lutnick’s MGD receives and stores
`instructions for presenting the promotions
`(Petition, 21-22; Pet. Reply, 5-6)
`
`* * *
`
`* * *
`
`(EX1005, [0119])
`
`(EX1005, [0128])
`
`(EX1005, [0290], see also [099])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`15
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 15
`
`
`
`The Asserted Claims Do Not Limit Where
`the Object is Formed
`
`Claim 1 of the ’839 patent recites:
`
`•
`
`receiving, by said receiving data processing system, an object, said object
`containing information and instructions for presenting said information
`
`Claim 1 does not require the object be formed prior to receipt. (Pet. Reply, 2)
`
`•
`
`•
`
`“it would be simpler to do it [send the information and instructions] as a single package
`but they could also be done back-to-back . . . then the . . . object could be formed on
`the mobile device . . . it [the information and instructions] can be packaged as an object
`on the mobile device.” (La Porta Deposition Transcript, EX2008, 32:8-13)
`
`Lutnick teaches that the promotions and the instructions for presenting them are stored
`on the MGD. (Petition, 20-22; Pet. Reply, 4-6; EX1005, [0099], [0119], [0128], [0289], [0290])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`16
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 16
`
`
`
`Lutnick ExpresslyDiscloses Receipt
`of a Single Object that Includes
`Information and Instructions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 17
`
`
`
`Lutnick Discloses Presenting Promotions in
`Areas with Poor Connectivity
`
`• Lutnick has to have the promotions
`and instructions together in order to
`present the promotion if there is poor
`connectivity.
`
`(Petition, 21-22; Pet. Reply, 5-6)
`
`(EX1005, [0289])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`18
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 18
`
`
`
`Lutnick’s Object includes Information and Instructions
`
`Lutnick’s MGD can receive information and instructions simultaneously (Pet. Reply, 9)
`
`(EX1005, [0048])
`
`Lutnick’s MGD can receive information and
`instructions simultaneously (Pet. Reply, 9)
`
`•
`
`•
`
`The MGD receives information and
`instructions from the casino server.
`(Petition, 20-22; Pet. Reply, 4-6; EX1005,
`[0099], [0119], [0128], [0289], [0290])
`
`Lutnick discloses that the information
`and instructions from casino server to
`MGD can be sent simultaneously.
`(Pet. Reply, 9; EX1005, [0048])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 19
`
`
`
`Patent Owner Does Not Dispute That the Casino
`Server Receives the Object from the Marketer Device
`
`•
`
`•
`
`Lutnick discloses that information and
`instructions are sent together from the
`marketer device to the casino server.
`(EX1005; Petition, 24; Pet. Reply, 7-8)
`
`PO’s interpretation would require the
`casino server to separate the
`instructions from the information when
`relaying the instructions and information
`to the mobile gaming device.
`
` PO fails to cite to any portion of Lutnick
`that describes such process.
`
`(EX1005, [0183])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 20
`
`
`
`Lutnick’s Object Includes Information
`and Instructions
`
`Lutnick’s MGD receives information and instructions directly from the
`marketer device. (Petition, 24; Pet. Reply, 7-8)
`
`(EX1005, [0066])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`(Pet. Reply, 7-8; EX1005, [0066])
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 21
`
`
`
`POSITA Would Modify Lutnick’s
`Transmission to be a Single Object
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 22
`
`
`
`A POSITA Would Modify Lutnick’s Object to
`Include Information and Instructions
`
`It is beneficial for the MGD to receive instructions with a promotion in case of
`connectivity issues or battery issues (Petition, 22-25; Pet. Reply, 13-15)
`
`(EX1005, [0289])
`
`* * *
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(EX1005, [0290])
`
`23
`
`
`
`Instructions Can Be Tags or Time Stamps
`
`Lutnick discloses that instructions that dictate the presentation
`of a promotion can be sent with a promotion (Pet. Reply, 12-13)
`
`(EX1005, [0093])
`
`(EX1005, [0094])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 24
`
`
`
`PO’s Arguments Are Not Persuasive
`
`PO argues “The mobile gaming device is only one of the possible display devices,
`and has the limited responsibility of displaying the advertisement.” (POR, 10)
`
`As Petitioner has established and previously shown, the MGD is not merely
`a display device, but has the responsibilities of:
`
`• Receiving and storing promotions (Petition, 20-21; Pet. Reply, 4)
`
`• Receiving and storing instructions for presenting the information (Petition, 21-22; Pet. Reply, 5-6)
`
`• Determining when and which promotion to display (Petition, 22-24; Pet. Reply, 6-7)
`
`• Displaying the promotion (Petition, 37-38)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 25
`
`
`
`PO’s Arguments Are Not Persuasive
`
`PO argues that “Petitioner’s expert identifies no reason, suggestion or motivation
`in Lutnick for combining transmission of a promotion with programming, except for
`his unsupported opinion that it would be ‘simpler’ to do so” (POR, 13)
`
`•
`
`PO’s position is incorrect, as Petitioner and Petitioner’s expert has provided substantial
`evidence that it would be obvious to combine the transmission of a promotion with
`instructions for presenting the promotion. (POR, 24-25; La Porta Declaration,
`EX1003, ⁋⁋ 89-90; La Porta Deposition Transcript, EX2008, 29:3-34:9; Pet. Reply, 10-16; La Porta
`Supplemental Declaration, EX1027, ⁋⁋ 38-51)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 26
`
`
`
`A POSITA Would Modify Lutnick’s Object to Include
`Information and Instructions
`
`To summarize, Lutnick discloses:
`
`•
`
`•
`
`•
`
`•
`
`The MGD receives and stores promotions (Petition, 20-21; Pet. Reply, 4; EX1005, [0099], [0290])
`
`The MGD receives and stores instructions (Petition, 21-22; Pet. Reply, 5-6; EX1005, [0119],
`[0128], [0289])
`
`The promotions sent to the MGD can include some instructions (e.g., tag, label, timestamp)
`that define whether a promotion is displayed (Pet. Reply, 12-13; EX1005, [0093], [0094])
`
`Several benefits for including the instructions with the promotions (e.g., connectivity issues,
`low battery issues) (Petition, 22-25; Pet. Reply, 13-15; EX1005, [0289], [0290])
`
`The record clearly establishes that a POSITA would find it obvious to modify a
`transmission to include both promotions and instructions for presenting the promotions
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 27
`
`
`
`Obviousness – Condition for
`Detecting a Particular User Action
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`28
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 28
`
`
`
`Condition for Detecting a Particular User Action
`
`Petitioner has established that Lutnick discloses several possibilities of “a
`particular user action” that is detected
`
`•
`
`Achieving a winning outcome (Petition, 27; Pet. Reply, 17-19; EX1005, [0250])
`
`• Coming within range of a beacon or device (Petition, 27; Pet. Reply, 19-21; EX1005, [0256])
`
`•
`
`Buying, testing, or interacting with an object (Pet. Reply, 22; EX1005, [0257])
`
`PO does not dispute that Lutnick teaches these processes
`
`PO ONLY disputes whether any of these processes constitutes a “user action”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 29
`
`
`
`PO’s Arguments Are Not Persuasive
`
`For achieving a winnable outcome, the PO alleges that this is not “a particular user
`action” because “it is a category of responses by the mobile gaming device, not the
`user” and that whether a user wins is “a random outcome.” (POR, 18)
`
`•
`
`Playing any of the various games
`requires user action in the form of a
`user input
`(Petition, 27; Pet. Reply, 17-19; EX1005, [0138];
`La Porta Deposition Transcript, EX2008, 44:17-51:6)
`
`(EX1005, [0138])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 30
`
`
`
`PO’s Arguments Are Not Persuasive
`
`For coming within range of a beacon, the PO alleges that this is not “a particular
`user action” because it allegedly conflates the “‘whereabouts’ condition with the
`separate requirement for a ‘condition for detecting a particular user action.’” (POR, 19)
`
`* * *
`
`•
`
`A proximity trigger is different than the
`whereabouts condition. The
`whereabouts condition can be the user
`coming within range of the beacon and
`the user action can be the user coming
`within a defined distance of the beacon
`(Petition, 27; Pet. Reply, 19-21; EX1005, [0256];
`La Porta Deposition Transcript, EX2008, 42:18-43:12)
`
`(EX1005, [0256])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 31
`
`
`
`PO’s Arguments Are Not Persuasive
`
`For coming within range of a beacon, the PO also alleges that this is not “a particular user action”
`because the particular user action is “not just any type of action” but instead “the claims require an
`action by a user of the receiving data processing system.” Thus, PO alleges that “a user must interact
`with the receiving data processing system” to satisfy this limitation. (Sur-Reply, 16)
`
`* * *
`
`•
`
`•
`
`First, there is no requirement that the
`user action must be performed on the
`receiving data processing system.
`(Pet. Reply, 22; EX1005, [0256])
`
`Second, the user must have the MGD
`on them in order to trigger the promotion.
`Thus, the user is interacting with
`the MGD.
`
`(Pet. Reply, 22; EX1005, [0256])
`
`(EX1005, [0256])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 32
`
`
`
`Summary of Arguments
`
`The challenged claims are obvious in view of Lutnick
`
`•
`
`•
`
`•
`
`•
`
`Lutnick discloses the MGD receiving a self-contained object
`
`Lutnick explicitly discloses the MGD receiving a single object
`
`A POSITA would find it obvious to modify Lutnick’s transmission of promotions to also
`include the instructions for presenting the promotions
`
`Lutnick discloses a condition for detecting a particular user action
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 33
`
`
`
`U.S. Patent No. 8,639,267
`Petition at 4-5
`
`Title: System and Method for Location Based Exchanges of Data
`Facilitating Distributed Locational Applications
`The Board instituted inter partes review of claims
`1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 (asserted claims)
`• Ground 1: asserted claims are obvious over Haberman
`• Ground 2: asserted claims are obvious over Haberman and Boger
`• Ground 3: asserted claims are obvious over Vanluijt
`
`Summary of Technology:
`
`A method for presenting information to a user (i.e., performing a privileged action) based
`on the user’s defined privileges and location information of the user.
`
`If the user grants permission to an entity, device, service, application, etc., the user’s
`device may receive, process, and display information that satisfies the permission that
`was received by the user’s device from a nearby sending data processing system
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 34
`
`
`
`Claim 1 of ’267 Patent
`
`1. A method for automatic location based exchange
`processing by a mobile data processing system, the
`method comprising:
`presenting a user interface to a user of the
`mobile data processing system, the user interface
`for configuring privilege data relating the mobile
`data processing system with a remote data
`processing system, the privilege data stored local
`to the mobile data processing system and
`searched upon receipt of whereabouts data
`received for processing by the mobile data
`processing system;
`receiving, for processing by the mobile data
`processing system, the whereabouts data including
`an originating identity of the whereabouts data;
`
`searching, by the mobile data processing system,
`the privilege data stored local to the mobile data
`processing system for a matching privilege upon
`the receiving, for processing by the mobile data
`processing system, the whereabouts data, wherein
`the matching privilege is configured for relating
`the originating identity of the whereabouts data
`with a destination identity of the whereabouts
`data to permit trigger of a privileged action for the
`receipt
`of whereabouts
`data
`received
`for
`processing by the mobile data processing system;
`and
`
`performing the privileged action at the mobile
`data processing system upon finding the matching
`privilege, after the searching, by the mobile data
`processing system, the privilege data stored local to
`the mobile data processing system.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 35
`
`
`
`Ground 1:
`Obviousness over Haberman
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 36
`
`
`
`Haberman Overview
`
`* * *
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`(EX1004, [0117], [0118], [0166], Figure 14)
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 37
`
`
`
`Disputes
`
`• Whether the preferences described in Haberman are the
`same as the claimed privilege-based limitations
`
`• Whether the Haberman discloses the claimed
`“destination identity”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 38
`
`
`
`What is Not at issue
`
`• Whether a generic preference is the same as the
`privilege-based limitations
`
`• That a destination identity is the “identity of the mobile device
`granting the privilege” (Petition, 23-25; Sur-Reply, 11)
`
`• Patentability of the dependent claims
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 39
`
`
`
`Haberman Discloses the
`Privilege-Based Limitations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 40
`
`
`
`What Are the “privilege-based limitations”?
`
`“privilege
`data”
`
`“matching
`privilege”
`
`“privileged
`action”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 41
`
`
`
`Patent Owner’s Construction
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`privilege
`
`1. A security related concept that delegates permissions to
`users, programs, processes, or services to perform certain
`functions. (POR, 9)
`2. A right granted to users, programs, processes, or
`services to perform certain functions on a computer. (POR, 12)
`3. A granted authorization to perform a function. (POR, 12)
`4. A right given to a user, application, system, etc. to
`perform certain functions on a computer. (POR, 13)
`5. A right granted to users, programs, processes, or
`services to perform certain functions on a computer. (POR, 15)
`6.
`“[A] ‘preference’ is not a “privilege.’”, (Sur-Reply, 9)
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 42
`
`
`
`Haberman’s Preference Profile
`Meets the “Privilege” Limitations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 43
`
`
`
`Haberman’s Preference Profile
`
`(EX1004, [0025], [0176], [0181]; Petition, 24)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 44
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`PO offers three rebuttals:
`
`• PO alleges that privilege and preference have different meanings in
`computer science (POR, 9-14)
`
`• PO alleges that Haberman’s “preference profile” is an optional feature (POR, 9-14; 23)
`
`• PO alleges that Haberman fails to disclose a granting of rights (POR, 24-25)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 45
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`PO alleges that privilege and preference have different meanings in
`computer science (POR, 9-14)
`
`PO has continually avoided analyzing Haberman’s preference profile
`
`The issue is whether Haberman’s
`preference profile is the same as the
`privilege based limitations
`
`The issue is not whether a
`generic preference is the same
`as a generic privilege
`
`We need to look at the teachings of Haberman, not just one word in isolation
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 46
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`Haberman’s preferences
`are not optional
`
`When the preferences profile is used,
`the preferences are not optional
`
`(Sur-Reply, 13-14)
`
`(EX1004, [0179], [0176])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 47
`
`
`
`POSITA Interprets Haberman’s Preference
`as a Privilege
`
`Testimony of Dr. Tom LaPorta
`
`Q.
`
`Is it your opinion that a preference of a user is the same thing as a
`permission in computer science?
`A. So if we're talking about computer science in general I wouldn't
`necessarily say that’s always the case. In the way this claim is written
`and from what I read in the patent, that that's basically what it is.
`
`* * *
`
`Q. So is it your opinion that, in computer science, a permission is
`synonymous with a preference?
`A. So, in general, in computer science a permission is not the same as a
`preference, but I believe it is in this -- in this patent.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`48
`
`(EX2009, 40:20-41:3, 46:5-10)
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 48
`
`
`
`Haberman Discloses
`“Destination Identity”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`49
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 49
`
`
`
`Patent Owner’s Construction
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`destination
`identity
`
`“[T]he identity of that which grants
`a permission” POR, 17
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 50
`
`
`
`“Destination Identity”
`
`PO’s construction of “destination identity” as “the identity of that with which
`grants a permission” reads in a limitation to the claims that was removed
`during prosecution.
`
`(Pet. Reply, 4)
`
`(Pet. Reply, 6 (citing EX1003, 88))
`
`PO’s construction cannot be correct.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 51
`
`
`
`“Destination Identity”
`
`Claim Language:
`
`“the matching privilege is configured for relating the originating identity of the
`whereabouts data with a destination identity of the the whereabout data”
`
`• All devices in range of the broadcast will receive the message, the matching
`privilege dictates whether a particular destination device will take an action
`based on the receipt of the transmission
`
`• Accordingly, it relates the originating identify of the whereabouts data with the
`destination identity of that device
`
`52
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 52
`
`
`
`Haberman Discloses “destination identity”
`
`(Petition, 23)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`EX1004, [0026], [0036]
`
`(EX1004, [0026], [0036])
`
`53
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 53
`
`
`
`Applying PO’s Construction…
`
`PO alleges that Haberman does not disclose a granting of rights or
`authorizations
`
`(Pet. Reply, 11-12)
`
`(Sur-Reply, 17)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 54
`
`
`
`Ground 2:
`Obviousness over Haberman
`and Boger
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 55
`
`
`
`PO Has Failed to Rebut Petitioner’s Position
`
`If the Board finds that Haberman discloses the privilege-based limitations,
`the combination of Haberman and Boger renders the asserted claims obvious.
`
`•
`
`•
`
`
`
`
`
`Boger teaches the claimed “destination identity.” (Petition, 35-38)
`
`PO has conceded that Boger’s AM_ADDR is the same as the claimed “destination identity.”
`
`PO has never challenged this position.
`(PO Prelim. Resp. 7-8; Sur-Reply 17-18
`(Both never address Petitioner’s arguments regarding
`AM_ADDR of Boger and “destination identity”))
`
`PO’s entire argument hinges on
`whether Haberman discloses the
`privilege-based limitations.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(POR, 25)
`
`56
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 56
`
`
`
`Ground 3:
`Obviousness over Vanluijt
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 57
`
`
`
`Vanluijt Overview
`
`* * *
`
`(Petition, 44-49, EX1006 [0032], [0058], Fig. 1)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 58
`
`
`
`Vanluijt’s Preference Data Meets
`the “Privilege” limitations
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 59
`
`
`
`Vanluijt’s Preference Data
`
`(EX1006, [0058])
`
`(Petition at 48-49)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`60
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 60
`
`
`
`Vanluijt Renders the Challenged Claims Obvious
`
`PO’s rebuttals are not persuasive:
`
`• PO alleges that privilege and preference have different meanings in
`computer science (POR 28-29, Sur-Reply, 19-20)
`
`• PO alleges that Vanluijt’s “preference profile” is an optional feature (Sur-Reply, 20)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`61
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 61
`
`
`
`PO’s Rebuttals Are Not Persuasive
`
`PO alleges that Vanluijt’s “preference profile” is an optional feature (Sur-Reply, 20)
`
`Vanluijt explicitly states information is presented only if it satisfies a preference.
`Petition, 54-55; Pet. Reply, 14-15
`
`(EX1006, [0058])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`62
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 62
`
`
`
`Vanluijt Discloses
`“Destination Identity”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`63
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 63
`
`
`
`Vanluijt’s Destination Identity
`
`PO alleges that Vanluijt does not disclose the claimed “destination identity”:
`
`• “A user merely establishes types of information he or she wishes to receive . . . .
`Nothing in Vanluijt, however, discloses granting rights as is claimed.” (POR, 30)
`
`(EX1006, [0058])
`
`(Petition, 55)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`64
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 64
`
`
`
`Summary of Arguments
`
`1.
`1
`
`The challenged claims are obvious in view of Haberman,
`Haberman + Boger, and Vanluijt under their plain and ordinary
`meaning and this has not been disputed.
`
`2. Even under PO’s proposed constructions, the challenged claims are
`2
`obvious in view of Haberman, Haberman + Boger, and Vanluijt.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`65
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 65
`
`
`
`No Nexus Between the Challenged Claims and
`Objective Indicia of Non-Obviousness
`
`PO has failed to establish a nexus between the claimed invention and any
`alleged copying. (Pet. Reply, 22-23)
`•
`PO’s only evidence of copying are unsolicited emails from inventor William Johnson to an agent of
`Petitioner’s legal team with a list of publicly available applications. (Pet. Reply, 23)
`
`•
`
`PO has failed to provide any evidence that developers of iBeacon had access to PO’s proprietary
`information. (Pet. Reply, 23)
`
`Based on the issuance dates of the ’839 and ’267 Patents, it would be impossible
`for Petitioner to have copied the claimed invention. (EX2024-2026)
`•
`’839 Issuance date = October 22, 2013. EX1002, Issue Notification dated October 2, 2013.
`
`•
`
`•
`
`’267 Issuance date = January 28, 2014. EX1002, Issue Notification dated January 8, 2014.
`
`Date of iBeacon announcement = June 23, 2013.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`66
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 66
`
`
`
`No Nexus Between the Challenged Claims and
`Objective Indicia of Non-Obviousness
`
`PO has failed to establish a nexus between the claimed invention and any
`alleged commercial success. (Pet. Reply, 22-23)
`•
`PO only offers conclusory statement that the commercial success of iBeacon is directly
`attributable to the combination of features. (Pet. Reply, 24)
`
`•
`
`PO’s license agreements only show one of thirty-plus patents that were included in the terms of
`the license. (Pet. Reply, 24)
`
`PO’s license agreements are irrelevant to the secondary considerations.
`Pet. Reply, 23-26.
`
`•
`
`•
`
`•
`
`PO provides three license agreements to support its position. (EX2021-EX2023)
`
`Each license is for 30+ patents, including the ’839 and ’267 Patents
`
`PO fails to provide any evidence of the importance of the ’839 and ’267 Patents to the license
`agreements
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`67
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 67
`
`
`
`’839: PO’s Motion to Strike
`
`Petitioner’s construction of object is consistent with the record
`•
`PO alleges that Petitioner has offered a new claim construction for object.
`(Motion, 5; PO Reply to Motion, 1-2)
`
`•
`
`Petitioner’s Expert clearly opined that the information and instructions can be sent in separate
`transmission and that the self-contained object can be formed at the mobile device
`
`A. So the way I read it was what I wrote here in
`my opinion how it should be construed, I would
`say it was supposed to be self-contained. But
`it doesn’t make a difference in my analysis if
`it’s sent at
`the same time or
`they’re sent
`back-to-back or something like that.
`It’s –
`you know,
`I understand the – now that
`the
`court
`didn’t
`adopt
`this
`–
`adopt
`this
`construction. But yes,
`it should have both
`information and instructions.
`
`A. So it’s motivation because it would be simpler
`to do it as a single package but they could
`also be done back-to-back and, you know, then
`the quote, unquote, object could be formed on
`the mobile device. I mean, it can be packaged
`as an object on the mobile device.
`
`(EX2008, 19:14-23)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(EX2008, 32:8-13)
`
`68
`
`APPLE - IPR2022-00131
`EXHIBIT 1013 - PAGE 68
`
`
`
`’839: PO’s Motion to Strike
`
`Petitioner did not submit any new theories in the Petitioner’s Reply
`
`•
`
`•
`
`•
`
`PO only previously identified a single issue as an alleged “new
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
