UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`BILLJCO, LLC,
`
`Plaintiff,
`
`Case No. 6:21-cv-528-ADA
`
`v.
`
`APPLE INC.
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`DEFENDANT APPLE, INC.’S
`PRELIMINARY INVALIDITY CONTENTIONS
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`Defendant Apple, Inc. (“Apple”) hereby provides its Preliminary Invalidity Contentions
`
`pursuant to the Joint Scheduling Order entered by the Court on September 11, 2021. See ECF No.
`
`27. Based on its investigation to date, Apple hereby produces the prior art references on which
`
`these Contentions are based and other documents as mandated by the Joint Scheduling Order.
`
`I.
`
`INTRODUCTION
`
`These Preliminary Invalidity Contentions address the asserted claims identified by Plaintiff
`
`BillJCo, LLC (“BillJCo”) in its Preliminary Infringement Contentions. Should the Court allow
`
`BillJCo to later assert infringement of additional claims not asserted in BillJCo’s Preliminary
`
`Infringement Contentions, or to supplement its infringement contentions with additional
`
`infringement theories with respect to the asserted claims, Apple reserves the right to supplement
`
`its Preliminary Invalidity Contentions to assert invalidity of those additional claims and/or to assert
`
`invalidity based on the additional infringement theories. Apple also reserves the right to
`
`supplement its Preliminary Invalidity Contentions in response to information learned in fact or
`
`expert discovery, including identification of additional prior art.
`
`Apple’s Preliminary Invalidity Contentions are based in whole or in part on its present
`
`understanding of the asserted claims and BillJCo’s Infringement Contentions, including the
`
`priority date of the asserted patents identified by BillJCo in its Infringement Contentions, including
`
`8,566,839 (the “’839 Patent”), 8,639,267 (the “’267 Patent”), 8,761,804 (the “’804 Patent”),
`
`9,088,868 (the “’868 Patent”), 10,292,011 (the “’011 Patent”), and 10,477,994 (the “’994 Patent”)
`
`(collectively, the “Asserted Patents”). Apple’s Invalidity Contentions are responsive at least to the
`
`same level of specificity of BillJCo’s Infringement Contentions.
`
`Apple’s Invalidity Contentions may consider BillJCo’s apparent claim constructions, to the
`
`extent BillJCo’s constructions can be understood from BillJCo’s Infringement Contentions. Such
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`apparent constructions may be inconsistent with the constructions that Apple ultimately will
`
`proffer in this case. By including prior art that would anticipate or render obvious the asserted
`
`claims of the Asserted Patents based on BillJCo’s disclosed and apparent claim constructions, or
`
`based on any other particular claim construction, Apple is not adopting BillJCo’s claim
`
`constructions, nor is Apple admitting to the correctness of any particular claim construction. The
`
`Court has established separate deadlines for the parties’ proposed claim constructions, and Apple
`
`will disclose its proposed constructions according to those deadlines. Solely for purpose of these
`
`Preliminary Invalidity Contentions, Apple may, if necessary, apply alternative, and even
`
`inconsistent, claim construction positions. Apple reserves all rights to amend these Preliminary
`
`Invalidity Contentions after the Court issues its claim construction ruling, or if the Court permits
`
`BillJCo to amend its Infringement Contentions.
`
`Apple does not concede that BillJCo’s Infringement Contentions provide the requisite level
`
`of specificity, and Apple provides these Invalidity Contentions without waiving any right to
`
`receive from BillJCo complete and specific infringement contentions. Moreover, nothing herein
`
`admits in any way that any of the accused products, or any of Apple’s other products, infringe any
`
`of the asserted claims.
`
`II.
`
`RELATED INVALIDITY CONTENTIONS AND DISCLOSURES
`
`Apple expressly incorporates by reference as if fully set forth herein, and intends to rely
`
`on, each of the contentions, charts, prior art references, and other statements made or disclosed in
`
`any petitions for inter partes review filed by any party or third-party as to any asserted patent.
`
`Apple also incorporates by reference as if fully set forth herein all contentions, charts, prior art
`
`references, and other statements relating to any ground of invalidity identified by any potential or
`
`actual licensee to any asserted patent and by any party in any other past, present, or future litigation
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`involving many asserted patent or patents related to any asserted patent, including without
`
`limitation the following matters: BillJCo, LLC v. Cisco Systems, Inc., Case No. 2-21-cv-00181
`
`(EDTX); and BillJCo, LLC v. Hewlett Packard Enterprise Company et al., Case No. 2-21-cv-
`
`00183 (EDTX). Apple also incorporates by reference all grounds of invalidity identified in any
`
`present or future reexamination, inter partes review, covered business method (CBM) patent
`
`review, or other post-issuance review by the Patent and Trademark Office of any asserted patent.
`
`Apple also incorporates by reference the production of documents associated with any grounds for
`
`invalidity for any asserted patent identified in this paragraph. Apple also incorporates any grounds
`
`of invalidity known to BillJCo or any affiliated party, whether or not disclosed. Apple requests
`
`that all such contentions from every case involving any asserted patent be produced to Apple as
`
`soon as possible after they are served on, or become known to, BillJCo.
`
`Apple’s discovery and investigation in connection with this lawsuit is continuing, and these
`
`Preliminary Invalidity Contentions are based on information obtained to date. Among other things,
`
`discovery is still underway, witnesses remain to be deposed, and the Court has not yet construed
`
`any terms of the Asserted Patents. Accordingly, Apple’s Preliminary Invalidity Contentions are
`
`subject to modification, amendment, or supplementation in accordance with the Joint Scheduling
`
`Order, the Local Rules of the Western District of Texas, and/or the Federal Rules of Civil
`
`Procedure as this action progresses and additional information is obtained.
`
`III.
`
`IDENTIFICATION OF PRIOR ART
`
`Apple identifies the following prior art to the Asserted Patents. Apple contends that the
`
`prior art disclosed below generally all relate to the subject matter of one or more Asserted Patents
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`and collectively, they are all relevant at least as background of the art to each of the Asserted
`
`Patents, irrespective of the sub-section in which they are expressly cited.
`
`Apple expressly reserves the right to at least use and rely on any of the prior art cited herein
`
`to establish or otherwise support Apple’s contentions as to what was known in the state of the art
`
`during the pertinent time frame for the Asserted Patents. Apple further incorporates by reference
`
`all references listed on the face of the Asserted Patents. The inclusion or omission of a reference
`
`that is listed on the face of one or more of the Asserted Patents should not be deemed a waiver to
`
`rely on such references.
`
`A.
`
`Anticipation
`
`Appendices 839-, 267-, 804-, 868-, 994-, and 011- are claim charts that specifically identify
`
`prior art that anticipates and/or renders obvious each of the asserted claims of the Asserted Patents.
`
`In addition to the references specifically identified in the appendices, Apple also reserves the right
`
`to rely on any of the patents or publications deriving from applications in the respective claimed
`
`priority chains of the Asserted Patents, the references cited on the face of the Asserted Patents and
`
`related patents, any admitted prior art references in the specifications of the Asserted Patents and
`
`related patents, the prosecution histories of the Asserted Patents and related patents, the references
`
`cited in any USPTO, including PTAB proceedings, related to any asserted patent or related patents,
`
`or any references known to BillJCo or any affiliated party and the references cited in any invalidity
`
`contentions that have been or will be submitted in any action or proceedings involving any asserted
`
`patent or related patents.
`
`Apple may also rely on expert testimony and any additional prior art identified during the
`
`course of discovery. Furthermore, Apple may rely on any of the prior art references in these
`
`Preliminary Invalidity Contentions to demonstrate a motivation to combine. Apple may also rely
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`on expert testimony to demonstrate a motivation to combine. Apple may also rely on (i) foreign
`
`counterparts of U.S. patents identified in these Preliminary Invalidity Contentions; (ii) U.S.
`
`counterparts of foreign patents and foreign patent applications identified in these Preliminary
`
`Invalidity Contentions; and (iii) U.S. and foreign patents and patent applications corresponding to
`
`articles and publications identified in these Preliminary Invalidity Contentions.
`
`Apple reserves the right to rely on uncited portions of the identified prior art, rely on other
`
`references (irrespective of whether such references themselves qualify as prior art) to show the
`
`state of the art, and/or to rely on expert testimony to provide context to, or aid in, understanding
`
`the cited portions of the identified prior art.
`
`In some instances, Apple treats certain prior art as anticipatory where certain elements are
`
`inherently present in light of the apparent claim constructions applied in BillJCo’s Infringement
`
`Contentions. Apple currently takes no position as to whether the preamble of any asserted claim
`
`is limiting, and expressly reserves all rights to take any position with respect to such preambles for
`
`purposes of claim construction, invalidity, inequitable conduct, non-infringement, or otherwise.
`
`To the extent that any claim identified above is found not to be anticipated by a corresponding
`
`reference, such claim would have been obvious over that reference. Attached hereto are the
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`following charts setting forth where in the prior art references each element of the asserted claims
`
`are found:
`
`1.
`
`Prior Art Patents and Patent Publications
`
`The following prior art patents and published patent applications invalidate the asserted
`
`claims of the Asserted Patents.
`
`Prior Art Patents and Publications
`U.S. Patent Application Publication No. 2002/0010629 to Diamond
`U.S. Patent Application Publication No. 2002/0002036 to Uehara
`
`Issued/Publication Date
`1/24/2002
`1/3/2002
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`Prior Art Patents and Publications
`U.S. Patent Application Publication No. 2002/0132614 to Vanluijt
`U.S. Patent Application Publication No. 2002/0159401 to Boger
`U.S. Patent Application Publication No. 2002/0169539 to Menard
`U.S. Patent Application Publication No. 2003/0007464 to Balani
`U.S. Patent Application Publication No. 2003/0014181 to Myr
`U.S. Patent Application Publication No. 2003/0148773 to Spriestersbach
`U.S. Patent Application Publication No. 2004/0145459 to Himmelstein
`U.S. Patent Application Publication No. 2004/0152474 to Chen
`U.S. Patent Application Publication No. 2004/0203567 to Berger
`U.S. Patent Application Publication No. 2004/0229565 to Himeno
`U.S. Patent Application Publication No. 2004/0235493 to Ekerborn
`U.S. Patent Application Publication No. 2004/0239498 to Miller
`U.S. Patent Application Publication No. 2005/0096044 to Haberman
`U.S. Patent Application Publication No. 2005/0136845 to Masuoka
`U.S. Patent Application Publication No. 2005/0186965 to Pagonis
`U.S. Patent Application Publication No. 2005/0283503 to Hancock
`U.S. Patent Application Publication No. 2006/0122921 to Comerford
`U.S. Patent Application Publication No. 2007/0030824 to Ribaudo
`U.S. Patent Application Publication No. 2007/0032225 to Konicek
`U.S. Patent Application Publication No. 2007/0139191 to Quatro
`U.S. Patent Application Publication No. 2007/0149210 to McKiou
`U.S. Patent Application Publication No. 2007/0265024 to Vincent
`U.S. Patent Application Publication No. 2007/0270133 to Hampel
`U.S. Patent Application Publication No. 2007/0282678 to Dendi
`U.S. Patent Application Publication No. 2008/0056215 to Kopikare
`U.S. Patent Application Publication No. 2008/0114675 to Ward
`U.S. Patent Application Publication No. 2008/0167106 to Lutnick
`U.S. Patent Application Publication No. 2008/0248801 to Fletcher
`U.S. Patent Application Publication No. 2009/0029718 to Nilsson
`U.S. Patent Application Publication No. 2009/0176481 to Hamilton
`U.S. Patent Application Publication No. 2012/0064855 to Mendelson
`U.S. Patent Application Publication No. 2015/0018011 to Mendelson
`U.S. Patent Application Publication No. 2017/0132665 to Hampel
`U.S. Patent No. 6,032,042 to Kauppi
`U.S. Patent No. 6,169,894 to McCormick
`U.S. Patent No. 6,177,905 to Welch
`U.S. Patent No. 6.327,535 to Evans
`U.S. Patent No. 6,456,234 to Johnson
`U.S. Patent No. 6,501,421 to Dutta
`U.S. Patent No. 6,529,143 to Mikkola
`U.S. Patent No. 6,529,164 to Carter
`U.S. Patent No. 6,529,728 to Pfeffer
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`Issued/Publication Date
`3/7/2006
`10/31/2002
`11/14/2002
`1/9/2003
`1/16/2003
`8/7/2003
`7/29/2004
`8/5/2004
`10/14/2004
`11/18/2004
`11/25/2004
`12/2/2004
`5/5/2005
`6/23/2005
`8/25/2005
`12/22/2005
`6/8/2006
`2/8/2007
`2/8/2007
`6/21/2007
`6/28/2007
`11/15/2007
`11/22/2007
`12/6/2007
`3/6/2008
`5/15/2008
`3/21/2017
`10/9/2008
`1/29/2009
`7/9/2009
`3/15/2012
`1/15/2015
`5/11/2017
`2/29/2000
`1/2/2001
`1/23/2001
`12/4/2001
`9/24/2002
`12/31/2002
`3/4/2003
`3/4/2003
`3/4/2003
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`Prior Art Patents and Publications
`U.S. Patent No. 6,571,112 to Ramaswamy
`U.S. Patent No. 6,683,538 to Wilkes
`U.S. Patent No. 6,731,238 to Johnson
`U.S. Patent No. 6,748, 318 to Jones
`U.S. Patent No. 6,754,484 to Hiltunen
`U.S. Patent No. 6,833,787 to Levi
`U.S. Patent No. 6,847,823 to Lehikoinen
`U.S. Patent No. 6,879,838 to Rankin
`U.S. Patent No. 6,888, 811 to Eaton
`U.S. Patent No. 6,987,985 to Purkayastha
`U.S. Patent No. 6,961,541 to Overy
`U.S. Patent No. 6,983,146 to Spratt
`U.S. Patent No. 6,987,985 to Purkayastha
`U.S. Patent No. 7,010,267 to Vanluijt
`U.S. Patent No. 7,050,786 to Caci
`U.S. Patent No. 7,063,263 to Swartz
`U.S. Patent No. 7,079,500 to Menon
`U.S. Patent No. 7,092,943 to Roese
`U.S. Patent No. 7,116,988 to Dietrich
`U.S. Patent No. 7,123,926 to Himmelstein
`U.S. Patent No. 7,124,186 to Piccionelli
`U.S. Patent No. 7,155,210 to Benson
`U.S. Patent No. 7,187,997 to Johnson
`U.S. Patent No. 7,233,801 to Winn
`U.S. Patent No. 7,324,957 to Boys
`U.S. Patent No. 7,363,028 to de Clerq
`U.S. Patent No. 7,551,930 to Lempio
`U.S. Patent No. 7,587,207 to Davies
`U.S. Patent No. 7,647,055 to Gum
`U.S. Patent No. 7,751,829 to Masuoka
`U.S. Patent No. 7,924,149 to Mendelson
`U.S. Patent No. 8,014,720 to Lortz
`U.S. Patent No. 8,045,482 to Davis
`U.S. Patent No. 8,046,000 to Sylvain
`U.S. Patent No. 8,086,398 to Sanchez
`U.S. Patent No. 8,099,107 to Thomson
`U.S. Patent No. 8,150,416 to Ribaudo
`U.S. Patent No. 8,311,543 to Dravida
`U.S. Patent No. 8,355,410 to Hall
`U.S. Patent No. 8,489,112 to Roeding
`U.S. Patent No. 8,504,099 to Corson
`U.S. Patent No. 8,565,781 to Nilsson
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`Issued/Publication Date
`5/27/2003
`1/27/2004
`5/4/2004
`6/8/2004
`6/22/2004
`12/21/2004
`1/25/2005
`4/12/2005
`5/3/2005
`1/17/2006
`11/1/2005
`1/3/2006
`1/17/2006
`3/7/2006
`5/23/2006
`6/20/2006
`7/18/2006
`8/15/2006
`10/3/2006
`10/17/2006
`10/17/2006
`12/26/2006
`3/6/2007
`6/19/2007
`1/29/2008
`4/22/2008
`6/23/2009
`9/8/2009
`1/12/2010
`7/6/2010
`4/12/2011
`9/6/2011
`10/25/2011
`10/25/2011
`12/27/2011
`1/17/2012
`4/3/2012
`11/13/2012
`1/15/2013
`7/16/2013
`8/6/2013
`10/22/2013
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`Prior Art Patents and Publications
`U.S. Patent No. 8,616,975 to Saund
`U.S. Patent No. 8,626,829 to Franco
`U.S. Patent No. 8,682,350 to Altman
`U.S. Patent No. 8,738,024 to Kerr
`U.S. Patent No. 8,743,848 to Ibrahim
`U.S. Patent No. 8,780,871 to Grandhi
`U.S. Patent No. 8,836,580 to Mendelson
`U.S. Patent No. 8,866,673 to Mendelson
`U.S. Patent No. 8,941,485 to Mendelson
`U.S. Patent No. 9,109,903 to Wu
`U.S. Patent No. 9,137,771 to Wrappe
`U.S. Patent No. 9,204,257 to Mendelson
`U.S. Patent No. 9,264,858 to Cedervall
`U.S. Patent No. 9,424,547 to Gazdzinski
`U.S. Patent No. 9,961,507 to Mendelson
`U.S. Patent No. 10,798,669 to Pagonis
`International App. Publication No. WO 1999/16036 to Eldridge
`International App. Publication No. WO 2002/01813 to Davies
`International App. Publication No. WO 2002/074051 to Fano
`International App. Publication No. WO 2003/058928 to Chithambaram
`International App. Publication No. WO 2003/081391 to Moon
`International App. Publication No. WO 2003/100348 to Overy
`International App. Publication No. WO 2004/019632 to Ostrup
`International App. Publication No. WO 2004/071126 to Rowitch
`International App. Publication No. WO 2004/111676 to Eves
`International App. Publication No. WO 2005/004509 to Sohn
`International App. Publication No. WO 2005/106523 to Wrappe
`International App. Publication No. WO 2006/135542 to Bull
`International App. Publication No. WO 2009/036497 to MacNaughtan
`Australian Patent No. AU 2003223314 to Dewald
`European Patent Application No. EP1480393 to Maletz
`European Patent Application No. EP1506688 to Melpignano
`European Patent Application No. EP1642475 to Sohn
`Japanese Patent No. JP3642561 to Yoshiaki
`Japanese Patent No. JP2001339408 to Masatomo
`Japanese Patent No. JP2002027526 to Keiji
`Japanese Patent No. JP2002176403 to Manabu
`Japanese Patent No. JP2002223466 to Toshiyuki
`Japanese Patent No. JP2003099661 to Jiro
`Japanese Patent No. JP2004078277 to Takayuki
`Japanese Patent No. JP2004153449 to Fumio
`Japanese Patent No. JP2004343268 to Yasuhiro
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`Issued/Publication Date
`12/31/2013
`1/7/2014
`3/25/2014
`5/27/2014
`6/3/2014
`7/15/2014
`9/16/2014
`10/21/2014
`1/27/2015
`8/18/2015
`9/15/2015
`12/1/2015
`2/16/2016
`8/23/2016
`5/1/2018
`10/6/2020
`4/1/1999
`1/3/2002
`9/26/2002
`7/17/2003
`10/2/2003
`12/4/2003
`3/4/2004
`8/19/2004
`12/23/2004
`1/13/2005
`11/10/2005
`12/21/2006
`3/26/2009
`10/8/2003
`11/24/2004
`5/2/2007
`4/5/2006
`8/17/2001
`12/7/2001
`1/25/2002
`6/21/2002
`8/9/2002
`4/4/2003
`3/11/2004
`5/27/2004
`12/2/2004
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`Prior Art Patents and Publications
`Japanese Patent No. JP2005268842 to Yasuhiro
`Japanese Patent No. JP2005510821 to Rankin
`Japanese Patent No. JP2005528049 to Pagonis
`Japanese Patent No. JP2006099299 to Minako
`Japanese Patent No. JP2007329839 to Michihiko
`Japanese Patent No. JP2009543221 to Mechalay
`Japanese Patent No. JPH0962998A to Hiroki
`South Korea Patent No. KR100483312 to Su
`South Korea Patent No. KR100678514 to Ki
`South Korea Patent No. KR20060056656 to Ki
`South Korea Patent No. KR20060073860 to Geun
`Chinese Patent No. CN1286072C to Rankin
`
`Issued/Publication Date
`9/29/2005
`4/21/2005
`9/15/2005
`4/13/2006
`12/20/2007
`12/3/2009
`3/7/1997
`11/21/2003
`2/2/2007
`5/25/2006
`6/29/2006
`11/22/2006
`
`2.
`
`Prior Art Non-Patent Publications
`
`The following prior art non-patent publications relate to the invalidity of the asserted claims
`
`of the Asserted Patents.
`
`Prior Art Publication
`3GPP TS 24.008 v 6.15.0
`3GPP TS 44.018 v6.12.0
`3GPP TS 24.007 v6.5.0
`3GPP TS 45.002 v 6.12.0
`The GSM System for Mobile Communications
`Rahnema, Moe Overview of the GSM System and Protocol
`Architecture
`802.11 Wireless Networks The Definitive Guide
`Lorincz, Konrad, MoteTrack: A Robust, Decentralized Approach
`to RF-Based Location Tracking
`Lauri Aalto, Nicklas Gothlin, Jani Korhonen, and Timo Ojala.
`Bluetooth and WAP Push Based Location-Aware Mobile
`Advertising System (June 6, 2004)
`Bernhard Kölmel and Anatol Porak, Real Life Scenarios of
`Location Based Advertising (Oct. 2, 2003)
`Myrhaug, Hans et al., AmbieSense – A System and Reference
`Architecture for Personalised Context-Sensitive Information
`Services for Mobile Users
`Lech, Till et al, AmbieAgents: A Scalable Infrastructure for
`Mobile and Context-Aware Information Services
`Mahmud, Uzwani Binti, Mobile Advertising Using Bluetooth
`Pull-Based Technology (Jan. 2006)
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`9
`
`Date of Publication
`12/2006
`4/2005
`9/2005
`11/2005
`1992
`1993
`
`2002
`2005
`
`6/6/2004
`
`10/2/2003
`
`2004
`
`2005
`
`1/2006
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`Prior Art Publication
`Takada, Yohei, An Information Service System using Bluetooth
`in an Exhibit Hall
`Kawamura, Nobuyuki, A Pre-Download Method for Exhibit
`Information Service Systems Using Bluetooth
`Abhaya Asthana et al, An Indoor Wireless System for
`Personalized Shopping Assistance
`Afifi, Hossam et al, Applications and Services in Wireless
`Networks
`Vincent Lenders et al., Location-based Trust for Mobile User-
`generated Content: Applications, Challenges and
`Implementations
`Julie A. Kientz et al., Where’s My Stuff? Design and Evaluation
`of a Mobile System for Locating Lost Items for the Visually
`Impaired
`Roy Want et al., Expanding the Horizons of Location-Aware
`Computing
`International Journal of Medical Informatics
`Mohamed Al-Arag et al, Location-Based Advertising Using
`Bluetooth
`Zaafir Barahim, Low-Cost Bluetooth Mobile Positioning for
`Location-Based Application
`Priyanha Nissanka Bodhi, Providing Precise Indoor Location
`Information to Mobile Devices
`Andreas Butz, Taming the Urge to Click, Adapting the User
`Interface of a mobile Museum Guide
`F.J.Gonzalez-Castano, J. Garcia-Reinoso, Bluetooth Location
`Networks
`Allen Ka Lun Miu, Design and Implementation of an Indoor
`Mobile Nativation System
`Hiramatsu, Ayako et al, Operation support for the location-aware
`exhibit information service system using Bluetooth
`communication
`Varshney, Upkar, Location Management for Mobile Commerce
`Applications in Wireless Internet Environment
`Light, John et al, The Walkabout architecture for location-aware
`computing
`Priyantha, Nissaka Bodhi, The Cricket Indoor Location System
`Mahmud, Uzwani Binti, Mobile Advertising Using Bluetooth
`Pull-Based Technology
`D’Souza, Matthew, Wireless Position Location System for Indoor
`Environments
`
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`10
`
`Date of Publication
`2003
`
`2003
`
`1994
`
`2001
`
`2008
`
`2006
`
`8/2001
`
`10/2007
`2007
`
`2007
`
`1/2001
`
`2002
`
`2002
`
`1/2002
`
`2003
`
`2003
`
`2004
`
`2005
`2006
`
`2007
`
`BILLJCO
`EXHIBIT 2006 - PAGE 11
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`

`

`Prior Art Publication
`Kawakubo, Saki et al, Wireless Network System for Indoor
`Human Positioning
`Brewer, Eric et al, A Network Architecture for Heterogeneous
`Mobile Computing
`Brimicombe, Allan, Mobile Space-Time Envelopes for Location-
`Based Services
`Asthana, Abhaya et al, An Indoor Wireless System for
`Personalized Shopping Assistance
`Duri, Sastry et al, An approach to providing a seamless end-user
`experience for location-aware applications
`An Inexpensive Bluetooth – Based Indoor Positioning Hack
`Applications of location-based services: A Selected Review
`Chung, Jen-Yao, Interactive Wireless Electronic Billboard
`ASCII JP – Ericsson, Marubeni and Handspring are Japan’s first
`Bluetooth demonstration experiment
`Bloozy Bluetooth Advertising – Bluetooth Proximity Marketing
`Hanlon, Mike, Bluetooth – enabled proximity dating service
`Ratti, Carlo et al, Mobile Landscapes: Using Location Data from
`Cell-Phones for Urban Analysis
`Ng, CK et al, Enhanced Distance-Based Location Management of
`Mobile Communication Systems Using a Cell Coordinates
`Approach
`Pfeifer, Tom, Commercial Hybrid IR/RF Local Positioning
`System
`Banerjee, Suman, Rover Technology: Enabling Scalable
`Location-Aware Computing
`Wu et al., Admission Control with Space Borders for Wireless
`Networks
`Kaasinen, Eija, User needs for location-aware mobile services
`The Salutation Consortium: Geographic Computing – Enabling
`New Markets for Hand Held and Palm-Size Information
`Appliances – A Salutation White Paper (Dec. 16, 1998)
`Thongthammachart, Saowanee, Bluetooth Enables In-door
`Mobile Location Services
`Benelli, G. et al, HIPS: Hyper-Interaction within Physical Space
`Hoffmann, Mario et al, Multilateral Security in Mobile
`Applications and Location Based Services
`Silva, Adriana De Souza, Alien Revolt (2005-2007): A Case
`Study of the First Location-Based Mobile Game in Brazil
`Zhang, Jingyuan, Location Management in Cellular Networks
`Eagle, Nathan, Social Serendipity: Proximity Sensing and Cueing
`Terziyan, Vagan, Mobile e-Commerce Transaction Model
`
`WEST\296176457.1
`
`11
`
`Date of Publication
`2006
`
`1998
`
`2006
`
`1994
`
`1/2001
`
`1/2006
`6/2007
`4/2004
`6/19/2001
`
`2005
`2/12/2005
`2006
`
`1/2005
`
`1/2003
`
`12/2001
`
`2001
`
`8/1/2002
`12/16/1998
`
`2003
`
`1999
`2002
`
`2008
`
`2004
`5/2004
`1/2000
`
`BILLJCO
`EXHIBIT 2006 - PAGE 12
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`

`

`Prior Art Publication
`Sayed, Ali et al., Network-Based Wireless Location – Challenges
`Faced in Developing Techniques for Accurate Wireless Location
`Information
`Oppermann, Reinhard, A Nomadic Information System for
`Adaptive Exhibition Guidance
`Al-Shawabkeh, Mahmoud et al, Proposed Bluetooth Middleware
`Profile for On-location Universal Format Annoucement
`Tang, Karen et al, Putting People in their Place: An Anonymous
`and Privacy-Sensitive Approach to Collecting Sensed Data in
`Location-Based Applications
`Bahl, Paramvir, Radar: An In-Building RF-Based User Location
`and Tracking System
`Collins, Jonathan, Lost and Found in Legoland, RFID Journal,
`Apr. 28, 2004
`Pascoe, Bob, The Salutation Consortium, Salutation-Lite – Find-
`and-Bind Technologies for Mobile Devices, White Paper
`Suomela, Riku, Constructing and Examing Location-Based
`Applications and Their User Interfaces by Applying Rapid
`Software Development and Structural Analysis
`Turk, T., Location Based Services (LBS) and Related Standards
`Munnelly, Jennifer, Context Awareness in Mobile Phone Based
`Applications Using Bluetooth
`Schilit, Bill, The PARCTAB mobile computing system
`Keshav, Travis, Location Management in Wireless Cellular
`Networks
`Cheverst, Keith et al., Using and Determining Location in a
`Context Sensitive Tour Guide
`Hightower, Jeffrey, A Survey and Taxonomy of Location
`Systems for Ubiquitous Computing
`Kientz, Julie, Where’s My Stuff? Design and Evaluation of a
`Mobile System for Locating Lost Items for the Visually Impaired
`Chandra, Ranveer, Beacon-Stuffing: Wi-Fi Without Association
`Wang, Zhijun et al., A speed-adaptive strategy for location
`management cost reduction in cellular networks
`Huang, Albert, A Privacy Conscious Bluetooth Infrastructure for
`Location Aware Computing
`Rooney, S. An Open Source Approach to Wireless Positioning
`Techniques
`Core V2.0 + EDR – Specification Volumes – Specification of the
`Bluetooth System – Master Table of Contents and Compliance
`Requirements
`
`WEST\296176457.1
`
`12
`
`Date of Publication
`7/2005
`
`1999
`
`2005
`
`2006
`
`2000
`
`4/28/2004
`
`6/6/1999
`
`2006
`
`9/7/2006
`2005
`
`10/1993
`2006
`
`9/2001
`
`8/24/2001
`
`2006
`
`2007
`4/27/2006
`
`2005
`
`2007
`
`11/4/2004
`
`BILLJCO
`EXHIBIT 2006 - PAGE 13
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`

`

`Prior Art Publication
`Core V2.1 + EDR – Specification Volumes – Specification of the
`Bluetooth System - Master Table of Contents and Compliance
`Requirements
`Core V3.0 + HS - Specification Volumes – Specification of the
`Bluetooth System - Master Table of Contents and Compliance
`Requirements
`Core V4.0 + - - Specification Volumes – Specification of the
`Bluetooth System - Master Table of Contents and Compliance
`Requirements
`Ungrangsi, Rachanee, An Implementation of Indoor Location
`Detection Systems Based on Identifying Codes
`Liu, Hui, Survey of Wireless Indoor Positioning Techniques and
`Systems
`
`3.
`
`Prior Art Products and Systems
`
`Date of Publication
`7/26/2007
`
`4/21/2009
`
`6/30/2010
`
`2004
`
`2007
`
`The following prior art products and systems relate to the invalidity of the asserted claims
`
`of the Asserted Patents.
`
`Prior Art Products/Systems
`Takada / Kawamura system
`AmbieSense system
`MoteTrack system
`GSM base stations
`802.11 access points
`
`Date Used or Known
`2003
`2004
`2005
`2007
`2007
`
`Apple reserves the right to rely on each of the systems identified in the table above as prior
`
`art to the Asserted Patents, including at least the systems described in various claim charts, for
`
`example 804-GSM, 804-802.11, 011-MoteTrack, 994-MoteTrack, 839-AmbieSense, and 839-
`
`Takada and Kawamura. On information and belief, each of the systems above are prior art to the
`
`asserted patents under 35 U.S.C. §§ 102(a) and (b) because they were known or used before the
`
`earliest priority date of one or more of the asserted patents.
`
`In addition to the products in the chart above, Apple continues to investigate the identities
`
`of the individuals or entities involved in the first sale, offer for sale, or public use of prior art
`
`WEST\296176457.1
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`products that were made using the methods recited by the asserted claims of the Asserted Patents,
`
`and Apple will produce additional documents relating to the invalidity of the asserted claims by
`
`those products as they become available.
`
`B.
`
`Obviousness
`
`Under 35 U.S.C. § 103, a patent is invalid if the claimed subject matter as a whole would
`
`have been obvious to one of ordinary skill in the art at the time the invention was made. Pre-AIA
`
`35 U.S.C. § 103(a). In general, a claimed invention is unpatentable if the differences between it
`
`and the prior art “are such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which said subject matter
`
`pertains.” Pre-AIA 35 U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1, 13–14 (1966). The
`
`ultimate determination of whether an invention is, or is not, obvious is a legal conclusion based on
`
`underlying factual inquiries including the (1) scope and content of the prior art; (2) the level of
`
`ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and
`
`(4) objective evidence of nonobviousness. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 877
`
`(Fed. Cir. 1993); see also Graham, 383 U.S. at 17–18.1
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (“KSR”) reaffirmed Graham,
`
`holding that a claimed invention can be obvious even if there is no teaching, suggestion, or
`
`motivation (the “TSM test”) for combining the prior art to produce that invention. In determining
`
`1 To date, BillJCo has not offered any objective evidence of non-obviousness. Apple reserves the
`right to supplement its Invalidity Contentions to respond to any such evidence should BillJCo
`raise them in the future.
`
`WEST\296176457.1
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`whether a claim is obvious, “[o]ften, it will be necessary for a court to look to interrelated teachings
`
`of multiple patents; the effects of demands known to the design community or present in the
`
`marketplace; and the background knowledge possessed by a person having ordinary skill in the
`
`art, all in order to determine whether there was an apparent reason to combine the known elements
`
`in the fashion claimed by the patent at issue.” KSR at 418. In KSR, the Supreme Court unanimously
`
`rejected the TSM test previously used by the United States Court of Appeals for the Federal Circuit
`
`to determine when references can be combined to find a claim obvious under § 103. In its place,
`
`the Court directed the immediate application of a broad, flexible analysis in determining the
`
`patentability and validity of claimed subject matter when tested against the statutory mandate that
`
`claims be non-obvious. Id. at 415.
`
`To be nonobvious, an improvement must be “more than the predictable use of prior art
`
`elements according to their established functions.” KSR at 417. “The proper question [for a court
`
`to ask is] whether a [person] of ordinary skill, facing the wide range of needs created by
`
`developments in the field of endeavor, would have seen a benefit to upgrading” the disclosure of
`
`one prior art reference with that of another. Id. at 424. “Common sense teaches . . . that familiar
`
`items may have obvious uses beyond their primary purposes, and in many cases a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”
`
`Id. at 420. The person of ordinary skill in the art should not be limited to looking at prior art
`
`designed to solve the same problem nor to approaching that art from the perspective of solving the
`
`problem the patentee claimed to have been solving. Id. at 419–20. Any suggested obviousness
`
`combinations set forth herein are in the alternative to Apple’s anticipation contentions and are not
`
`to be construed to suggest that any reference included in any combination is not anticipatory in its
`
`own right. In particular,