Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Date: May 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00131
`Patent 8,639,267 B2
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Date: May 23, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00131
`Patent 8,639,267 B2
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-00131
`Patent 8,639,267 B2
`
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`I.
`INTRODUCTION
`A. Background and Summary
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`an inter partes review of claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 (“the
`challenged claims”) of U.S. Patent No. 8,639,267 B2 (Ex. 1001, “the
`’267 patent”). BillJCo, LLC (“Patent Owner”) filed a Preliminary Response
`(Paper 5, “Prelim. Resp.”) to the Petition.
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
`decision to institute may not institute on fewer than all claims challenged in
`the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence
`of record, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that at least one of the challenged claims of the ’267 patent is
`unpatentable. Accordingly, we institute an inter partes review as to the
`challenged claims of the ’267 patent on all the grounds of unpatentability in
`the Petition.
`B. Real Parties in Interest
`The parties identify themselves as the only real parties in interest.
`Pet. 1; Paper 4, 2.
`C. Related Matters
`The parties indicate that the ’267 patent is the subject of the following
`district court cases: 1) BillJCo, LLC v. Apple Inc., No. 6:21-cv-00528 (W.D.
`Tex.) (“District Court Litigation”); 2) BillJCo, LLC v. Cisco Systems, Inc.,
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`No. 2:21-cv-00181 (E.D. Tex.); and 3) BillJCo, LLC v. Hewlett Packard
`Enterprise Company, No. 2:21-cv-00183 (E.D. Tex.). Pet. 1; Paper 4, 2.
`D. The ’267 Patent
`The ’267 patent relates to “location based exchanges of data between
`distributed mobile data processing systems for locational applications.”
`Ex. 1001, 1:19–23. The ’267 patent states that the “[a]dvantages of having a
`service as the intermediary point between clients, users, and systems, and
`their associated services, include[] centralized processing, centralized
`maintaining of data, . . . [and] having a supervisory point of control.” Id. at
`1:38–45. But “[w]hile a centralized service has its advantages, there are also
`disadvantages.” Id. at 1:65–66. For example, according to the ’267 patent, a
`centralized service may “suffer from performance and maintenance
`overhead” and presents concerns about the “privacy” of users’ “personal
`information.” Id. at 2:5–6, 2:42–52.
`To address these alleged disadvantages, the ’267 patent states that “[a]
`reasonable requirement is to push intelligence out to the mobile data
`processing systems themselves, for example, in knowing their own locations
`and perhaps the locations of other nearby mobile data processing systems.”
`Id. at 2:58–61. Specifically, the ’267 patent describes “a new terminology,
`system, and method referred to as Location Based eXchanges (LBX).” Id. at
`3:56–58. It is a “foundation requirement” of LBX “for each participating
`[mobile data processing system] to know, at some point, their own
`whereabouts.” Id. at 4:8–10. “When two or more [mobile data processing
`systems] know their own whereabouts, LBX enables distributed locational
`applications whereby a server is not required to middleman social
`interactions between the [mobile data processing systems].” Id. at 4:13–16.
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`E. Illustrative Claim
`Of the challenged claims, claims 1 and 29 are independent. Claim 1 is
`
`reproduced below.
`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.
`Ex. 1001, 284:14–41.
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`F. Evidence
`Petitioner submits the following evidence:
`
`Exhibit
`No.
`1002
`
`1004
`
`1005
`
`1006
`
`35 U.S.C. §
`103
`
`Reference(s)/Basis
`Haberman
`
`Evidence
`Declaration of Thomas La Porta, Ph.D. (“La Porta
`Declaration”)
`Haberman, US 2005/0096044 A1, published May 5, 2005
`(“Haberman”)
`Boger, US 2002/0159401 A1, published Oct. 31, 2002
`(“Boger”)
`Vanluijt, US 2002/0132614 A1, published Sept. 19, 2002
`(“Vanluijt”)
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1, 5, 13, 20, 21, 29,
`30, 34, 42, 49
`1, 5, 13, 20, 21, 29,
`30, 34, 42, 49
`1, 5, 13, 20, 21, 29,
`30, 34, 42, 49
`
`103
`
`103
`
`Haberman, Boger
`
`Vanluijt
`
`II. ANALYSIS
`
`A. 35 U.S.C. § 314(a)
`Patent Owner argues that we should exercise our discretion under
`35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 9–14. Section 314(a)
`states that
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a
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`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`Under § 314(a), we have discretion to deny institution of an inter partes
`review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).
`We consider several factors when determining whether to deny institution
`under § 314(a) based on a parallel district court proceeding, specifically
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”).
`1. Factor 1 – Whether the court granted a stay or evidence
`exists that one may be granted if a proceeding is instituted
`Under the first Fintiv factor, we consider “whether the court granted a
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`Id. at 6. Petitioner argues that it “intends to move to stay the [District Court
`Litigation], and the opportunity for . . . simplification increases the
`likelihood that the [District Court] will grant a stay in view of IPR
`institution.” Pet. 65–66. Patent Owner argues that “a stay is not likely to be
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`granted on a contested motion,” because the District Court grants stays in a
`low percentage of cases. Prelim. Resp. 10.
`Neither party identifies any statements by the District Court or other
`evidence that specifically addresses a stay of the District Court Litigation.
`See Pet. 65–66; Prelim. Resp. 10. We decline to speculate based on the
`record in this case whether the District Court would grant a stay of the
`District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). As a
`result, we determine that the first Fintiv factor is neutral.
`2. Factor 2 – Proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`Under the second Fintiv factor, we consider the “proximity of the
`court’s trial date to the Board’s projected statutory deadline for a final
`written decision.” Fintiv, Paper 11 at 6. Petitioner argues that the District
`Court “tentatively set trial for February 13, 2023,” but “[t]here is no
`guarantee trial will commence” on that date. Pet. 66. According to
`Petitioner, “‘a court’s general ability to set a fast-paced schedule is not
`particularly relevant,’ especially where ‘the forum [W.D. Tex.] itself has not
`historically resolved cases so quickly.’” Id. Patent Owner argues that the
`“trial date is extremely reliable,” because the District Court and parties
`“have kept to the scheduling order fairly closely.” Prelim. Rep. 11.
`The current trial date in the District Court Litigation is February 13,
`2023, which we “generally take . . . at face value absent some strong
`evidence to the contrary.” Ex. 1007, 4; see Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 at 13 (PTAB May 13, 2020) (informative)
`(“Fintiv II”). The projected statutory deadline for a final written decision in
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`this case is in May 2023. Because the trial date in the District Court
`Litigation is a few months before the projected statutory deadline for a final
`written decision in this case, we determine that the second Fintiv factor
`slightly favors exercising our discretion to deny institution.
`3. Factor 3 – Investment in the parallel proceeding by the
`court and the parties
`Under the third Fintiv factor, we consider the “investment in the
`parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6.
`Petitioner argues that “no discovery has taken place,” and although a claim
`construction hearing “is scheduled for February 10, 2022, it is unclear when
`the [District Court] will issue a [claim construction] order.” Pet. 68. Patent
`Owner argues that the District Court issued a claim construction order.
`Prelim. Resp. 12. Patent Owner also argues that Petitioner filed the Petition
`six months after Patent Owner served its complaint in the District Court
`Litigation. Id. at 11.
`The evidence of record indicates that the District Court and the parties
`invested minimal resources in the District Court Litigation as to issues of
`unpatentability involving the ’267 patent. The District Court issued a claim
`construction order that addresses one term in the ’267 patent. Ex. 2003, 3.
`But the District Court stated only that the term has its “[p]lain and ordinary
`meaning.” Id. And the evidence of record indicates that fact discovery is
`ongoing, expert discovery has not begun, and the deadline for dispositive
`motions is not until November 2022. Ex. 1007, 3. Further, Petitioner
`exercised reasonable diligence in filing the Petition about five weeks after
`serving its preliminary invalidity contentions. Pet. 71; Ex. 2006, 81. Thus,
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`we determine that the third Fintiv factor weighs against discretionary denial
`of institution.
`4. Factor 4 – Overlap between issues raised in the petition
`and in the parallel proceeding
`Under the fourth Fintiv factor, we consider the “overlap between
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`at 6. Petitioner argues that “the Petition challenges the validity of claims 29,
`30, 34, 42, and 49 which are not being asserted in the [District Court]
`[L]itigation.” Pet. 69. Petitioner also states that “if the Board institutes IPR,
`Petitioner will not assert invalidity of the challenged claims in the [D]istrict
`[C]ourt [L]itigation using the grounds asserted in this [P]etition.” Id. Patent
`Owner argues that “Petitioner’s stipulation is quite limited in scope” and
`only mitigates “concerns of duplicate efforts and of potentially conflicting
`decisions ‘to some degree.’” Prelim. Resp. 12. Patent Owner also argues
`that because Petitioner relies on more references and more combinations in
`the District Court Litigation than in the Petition, instituting an inter partes
`review would decrease “efficiency” and increase “the possibility of
`conflicting decisions.” Id. at 13.
`The Petition challenges claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49,
`and relies on Haberman, Boger, and Vanluijt. Pet. 4. Petitioner’s invalidity
`contentions in the District Court Litigation address claims 1, 5, 13, 20, and
`21, and rely on Haberman, Boger, and Vanluijt. Pet. 69; Ex. 2006, 7.
`Nonetheless, Petitioner’s stipulation that it will not pursue the grounds
`asserted in the Petition in the District Court Litigation mitigates to some
`degree concerns of duplicative efforts and potentially conflicting decisions.
`Ex. 1011; see Sand Revolution II, LLC v. Continental Intermodal Grp. –
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`Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020)
`(informative). Thus, we determine that the fourth Fintiv factor weighs
`marginally against discretionary denial of institution.
`5. Factor 5 – Whether the petitioner and the defendant in the
`parallel proceeding are the same party
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`the defendant in the parallel proceeding are the same party.” Fintiv,
`Paper 11 at 6. Here, Petitioner is the defendant in the District Court
`Litigation. Pet. 69; Prelim. Resp. 13. But, as we discussed for the second
`factor, the trial date in the District Court Litigation is only a few months
`before the projected statutory deadline for a final written decision in this
`case. Under these circumstances, we determine that the fifth Fintiv factor
`slightly favors exercising our discretion to deny institution.
`6. Factor 6 – Other circumstances that impact the Board’s
`exercise of discretion, including the merits
`Under the sixth Fintiv factor, we consider “other circumstances that
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`Paper 11 at 6. Petitioner argues that the ’267 patent “has never been
`challenged in a PTAB post-issuance proceeding,” the Office “did not
`consider the prior art references asserted in this [P]etition . . . during
`prosecution,” and “the strength of Petitioner’s patentability challenges on the
`preliminary record favor institution.” Pet. 70. Patent Owner argues that
`“Petitioner made a weak showing on the merits.” Prelim. Resp. 14. Patent
`Owner also contends that “an IPR will not provide the parties with an in-
`depth analysis of the ‘267 [p]atent” because “more art and bases for
`challenging the claims of the ‘267 [p]atent were raised in the [District Court]
`Litigation.” Id.
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`As discussed below, on this record and at this stage of the proceeding,
`Petitioner presents a reasonably strong case that the challenged claims are
`unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground
`raised in the petition seem particularly strong on the preliminary record, this
`fact has favored institution.”). For example, Petitioner’s evidence shows
`that Haberman and Vanluijt teach “privilege data” and a “destination
`identity of the whereabouts data,” which are the only limitations that Patent
`Owner disputes at this stage of the proceeding. See Sections II.D.1, II.F.1.
`Thus, we determine that the sixth Fintiv factor weighs against discretionary
`denial of institution.
`7. Summary
`Based on our holistic view of the Fintiv factors, we decline to exercise
`our discretion under § 314(a) to deny the Petition.
`B. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art would have
`had “at least a bachelor’s degree in computer science, computer engineering,
`or an equivalent, and two years of experience relating to wireless
`communications.” Pet. 5 (citing Ex. 1002 ¶¶ 42–43). Petitioner’s
`description of the level of ordinary skill in the art is supported by the
`testimony of Petitioner’s declarant, Dr. Thomas La Porta. Ex. 1002
`¶¶ 42–43. Patent Owner does not propose a description of the level of
`ordinary skill in the art or dispute Petitioner’s description. We adopt
`Petitioner’s description for purposes of this Decision.
`C. Claim Construction
`In an inter partes review proceeding, a claim of a patent is construed
`using the same standard used in a civil action under 35 U.S.C. § 282(b),
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`including construing the claim in accordance with the ordinary and
`customary meaning of the claim as understood by one of ordinary skill in the
`art and the prosecution history pertaining to the patent. 37 C.F.R.
`§ 42.100(b).
`1. privilege data
`Patent Owner proposes construing the term “privilege data” in claims
`1 and 29 to exclude preferences. Prelim. Resp. 8. According to Patent
`Owner, “a ‘privilege’ has a well-defined plain-and-ordinary meaning within
`the software field.” Id. Specifically, Patent Owner contends that “the
`McGraw-Hill Dictionary of Scientific and Technical Terms defines
`‘privileged instruction’ as ‘A class of instructions, usually including storage
`protection setting, interrupt handling, timer control, input/output, and special
`processor status-setting instructions, that can be executed only when the
`computer is in a special privileged mode that is generally available to an
`operating or executive system, but not to user programs.’” Id. at 8–9 (citing
`Ex. 2007, 3) (emphasis omitted). Petitioner does not propose an express
`construction for the term “privilege data” at this stage of the proceeding.
`See Pet. 7.
`On this record, we do not adopt Patent Owner’s proposed
`construction. Patent Owner does not identify any intrinsic evidence to
`support its argument that the term “privilege data” excludes preferences.
`See Prelim. Resp. 8–9. And the dictionary definition cited by Patent Owner
`relates to the term “privileged instruction,” which is different than the term
`“privilege data” that appears in claims 1 and 29. Id.; Ex. 2007, 3. Further,
`the ’267 patent indicates that privilege data can be “[a]ny configurable
`privilege granted by one identity to another identity that can limit, enable,
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`disable, delegate, or govern actions, feature(s), functionality, behavior(s), or
`any subset(s) thereof.” Ex. 1001, 124:15–24. Patent Owner does not
`explain how this description of privilege data excludes preferences. See
`Prelim. Resp. 8–9.
`Thus, on this record, we are not persuaded that the term “privilege
`data” should be construed to exclude preferences. No further construction of
`the term “privilege data” is necessary to resolve the parties’ disputes at this
`stage of the proceeding. See Sections II.D.1, II.F.1; Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`2. destination identity of the whereabouts data
`Patent Owner proposes construing the phrase “destination identity of
`the whereabouts data” in claims 1 and 29 to exclude the claimed mobile data
`processing system from “being the destination.” Prelim. Resp. 5–6. Patent
`Owner argues that “[i]f independent claims 1 and 29 were so broad so as
`encompass the receiving device being the destination, then there would be
`no need for the recited ‘matching privilege […] relating the originating
`identity of the whereabouts data with a destination identity of the
`whereabouts data.” Id. at 6 (emphasis omitted). Petitioner does not propose
`an express construction for the phrase “destination identity of the
`whereabouts data” at this stage of the proceeding. See Pet. 7.
`
`On this record, we do not adopt Patent Owner’s proposed
`construction. Contrary to Patent Owner’s argument, the claim language
`indicates that the destination of the whereabouts data is the mobile data
`processing system. For example, claim 1 recites “receiving, for processing
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`by the mobile data processing system, the whereabouts data including an
`originating identity of the whereabouts data.” Ex. 1001, 284:24–26.
`Because the mobile data processing system receives the whereabouts data,
`claim 1 indicates that the mobile data processing system is the destination of
`the whereabouts data.
`Claim 1 also recites “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 . . . the whereabouts data, wherein the
`matching privilege is configured for relating the originating identity of the
`whereabouts data with a destination identify of the whereabouts data.” Id. at
`284:27–36. In other words, claim 1 states that the mobile data processing
`system searches its local privilege data for a matching privilege upon
`receiving the whereabouts data. Id. As a result, this portion of claim 1 also
`indicates that that the mobile data processing system is the destination of the
`whereabouts data.
`Thus, on this record, we are not persuaded that the phrase “destination
`identity of the whereabouts data” should be construed to exclude the claimed
`mobile data processing system from being the destination. No further
`construction of the phrase “destination identity of the whereabouts data” is
`necessary to resolve the parties’ disputes at this stage of the proceeding. See
`Sections II.D.1, II.E, II.F.1; Vivid Techs., 200 F.3d at 803.
`D. Obviousness of Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`over Haberman
`Petitioner argues that claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`would have been obvious over Haberman. Pet. 7–32. For the reasons
`discussed below, Petitioner demonstrates a reasonable likelihood of
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`prevailing in showing that claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`would have been obvious over Haberman.
`1. Claim 1
`Claim 1 recites “[a] method for automatic location based exchange
`processing by a mobile data processing system.” Ex. 1001, 284:14–16.
`Petitioner presents evidence that Haberman teaches providing informational
`content pertaining to a particular location to a mobile device. Pet. 10–12
`(citing Ex. 1004 ¶¶ 8, 16, 66, 118, 120, 129). At this stage of the
`proceeding, Petitioner shows sufficiently that Haberman teaches the
`preamble of claim 1.1
`Claim 1 recites “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.” Ex. 1001, 284:17–23. Petitioner
`presents evidence that Haberman teaches providing an interface that allows a
`user to select the types of informational content that are preferred. Pet. 14–
`15 (citing Ex. 1004 ¶¶ 25, 121, 164, 176, 181). Petitioner also presents
`evidence that Haberman teaches storing the user’s preferences in a
`preference profile on the mobile device. Id. at 15–16 (citing Ex. 1004
`¶¶ 165–166). Further, Petitioner presents evidence that Haberman teaches
`receiving a broadcast including informational content pertaining to a
`
`
`1 Because Petitioner presents evidence that the prior art teaches the
`recitations in the preamble of claim 1, at this stage of the proceeding, we
`need not decide whether the preamble is limiting.
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`particular location and searching the user’s preference profile to determine if
`the broadcast’s identifying information matches the user’s preferences. Id.
`at 16–18 (citing Ex. 1004 ¶¶ 13, 18, 31, 33, 70, 118, 122, 129, 168).
`Patent Owner argues that Haberman does not teach privilege data
`because preferences are not privileges. Prelim. Resp. 8–9. On this record,
`Patent Owner’s argument is unavailing because it relies on Patent Owner’s
`proposed construction of the term “privilege data.” As discussed above, we
`are not persuaded by Patent Owner’s argument that the term “privilege data”
`should be construed to exclude preferences. See Section II.C.1.
`Claim 1 recites “receiving, for processing by the mobile data
`processing system, the whereabouts data including an originating identity of
`the whereabouts data.” Ex. 1001, 284:24–26. Petitioner presents evidence
`that Haberman teaches receiving a broadcast including informational content
`pertaining to a particular location (i.e., whereabouts data), as well as a
`transmitting party identification and broadcast identifying information (i.e.,
`an originating identity). Pet. 18–21 (citing Ex. 1004 ¶¶ 18, 27, 31, 33,
`66–67, 118, 122, 129). At this stage of the proceeding, Petitioner shows
`sufficiently that Haberman teaches this limitation of claim 1.
`Claim 1 recites “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.” Ex. 1001, 284:27–31. Petitioner
`presents evidence that Haberman teaches searching the user’s preference
`profile on the mobile phone to determine if a broadcast includes identifying
`information that matches the user’s preferences. Pet. 22–23 (citing Ex. 1004
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`¶¶ 70, 130, 168). At this stage of the proceeding, Petitioner shows
`sufficiently that Haberman teaches this limitation of claim 1.
`Claim 1 recites “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.” Ex. 1001, 284:31–36. Petitioner presents evidence that
`Haberman teaches matching a broadcast’s identifying information (i.e., the
`originating identity) with the user’s preferences profile on the mobile device
`(i.e., a destination identity). Pet. 23–25 (citing Ex. 1004 ¶¶ 26–27, 130, 176,
`181). Petitioner also presents evidence that Haberman teaches presenting
`the broadcast’s informational content to the user when there is a match
`between the broadcast’s identifying information and the user’s preferences
`profile. Id. at 25 (citing Ex. 1004 ¶ 168).
`Patent Owner argues that Haberman does not teach a destination
`identity of the whereabouts data because “the recited ‘destination identity’
`feature” cannot be “met by the receiving device itself.” Prelim. Resp. 5–7.
`On this record, Patent Owner’s argument is unavailing because it relies on
`Patent Owner’s proposed construction of the phrase “destination identity of
`the whereabouts data.” As discussed above, we are not persuaded by Patent
`Owner’s argument that the phrase “destination identity of the whereabouts
`data” should be construed to exclude the claimed mobile data processing
`system from being the destination. See Section II.C.2.
`Claim 1 recites “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
`
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`mobile data processing system.” Ex. 1001, 284:37–41. As discussed above,
`Petitioner presents evidence that Haberman teaches presenting the
`broadcast’s informational content to the user when there is a match between
`the broadcast’s identifying information and the user’s preferences profile.
`Pet. 26 (citing Ex. 1004 ¶¶ 168, 173). At this stage of the proceeding,
`Petitioner shows sufficiently that Haberman teaches this limitation of
`claim 1.
`
`2. Claims 5, 13, 20, 21, 29, 30, 34, 42, and 49
`Independent claim 29 recites limitations similar to those discussed
`above for claim 1. Dependent claims 5, 13, 20, 21, 30, 34, 42, and 49
`depend from claims 1 or 29. Petitioner presents evidence that Haberman
`teaches the limitations of claims 5, 13, 20, 21, 29, 30, 34, 42, and 49. Pet.
`10–32. Other than the arguments discussed above for claim 1, Patent Owner
`does not raise any separate arguments regarding claims 5, 13, 20, 21, 29, 30,
`34, 42, and 49.
`3. Summary
`For the foregoing reasons, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that claims 1, 5, 13, 20, 21, 29, 30, 34,
`42, and 49 would have been obvious over Haberman.
`E. Obviousness of Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`over Haberman and Boger
`Petitioner argues that claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`would have been obvious over Haberman and Boger. Pet. 33–42.
`Specifically, Petitioner argues that to the extent Haberman does not teach a
`destination identity of the whereabouts data, Boger teaches a Bluetooth
`packet that includes an address of the device for which the packet is
`intended. Id. at 35–37 (citing Ex. 1005 ¶¶ 4, 6, 9). Petitioner also argues
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`IPR2022-00131
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`that a person of ordinary skill in the art would have had reason “to combine
`the teachings of Boger with that of Haberman because Haberman teaches
`explicitly that transmission between the transmitter and the mobile device
`may be done by Bluetooth and Boger explains how devices communicate
`using Bluetooth.” Id. at 37–38 (citing Ex. 1002 ¶¶ 121–122).
`Patent Owner argues that Bogers’s teachings do not compensate for
`the alleged deficiencies in Haberman. Prelim. Resp. 7–8. As discussed
`above, though, we are not persuaded by Patent Owner’s arguments regarding
`the alleged deficiencies in Haberman. Thus, Petitioner demonstrates a
`reasonable likelihood of prevailing in showing that claims 1, 5, 13, 20, 21,
`29, 30, 34, 42, and 49 would have been obvious over Haberman and Boger.
`F. Obviousness of Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`over Vanluijt
`Petitioner argues that claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`would have been obvious over Vanluijt. Pet. 42–64. For the reasons
`discussed below, Petitioner demonstrates a reasonable likelihood of
`prevailing in showing that claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49
`would have been obvious over Vanluijt.
`1. Claim 1
`Claim 1 recites “[a] method for automatic location based exchange
`processing by a mobile data processing system.” Ex. 1001, 284:14–16.
`Petitioner presents evidence that Vanluijt teaches providing location specific
`information to a mobile device. Pet. 44–45 (citing Ex. 1006, code (57), ¶¶ 1,
`
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`4, 36). At this stage of the proceeding, Petitioner shows sufficiently that
`Vanluijt teaches the preamble of claim 1.2
`Claim 1 recites “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 p
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