UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00131
`U.S. PATENT NO. 8,639,267
`
`_______________________
`
`
`PATENT OWNER'S RESPONSE
`PURSUANT TO 35 U.S.C. §§ 316(a)(8)
`
` 
`
` 
`
`

`

` 
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`I.
`PETITIONER'S UNPATENTABILITY GROUNDS.................................. 1
`II.
`III. THE '267 PATENT ...................................................................................... 2
`IV. THE CITED PRIOR ART ............................................................................ 4
`V.
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 6
`VI. CLAIM CONSTRUCTION ......................................................................... 6
`A.
`"Privilege Data" and "Matching Privilege"
`
`and "Privileged Action" ..................................................................... 9
`B.
`"Destination Identity" ....................................................................... 15
`VII. PETITIONER'S CITED PRIOR ART IS MERELY
`
`CUMULATIVE OR LESS RELEVANT THAN DURING
`
`THAT CONSIDERED PROSECUTION
`
`OF THE '267 PATENT .............................................................................. 17
`
`VIII. HABERMAN, ALONE OR IN COMBINATION WITH
`
`BOGER, FAILS TO RENDER THE CHALLENGED
`
`CLAIMS UNPATENTABLE AS OBVIOUS ........................................... 19
`A. Haberman Fails To Disclose Or Make Obvious The
`
`Claimed "Privilege Data" or "Matching Privilege" ......................... 19
`B. Haberman Fails To Disclose Or Make Obvious
`
`The Claimed "Destination Identity" ................................................. 24
`C.
`Combining Haberman With Boger Does Not
`
`Render The Challenged Claims Obvious ......................................... 25
`IX. VANLUIJT FAILS TO RENDER THE CHALLENGED CLAIMS
`
`UNPATENTABLE AS OBVIOUS ............................................................ 25
`A. Vanluijt Fails To Disclose Or Make Obvious
`
`The Claimed "Privilege Data" or "Matching
`Privilege" or "Privileged Action" ..................................................... 26
`
`
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`B. Vanluijt Fails To Disclose Or Make Obvious
`
`The Claimed "Destination Identity" ................................................. 29
`X. OBJECTIVE INDICIA OF NON-OBVIOUSNESS
`
`DEMONSTRATES THE PATENTABILITY OF
`
`THE CHALLENGED CLAIMS ................................................................ 30
`A.
`Copying ............................................................................................ 31
`1.
`Petitioner's Access to the '267 Patented Technology ............. 31
`2.
`Petitioner's Devices Embody The Challenged Claims .......... 33
`Commercial Success......................................................................... 36
`Licensing .......................................................................................... 37
`The Nexus Between The Challenged Claims And
`The Objective Evidence of Non-Obviousness ................................ 38
`
`B.
`C.
`D.
`
`
`XI. CONCLUSION ........................................................................................... 40
`
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`
`TABLE OF AUTHORITIES
`
`Cases:
`
`AbbVie Deutschland GmbH v. Janssen Biotech, Inc.,
`
`759 F.3d 1285 (Fed. Cir. 2014) .................................................................. 17
`
`Advanced Bionics, LLC v. Med-El Electromedizinische Gerate GmbH,
`
`IPR2019-01469, Paper 6 at 7 (Feb. 13, 2020) ........................................... 18
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`
`IPR2017-01586, Paper 8 at 17 (Dec. 15, 2017) ......................................... 18
`
`Fox Factory, Inc. v. SRAM, LLC,
`
`944 F.3d 1366 (Fed. Cir. 2019) .................................................................. 38
`
`Graham v. John Deere Co. of Kan. City,
`
`383 U.S. 1, 86 S.Ct. 684 (1966) ................................................................. 21
`
`In re Gartside,
`
`203 F.3d 1305 (Fed. Cir. 2000) .................................................................. 21
`
`In re Warsaw Orthopedic, Inc.,
`
`832 F.3d 1327 (Fed. Cir. 2016) .................................................................. 21
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`
`738 F.3d 1337 (Fed. Cir. 2013) .................................................................. 37
`
`J.T. Eaton & Co. v. ATl. Paste & Glue Co.,
`
`106 F.3d 1563 (Fed. Cir. 1997) .................................................................. 39
`
`Lectrosonics, Inc. v. Zaxcom, Inc.,
`
`IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) ............................ 38
`
`Liqwd, Inc. v. L'Oreal USA, Inc.,
`
`941 F.3d 1133 (Fed. Cir. 2019) .................................................................. 31
`
`Microsoft Corp. v. i4i Ltd. Partnership,
`
`564 U.S. 91 (2011) ...................................................................................... 17
`
`
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`
`Panduit Corp. v. Dennison Mfg. Co.,
`
`774 F.2d 1082 (Fed. Cir. 1985) .................................................................. 31
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............................................... 7, 8
`
`Thorner v. Sony Computer Entm't Am. LLC,
`
`669 F.3d 1362 (Fed. Cir. 2012) ................................................................... 7
`
`Transocean Offshore Deepwater Drilling Inc. v. Maersk Drilling USA, Inc.,
`
`699 F.3d 1340 (Fed. Cir. 2012) .................................................................. 30
`
`Underwater Devices Inc. v. Morrison-Knudsen Co.,
`
`717 F.2d 1380 (Fed. Cir. 1983) .................................................................. 17
`
`United States v. Adams,
`
`383 U.S. 39, 86 S.Ct. 708 (1966) ............................................................... 21
`
`WBIP, LLC v. Kohler Co.,
`
`829 F.3d 1317 (Fed. Cir. 2016) ............................................... 30, 31, 36, 39
`
`
`Other Authority:
`
`35 U.S.C. § 103 .................................................................................................... 21
`
`35 U.S.C. § 325(d) ................................................................................................ 17
`
`37 C.F.R. § 42.100(b) ............................................................................................. 6
`
`
`
`All emphasis supplied unless otherwise noted.
`
`
`
`
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`
`TABLE OF EXHIBITS
`
`
`Description
`Deposition of Thomas F. La Porta dated July 29, 2022 in
`IPR2022-00131 Petition for Inter Partes Review of U.S.
`Patent 8,639,267
`Declaration of Istvan Jonyer '267 Patent
`U.S. Patent Application Publication 2008/0170679
`U.S. Patent Application Publication 2007 /0244633
`U.S. Patent Application Publication U.S. Patent No.
`7,177,651
`Technical Dictionary Terms
`Amended Complaint and Select Exhibits [Northern District
`of California] (SEALED)
`Google Patent License Agreement (SEALED)
`Hewlett Packard Enterprise Company and Aruba Networks,
`LLC Patent License Agreement (SEALED)
`Cisco Patent License Agreement (SEALED)
`About Privacy and Location Services in iOS and iPadOS
`(APL-BJCO 00014622)
`
`Exhibit
`2009
`
`2010
`2011
`2012
`2013
`
`2014
`2015
`
`2016
`2017
`
`2018
`2019
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`I.
`
`
`
`INTRODUCTION
`
`Apple, Inc. ("Petitioner") filed its Petition (Paper 2, "Pet.") requesting inter
`
`partes review of claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 ("the Challenged
`
`Claims") of U.S. Patent 8,639,267 (EX1001, "'267 Patent"). BillJCo, LLC ( "Patent
`
`Owner") filed a Preliminary Response (Paper 5, "Prelim. Resp.") to the Petition. The
`
`Patent Trial and Appeal Board ("Board") issued a decision (Paper 7) granting
`
`institution on May 23, 2022.
`
`
`
`Patent Owner respectfully submits that none of the Challenged Claims are
`
`unpatentable as obvious in view of Petitioner's prior art. First, the prior art of record
`
`fails to disclose all of the claimed limitations of the Challenged Claims. Next, a
`
`person of ordinary skill in the art ("POSITA") would have had no reason to modify
`
`the prior art relied on by Petitioner to arrive at the inventions set forth in the
`
`Challenged Claims. Also, objective factors, including copying by Petitioner,
`
`licensing of the patented technology, and commercial success, demonstrate the
`
`Challenged Claims are not unpatentable.
`
`II.
`
`
`
`PETITIONER'S UNPATENTABILITY GROUNDS
`
`Petitioner raises three grounds for unpatentability. Each of Petitioner's
`
`grounds is based on 35 U.S.C. § 103 claiming obviousness. Ground 1 asserts each
`
`of the Challenged Claims is obvious in view of U.S. Patent Application Publication
`
`No. 2005/0096044 ("Haberman") (EX1004). Ground 2 asserts each of the
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`Challenged Claims is obvious in view of Haberman, further in view of U.S. Patent
`
`Application Publication No. 2002/0159401 ("Boger") (EX1005). Lastly, Petitioner
`
`asserts in Ground 3 that each of the Challenged Claims is obvious in view of U.S.
`
`Patent Application Publication No. 2002/0132614 ("Vanluijt") (EX1006). Patent
`
`Owner contests each of these grounds.
`
`III. THE '267 PATENT
`
`
`
`The '267 Patent relates to "location based exchanges of data between
`
`distributed mobile data processing systems for locational applications." EX1001,
`
`1:19-23. According to the '267 Patent, a concern with centralized servers intended
`
`to be addressed by the distributed mobile data processing systems relates to privacy.
`
`"Users are skeptical about their privacy as internet services proliferate. A service by
`
`its very nature typically holds information for a user maintained in a centralized
`
`service database. The user's preferences, credential information, permissions,
`
`customizations, billing information, surfing habits, and other conceivable user
`
`configurations and activity monitoring, can be housed by the service at the service."
`
`EX1001, 2:43-48. Accordingly, the '267 Patent states that a "method and system is
`
`needed for making users comfortable with knowing that their personal information
`
`is at less risk of being compromised." Id. at 2:55-57.
`
`
`
`In order to address user privacy concerns, the '267 Patent describes the use of
`
`"permissions" and "privileges," and further claims configuring and searching
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`"privileges." With respect to "permissions" and "privileges," the '267 Patent explains
`
`the terms are "used interchangeably in this disclosure." Id. at 124:7-9.
`
`
`
`The '267 Patent explains that "permissions" and "privileges" are used to
`
`address privacy concerns. For example, the '267 Patent discloses that "permissions
`
`are maintained in a peer to peer manner prior to lookup for proper service sharing.
`
`In another embodiment, permissions are specified and used at the time of granting
`
`access to the shared services." Id. at 10:29-32. The '267 Patent further discloses that
`
`"[i]t is an advantage herein for providing peer to peer permissions, authentication,
`
`and access control. … Permissions are maintained locally to a MS." Id. at 10:44-
`
`46. "It is another advantage to support a countless number of privileges that can be
`
`configured, managed, and processed in peer to peer manner between MSs. Any peer
`
`to peer feature or set of functionality can have a privilege associated to it for being
`
`granted from one user to another. It is also an advantage for providing a variety of
`
`embodiments for how to manage and maintain privileges in a network of MSs." Id.
`
`at 12:26-32. "Whereabouts information of others will not be maintained unless there
`
`are privileges in place to maintain it. Whereabouts information may not be shared
`
`with others if there have been no privileges granted to a potential receiving MS."
`
`Id. at 12:56-59.
`
`
`
`These privileges, i.e., permissions, feature prominently in the Challenged
`
`Claims. Claim 1, is provided as an example.
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`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.
`
`
`Id. at 284:14-41. As shown, "privileges" (i.e., permissions) are part of several
`
`claimed limitations, namely, "privilege data," "matching privilege," and "privileged
`
`action."
`
`IV. THE CITED PRIOR ART
`
`
`
`Petitioner raises three grounds for unpatentability, each of which is based on
`
`obviousness. The sole reference in Ground 1 is Haberman. EX1004. Haberman is
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`also the primary reference for Ground 2, which further relies on Boger. EX1005.
`
`The sole reference in Ground 3 is Vanluijt. EX1006.
`
`
`
`Ground 1 posits that the Challenged Claims are obvious in view of Haberman
`
`by itself. Haberman relates to a method for presenting information to a person using
`
`a mobile device related to a specific address when the mobile device is within
`
`proximity. EX1004, Abstract. Petitioner relies on Haberman's disclosures related to
`
`a user's "preferences profile" for the claimed "privilege" limitations. The preferences
`
`may be stored on the mobile device and indicate "certain businesses or locations of
`
`interest that are preferred by the person," wherein the mobile device "includes a
`
`button or icon which, upon actuation by the user, results in the presentation of a list
`
`of all preferred businesses or locations of interest within a certain proximity of the
`
`person." EX1004, ¶ [131]. "[T]he stored preferences profile indicates types of
`
`information content with which the person using the mobile device desires to be
`
`presented, i.e., that which is preferred." EX1004, ¶ [0176].
`
`
`
`Ground 2 is based on Haberman (EX1004) in combination with Boger
`
`(EX1005). According to Petitioner's expert, Dr. La Porta, Boger is relied on basically
`
`for the teaching of Bluetooth. EX2009, 99:7-15.
`
`
`
`Ground 3 contends the Challenged Claims are obvious in view of Vanluijt, by
`
`itself. EX1006. Vanluijt discloses a system for providing information to a user of a
`
`mobile device. Id. at p. 0001, Abstract. Like Haberman, Petitioner and its expert
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`relies on Vanluijt for its disclosure that information transmitted may be filtered by
`
`using user preferences.
`
`
`
`Petitioner, by way of its expert, Dr. La Porta, presumes that "preference" is
`
`synonymous with "privilege." EX1002, ¶ 70 ("'preferences profile' (i.e., privilege
`
`data)"). Yet, it is undisputed, and in fact, Dr. La Porta admits that the terms privileges
`
`or permissions are not understood in the computer science arts to mean the same
`
`thing as a preference. EX2009, 46:5-47:14 ("I would not equate a preference with a
`
`permission in computer science"); EX2010, ¶¶ 64-78. It is further undisputed that
`
`neither of Petitioner's primary references, Haberman or Vanluijt, discloses a
`
`"privilege" (or "permission") anywhere, and instead, discloses only "preferences."
`
`Similarly, Boger does not disclose either "privileges" or "permissions."
`
`V.
`
`
`
`LEVEL OF ORDINARY SKILL IN THE ART
`
`Petitioner proposes that a POSITA would have "at least a bachelor's degree in
`
`computer science, computer engineering, or an equivalent, and two years of
`
`experience relating to wireless communications." Patent Owner does not contest this
`
`proposal.
`
`VI. CLAIM CONSTRUCTION
`
`
`
`In an IPR, patent claims are interpreted as they would be in a civil action. 37
`
`C.F.R. § 42.100(b). Claim terms are generally given "their ordinary and customary
`
`meaning" — i.e., "the meaning that the terms would have to a person of ordinary
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`skill in the art at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303,
`
`1312-13 (Fed. Cir. 2005) (en banc).
`
`
`
`There are only two exceptions to this rule: "1) when a patentee sets out a
`
`definition and acts as his own lexicographer, or 2) when the patentee disavows the
`
`full scope of a claim term either in the specification or during prosecution." Thorner
`
`v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). "To act
`
`as its own lexicographer, a patentee must clearly set forth a definition of the disputed
`
`claim term other than its plain and ordinary meaning." Id. (internal quotations and
`
`citation omitted). "The inventor's written description of the invention, for example,
`
`is relevant and controlling insofar as it provides clear lexicography…." Id. at 1365-
`
`66 (internal quotations and citation omitted).
`
`
`
`Petitioner does not contend lexicography or disavowal, and instead asserts that
`
`"the challenged claims should be interpreted according to their plain and ordinary
`
`meaning." (Pet. at 7). Patent Owner agrees the terms and phrases in the Challenged
`
`Claims should be interpreted according to their plain and ordinary meanings,
`
`however, in view of Petitioner's arguments, computer science terms of art require
`
`clarification.
`
`
`
`In determining the ordinary and customary meaning, the claim language
`
`"provide[s] substantial guidance as to the meaning of particular claim terms."
`
`Phillips, 415 F.3d at 1314. A patent's specification "is always highly relevant to the
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`claim construction analysis" and usually "dispositive." Id. at 1315. The construction
`
`that "stays true to the claim language and most naturally aligns with the patent's
`
`description of the invention" governs. Id. The prosecution history may also
`
`"provide[] evidence of how the PTO and the inventor understood the patent." Id. at
`
`1317.
`
`
`
`Courts may also consider extrinsic evidence, such as technical dictionaries
`
`and expert testimony, "if the court deems it helpful in determining the 'true meaning
`
`of language used in the patent claims'" and it does not contradict the intrinsic
`
`evidence. Id. at 1318. Technical dictionaries, can be helpful resources during claim
`
`construction by providing insight into commonly accepted meanings of a term to
`
`those of skill in the art. Phillips, 415 F.3d at 1318.
`
`
`
`Expert testimony can be useful "to ensure that the court's understanding of the
`
`technical aspects of the patent is consistent with that of a person of skill in the art,
`
`or to establish that a particular term in the patent or the prior art has a particular
`
`meaning in the pertinent field." Id. "However, conclusory, unsupported assertions
`
`by experts as to the definition of a claim term are not useful to a court. Similarly, a
`
`court should discount any expert testimony 'that is clearly at odds with the claim
`
`construction mandated by the claims themselves, the written description, and the
`
`prosecution history, in other words, with the written record of the patent.'" Id.
`
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`"Privilege Data" and "Matching Privilege"
`and "Privileged Action"
`
`A.
`
`
`The claim term "privilege" is found throughout the Challenged Claims, e.g.,
`
`"privilege data", "matching privilege", and "privileged action." For example, claim
`
`1 recites a method including:
`
`
`
`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;
`
`…
`
`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.
`
`"Privilege" is a term with a well-accepted and understood definition in the
`
`
`
`computer science arts, which Petitioner admits is the relevant technical field. Pet. at
`
`5. "Privilege," as used in computer science, is a security related concept that
`
`delegates permissions to users, programs, processes, or services to perform certain
`
`functions on a computer. EX2010, ¶ 64-78; EX 2014. As discussed above, the '267
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`states that "privileges" and "permissions" are used interchangeably. Ex, 1001, 124:6-
`
`8. It is understood in the computer science arts that a privilege or a permission is a
`
`right to be to perform an action. EX2010, ¶ 64-78; EX 2014.
`
`That the '267 Patent claims use "privilege" according to its ordinary meaning
`
`is also clear from the specification. As the Board stated, the '267 Patent states that
`
`one of the issues the disclosed invention is intended to address relates to users'
`
`privacy concerns. Paper 7 at 3. The '267 Patent also discloses that "[u]sers are
`
`skeptical about their privacy as internet services proliferate. A service by its very
`
`nature typically holds information for a user maintained in a centralized service
`
`database. The user's preferences, credential
`
`information, permissions,
`
`customizations, billing information, surfing habits, and other conceivable user
`
`configurations and activity monitoring, can be housed by the service at the service.
`
`… A method and system is needed for making users comfortable with knowing that
`
`their personal information is at less risk of being compromised." EX1001, 2:43-57
`
`As shown, the specification identifies user "preferences" and user "permissions" as
`
`separate and distinct types of information.
`
`
`
`The '267 Patent then goes on to use "permissions" and "privileges" in a manner
`
`consistent with how those terms are used in the computer science art.
`
`An MS may have access to services which are unavailable to other MSs. Any
`MS can share its accessible services for being accessible to any other MS,
`preferably in accordance with permissions. … In a preferred embodiment,
`permissions are maintained in a peer to peer manner prior to lookup for proper
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`service sharing. In another embodiment, permissions are specified and used
`at the time of granting access to the shared services. Once granted for
`sharing, services can be used in a mode as if the sharing user is using the
`services, or in a mode as if the user accepting the share is a new user to the
`service. EX1001, 10:23-35.
`
`It is another advantage herein for providing peer to peer permissions,
`authentication, and access control. A service is not necessary for
`maintaining credentials and permissions between MSs. Permissions are
`maintained locally to a MS. In a centralized services model, a database can
`become massive in size when searching for needed permissions. …
`Maintaining permissions locally, as described below, reduces the amount of
`data to represent the permission because the owner is understood to be the
`personal user of the MS. Additionally, permission searching is very fast
`because the MS only has to search its local data for permissions that apply to
`only its MS. Id. 10:43-58.
`
`It is another advantage to support a countless number of privileges that can be
`configured, managed, and processed in a peer to peer manner between MSs.
`Any peer to peer feature or set of functionality can have a privilege
`associated to it for being granted from one user to another. It is also an
`advantage for providing a variety of embodiments for how to manage and
`maintain privileges in a network of MSs. Id. 12:26-32.
`
`Whereabouts information of others will not be maintained unless there are
`privileges in place to maintain it. Whereabouts information may not be
`shared with others if there have been no privileges granted to a potential
`receiving MS. Id. 12:56-59.
`
`Permissions provide authentication for novel features and functionality,
`and to which context to apply the charters. … Id. 120:54-56.
`
`User configured permissions are maintained at a MS and their relevance
`(applicability) to WDRs that are being processed is determined. WDR
`processing events are recognized through being placed in strategic LBX
`processing paths of WDRs. For example, permissions govern processing of
`newly processed WDRs at a MS, regardless of where the WDR originated.
`A permission can provide at least one privilege, and may provide a plurality
`of privileges. A permission is granted from a grantor identity to a grantee
`identity. Depending on what permissions are determined relevant to (i.e.
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`applicable to) a WDR being processed (e.g. by accessing at least one field
`in the WDR), an action or plurality of actions which are associated with
`the permission can automatically occur. Id. 120:60-121:6.
`
`Throughout the '267 Patent specification the term "privilege" (and "permission") is
`
`used according to the common and ordinary meaning in the computer science arts,
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`namely, a right granted to users, programs, processes, or services to perform certain
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`functions on a computer.
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`
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`The prosecution history also demonstrates that the common and ordinary
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`meaning for "privilege" is what the Patent Office understood by the term. During
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`prosecution of the '267 Patent, the examiner cited several prior art references that
`
`discussed privileges. One such references was U.S. Patent Application Publication
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`2008/0170679 ("Sheha") (EX2011). According to the examiner Sheha disclosed
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`configuring privilege data by way of it "disclos[ing] privacy setting, which allows
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`the position transfer permission." EX1003, p. 0043. Another prior art reference,
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`U.S. Patent Application Publication 2007/0244633 ("Phillips") (EX2012) also
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`disclosed the concept of privileges, according to the examiner, by disclosing a user's
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`privileged based on access level. Id. at p. 0044. Lastly, the examiner cited U.S.
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`Patent 7,177,651 ("Almassy") (EX2013), which the examiner argued disclosed
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`privileged data by way of teaching of "trust relationships." Id. Accordingly, the
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`intrinsic evidence is clear, a "privilege" as used in the '267 Patent is a granted
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`authorization to perform a function.
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`Petitioner does not contend that "privilege" should be given a special or
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`uncommon meaning. Pet. at 5. Yet, the cornerstone to each of Petitioner's
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`unpatentability grounds is that a "privilege" is the same thing as a user "preference."
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`The intrinsic evidence demonstrates that a "privilege" is simply not the same thing
`
`as a "preference."
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`
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`First, as discussed, a "privilege" has a particular meaning in computer science,
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`e.g., a right given to a user, application, system, etc. to perform certain functions on
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`a computer. By contrast, a "preference" is merely choosing or liking one thing over
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`a different thing. EX2010, ¶ 72. Indeed, Petitioner's expert admitted that the term
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`"privilege" (or "permission") is understood in the computer science art to have a
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`different meaning from the term "preference." EX2009, 46:5-47:14. During his
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`deposition, Dr. La Porta further admitted that "in terms of the patent a privileged
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`action is some action that the device has the --- the permission to execute." Id.,
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`57:24-58:3. Dr. La Porta further explained that a permission is a right given to
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`perform an action, Id., 77:21-78:6 ("permission is the --- giving someone the ability
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`to … perform an action or access").
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`By contrast, it is clear from Petitioner's prior art a "preference" is nothing more
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`than a desire for one thing over another. EX1004, ¶ [0176] ("[T]he stored preferences
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`profile indicates types of information content with which the person using the mobile
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`device desires to be presented, i.e., that which is preferred."). Petitioner cites to no
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`evidence equating "preference" with either "privilege" or "permission."
`
`
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`Rather that present any arguments or evidence that the claim term "privilege"
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`should be interpreted to mean the same thing as a "preference," Petitioner merely
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`adopts Dr. La Porta's unsupported statement that "preference" is synonymous with
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`"privilege." See EX1002, ¶ 70 ("a user can store a 'preferences profile' (i.e., privilege
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`data)…."). Like Petitioner, Dr. La Porta gives no explanation or evidence to support
`
`his mere pronouncement. It is well-settled that "conclusory, unsupported assertions
`
`by experts as to the definition of a claim term are not useful to a court. Similarly, a
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`court should discount any expert testimony 'that is clearly at odds with the claim
`
`construction mandated by the claims themselves, the written description, and the
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`prosecution history, in other words, with the written record of the patent.'" Phillips,
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`415 F.3d at 1318. Yet, Dr. La Porta's conflation of "preference" and "privilege" or
`
`"permission" is both conclusory and unsupported, as well as at odds with the
`
`intrinsic evidence. Accordingly, Dr. La Porta's and Petitioner's assumption that a
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`"privilege" has the same meaning as a "preference" in the computer science arts
`
`cannot pass muster.
`
`
`
`For the foregoing reasons, the interpretation for "privilege" that should be
`
`utilized is the common and ordinary meaning – a right granted to users, programs,
`
`processes, or services to perform certain functions on a computer.
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`
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`"Destination Identity"
`
`B.
`
`The term "destination identity" is another term in the Challenged Claims that
`
`should be afforded its common and ordinary meaning as that term is used in the '267
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`Patent. In the context of the claims and the '267 Patent specification, the claimed
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`destination identity relates to privilege data configuration, as opposed to merely
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`being anything indicating the destination of data as Petitioner suggests.
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`
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`According to the context of the claim, the destination identity pertains to the
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`matching privilege configuration. For example, claim 1 recites: "the matching
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`privilege is configured for relating the originating identity of the whereabouts data
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`with a destination identity of the whereabouts data to permit trigger of a privileged
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`action for the receipt of whereabouts data received for processing by the mobile data
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`processing system…." EX1001, 284:31-36.
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`This configuration of privileges is explained in the '267 Patent specification.
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`User configured permissions are maintained at a MS and their relevance
`(applicability) to WDRs that are being processed is determined. WDR
`processing events are recognized through being placed in strategic LBX
`processing paths of WDRs. For example, permissions govern processing of
`newly processed WDRs at a MS, regardless of where the WDR originated. A
`permission can provide at least one privilege, and may provide a plurality of
`privileges. A permission is granted from a grantor identity to a grantee
`id