DOCKET NO.: 337722-000230
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Jonathan Hicks, Reg. No. 75,195
`Joseph Wolfe Reg. No. 73,173
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`BILLJCO LLC,
`
`Patent Owner
`
`IPR2022-00131
`
`DECLARATION OF THOMAS LA PORTA, PH.D.
`REGARDING CLAIMS 1, 5, 13, 20, 21, 29, 30, 34, 42, AND 49
`OF U.S. PATENT NO. 8,639,267
`
`APPLE
`EXHIBIT 1002 - PAGE 0001
`
`
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Jonathan Hicks, Reg. No. 75,195
`Joseph Wolfe Reg. No. 73,173
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`BILLJCO LLC,
`
`Patent Owner
`
`IPR2022-00131
`
`DECLARATION OF THOMAS LA PORTA, PH.D.
`REGARDING CLAIMS 1, 5, 13, 20, 21, 29, 30, 34, 42, AND 49
`OF U.S. PATENT NO. 8,639,267
`
`APPLE
`EXHIBIT 1002 - PAGE 0001
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`IPR2022-00131
`Patent 8,639,267
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .......................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ................................................ 1
`
`III. MATERIALS CONSIDERED ....................................................................... 6
`
`IV.
`
`LEGAL STANDARDS .................................................................................. 8
`
`V.
`
`OVERVIEW OF THE ’267 PATENT ......................................................... 11
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Summary of the ’267 Patent ............................................................... 11
`
`Prosecution History ............................................................................ 12
`
`Level of Ordinary Skill in the Art ...................................................... 14
`
`Priority Date ....................................................................................... 15
`
`Exemplary Claim ................................................................................ 15
`
`VI. CLAIM CONSTRUCTION ......................................................................... 16
`
`VII. SUMMARY OF OPINIONS ........................................................................ 17
`
`A.
`
`Ground 1: Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 are
`obvious over Haberman ..................................................................... 18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview of Haberman ............................................................ 18
`
`Claims 1 and 29 are obvious over Haberman .......................... 20
`
`Claims 5 and 34 are obvious over Haberman .......................... 41
`
`Claims 13 and 42 are obvious over Haberman ........................ 43
`
`Claims 20 and 49 are obvious over Haberman ........................ 45
`
`Claims 21 and 30 are obvious over Haberman ........................ 46
`
`i
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`B.
`
`Ground 2: Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 are
`obvious over Haberman in view of Boger ......................................... 47
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview of Boger ................................................................... 48
`
`Claims 1 and 29 are obvious over Haberman in view Of
`Boger ........................................................................................ 48
`
`Claims 5 and 34 are obvious over Haberman in view of
`Boger ........................................................................................ 54
`
`Claims 13 and 42 are obvious over Haberman and Boger ...... 54
`
`Claims 20 and 49 are obvious over Haberman and Boger ...... 56
`
`Claims 21 and 30 are obvious over Haberman and Boger ...... 57
`
`C.
`
`Ground 3: Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 are
`obvious over Vanluijt ......................................................................... 58
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Overview of Vanluijt ............................................................... 58
`
`Claims 1 and 29 are obvious over Vanluijt.............................. 59
`
`Claims 5 and 34 are obvious over Vanluijt.............................. 73
`
`Claims 13 and 42 are obvious over Vanluijt ........................... 75
`
`Claims 20 and 49 are obvious over Vanluijt ........................... 76
`
`Claims 21 and 30 are obvious over Vanluijt ........................... 79
`
`VIII. CONCLUSION ............................................................................................. 81
`
`ii
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`APPLE
`EXHIBIT 1002 - PAGE 0003
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`I, Thomas La Porta, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Thomas F. La Porta, and I have been retained by counsel
`
`for Petitioner Apple Inc. (“Petitioner”) to analyze U.S. Patent No. 8,639,267 (“’267
`
`patent” “EX1001”) and to provide my opinions regarding the patentability of
`
`claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 of the ’267 patent.
`
`2.
`
`I am being compensated at my normal consulting rate of $550 per
`
`hour for my time. My compensation is not contingent on the outcome of this
`
`proceeding, or of any proceedings relating to the ’267 patent.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`3.
`
`I am the Director of the School of Electrical Engineering and
`
`Computer Science at Penn State University. I am also an Evan Pugh Professor and
`
`the William E. Leonhard Professor in the Department of Computer Science and
`
`Engineering and the Department of Electrical Engineering at Penn State
`
`University. I was the founding Director of the Institute of Networking and Security
`
`Research at Penn State. I have worked on telecommunications networks since
`
`1986.
`
`4.
`
`I received my B.E. and M.E. in Electrical Engineering from The
`
`Cooper Union for the Advancement of Science and Art in 1986 and 1987,
`
`1
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`respectively, and my Ph.D. in Electrical Engineering from Columbia University in
`
`1992.
`
`5.
`
`I joined AT&T Bell Labs (which later became Bell Labs, Lucent
`
`Technologies) in 1986 after receiving my B.E. degree, and pursued my M.E.
`
`degree part-time. In my first job at Bell Labs, I tested the performance and
`
`interoperability of many data communication devices within the AT&T network. I
`
`transferred into Bell Labs Research in 1990 to pursue research full-time.
`
`6.
`
`Starting in 1994, I performed research directed towards mobile and
`
`wireless networks. During this period, I worked extensively on signaling protocols
`
`and call processing for mobile telephony networks and mobile data applications. A
`
`large portion of my work was directed at architectures, protocols, and software for
`
`enabling different types of serviced on wireless networks.
`
`7.
`
`In 1997, I became the Director of the Mobile Networking Research
`
`Department within Bell Labs Research. This group, which included approximately
`
`30 researchers and support developers, carried out basic research on mobile
`
`networks including cellular telephony, mobile Internet, integrated networks and
`
`mobile data services. In 2000, I was named the Director of the Advanced Mobile
`
`Networking Department within the Wireless Business Unit of Lucent
`
`2
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`Technologies. My role in this job was to work with development organizations to
`
`turn technology into products.
`
`8.
`
`During both my development and research careers, I interacted
`
`extensively with computer scientists and engineers responsible for the design,
`
`development, and testing of mobile telephony and data networking products with a
`
`focus on wireless networks. As a research manager, I oversaw a department that
`
`executed many large-scale joint projects with development organizations to release
`
`products for Lucent Technologies. Examples of such joint projects include, the
`
`control software for Lucent Technologies’ 3G network access controllers used for
`
`interconnecting CDMA base stations, processor overload controls in Lucent
`
`Technologies’ cellular soft switches, the industry’s first multi-protocol Home
`
`Location Register, servers and protocols for enabling services and interactive text
`
`messaging via cellular networks, the first systems to interwork 2G and 3G
`
`networks of different types with all-IP networks, and mobile Internet services.
`
`These interactions exposed me to a wide range of computer scientists and
`
`engineers working on wireless network technologies and applications.
`
`9.
`
`As the Director of both the Networking Research Department in Bell
`
`Labs and the Advanced Mobile Networking Department within the Wireless
`
`Business Unit of Lucent Technologies, I met extensively with product managers
`
`3
`
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`and marketing organizations for the Wireless Business Unit of Lucent
`
`Technologies and representatives of many cellular service providers. In these
`
`meetings, I would often present new concepts and product directions that the
`
`company was advancing in the wireless market.
`
`10.
`
`I also taught as an adjunct member of the faculty at Columbia
`
`University in 1993 and from 1996-2001. I taught graduate classes in networking
`
`protocol design (1993) and mobile computing and networking (1996-2001). As
`
`such, I am familiar with the curricula taught to Electrical Engineers and Computer
`
`Scientists from the early 1990s until today.
`
`11.
`
`I am a co-inventor on at least 39 United States Patents and 18 foreign
`
`patents, of which the large majority pertain to mobile telecommunications. Two of
`
`my patents, one of which helped enable the mobile Internet, were awarded the
`
`Thomas Alva Edison Patent Award by the Research and Development Council of
`
`New Jersey. For my early work I was recognized with an Eta Kappa Nu
`
`Outstanding Young Electrical Engineer Award and the Bell Labs Distinguished
`
`Staff Award.
`
`12. While at Bell Labs, I led my research department into creating new
`
`network, service, and software architectures for building some of the first wireless
`
`mobile data services. One example was building the first system that allowed for
`
`4
`
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`EXHIBIT 1002 - PAGE 0007
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`simple mobile phones to engage in two-way messaging (now called text
`
`messaging) which led to several published papers and five patents.
`
`13. After joining Penn State, I continued my work on wireless networks
`
`and services including several that were based on location-based services. This
`
`included work on using the location of a user to provide access to services and
`
`preserving privacy for users while enabling location-based services.
`
`14. Because of my expertise on security in wireless networks, I was
`
`appointed to The President’s National Security Telecommunications Advisory
`
`Committee. My role on this Committee was to identify security risks for current
`
`and evolving cellular networks.
`
`15. Based on this experience, and my continuing work at Penn State
`
`University, I have intimate knowledge of wireless and mobile networks and
`
`services. I have been highly recognized as an expert in such systems. I was
`
`recognized with the Bell Labs Distinguished Member of Technical Staff award in
`
`1996. My award letter stated in part, “[y]our contributions to wireless call
`
`processing have profoundly impacted Lucent. You are very well-known as
`
`demonstrated by your three best paper awards…”. I was named a Bell Labs
`
`Fellow in 2000, “[f]or outstanding contributions in mobile wireless networks in the
`
`area of call processing, signaling, mobility management, and applications.” I was
`
`5
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`named an IEEE Fellow in 2002 “for contributions to systems for advanced
`
`broadband, mobile data and mobile telecommunication networks.”
`
`16.
`
`I previously served as the Editor-in-Chief of IEEE Personal
`
`Communications Magazine and was the founding Editor-in-Chief of IEEE
`
`Transactions on Mobile Computing. I have published about 300 technical papers
`
`in this field.
`
`17. My research is supported primarily by the Department of Defense and
`
`the National Science Foundation. I was the Director of a center funded by the U.S.
`
`Army Research Lab studying network science as it relates to communication
`
`networks. I also led a recently concluded project funded by the Defense Threat
`
`Reduction Agency to improve network reliability against attack by weapons of
`
`mass destruction.
`
`18. Additional information regarding my professional qualifications,
`
`experience, and publications are set forth in my curriculum vitae, a copy of which
`
`is attached as Appendix A.
`
`III. MATERIALS CONSIDERED
`
`19.
`
`In preparing this declaration, I reviewed the ’267 patent, including the
`
`claims of the patent in view of the specification, and I have reviewed the
`
`prosecution history of the ’267 patent and numerous prior art and technical
`
`6
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`references from the time of the alleged invention. Of the materials cited as an
`
`exhibit to the ’267 patent IPR petition, I reviewed the following:
`
`Exhibit
`
`Description
`
`1001
`
`1003
`
`1004
`
`1005
`
`1006
`
`U.S. Patent No. 8,639,267
`
`Prosecution History of U.S. Patent No. 8,639,267
`
`U.S. Patent Publication No. 2005/0096044 to Haberman et al.
`
`U.S. Patent Publication No. 2002/0159401 to Boger
`
`U.S. Patent Publication No. 2002/0132614 to Vanluijt et al.
`
`20.
`
`Petitioner’s counsel has asked me to consider whether certain
`
`references disclose or suggest, alone or in combination, the features recited in
`
`certain claims of the ’267 patent. I have also been asked to consider the state of the
`
`art and the prior art available before the time of the alleged invention of the ’267
`
`patent. My opinions are provided in this declaration.
`
`21. My opinions in this declaration are based on my review of the
`
`documents above, my understanding as an expert in the relevant field, and my
`
`education, training, research, knowledge, and personal and professional
`
`experience.
`
`22.
`
`To my knowledge, I have no financial interest in Petitioner. Counsel
`
`for Petitioner has informed me that BillJCo purports to own the ’267 patent. To the
`
`7
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`best of my knowledge, I have no financial interest in BillJCo and, to my
`
`recollection, have had no contact with BillJCo or the named inventor of the ’267
`
`patent, William J. Johnson. To the best of my knowledge, I do not have any
`
`financial interest in the ’267 patent.
`
`23.
`
`To the extent any mutual funds or other investments that I own have a
`
`financial interest in the Petitioner, the Patent Owner, or the ’267 patent, I am not
`
`aware of, and do not control, any financial interest that would affect or bias my
`
`judgment.
`
`IV. LEGAL STANDARDS
`
`24.
`
`Petitioner’s counsel has informed me that, in an inter partes review
`
`proceeding, a patent claim may be deemed unpatentable if it is shown by a
`
`preponderance of the evidence that the claim was either anticipated by a prior art
`
`patent or publication or rendered obvious by one or more prior art patents or
`
`publications.
`
`25.
`
`Petitioner’s counsel has informed me that a claim is unpatentable if
`
`the differences between the subject matter of the patent and the prior art are such
`
`that the subject matter as a whole would have been obvious to a person of ordinary
`
`skill in the art, or a “POSITA”, at the time of the invention.
`
`8
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`26.
`
`Petitioner’s counsel has informed me that a determination of whether
`
`a claim would have been obvious should be based upon several factors, including
`
`the following:
`
`filed;
`
`
`
`
`
`
`
`The level of ordinary skill in the art at the time the application was
`
`The scope and content of the prior art; and
`
`What differences, if any, existed between the claimed invention and
`
`the prior art.
`
`27.
`
`Petitioner’s counsel has informed me that a single reference can
`
`render a patent claim obvious if any differences between that reference and the
`
`claims would have been obvious to a person of ordinary skill in the art.
`
`Alternatively, the teachings of two or more references may be combined in the
`
`same way as disclosed in the claims, if such a combination would have been
`
`obvious to one having ordinary skill in the art. In determining whether a
`
`combination based on either a single reference or multiple references would have
`
`been obvious, I understand from Petitioner’s counsel that it is appropriate to
`
`consider the following factors:
`
`9
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`
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`Whether the teachings of the prior art references disclose known
`
`concepts combined in familiar ways, and when combined, would yield predictable
`
`results;
`
`
`
`Whether a POSITA could implement a predictable variation, and
`
`would see the benefit of doing so;
`
`
`
`Whether the claimed elements represent one of a limited number of
`
`known design choices, and would have a reasonable expectation of success by
`
`those skilled in the art;
`
`
`
`Whether a person of ordinary skill would have recognized a reason to
`
`combine known elements in the manner described in the claim;
`
`
`
`Whether there is some teaching or suggestion in the prior art to make
`
`the modification or combination of elements claimed in the patent; and
`
`
`
`Whether the innovation applies a known technique that had been used
`
`to improve a similar device or method in a similar way.
`
`28.
`
`Petitioner’s counsel has informed me that a POSITA has ordinary
`
`creativity and is not an automaton.
`
`29.
`
`Petitioner’s counsel has informed me that all prior art references are to
`
`be looked at from the viewpoint of a POSITA.
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`10
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`30.
`
`Petitioner’s counsel has informed me that, in considering obviousness,
`
`it is important not to determine obviousness using the benefit of hindsight derived
`
`from the patent being considered, and that obviousness is analyzed from the
`
`perspective of a POSITA at the time of the invention.
`
`V.
`
`OVERVIEW OF THE ’267 PATENT
`
`31.
`
`The ’267 patent, titled “System and Method for Location Based
`
`Exchanges of Data Facilitating Distributed Locational Applications,” was filed on
`
`October 3, 2008, and issued on January 28, 2014.
`
`32.
`
`The ’267 patent issued from U.S. Patent Application No. 12/287,064
`
`(“’064 application”), filed on October 3, 2008. The ’064 application is a
`
`continuation-in-part of Application No. 12/077,041 (“’041 application”), filed on
`
`March 14, 2008.
`
`A.
`
`33.
`
`Summary of the ’267 Patent
`
`The ’267 patent provides in the “Field of Invention” section of the
`
`specification that it relates generally to “location based services for mobile data
`
`processing systems,” and more specifically describes location-based exchanges of
`
`data between distributed mobile data processing systems for locational
`
`applications.” EX1001, 1:19-23.
`
`11
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`34. Claim 1 of the ’267 patent is exemplary and describes “presenting” a
`
`“user interface” “for configuring privilege data,” “receiving” “whereabouts data,”
`
`“searching” the “privilege data” for a “matching privilege” to “permit trigger of a
`
`privileged action” and then “performing” the “privileged action” upon “finding the
`
`matching privilege.”
`
`B.
`
`Prosecution History
`
`35.
`
`I understand the ’064 application was filed on October 3, 2008 and
`
`included claims 1-20, of which claim 1 and 20 were independent. In an Office Action
`
`dated August 25, 2011, pending claims 1-14, 19, and 20 were rejected under 35
`
`U.S.C. § 102 based on U.S. Patent Application Publication 2007/0275730; pending
`
`claims 15-18 were rejected under 35 U.S.C. § 103 based on U.S. Patent Application
`
`Publication 2008/0275730 and U.S. Patent Application Publication 2006/0022048.
`
`36.
`
`In distinguishing prior art, the Applicant further amended the claims, in
`
`part, to recite “presenting a user interface to a user of said mobile data processing
`
`system, said user interface for configuring locally stored privilege data relating said
`
`mobile data processing system with other mobile data processing systems, said
`
`privilege data for describing how to distinctly process forthcoming whereabouts
`
`data received at said mobile data processing system” and argued that there is no
`
`“searching of user configured privilege data, no user configured action, and nothing
`
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`similarly suggestive” in the art. ’267 Patent File History (EX1003), 87-96 (emphasis
`
`added). A Supplemental Amendment was filed on December 6, 2011, to correct a
`
`corrupted transmission of the November 25, 2011 response. The amendments and
`
`the remarks are the same.
`
`37.
`
`In an Office Action dated March 2, 2012, pending claims 1-11 and 13-
`
`21 were rejected under 35 U.S.C. § 103 based on U.S. Patent Application Publication
`
`2008/0170679 and U.S. Patent Application Publication 2007/0244633.
`
`38.
`
`In distinguishing prior art, Applicant further amended the claims, in
`
`part, to recite “said privilege data stored local to said mobile data processing system”
`
`and argued that the claimed whereabouts data “is received at the mobile data
`
`processing system (from the sending mobile data processing system) before the
`
`privilege is accessed and used for processing at the receiving mobile data processing
`
`system.” EX1003, 56-65 (emphasis added). Applicant further emphasized that
`
`unlike the cited art, the Applicant’s system discloses “a pure peer to peer
`
`communication between two mobile systems.” EX1003, 64 (emphasis added).
`
`39.
`
`In an Office Action dated March 18, 2013, pending claims 1-11 and 13-
`
`23 were rejected under 35 U.S.C. § 103 based on U.S. Patent Application Publication
`
`2008/0170679, U.S. Patent Application Publication 2007/0244633, and U.S. Patent
`
`No. 7,177,651.
`
`13
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`40.
`
`In a response dated June 13, 2012, the Applicant amended claims 1-11,
`
`13-19, and 21-23 and added new claims 24-32. In distinguishing prior art, Applicant
`
`further amended the claims, in part, to recite “after the searching, by the mobile data
`
`processing system, the privilege data stored local to the mobile data processing
`
`system,” and argued that the cited art does not teach the searching functionality after
`
`receipt of the whereabouts data. EX1003, 25-39.
`
`41. A Notice of Allowance (“NOA”) subsequently issued on September 4,
`
`2013. EX1003, 16-24. Subsequent to the NOA, an Amendment under 37 C.F.R. §
`
`1.312 was filed to correct an antecedent basis error and add new claims 33-58, which
`
`are clones of allowed claims 2-11, 13-19, and 24-22. EX1003, 4-15. A Response
`
`to the Rule 312 Communication was issued on October 15, 2013, accepting the
`
`amendments. EX1003, 2-3.
`
`C.
`
`42.
`
`Level of Ordinary Skill in the Art
`
`In my opinion, a person having ordinary skill in the art (“POSITA”)
`
`for the ’267 patent would have had at least a bachelor’s degree in computer
`
`science, computer engineering, or an equivalent, and two years of experience
`
`relating to wireless communications. Additional education in wireless systems can
`
`remedy a deficiency in experience, and vice versa.
`
`14
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`43. As of the filing date of the earliest application that the ’267 patent
`
`claims priority to (i.e., March 14, 2008), including up to and including the filing
`
`date of the application resulting in the ’267 patent, I was a person having ordinary
`
`skill in the art.
`
`D.
`
`44.
`
`Priority Date
`
`I do not offer any opinion as to whether the ’267 patent can claim
`
`priority to the ’041 application.
`
`E.
`
`Exemplary Claim
`
`45.
`
`In my opinion, claim 1 of the ’267 patent is exemplary. Generally, claim
`
`1 describes “presenting” a “user interface” “for configuring privilege data,”
`
`“receiving” “whereabouts data,” “searching” the “privilege data” for a “matching
`
`privilege” to “permit trigger of a privileged action” and then “performing” the
`
`“privileged action” upon “finding the matching privilege.” EX1001, 1:19-23. 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
`
`15
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`EXHIBIT 1002 - PAGE 0018
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`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.
`
`VI. CLAIM CONSTRUCTION
`
`46.
`
`Petitioner’s counsel has informed me that claims subject to inter
`
`partes review are construed according to the ordinary and customary meaning of
`
`the claim as understood by a POSITA and the prosecution history of the patent
`
`being construed.
`
`16
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`EXHIBIT 1002 - PAGE 0019
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`47.
`
`For purposes of this declaration, I have applied the ordinary and
`
`customary meaning of the claims when read in light of the ’267 patent and the
`
`prosecution history of the ’267 patent, as understood by a POSITA at the time of
`
`the invention.
`
`VII. SUMMARY OF OPINIONS
`
`48.
`
`In my opinion, the challenged claims of the ’267 patent, including
`
`claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49, are invalid as obvious to a person of
`
`ordinary skill in the art as of the “Critical Date,” i.e., March 14, 2008, the filing
`
`date of the ’041 application. As of the Critical Date, in my opinion each of the
`
`Haberman, Boger, and Vanluijt references are prior art to the ’267 patent under 35
`
`U.S.C. §§ 102(a)1, (b)2, and (e)3.
`
`49.
`
`This declaration reflects my opinions that I have formed to date, based
`
`on my review of the materials identified in Section III. I reserve the right to revise,
`
`1 “the invention was known or used by others in this country . . . or described in a printed publication in this or a
`foreign country, before the invention thereof by the applicant for patent.”
`
`2 “the invention was patented or described in a printed publication in this or a foreign country . . . more than one
`year prior to the date of the application for patent in the United States”
`
`3 “the invention was described in — (1) an application for patent, published under section 122(b), by another filed in
`the United States before the invention by the applicant for patent . . . .”
`
`17
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`supplement, or amend my opinions based on new information that becomes
`
`available to me, and by further continuing analysis of the materials identified in
`
`Section III.
`
`A.
`
`Ground 1: Claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 are
`obvious over Haberman
`
`50. U.S. Patent Application Publication 2005/0096044 (“Haberman”
`
`“EX1004”) was not considered during prosecution of the ’267 patent and is highly
`
`relevant to claims 1, 5, 13, 20, and 21 of the ’267 patent.
`
`1.
`
`Overview of Haberman
`
`51. Haberman, entitled “Transmitter at Specific Address Transmitting
`
`Address-Specific Informational Content,” was filed November 1, 2004, published
`
`on May 5, 2005. Haberman expressly discloses location-based triggering of
`
`presentation information and renders obvious all the challenged claims. EX1004,
`
`[0008], [0033], [0129], [0165].
`
`52. Haberman is directed towards a system 100 for presenting
`
`informational content to a person using a mobile device 108. EX1004, Abstract,
`
`[0008]-[0085]. System 100 includes a wireless transmitter 102 and the mobile
`
`device 108 and is reproduced below, as shown in Figure 1. Id.
`
`18
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`EXHIBIT 1002 - PAGE 0021
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`53.
`
`In operation, wireless transmitter 102 broadcasts a transmission
`
`containing information content 106 for presentation to a user. Haberman, [0118].
`
`The information content 106 provided to the user pertains to a particular location
`
`within the range of the transmitter 102 and the user. Id. Transmitter 102
`
`unilaterally transmits the transmission 104 without regard to whether any mobile
`
`device is located within a transmission range 110 of the transmitter 102. EX1004,
`
`¶ [0119].
`
`19
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`EXHIBIT 1002 - PAGE 0022
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`54. Mobile device 108 includes a data processing unit 136 and a user
`
`interface for receiving input from a person using the mobile device 108. EX1004, ¶
`
`[0121]. A user of mobile device 108 may utilize a user interface to create a
`
`preference profile, which is stored within the mobile device and specifies certain
`
`businesses or locations of interest that are preferred by the person. EX1004, ¶¶
`
`[0131], [176]. In operation, a plurality of transmissions is received by mobile
`
`device 108. EX1004, ¶ [0182]. Mobile device 108 then determines whether the
`
`informational content of the broadcast is presentable according to the preferences
`
`profile. EX1004, ¶ [0186]. If the informational content is presentable according to
`
`the preferences profile, the informational content is presented using the mobile
`
`device. Id. Otherwise, the information content is not presented.
`
`2.
`
`Claims 1 and 29 are obvious over Haberman
`
`55.
`
`Independent claim 1 is a method claim and independent claim 29 is a
`
`system claim. Independent claim 1 recites a method for automatic location-based
`
`exchange processing by a mobile data processing system. In particular, claim 1
`
`recites presenting a user interface for a user to configure privilege data, receiving
`
`whereabouts data that includes an originating identity of the whereabouts data,
`
`searching the privilege data for a matching privilege based on the originating
`
`20
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`EXHIBIT 1002 - PAGE 0023
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`identity, and performing a privilege action upon finding a matching privilege in the
`
`privilege data.
`
`56.
`
`In my opinion, independent claim 29 is similar in scope to
`
`independent claim 1, though independent claim 29 recites one or more processors
`
`and a memory. The memory stores instructions, which when executed by the one
`
`or more processors, causes the one or more processors to perform steps similar in
`
`scope to the method of independent claim 1.
`
`57.
`
`To the extent the limitations recited in claim 29 differ in scope
`
`compared to the limitations recited in claim 1, for the same reasons for claim 1,
`
`and as shown below, it is my opinion that Haberman discloses claim 29.
`
`a.
`
`Preamble Limitations
`
`[1.pre] “A method for automatic location based exchange processing by
`a mobile data processing system, the method comprising:”
`
`[29.pre] “A mobile data processing system comprising:”
`
`58.
`
`To the extent the preambles are limiting, in my opinion Haberman
`
`discloses the preambles.
`
`59. Haberman discloses a system for presenting informational content to a
`
`person using a mobile device. EX1004, Abstract, ¶ [0008]. The system in
`
`Haberman includes a wireless transmitter that transmits a transmission containing a
`
`broadcast and a mobile device configured to receive the transmission from the
`
`21
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`EXHIBIT 1002 - PAGE 0024
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`wireless transmitter when the mobile device is within a transmission range of the
`
`transmitter. Id. Moreover, the broadcast contained within the transmission
`
`includes informational content for presentation to a person, and the mobile device
`
`is configured to store therein the informational content for presentation to a person
`
`using the mobile device. Id.
`
`60. Additionally, Haberman provides that a broadcast includes
`
`“broadcast-identifying informat
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