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 SUR-REPLY
`
`
`
`
`
`
`
`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 SUR-REPLY
`
`
`
`
`
`
`
`
`
`
`I.
`II.
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 1
`Petitioner's Claim Construction Arguments Run Afoul
`Of The Teachings Of The '267 Patent
`And The Plain And Ordinary Meaning ........................................................ 2
`A.
`The Claimed "Privilege" Is Different From A "Preference" .............. 5
`B.
`"Destination Identity" Relates To Matching Privilege....................... 9
`III. Haberman, Alone Or In Combination With Boger, Fails To
`
`Render The Challenged Claims Unpatentable As Obvious ....................... 13
`
`A. Haberman and Haberman Plus Boger Fail To
`
`
`Disclose Or Make Obvious The Claimed
`Limitations Related To "Privilege" .................................................. 13
`B. Haberman Alone Or With Boger Fails To Disclose
`Or Make Obvious The Claimed "Destination Identity" .................. 17
`IV. Vanluijt Fails To Disclose Or Make Obvious
`
`The Claimed "Destination Identity" ........................................................... 18
`A.
`Petitioner Fails To Prove That The Vanluijt "Preferences"
`Are Equivalent to The Claimed "Privilege Data" or "
`Matching Privilege" or "Privileged Action" .................................... 19
`B. Vanluijt Fails To Disclose Or Make Obvious
`
`The Claimed "Destination Identity" ................................................. 21
`V. Objective Indicia Of Non-Obviousness Demonstrates
`
`The Patentability Of The Challenged Claims ............................................. 22
`A.
`Copying ............................................................................................ 22
`B.
`Commercial Success......................................................................... 23
`C.
`Licensing .......................................................................................... 24
`VI. CONCLUSION ........................................................................................... 25
`
`
`40926790.1
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Apple, Inc. v. Samsung Electronics, Co., Ltd.,
`
`839 F.3d 1034 (Fed.Cir. 2016) ................................................................... 24
`
`Chemours Company FC, LLC v. Daikin Industries,
`
`4 F.4th 1370 (Fed.Cir. 2021) ...................................................................... 22
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`
`567 F.3d 1314 (Fed.Cir. 2009) .................................................................. 23
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`
`738 F.3d 1337 (Fed.Cir. 2013) ............................................................. 23, 24
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`
`392 F.3d 1317 (Fed.Cir. 2004) ................................................................... 22
`
`K/S HIMPP v. Hear-Wear Technologies, LLC,
`
`751 F.3d 1362 (Fed.Cir. 2014) .................................................................. 16
`
`Liqwd, Inc. v. L'Oreal USA, Inc.,
`
`941 F.3d 1133 (Fed.Cir. 2019) ................................................................... 23
`
`Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed.Cir. 2005) (en banc) ................................................ 3, 6
`
`Vitronics Corp. v. Conceptronic, Inc.,
`
`90 F.3d 1576 (Fed.Cir. 1996) ...................................................................... 3
`
`
`
`
`
`
`40926790.1
`
`ii
`
`
`
`
`
`Other Authority:
`
`35 U.S.C. § 311(b) ............................................................................................... 16
`
`37 C.F.R. § 42.65(a) .............................................................................................. 15
`
`MPEP 2183 ........................................................................................................... 16
`
`
`All emphasis supplied unless otherwise noted.
`
`
`
`40926790.1
`
`iii
`
`
`
`
`
`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)
`Patent License Agreement dated August 10, 2017
`(SEALED)
`Patent License Agreement dated August 3, 2022 (SEALED)
`Patent License Agreement dated March 8, 2022 (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
`
`40926790.1
`
`iv
`
`
`
`
`
`I.
`
`
`
`INTRODUCTION
`
`Petitioner, in its Reply to Patent Owner's Response ("Reply"), raises new
`
`arguments, relies on previously unidentified portions of the prior art and the
`
`prosecution history, and further relies on a "Supplemental Declaration" by its expert,
`
`Dr. Thomas La Porta ("La Porta"), which presents numerous previously unidentified
`
`arguments. For the reasons discussed in Patent Owner's Motion to Strike to be filed
`
`pursuant to the Order authorizing Patent Owner to file the motion (Paper 25), the
`
`Supplemental Declaration (EX1012) and at least all portions of the Reply relying
`
`thereon should be stricken.
`
`
`
`Separate from the impropriety of the Supplemental Declaration and Reply
`
`based thereon, Petitioner's arguments repeated almost verbatim in the Supplemental
`
`Declaration are incorrect. The evidence, including Petitioner's expert's admission
`
`that a "preferences" as recited in the prior art is recognized in computer science to
`
`have a different meaning than the term in the Challenged Claims – a "privileges,"
`
`establishes Petitioner's failure to prove the prior art renders obvious any of the
`
`Challenged Claims. The realities are that: (1) the '267 Patent's fundamental principle
`
`is a privileged-based architecture; (2) this privileged-based architecture is in the
`
`Challenged Claims; (3) Petitioner's prior art disclose "preferences"; (4) all the
`
`evidence establishes the ordinary meanings for "privileges" and "preference" in
`
`40926790.1
`
`1
`
`
`
`
`
`computer science are different. Faced with these realities, Petitioner resorts to
`
`distorting the prior art and raising new equivalency arguments.
`
`
`
`Lastly, Petitioner fails to rebut the substantial evidence of objective indicia of
`
`non-obviousness,
`
`including, copying by Petitioner, multiple
`
`licenses, and
`
`commercial success. Rather than present any evidence in rebuttal, Petitioner relies
`
`on incorrect statements of law and unsupported attorney argument.
`
`II.
`
`
`
`
`Petitioner's Claim Construction Arguments Run Afoul Of The
`Teachings Of The '267 Patent And The Plain And Ordinary Meaning
`
`Petitioner strains to keep to the claim construction position it originally took,
`
`namely, "the challenged claims should be interpreted according to their plain and
`
`ordinary meaning" (Pet. at 7). Petitioner carefully avoided explaining what the "plain
`
`and ordinary meaning" was for any claim term. Instead, Petitioner just identified
`
`certain teachings from the prior art and asserted they satisfied certain claim
`
`limitations, including the privileged-based limitations. With
`
`respect
`
`to
`
`the
`
`privileged-based limitations, in every instance, Petitioner merely presumed the prior
`
`art's disclosure of a "preference" was the same as a disclosure of a "privilege."
`
`Petitioner's premise proved meritless. Instead, its expert, La Porta, admitted the
`
`ordinary meaning in the computer science arts for "privilege" was different than the
`
`meaning for a "preference." Confronted with crack in the very foundation of its
`
`Petition, Petitioner now attempts to back door a new argument that the preferences
`
`disclosed in the prior art is the "equivalent" of the claimed privileges.
`
`40926790.1
`
`2
`
`
`
`
`
`
`
`At its core, Petitioner implicit claim construction that a "preference" is the
`
`same as a "privilege" errs by ignoring the teachings of the '267 Patent of "privileges"
`
`and "permissions" (used interchangeably, see EX1001, 124:7-9) as being the
`
`granting of rights and authorizations to address privacy concerns in sending and
`
`receiving information. This disregard for the overall context demonstrates the fallacy
`
`of Petitioner's obviousness challenges.
`
`
`
`"[T]he words of a claim 'are generally given their ordinary and customary
`
`meaning.'" Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.Cir. 2005), quoting,
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir. 1996). This
`
`"ordinary and customary meaning of a claim term is the meaning that the term would
`
`have to a person of ordinary skill in the art in question at the time of the invention,
`
`i.e., as of the effective filing date of the patent application." Id. at 1313. "That starting
`
`point is based on the well-settled understanding that inventors are typically persons
`
`skilled in the field of the invention and that patents are addressed to and intended to
`
`be read by others of skill in the pertinent art." Id. "Importantly, the person of ordinary
`
`skill in the art is deemed to read the claim term not only in the context of the
`
`particular claim in which the disputed term appears, but in the context of the entire
`
`patent, including the specification." Id.
`
`
`
`The claims, specification, and prosecution history of the '267 Patent, i.e., the
`
`intrinsic evidence, readily demonstrate that the "privileges" recited in the Challenged
`
`40926790.1
`
`3
`
`
`
`
`
`Claims are the granting of rights and authorizations as part of the exchange of data.
`
`The '267 Patent states that "[u]sers are skeptical about their privacy as internet
`
`services proliferate." EX1001, 2:43-44. To address these privacy concerns, the '267
`
`Patent leverages "permissions"1 and "privileges." "[P]ermissions 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. "It 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. The claims must
`
`be read in view of these teachings.
`
`
`1 The '267 Patent explains the terms "permissions" and "privileges" are "used
`interchangeably in this disclosure." Id. at 124:7-9.
`
`40926790.1
`
`4
`
`
`
`
`
`
`
`
`
`A.
`
`The Claimed "Privilege" Is Different From A "Preference"
`
`In its Reply, Petitioner argues that Patent Owner has proposed numerous
`
`different constructions for "privilege." This is false. More importantly, Petitioner
`
`does not dispute, because it cannot when confronted by its own expert's testimony,
`
`that a "privilege," as is commonly understood in the computer science arts, is
`
`different from a "preference" as disclosed in the cited prior art.2 The undisputed
`
`intrinsic and extrinsic evidence fully establishes that a "privilege" is a concept
`
`related to a right or authorization granted to permit the performance of certain
`
`computer functions, and not simply parameters to indicate a desire for certain
`
`information over other information.
`
`
`
`With regard to Petitioner's argument that "PO … offers several different
`
`interpretations for what PO considers the plain and ordinary meaning of 'privilege,'"
`
`any legitimate review of Patent Owner's claim construction contentions proves
`
`otherwise. Patent Owner's supposed "different interpretations" consistently adhere
`
`to the plain and ordinary meaning of "privilege," namely, a right or authorization
`
`granted to permit the performance of certain computer functions. While the specific
`
`verbiage used to describe this principle varied, the actual concept stayed consistent.
`
`
`2 At no time has Petitioner ever explained what it believes the common and
`ordinary meaning of "privilege" to be or identified any extrinsic evidence to
`support the notion that the patentee acted as its own lexicographer and defined a
`"privilege" as a "preference."
`
`40926790.1
`
`5
`
`
`
`
`
`
`
`Petitioner's only other response is to argue without any explanation that Patent
`
`Owner's proposed constructions are narrower than an excerpt from a preferred
`
`embodiment disclosed in the '267 Patent that a "privilege" may be any right "granted
`
`by one identity to another identity that can limit, enable, delegate or govern actions,
`
`feature(s), functionality, behavior(s), or any subset(s) thereof." Reply at 3.
`
`Conspicuously absent from Petitioner's argument, however, is any explanation as to
`
`how the quoted language is supposedly narrower than Patent Owner's contention
`
`regarding what constitutes a "privilege." Instead, consistent with the customary
`
`meaning, the cited portion of the specification again makes clear a "privilege" is
`
`right granted to enable a function to be performed. Petitioner's only "evidence" to
`
`support its claim that Patent Owner's definition is broader than the specification is
`
`its expert's Supplemental Declaration. Like Petitioner, La Porta gives no
`
`explanation, and offers only the same unsupported pronouncement as in the Reply.
`
`See EX1012, ¶ 17. Indeed, other than to include minor edits to read in the first
`
`person, La Porta's Supplemental Declaration simply parrots the Reply. Compare
`
`Reply at 2-3 with EX1012, ¶¶ 14-18. It appears that Petitioner merely copied and
`
`pasted its arguments into a Supplemental Declaration for La Porta to sign.
`
`
`
`Petitioner inexcusably disregards the prosecution history. One must "consider
`
`the patent's prosecution history, if it is in evidence." Phillips, 415 F.3d at 1317. As
`
`pointed out in Patent Owner's Response, the patentee described the claimed
`
`40926790.1
`
`6
`
`
`
`
`
`privileges in the context of rights and authorizations. See, Patent Owner Response
`
`at 12. This is also illustrated by Petitioner's belated cited portion of the prosecution
`
`history. See Reply at 6, citing EX1003 at 93-94. In a response to an office action,
`
`the patentee explained the claimed "privileges" distinguished the claimed invention
`
`from the prior art because the prior art did not teach or suggest "searching said
`
`privilege data at said mobile data processing system for a matching privilege
`
`permitting a user configured action determined for said whereabouts data, said
`
`matching privilege configured for relating said originating identity with a receiving
`
`identity of said mobile data processing system." Id. Like the '267 Patent
`
`specification, the prosecution history speaks only to granting rights or authorizations
`
`to perform a function (i.e., privilege), and not a mere desire of one thing over another
`
`(i.e., preference).
`
`
`
`La Porta's admission that a "preference" has a different meaning from a
`
`"privilege" or "permission" in the computer science arts squarely establishes the flaw
`
`in Petitioner's assumption that a prior-art disclosure of a "preference" is a disclosure
`
`of a "privilege." When asked whether a preference had the same meaning in the
`
`computer science arts to a permission, i.e., privilege, Dr. La Porta admitted "in
`
`general I would not equate a preference with a permission in computer science" and
`
`that "a permission … in computer science would be being allowed to do something,
`
`40926790.1
`
`7
`
`
`
`
`
`perform an action."3 EX2009, 47:9-22. Patent Owner's expert, Dr. Jonyer concurs.
`
`EX2010, ¶¶ 64, 72 ("A 'privilege' is a term with a well-accepted and understood
`
`definition in the computer science arts … a security related concept that delegates
`
`permissions to users, programs, processes, or services to perform certain functions
`
`on a computer." "'Preference' has a different meaning in general and in the computer
`
`science arts. … a preference is 'a greater liking for one alternative over another or
`
`others."). Petitioner also fails to point to any intrinsic evidence from the '267 Patent
`
`to even suggest that a "preference" is the same thing as a "privilege." Instead, as
`
`identified in Patent Owner's Response, the '267 Patent specification recognizes that
`
`"preferences" are a different type of information from "permissions." EX1001, col.
`
`2:43-48 ("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."). Thus, it is clear a "privilege" is a right or authorization
`
`
`3 Realizing the impact of his admission, Dr. La Porta contradicts the position he
`took in his Declaration that the common and ordinary meaning of the claim terms
`should apply (EX1002, ¶ 47) by asserting that a "privilege" in the '267 Patent
`should be interpreted to mean the same thing as a "preference" despite his
`concession that in the computer science arts that these terms have different
`meanings. EX 2009, 46:5-10.
`
`40926790.1
`
`8
`
`
`
`
`
`granted to permit the performance of certain computer functions, and a "preference"
`
`is not a "privilege."
`
`
`
`
`
`B.
`
`"Destination Identity" Relates To Matching Privilege
`
`With respect to "destination identity," Petitioner argues Patent Owner is
`
`impermissibly attempting to import a preferred embodiment into the claim, and is
`
`attempting to broaden its claim beyond what was removed during prosecution.
`
`Neither argument has any logic, support, or merit.
`
`
`
`Petitioner, as before, improperly ignores the overall teachings of the patent.
`
`As the Board recognized, the '267 Patent expressed concerns related to "'privacy' of
`
`users' 'personal information." Paper 7 at 3. As discussed, the '267 Patent uses user-
`
`configured "permissions" and "privileges" to address these concerns. The '267 Patent
`
`explains that "[w]hereabouts 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.
`
`
`
`"Destination identity" pertains to the matching privilege. See e.g., claim 1:
`
`"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…." EX1001, 284:31-36. As
`
`40926790.1
`
`9
`
`
`
`
`
`shown, "destination identity" relates to the privilege-related configuration, as
`
`opposed to merely being anything indicating the destination of data as Petitioner
`
`suggests.
`
`This configuration of privileges and the concept of identities is explained in
`
`the '267 Patent specification. EX1001, 120:60-121:6. The '267 Patent explains:
`
`"[t]he Grantor of a privilege is the identity wanting to convey a privilege to another
`
`identity (the Grantee). The Grantee is the identity becoming privileged by
`
`administration of another identity (the Grantor)." EX1001, 129:47-50. Specific to
`
`the Challenged Claims, the user interface is "for configuring privilege data relating
`
`the mobile data processing system with a remote data processing system…." Id. at
`
`284:17-19. The claim further states that the mobile device receives "the whereabouts
`
`data including an originating identity of the whereabouts data…." Id. at 284:24-26.
`
`The grantor identity is that which is granting the permission. In the context of the
`
`claim, this would be the claimed destination identity.
`
`Petitioner does not dispute any of this. Petitioner also does not dispute that
`
`this portion of the specification discloses an embodiment of the configuration of
`
`privilege data.
`
`
`
`Instead, Petition argues Patent Owner is importing a preferred embodiment
`
`into the claim. Petitioner fails to explain what unclaimed limitation is supposedly
`
`being imported from the preferred embodiment. There is none. The '267 Patent
`
`40926790.1
`
`10
`
`
`
`
`
`specification speaks to numerous different types of privileges that can be configured
`
`and how the privileges can be used. However, the feature whereby a privilege or
`
`permission is granted requires that something or someone grant the privilege. In the
`
`context of the claim, the user interface permits configuration of privilege data, which
`
`includes the destination identity. The system that receives the whereabouts data is
`
`specified as the mobile data processing device, the same device that configures the
`
`privilege data. Thus, the destination identity is the identity of the device granting the
`
`permission or privilege.
`
`
`
`That the "destination identity" is the identity of that which grants the privilege
`
`is further illustrated in Fig. 49A and corresponding discussion.
`
`The first identity ID, (Grantor) granting a privilege to a second identity
`ID2 (Grantee; grammar ID/IDType), as shown in cell 4924: Privilege
`data is maintained by ID, at the ID, MS as is used to govern actions,
`functionality, features, and/or behavior for the benefit of ID2, by a)
`processing ID, WDR information at the ID2 MS (preferably, privileges
`are communicated to ID2 MS for enforcing and/or cloning there), b)
`processing ID2 WDR information at the ID, MS (privileges locally
`maintained to ID1), and c) processing ID, WDR information at the ID,
`MS (privileges locally maintained to ID1.
`
`EX1001, 178:43-62. So too does this discussion further make clear that the identities
`
`relate to configured privilege data by specifying that "[p]rivilege data is maintained
`
`… to govern actions, functionality, features, and/or behavior for the benefit of ID2."
`
`Id.
`
`40926790.1
`
`11
`
`
`
`
`
`
`
`Petitioner's
`
`argument
`
`regarding
`
`amendments
`
`to
`
`"grantor/grantee
`
`relationships" is unclear. Without explanation, Petitioner argues that "originating
`
`identity" and "destination identity" are broader. Whether "originating identity" and
`
`"destination identity" is broader than "grantor/grantee relationships" misses the
`
`point. Patent Owner's assertion is that the claimed "destination identity" relates to
`
`privilege data configuration. By way of their reply, Petitioner continues to evade this
`
`salient point, namely, that the Challenged Claims are based the configuring of
`
`privilege data. Interestingly, Petitioner's reference to the prosecution history actually
`
`solidifies this point. In its response to the office action, the applicant argued that the
`
`cited prior art failed to teach the configuring or searching of privilege data. EX1003,
`
`at 94. Thus, the claimed "destination identity" is not merely any information relating
`
`to a mobile data processing system, but is a privilege setting.
`
`
`
`Again, rather than support its arguments with evidence, Petitioner is unable to
`
`identify any teaching in the '267 Patent specification to support its implicit claim
`
`construction, namely, that the "destination identity" is anything relating to the
`
`receiving device. Such a broad construction fails to align with the overall teachings
`
`of the patent, particularly the configuration of privilege data as claimed, and must
`
`be rejected.
`
`40926790.1
`
`12
`
`
`
`
`
`III. Haberman, Alone Or In Combination With Boger, Fails To Render The
`Challenged Claims Unpatentable As Obvious
`
`Confronted with the fundamental flaw to its arguments that the prior art does
`
`
`
`not teach specific claimed elements of the Challenged Claims, Petitioner offers new,
`
`but still incorrect, arguments regarding the teachings of the prior art. Petitioner
`
`further offers unsupported arguments that the disclosure of "preferences" in the prior
`
`art is an "equivalent" to the claimed "privileges." While these arguments should be
`
`stricken for the reasons that will be discussed in Patent Owner's motion to strike,
`
`Petitioner's arguments still fail to demonstrate obviousness of any Challenged Claim.
`
`
`
`
`
`
`
`A. Haberman and Haberman Plus Boger Fail To
`
`Disclose Or Make Obvious The Claimed
`
`Limitations Related To "Privilege"
`
`A cornerstone to Petitioner's argument that the "preferences" disclosed in
`
`Haberman are the "equivalent" of the claimed "privileges" is its assertion that the
`
`preferences are not optional. Reply at 7-9. Not only was this argument absent from
`
`the Petition, Petitioner's assertion is demonstrably false.
`
`
`
`Petitioner fails to point to any language in Haberman stating that a preferences
`
`profile is required, e.g., that a preferences profile is "required," or "mandatory" or
`
`that one "must have" a preferences profile. The simple reason for this is that
`
`Haberman actually teaches that the "preferences profile" is just an optional feature.
`
`Haberman discloses several embodiments, which it terms "aspects." In at least the
`
`first four "aspects," there is no teaching of using preferences at all, let alone that
`
`40926790.1
`
`13
`
`
`
`
`
`preferences are required. EX1004, ¶¶ [0008]-[0021]. Haberman even states that a
`
`preferences profile is just a preferred embodiment. Id. at ¶ [0131] ("In an aspect of
`
`the present invention, a preferences profile … for a person is stored within the
`
`mobile device that specifies certain businesses or locations of interest that are
`
`preferred by the person."). Indeed, none of the independent or dependent claim
`
`recites a preference profile as even being part of the invention. Moreover, Haberman
`
`explains that an "exemplary, broad method for presenting informational content"
`
`merely transmit information to a mobile device within range of the transmitter. Id.
`
`at [0128]. As such, Haberman's express teaching and claims establish that a
`
`preference profile is not required, and completely refutes Petitioner's claim that the
`
`preferences profile of Haberman is not optional.
`
`
`
`More importantly, Haberman fails to disclose the configuring of any
`
`privileges, i.e., rights or authorizations, that are granted. At best, Haberman just
`
`discloses a filtering of information based on desired content. Thus, a mobile system
`
`user that wishes to receive information from a particular business will receive such
`
`information so long as the content of the transmission includes information
`
`supposedly from the business, regardless of whether the sender is truly the particular
`
`business or is in fact a spammer. Indeed, such "spoofing" is ubiquitous.4 By contrast,
`
`
`4 See e.g., https://www.investopedia.com/terms/s/spoofing.asp.
`
`40926790.1
`
`14
`
`
`
`
`
`checking for a matching privilege is done by checking to see if the sender has been
`
`granted a right. This does not depend on the contents of the transmission.
`
`
`
`Petitioner's other argument in its Reply is: "Petitioner submits that
`
`Haberman's preferences are equivalent to a privilege, even under PO's narrow
`
`construction." Petitioner's arguments are unsupported by an evidence, and instead,
`
`are supported only be conclusory statements by La Porta. Furthermore, Petitioner
`
`fails to raise even a prima facie case of equivalence. Lastly, Petitioner's equivalence
`
`argument was not in its Petition, and should be stricken.
`
`
`
`In support of Petitioner's newly presented equivalence argument, Petitioner
`
`relies wholly on the Supplemental Declaration of La Porta. The Supplemental
`
`Declaration, however, only consists of purely conclusory remarks that Haberman
`
`discloses the granting of rights, and as before, is little more than a cut and paste of
`
`Petitioner's Reply with minor edits to be written in the first person. Compare Reply
`
`at 10 and EX1012, ¶¶ 34-36. La Porta cites to nothing in Haberman to support this
`
`supposed granting of rights. Indeed, the words "grant," "granting," "authorize,"
`
`"allow" and "permit" do not even appear in Haberman, and the word "right" only
`
`appears in a "Copyright Statement." Id. at ¶ [0002]. "Expert testimony that does not
`
`disclose the underlying facts or data on which the opinion is based is entitled to little
`
`or no weight." 37 C.F.R. 42.65(a). Here, La Porta's rewriting of Haberman, which
`
`only discloses preferences, to disclose something that it does not actually say is
`
`40926790.1
`
`15
`
`
`
`
`
`without basis and entitled to no weight. See K/S HIMPP v. Hear-Wear Technologies,
`
`LLC, 751 F.3d 1362. 1365 (Fed.Cir. 2014). Indeed, because an IPR may only be
`
`requested "on the basis of prior art consisting of patents or printed publications," 35
`
`U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents
`
`or printed publications. Petitioner and La Porta fail to point to any actual disclosure
`
`in Haberman of the granting of rights, because there is none; and instead, rest their
`
`arguments on La Porta's unsupported distortion of the prior art. Therefore,
`
`Petitioner's obviousness arguments based on Haberman (or Haberman and Boger)
`
`must fail.
`
`
`
`Petitioner also fails to even engage in a proper equivalence analysis. In order
`
`for there to be even a prima facie case of equivalence, similar to the Doctrine of
`
`Equivalents, there must be evidence that a prior art element is an equivalent requires
`
`an analysis that the prior art element performs substantially the same function, in
`
`substantially the same manner, to achieve substantially the same result, that a
`
`POSITA would have recognized the interchangeability of the prior art element with
`
`the corresponding element in the patent, or that there is only an insubstantial
`
`difference between the prior art element with the corresponding element in the
`
`patent. MPEP 2183. Petitioner failed in its Petition and in its Reply to make any such
`
`showing. Indeed, there cannot be any equivalence because, as discussed above, a
`
`preference does not address privacy concerns, whereas privileges do, such that the
`
`40926790.1
`
`16
`
`
`
`
`
`function, way, and result are all substantially different. Thus, Petitioner's
`
`equivalence argument must fail.
`
`B. Haberman Alone Or With Boger Fails To Disclose Or Make
`Obvious The Claimed "Destination Identity"
`
`
`
`In its Reply, Petitioner essentially attempts to erase the specific requirements
`
`
`
`related to "privileges" and replace them with the different concept of a "preference."
`
`This is despite the fact that the preferences disclosed by Haberman are consistent
`
`with the ordinary meaning of preferences, namely, a liking of one thing over another.
`
`See, EX1004, ¶¶ [0025], [0176], [0181] ("[t]he preferences profile represents the
`
`types of informational content with which the person using the mobile device desires
`
`to be presented."). Petitioner has utterly failed to point to any disclosure in
`
`Haberman about the granting of rights or authorizations. Rather, Haberman's
`
`preferences are nothing more than a filter based on the content of the transmission
`
`such that an unauthorized sender, e.g., a spammer, could deliver a message through
`
`a filter by including information related to the desired sender. Indeed, it is
`
`unfortunately commonplace for emails to purport to be from a legitimate source,
`
`e.g., one's bank, but to actually be from a scammer. This is precisely the reason for
`
`granting privileges and permissions, as opposed to setting up mere preferences.
`
`
`
`As Petitioner's expert effectively admits, setting up preferences to allow
`
`searching for transmissions with desired information is a distinct concept from
`
`granting rights or authorizations to a sender of data. The latter serves the
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
