UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00310
`U.S. PATENT NO. 9,088,868
`
`_______________________
`
`
`PATENT OWNER'S SUR-REPLY
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`
`CASE: IPR2022-00310
`U.S. PATENT NO. 9,088,868
`
`_______________________
`
`
`PATENT OWNER'S SUR-REPLY
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`Introduction ................................................................................................... 1
`I.
`Petitioner's Reply Should Be Disregarded Or Stricken
`II.
`In Whole Because It Raises New Arguments ............................................... 3
`
`III. Petitioner's Disagreements With Patent Owner's
`
`Claim Constructions Are Incorrect ............................................................... 5
`A.
`"Accepting User Input … For Configuring A
`User Specified Location Based Event Configuration …"
`Is A "Limitation Relating To Configuring Privilege Data." .............. 5
`"Identifier Data … For A Wireless Data Record"
`B.
`Relates To Privilege Data ................................................................. 11
`
`IV. Petitioner's Cited Prior Art Fails To Render The
`
`Challenged Claims Unpatentable As Obvious ........................................... 12
`
`A. Haberman Does Not Teach "Limitations
`
`Reciting Configuring Privilege Data" .............................................. 12
`Petitioner's Prior Art Fails To Disclose Or Make Obvious The
`Claimed "Identifier Data .. For A Wireless Data Record "............. 15
`V. Haberman/Boger Fails To Establish Obviousness
`
`The Claimed "Destination Identity" ........................................................... 20
`VI. Objective Indicia Of Non-Obviousness Demonstrates
`
`The Patentability Of The Challenged Claims ............................................. 21
`A.
`Copying ............................................................................................ 21
`B.
`Commercial Success......................................................................... 22
`C.
`Licensing .......................................................................................... 23
`VII. CONCLUSION ........................................................................................... 24
`
`
`B.
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Apple, Inc. v. Samsung Electronics, Co., Ltd.,
`
`839 F.3d 1034 (Fed.Cir. 2016) ................................................................... 23
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`
`805 F.3d 1359 (Fed.Cir. 2015) ..................................................................... 3
`
`
`Chemours Company FC, LLC v. Daikin Industries,
`
`4 F.4th 1370 (Fed.Cir. 2021) ...................................................................... 21
`
`DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
`
`567 F.3d 1314 (Fed.Cir. 2009) .................................................................. 22
`
`Institut Pasteur & Universite Pierre Et Marie Curie v. Focarino,
`
`738 F.3d 1337 (Fed.Cir. 2013) ............................................................. 22, 23
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359 (Fed.Cir. 2016) ..................................................................... 3
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`
`392 F.3d 1317 (Fed.Cir. 2004) ................................................................... 22
`
`Liqwd, Inc. v. L'Oreal USA, Inc.,
`
`941 F.3d 1133 (Fed.Cir. 2019) ................................................................... 22
`
`Thorner v. Sony Computer Entertainment America LLC,
`
`669 F.3d 1362 (Fed.Cir. 2012) .................................................................... 9
`
`Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc.,
`
`853 F.3d 1272 (Fed.Cir. 2017) ..................................................................... 3
`
`
`
`ii
`
`
`
`Other Authority:
`
`37 C.F.R. § 42.23 .................................................................................................... 3
`
`MPEP 2183 ........................................................................................................... 15
`
`PTAB Consolidated Trial Practice Guide November 2019 ........................... passim
`
`
`All emphasis supplied unless otherwise noted.
`
`
`
`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
`
`iv
`
`
`
`I.
`
`
`
`INTRODUCTION
`
`Petitioner incorrectly states Patent Owner ("PO") failed to address the
`
`"substantive analysis of the petition or the institution decision" and "PO concedes
`
`that the Petitioner's arguments of obviousness are correct should the Board reject
`
`PO's constructions." To the contrary, PO steadfastly contends Petitioner's prior art is
`
`wholly distinct from the Challenged Claims in view of the plain and ordinary
`
`meaning of the claim terms.
`
`
`
`For example, each of the Challenged Claims recite the limitation "accepting
`
`user input … for configuring a user specified location based event configuration to
`
`be monitored and triggered by the mobile data processing system wherein the mobile
`
`data processing system uses the user specified location based event configuration to
`
`perform mobile data processing system operations…." EX1001, 283:56-63.
`
`Petitioner and its expert repeatedly characterized this as "limitations reciting
`
`configuring privilege data." Pet. at 13, 33, 51, 59; EX1002, at 26, 47, 65, 73. They
`
`are correct – the claim language recites configuring "a user specified location based
`
`event configuration," which the '868 Patent teaches is privilege data. Petitioner
`
`argued Haberman's "preferences" met this limitation by presuming a preference was
`
`interchangeable with privilege data. Pet. at 13-14. This presumption was wrong. As
`
`both parties' experts agree, in computer science, a "preference" is not the same thing
`
`as a "privilege."
`
`1
`
`
`
`
`
`Faced with universal evidence establishing
`
`the dichotomy between
`
`"preferences" and "privileges" in computer science, Petitioner attempts to save its
`
`obviousness contentions by raising arguments not presented in the Petition.
`
`Petitioner argues Haberman's preferences are "equivalent" to the claimed privileges.
`
`Petitioner also argues Haberman teaches the "granting of rights." Petitioner's attempt
`
`to backfill its arguments now is improper, and should be disregarded or stricken.
`
`
`
`Petitioner's new arguments, if considered at all, are also wrong. Haberman
`
`fails to teach granting rights or authorization for a computer to perform certain
`
`functions at all. Instead, Haberman only uses "preferences" according to its standard
`
`meaning – a greater liking for one alternative over another, and says nothing about
`
`granting rights or authorizations.
`
`
`
`To the extent that Petitioner is now arguing that the configuring of privilege
`
`data in the '868 Patent should be construed as configuring "preferences," this
`
`argument must also fail. Petitioner stated that the claims are to be given their plain
`
`and ordinary meaning, and the plain and ordinary meaning of privilege is not the
`
`same as preference. To shift its claim construction position now is impermissible
`
`and wrong.
`
`
`
`Lastly, Petitioner fails to rebut the substantial evidence of objective indicia of
`
`non-obviousness. Rather than present any rebuttal evidence, Petitioner relies on
`
`incorrect statements of law and unsupported attorney argument.
`
`2
`
`
`
`II.
`
`
`
`
`Petitioner's Reply Should Be Disregarded Or Stricken In Whole
`Because It Raises New Arguments
`
`Before responding substantively to the Reply, PO submits the Reply should
`
`be disregarded because it presents arguments not included in the Petition. The
`
`petition must "identify 'with particularity' the 'evidence that supports the grounds for
`
`the challenge to each claim.'" Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`
`821 F.3d 1359, 1369 (Fed.Cir. 2016) (quoting 35 U.S.C. § 312(a)(3)). "[A] reply …
`
`may only respond to arguments raised in the preceding brief." See PTAB
`
`Consolidated Trial Practice Guide November 2019 ("PTAB Practice Guide"), at 74,
`
`citing 37 C.F.R. § 42.23. "'Respond,' in the context of 37 C.F.R. § 42.23(b), does not
`
`mean proceed in a new direction with a new approach as compared to the positions
`
`taken in a prior filing. While replies and sur-replies can help crystalize issues for
`
`decision, a reply or sur-reply that raises a new issue or belatedly presents evidence
`
`may not be considered." Id; see also, Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc.,
`
`853 F.3d 1272, 1285-1287 (Fed.Cir. 2017); Ariosa Diagnostics v. Verinata Health,
`
`Inc., 805 F.3d 1359, 1364 (Fed.Cir. 2015). Moreover, "the Board is not required to
`
`attempt to sort proper from improper portions of the reply or sur-reply." See PTAB
`
`Practice Guide at 74, citing 37 C.F.R. § 42.23.
`
`
`
`Regarding the claim language Petitioner repeatedly coined as "limitations
`
`related to configuring privilege data," Petitioner originally argued Haberman alone
`
`or in combination with Boger actually disclosed this limitation. Pet. at 13-14; see
`
`3
`
`
`
`also, EX1002 ¶¶ 65, 111, 163, 183. Now, Petitioner argues Haberman teaches an
`
`"equivalent" of certain limitations. Clearly, "equivalents" is a term of art in patents
`
`that implicates a particular analysis.
`
`
`
`The equivalents arguments were not in the Petition, and it is improper to raise
`
`them now. Apparently aware its equivalents argument are new, Petitioner portrays
`
`them as being in response to the POR by stating "PO alleges that Haberman fails to
`
`teach 'configuring a user specified location based event' because Haberman's
`
`preferences are not equivalent to a 'privilege.'" Reply at 6. Petitioner's portrayal of
`
`PO's argument is fiction. PO never discussed equivalents. Instead, it argued
`
`Haberman's preferences did not meet the "limitations reciting configuring privilege
`
`data" because preferences were not a disclosure of privileges.
`
`
`
`Petitioner also argues for the first time that Haberman's disclosures of Internet
`
`address and GPS information are "equivalent" to the claimed "first identifier." Reply
`
`at 11, 12. Again, this argument based on equivalence is new and should be
`
`disregarded. Pet. at 16-21.
`
`
`
`With respect to "identifier data … for a wireless data record," Petitioner
`
`originally argued Haberman's preference profiles met this. Id. For the first time,
`
`Petitioner now submits the argument that "Haberman's User Grants the Sender A
`
`Right." Reply at 8. This argument about Haberman granting a right was not in the
`
`Petition, is improperly raised in the Reply, and should be ignored.
`
`4
`
`
`
`
`
`As for the claimed "second identifier" and "third identifier," Petitioner
`
`originally argued a "transmitting party identification" met the claimed "second
`
`identifier," and that a "broadcast identification" met the claimed "third identifier."
`
`Pet. at 17. Petitioner now shifts gears and argues the "transmitting party
`
`identification" and the "broadcast identification" are part of an "overarching
`
`originating data processing system." Reply at 14. This new argument about some
`
`supposed overarching originating data processing system should be stricken.
`
`
`
`In that "the Board is not required to attempt to sort proper from improper
`
`portions of the reply or sur-reply," it should strike or disregard Petitioner Reply in
`
`total. PTAB Practice Guide at 74, citing 37 C.F.R. § 42.23.
`
`III. Petitioner's Disagreements With Patent Owner's
`
`Claim Constructions Are Incorrect
`
`
`
`Petitioner originally argued "the challenged claims should be interpreted
`
`according to their plain and ordinary meaning." Pet. at 6. It gave no explanation of
`
`what the plain and ordinary meaning for any claim term was, however. Id.
`
`Petitioner's disputes with PO's claim constructions are wrong.
`
`A.
`
`"Accepting User Input … For Configuring A User Specified
`Location Based Event Configuration …" Is A "Limitation
`Relating To Configuring Privilege Data"
`
`
`Claim language found in each of the Challenged Claims recites:
`
`
`
`"accepting user input … for configuring a user specified location based
`event configuration to be monitored and triggered by the mobile data
`processing system wherein the mobile data processing system uses the
`
`5
`
`
`
`user specified location based event configuration to perform mobile
`data processing system operations…." EX1001, 283:56-63.
`
`Petitioner and its expert each, four separate times, gave this limitation the shorthand
`
`moniker, "limitations reciting configuring privilege data." See, Pet. at 13, 33, 51, 59;
`
`EX1002, at 26, 47, 65, 73. Petitioner then pointed to Haberman's disclosure of
`
`"preference profiles" to meet it. Id. The only plausible conclusion is that Petitioner
`
`proceeded with the presumption that a "preference" was the same as a "privilege" in
`
`the relevant art.
`
`
`
`Because the only evidence of record is that a "preference" and a "privilege"
`
`have different meanings in computer science arts,1 Petitioner offers the preposterous
`
`claim that its expert's characterization "limitations related to configuring privilege
`
`data" was a typo. Reply at 2. While typographical errors can happen, it defies all
`
`sensibilities to suggest such repeated identical characterizations can be anything but
`
`intentional. It
`
`is
`
`interesting
`
`that Petitioner argues only
`
`that La Porta's
`
`characterization was a typo. This does not explain why Petitioner identically used
`
`the same characterization.
`
`
`1 Although PO identified the distinction between privileges and preferences in the
`POPR, the Board stated there was no evidence of record of this distinction. It was
`Petitioner's burden to demonstrate a preference was the same thing as a privilege,
`not PO's burden to prove the opposite, and Petitioner failed to do so. Nonetheless,
`that a "privilege" is understood in computer science to be different from a
`"preference" is undisputed, and the evidence is of record.
`
`
`6
`
`
`
`
`
`Indeed, in the Reply, Petitioner does not argue the subject limitation is
`
`something other than a one reciting configuring privilege data. Petitioner merely
`
`states the claim does not say "user specified location based event configuration" is
`
`privilege data. Reply at 2-3. This begs the question, which is whether the subject
`
`limitation is properly understood as a reciting configuring privilege data, which it is.
`
`
`
`Petitioner also argues that the characterization of the claim limitation as
`
`configuring privilege data by its expert (and Petitioner itself) does not supersede the
`
`intrinsic evidence. This argument must fail. It was Petitioner's burden to identify its
`
`arguments and evidence for the challenge. Petitioner and its expert characterized the
`
`subject limitation as "limitations reciting configuring privilege data" a total of eight
`
`times. Disregarding the absurd argument that this was a typo, it was the stated
`
`argument for its Petition, and PO responded accordingly. To suggest that this Board
`
`should simply disregard Petitioner's admission must be rejected.
`
`
`
`Moreover, the '868 Patent readily demonstrates Petitioner correctly described
`
`"accepting user input … for configuring a user specified location based event
`
`configuration …" as "limitations relating to configuring privilege data." The overall
`
`purpose of the '868 Patent centers around configuring privileges. The '868 Patent
`
`states that "[u]sers are skeptical about their privacy as internet services proliferate."
`
`EX1001, 2:43-44. To address these privacy concerns, the '868 Patent uses
`
`7
`
`
`
`"permissions"2 and "privileges." "[P]ermissions are specified and used at the time
`
`of granting access to the shared services." Id. at 10:32-34. "It is an advantage herein
`
`for providing peer to peer permissions, authentication, and access control. …
`
`Permissions are maintained locally to a MS." Id. at 10:48. "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 12:28:34.
`
`"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 12:59-61. In keeping with these teachings, it is clear that "accepting user input
`
`… for configuring a user specified location based event configuration" pertains to
`
`configuring "privilege data."
`
`
`
`All the evidence further establishes that a "privilege" is a right granted to
`
`users, programs, processes, or services to perform certain functions on a computer.
`
`PO's expert stated: "'[p]rivilege,' as used in computer science, is a security related
`
`
`2 The '868 Patent explains the terms "permissions" and "privileges" are used
`interchangeably. Id. at 123:59-61.
`
`8
`
`
`
`concept that delegates permissions to users, programs, processes, or services to
`
`perform certain functions on a computer" and a "'permission' is commonly
`
`understood in the computer science arts to mean an authorization given to enable
`
`access to specific resources." EX2008 ¶¶ 63, 67. Petitioner declined to depose Dr.
`
`Jonyer, and his testimony is unrebutted. Petitioner itself states in the Reply: "PO
`
`alleges that 'privilege' should be construed according to its plain and ordinary
`
`meaning, which is 'a right granted to users, programs, processes, or services to
`
`perform certain functions on a computer.'" Reply at 3. Thus, even Petitioner
`
`explains that the plain and ordinary meaning for "privilege" is as PO proposes.
`
`
`
`Rather than dispute that a "privilege" is a right or authorization, Petitioner
`
`offers the unexplained assertion that the plain and ordinary meaning for "privilege"
`
`is narrower than how the '868 Patent supposedly defines it. Id. In sharp contrast to
`
`Petitioner's argument that the claim terms should be given their plain and ordinary
`
`meaning, Petitioner argues that PO acted as a lexicographer and defined "privilege"
`
`according to a preferred embodiment. See, Thorner v. Sony Computer Entertainment
`
`America LLC, 669 F.3d 1362, 1365 (Fed.Cir. 2012) (claim terms given plain and
`
`ordinary meaning except where patentee acts as lexicographer or disavows claim
`
`scope). Thus, Petitioner's departure from the plain and ordinary meaning of
`
`"privilege" should be disregarded. Moreover, conspicuously absent from Petitioner's
`
`argument is any explanation as to how the quoted language is supposedly narrower
`
`9
`
`
`
`than PO's contention regarding what constitutes a "privilege." Reply at 3.
`
`Importantly, the cited portion of the specification confirms a "privilege" is right
`
`granted to enable a function to be performed.
`
`
`
`Petitioner then argues PO is wrong that "privilege" is not inclusive of a
`
`"preference." Id. While Petitioner's argument is far from clear, it appears Petitioner
`
`is arguing for the first time that a preference is a type of privilege. It is Petitioner's
`
`burden to demonstrate obviousness. Yet, Petitioner fails to identify any teaching
`
`from the '868 Patent specification that a "preference" is a type of "privilege."
`
`Similarly, Petitioner fails to point to anything in the prior art to suggest that a
`
`"preference" is a type of right or authorization. Instead, the prior art states that a
`
`"preference" is a "type of informational content that are preferred," and says nothing
`
`about granted rights or authorizations. EX1004, ¶ [0164]; see also, Pet. at 14, and
`
`EX1002 at ¶ 65.
`
`
`
`Further, both Petitioner's and PO's experts state that a "preference" and a
`
`"privilege" are disparate concepts. According to Petitioner's expert: "in general, I
`
`would not equate a preference with a permission in computer science" and "in
`
`general, in computer science a permission is not the same as a preference …."3
`
`
`3 La Porta attempted to qualify his admission by saying "in general, in computer
`science a permission is not the same as a preference, but I believe it is in this – in
`this patent." Id. La Porta impeaches himself. La Porta also claimed the plain and
`ordinary meaning for claims terms should control. La Porta's lexicography claim is
`squarely at odds with his declaration (EX1002, ¶42).
`
`10
`
`
`
`EX2009, 47:9-14; 46:5-10. PO's expert, Dr. Jonyer, also explained a "preference" is
`
`a distinct concept in computer science from "privileges." EX2008, ¶ 72 ("'Preference'
`
`is conceptually different from privileges or permissions in general and in the
`
`computer science arts.") Even Petitioner's statement that a "preference profile
`
`'indicates the types of information content' that user 'desires to be presented'" says
`
`nothing about a preference being a type granted right. Pet at 14.
`
`
`
`Thus, the record establishes: (1) "accepting user input … for configuring a
`
`user specified location based event configuration …" is correctly construed as
`
`"limitations relating to configuring privilege data"; (2) a "privilege" is a right granted
`
`to users, programs, processes, or services to perform certain functions on a
`
`computer; and (3) a "preference" is a separate and distinct concept in computer
`
`science from a "privilege."
`
`
`
`
`
`
`B.
`
`
`"Identifier Data … For A Wireless Data Record"
`Relates To Privilege Data
`
`With regard to the claimed limitation "identifier data … for a wireless data
`
`record," Petitioner argues PO's proposed construction improperly reads a preferred
`
`embodiment into the claims. Reply at 4. Other than offering this hackneyed
`
`argument, Petitioner does not explain what features of the preferred embodiment are
`
`supposedly read into the claim. There are none.
`
`
`
`PO is not reading a preferred embodiment into the claim. In keeping with the
`
`overall claim, as well as Petitioner's admission that the Challenged Claims require
`
`11
`
`
`
`configuring privilege, the identifier data identifies the source of the wireless data
`
`record and represents configured privilege data. Notably, by characterizing the
`
`embodiment referenced by PO as a preferred embodiment, Petitioner implicitly
`
`concedes the embodiment supports the subject claim limitation and PO's
`
`construction thereof.
`
`IV. Petitioner's Cited Prior Art Fails To Render The Challenged
`
`Claims Unpatentable As Obvious
`
`
`
`Confronted with the fundamental flaw that the prior art does not teach
`
`claimed elements, Petitioner offers new, but still incorrect, arguments about the prior
`
`art. Petitioner further argues the prior art's preference profiles are an "equivalent" to
`
`the claimed "privileges." While, as discussed, these arguments should be stricken,
`
`Petitioner still fails to demonstrate obviousness of any Challenged Claim.
`
`
`
`
`
`
`A. Haberman Does Not Teach "Limitations Reciting
`
`Configuring Privilege Data"
`
`The Challenged Claims recite as a limitation; "accepting user input … for
`
`configuring a user specified location based event configuration to be monitored and
`
`triggered by the mobile data processing system wherein the mobile data processing
`
`system uses the user specified location based event configuration to perform mobile
`
`data processing system operations….", which Petitioner called "limitations reciting
`
`configuring privilege data." Petitioner relies only on portions of Haberman, which
`
`recite only a "preference profile" to meet this limitation.
`
`12
`
`
`
`
`
`As discussed, both Petitioner's and PO's experts agree, it is well accepted in
`
`computer science that "preference" and "privilege" have different meanings. Thus,
`
`Petitioner's entire obviousness case falls apart.
`
`
`
`Because of this, Petitioner now argues Haberman's "preferences" are the
`
`"equivalent" of "limitations reciting configuring privilege data." Central to
`
`Petitioner's argument of equivalence is the assertion that Haberman's preferences are
`
`not optional. Reply at 7-8. Petitioner's assertion is specious.
`
`
`
`Petitioner improperly cherry-picks isolated preferred embodiments from
`
`Haberman where a preference profile is used, but inexcusably omits other
`
`embodiments where no preference profile is used. Haberman discloses several
`
`embodiments. In at least the first four, Haberman does not use a preference profile
`
`at all. EX1004, ¶¶ [0008]-[0021]. Haberman further explains that an "exemplary,
`
`broad method for presenting informational content" merely transmit information to
`
`a mobile device within range of the transmitter, and says nothing about a preferences
`
`profile. Id. at [0128]. Haberman even states that a preferences profile is just part of
`
`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.").
`
`Importantly, none of the independent or dependent claim recites a preference profile
`
`as even being part of the invention, and therefore, the purported invention of
`
`13
`
`
`
`Haberman does not require a preferences profile. Id. at page 0044-45. Haberman's
`
`express teaching and claims establish that a preference profile is not required,
`
`thereby the cornerstone to Petitioner's equivalents argument crumbles.
`
`
`
`To suggest that a preference is the same as or equivalent to a privilege also
`
`makes no logical sense. Haberman's preference profile just enables a user to select
`
`desired information. For example, a user that wishes to receive information from a
`
`particular business will receive such information so long as the content of the
`
`transmission includes information about the business, regardless of whether the
`
`sender is truly the particular business, or is in fact, someone else like a competitor,
`
`commentator, or even a spammer. Indeed, "spoofing" by disguising an email
`
`address, display name, phone number, text message, or website URL to make it seem
`
`a message is from a desired source is ubiquitous.4 By contrast, configuring a mobile
`
`device to grant a right to a sender authorizes that sender, and privacy is maintained.
`
`Petitioner's expert further admits "in general I would not equate a preference with
`
`a permission in computer science." EX2009, 47:9-14.
`
`
`
` 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
`
`
`4 See e.g., https://www.investopedia.com/terms/s/spoofing.asp.
`
`14
`
`
`
`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 function, way, and result are all substantially different.
`
`B.
`
`Petitioner's Prior Art Fails To Disclose Or Make Obvious The
`Claimed "Identifier Data … For A Wireless Data Record"
`
`
`Petitioner relies on Haberman for the purported teaching of the claimed
`
`
`
`"identifier data … for a wireless data record." The "identifier data" includes a "first
`
`identifier," a "second identifier," and a "third identifier." Petitioner originally
`
`referenced the setting of a "preferences profile" for all the identifier data. Pet. at 17.
`
`Petitioner argued: (1) the "first identifier" was either an "IP address" or "GPS
`
`location information" Id. at 18; (2) the "second identifier" was "transmitting party
`
`identification" Id. at 19-20; and (3) the "third identifier" was "broadcast information
`
`that represents the author of the information content" Id. at 20-21. Nowhere did
`
`Petitioner argue that any of this constituted a granting of rights.
`
`Hoping to fill the gap between a "preference profile" and "privilege data,"
`
`Petitioner argues for the first time in the Reply that "Haberman's User Grants the
`
`Sender a Right." Reply at 8. Shifting from its claim that a preference is the same
`
`15
`
`
`
`thing as a privilege, Petitioner argues that because a preference profile may include
`
`a broadcaster identification, the user is granting the sending device the right to
`
`present their information on the user's device. Id. at 9.
`
`
`
`Identifying a broadcaster of informational content desired to be received does
`
`not grant any sender a right. For example, if a person wishes to receive informational
`
`content from Starbucks, and creates a preference profile that includes "Starbucks,"
`
`then the user would receive messages from any sender that includes "Starbucks" in
`
`the information, as opposed to only those actually coming from Starbucks. It is
`
`unfortunately commonplace for spammers to send messages that include well known
`
`authors of informational content to get spam past preference filters. Further, the
`
`identity of the author does not necessarily correlate with the sender of the
`
`information. Importantly, Petitioner fails to point to any disclosure in Haberman to
`
`suggest this possibility. As such, Petitioner's argument fails.
`
`
`
`With regard to the "first identifier" Petitioner argues the Board and PO
`
`misconstrued Petitioner's argument regarding whether an IP Address is a first
`
`identifier. Petitioner relies on paragraph [0132] from Haberman as teaching an "IP
`
`Address." Petitioner's cited portion of Haberman, however, does not disclose an "IP
`
`Address." Rather, Haberman states "the information content may include, inter alia,
`
`an internet address. In this regard, the mobile device preferably is Internet-enabled,
`
`16
`
`
`
`whereby additional informational content may be downloaded from the Internet
`
`address using the mobile device." EX1004, ¶ [0132].
`
`Petitioner tacitly concedes an "internet address" cannot the claimed first
`
`identifier, and resorts to its backup argument that the mobile devices disclosed in
`
`Haberman are "Internet enabled," and necessarily have an IP address. Reply at 10.
`
`Petitioner then argues "this IP address is equivalent to the claimed first identifier."
`
`Id. at 11. While an Internet enabled device would have an IP address, this fails to
`
`address whether it is a privilege based identifier, or an equivalent thereof. Petitioner
`
`fails to point to any evidence to establish either.
`
`
`
`As for Petitioner's next alternative argument that GPS information meets the
`
`"first identifier" limitation, this too must fail. GPS information merely gives the
`
`location of a mobile device, and does not actually identify the device. POR 33-34.
`
`Petitioner argues in response that the claims do not require that the first identifier
`
`identify the mobile device. Instead, Petitioner argues the "instituted claims only
`
`require that the first identifier be 'indicative of the mobile data processing system.'"
`
`Reply at 11. However, Petitioner's expert, whose declaration forms the evidentiary
`
`basis for the Petition, explained that in order for a first identifier to be indicative of
`
`the mobile data processing system, the "first identifier" must identify the mobile
`
`device. EX2010, 23:23-25:14. This understanding forming the basis for La Porta's
`
`declaration cannot be disregarded.
`
`17
`
`
`
`Petitioner also raises the new argument that "Haberman's GPS information is
`
`equivalent
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