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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`BILLJCO LLC,
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`Patent Owner
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`CASE: IPR2022-00310
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`U.S. PATENT NO. 9,088,868
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107(a)
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`TABLE OF CONTENTS
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`V.
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`Page
`INTRODUCTION ...................................................................................... - 1 -
`I.
`ALLEGED GROUNDS OF UNPATENTABILITY ................................. - 3 -
`II.
`III. THE ‘868 PATENT .................................................................................... - 3 -
`IV. HABERMAN DOES NOT TEACH OR SUGGEST “THE FIRST
`IDENTIFIER INDICATIVE OF THE MOBILE DATA
`PROCESSING SYSTEM OF THE MOBILE APPLICATION USER
`INTERFACE” ............................................................................................. - 7 -
`THE COMBINATION OF HABERMAN AND BOGER DOES NOT
`TEACH OR SUGGEST “THE FIRST IDENTIFIER INDICATIVE
`OF THE MOBILE DATA PROCESSING SYSTEM OF THE
`MOBILE APPLICATION USER INTERFACE” ..................................... - 8 -
`VI. PETITIONER DOES NOT ADDRESS ALL CLAIM FEATURES IN
`GROUNDS 3 OR 4 .................................................................................... - 9 -
`VII. THE BOARD SHOULD EXERCISE DISCRETION TO NOT
`INSTITUTE BASED ON THE FACIAL DEFICIENCIES OF
`GROUNDS 3 & 4 ..................................................................................... - 10 -
`VIII. THE PETITION SHOULD BE DENIED UNDER § 314(A) .................. - 11 -
`A.
`Fintiv Factor 1–Likelihood of Stay ................................................ - 11 -
`B.
`Fintiv Factor 2–Trial Date Versus FWD Due Date ....................... - 12 -
`C.
`Fintiv Factor 3–Investment in the Proceeding ............................... - 13 -
`D.
`Fintiv Factor 4–Overlap of Issues .................................................. - 14 -
`E.
`Fintiv Factor 5–Identity of Parties ................................................. - 15 -
`D.
`Fintiv Factor 6–Other Circumstances ............................................ - 15 -
`IX. CONCLUSION ......................................................................................... - 17 -
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`INTRODUCTION
`Petitioner Apple, Inc. (“Petitioner”) has not met its burden in demonstrating
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`I.
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`that U.S. Patent No. 9,088,868 (“the ‘868 patent”) is more likely than not invalid,
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`and, as such, institution should be denied.
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`Petitioner’s contention that the challenged claims of the ‘868 patent are
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`invalid as obvious lacks merit. Petitioner relies on one primary prior art reference—
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`U.S. Patent Application Publication US 2005/0096044 A1 to Haberman (Ex. 1004).
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`The Petition is facially defective in that it fails to demonstrate “a reasonable
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`likelihood that the Petitioner would prevail with respect to at least one of the claims
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`challenged in the petition” under 35 U.S.C. § 314(a).
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`Petitioner’s obviousness arguments fail because none of the cited references
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`teach or suggest the recited “the first identifier indicative of the mobile data
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`processing system of the mobile application user interface”. Petitioner twice
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`attempts to equate an address with this feature. However, the addresses in Haberman
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`and Boger that Petitioner attempts to utilize are no more “indicative of” the “system”
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`at that address in each reference than a given street address is “indicative of” whether
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`or what structure is located on that piece of land.
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`Neither the Petition, nor the declaration submitted by Petitioner’s expert,
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`provide an articulated reasoning with a rational underpinning to support a legal
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`conclusion of obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007),
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`quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Petition only provides
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`“mere conclusory statement[s]” (id.) that the claims are obvious, and lacks cogent
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`reasoning as to why a person of ordinary skill in the art would modify or combine
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`the cited references in the specific manner that is recited in each of the challenged
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`claims.
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`Petitioner’s expert declaration (Ex. 1002) merely repeats the attorney
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`arguments in the Petition (often verbatim).
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`In summary, the IPR Petition fails to show a reasonable likelihood that at least
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`one of the challenged claims of the ‘868 patent is unpatentable. The Board should
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`not institute inter partes review of the ‘868 patent and should deny the Petition in its
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`entirety.
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`II. ALLEGED GROUNDS OF UNPATENTABILITY
`Petitioner alleges the following grounds of unpatentability under 35 U.S.C.
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`§ 103 against independent claims 1 and 24 and dependent claims 2, 5, 20, 25, 28,
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`and 43. Pet. 4. All are deficient in meeting the challenged claims.1
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` Grounds Reference(s)
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`Challenged Claims
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`1. § 103
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`Haberman
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`1, 2, 5, 20, 24, 25, 28, and 43
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`2. § 103
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`Haberman in view of Boger
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`1, 2, 5, 20, 24, 25, 28, and 43
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`3. § 103
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`Haberman in view of Evans
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`1, 2, 5, 20, 24, 25, 28, and 43
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`4. § 103
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`Haberman in view of Boger and
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`1, 2, 5, 20, 24, 25, 28, and 43
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`Evans
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`III. THE ‘868 PATENT
`The ‘868 Patent enables the configuration and performance of location based
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`conditions. The claimed methods and systems recite accepting user input, from a
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`user of a mobile application user interface of a user carried mobile data processing
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`system, for configuring a user specified location based event configuration to be
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`monitored and triggered by the mobile data processing system. The mobile data
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`1 Patent Owner appreciates Petitioner’s recognition that the claims “should be
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`interpreted according to their plain and ordinary meaning.” Pet. 6.
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`processing system uses the user specified location based event configuration to
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`perform mobile data processing system operations comprising:
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` Accessing at least one memory storing a first identifier and a second
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`identifier and a third identifier:
`o Each identifier is determined by the mobile data processing system for
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`at least one location based condition monitored by the mobile data
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`processing system for the mobile data processing system triggering a
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`location based action.
`o The location based action performed by the mobile data processing
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`system upon the mobile data processing system determines the at least
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`one location based condition including whether identifier data
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`determined by the mobile data processing system for a wireless data
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`record received for processing by the mobile data processing system
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`matches the third identifier and at least one of the first identifier and
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`the second identifier.
`o The wireless data record corresponds to a beaconed broadcast wireless
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`data transmission that is beaconed outbound from an originating data
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`processing system to a destination data processing system.
`o The first identifier is indicative of the mobile data processing system
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`of the mobile application user interface for use by the mobile data
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`processing system in comparing the first identifier to the identifier
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`data determined by the mobile data processing system for the wireless
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`data record received for processing by the mobile data processing
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`system.
`o The second identifier is indicative of originating data processing
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`system identity data of the wireless data record received for
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`processing for use by the mobile data processing system in comparing
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`the second identifier to the identifier data determined by the mobile
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`data processing system for the wireless data record received for
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`processing by the mobile data processing system.
`o The third identifier is indicative of the originating data processing
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`system of the wireless data record received for processing. The third
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`identifier is monitored by the mobile data processing system for use
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`by the mobile data processing system in comparing the third identifier
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`to the wireless data record received for processing by the mobile data
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`processing system.
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` Receiving for processing the wireless data record corresponding to the
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`beaconed broadcast wireless data transmission that is beaconed outbound
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`from the originating data processing system to the destination data
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`processing system
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` Determining the identifier data for the wireless data record received for
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`processing by the mobile data processing system
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` Comparing the identifier data for the wireless data record received for
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`processing by the mobile data processing system with the third identifier and
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`the at least one of the first identifier and the second identifier
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` Determining the at least one location based condition of the user specified
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`location based event configuration including whether the identifier data for
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`the wireless data record received for processing by the mobile data
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`processing system matches the third identifier and the at least one of the first
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`identifier and the second identifier
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` Performing, upon the determining the at least one location based condition,
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`the location based action in accordance with the determining the at least one
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`location based condition of the user specified location based event
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`configuration including whether the identifier data for the wireless data
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`record received for processing by the mobile data processing system
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`matches the third identifier and the at least one of the first identifier and the
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`second identifier.
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`IV. HABERMAN DOES NOT TEACH OR SUGGEST “THE FIRST
`IDENTIFIER INDICATIVE OF THE MOBILE DATA PROCESSING
`SYSTEM OF THE MOBILE APPLICATION USER INTERFACE”
`Both of independent claims 1 and 24 recite “the first identifier indicative of
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`the mobile data processing system of the mobile application user interface”, which
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`Petitioner refers to as [1.a.1.e] and [24.c.1.e].
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`The “Internet address” taught by ¶ [0132] of Haberman is not “indicative of
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`the mobile data processing system of the mobile application user interface” for at
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`least two reasons.
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`First, the “Internet address” of Haberman tells nothing about, i.e., is not
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`“indicative of”, whether and what system is located at that “Internet address”. The
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`system located at the “Internet address” could be an HTTP server, an FTP server,
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`an e-mail server, a refrigerator, or anything else in this Internet of Things world.
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`Second, Haberman teaches that “additional informational content may be
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`downloaded from the Internet address”. Thus, the “Internet address” of Haberman
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`cannot be “indicative of the mobile data processing system of the mobile
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`application user interface” because the “Internet address” is merely a source for
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`downloading additional information from a different system than the user’s
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`mobile device in Haberman. Such an address cannot be known a priori because
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`the mobile device in Haberman can encounter any number of wireless transmitters
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`broadcasting any number of Internet addresses. Moreover, if user of the mobile
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`device in Haberman already knew the Internet address, there would be little utility
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`in the wireless transmitters in Haberman emitting it. Thus, even if the “Internet
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`address” was indicative of any “mobile data processing system”, which it is not, it
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`certainly would not be suitable “for use by the mobile data processing system in
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`comparing the first identifier to the identifier data determined by the mobile data
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`processing system for the wireless data record received for processing by the
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`mobile data processing system” as further recited in independent claims 1 and 24.
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`V. THE COMBINATION OF HABERMAN AND BOGER DOES NOT
`TEACH OR SUGGEST “THE FIRST IDENTIFIER INDICATIVE OF
`THE MOBILE DATA PROCESSING SYSTEM OF THE MOBILE
`APPLICATION USER INTERFACE”
`Recognizing that Haberman’s teaching of “the first identifier indicative of
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`the mobile data processing system of the mobile application user interface” is
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`lacking, Petitioner proffers a combination with Boger.
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`The Petition alleges that the AM_ADDR (active member address) of Boger
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`teaches this feature. In particular, the Petition relies on Boger’s teaching that,
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`“[d]uring formation of the piconet the master assigns each slave an AM_ADDR
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`(active member address), an integer from 1 through 7, which uniquely identifies
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`the slave within the piconet.” Petition at 35, citing EX1005, [0006]; EX1002,
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`¶ 116.
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`Like Haberman, the AM_ADDR of Boger is not “indicative of the mobile
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`data processing system of the mobile application user interface”. Again, the
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`AM_ADDR tells nothing about the slave to which the AM_ADDR integer is
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`assigned.
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`VI. PETITIONER DOES NOT ADDRESS ALL CLAIM FEATURES IN
`GROUNDS 3 OR 4
`Grounds 3 and 4 of the Petition are based on the premise that if the Patent
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`Owner were to argue that “wireless data record” should be construed to require: (1)
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`a date/time stamp field, (2) a location field; and (3) a confidence field, then Evans
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`discloses the claimed “wireless data record.” Petition at 52-53. Patent Owner does
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`not contend as such; rather, this was Petitioner’s unsuccessful construction in the
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`parallel District Court litigation. EX2003 at 3.
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`Regardless, neither the Petition nor the associated expert declaration address
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`features [1.a.1.e] and [24.c.1.e] in Ground 3 or 4, even by reference to Grounds 1
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`or 2. This is not surprising because Evans is silent regarding such an identifier.
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`Therefore, for the reasons discussed with respect to Grounds 1 and 2, the Petition
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`should be denied.
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`VII. THE BOARD SHOULD EXERCISE DISCRETION TO NOT
`INSTITUTE BASED ON THE FACIAL DEFICIENCIES OF
`GROUNDS 3 & 4
`As discussed herein, Petitioner has not demonstrated a reasonable likelihood
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`that at least one of the challenged claims of the ‘868 patent is unpatentable based
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`on either of Grounds 1 (Haberman) or 2 (Haberman and Boger).
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`However, even if the Board believed that Petitioner made such a showing
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`with regard to any Grounds, it should still exercise its discretion to not institute on
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`all grounds (as required under SAS Institute, Inc. v. Iancu) in view of the resulting
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`need to conduct a trial in which 50% or 75% of the grounds would be challenges
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`found to have no reasonable likelihood as outlined below.
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`If the Board finds a reasonable likelihood for:
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`Only Ground 2 Grounds 1 and 2
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`% of trial based on grounds without
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`75%
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`50%
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`reasonable likelihood
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`Similarly, a finding by the Board that Haberman does not teach or suggest
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`features [1.a.1.e] and [24.c.1.e] would result in at least 50% of the grounds lacking
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`a reasonable likelihood because the Petition cannot (and did not event attempt) to
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`show a teaching or suggestion of this feature in Evans.
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`VIII. THE PETITION SHOULD BE DENIED UNDER § 314(A)
`Patent Owner contends that, in view of the pending litigation in the Western
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`District of Texas (“WDTX”) -- BillJCo v. Apple Inc., Case No. 6:21-cv-00528-ADA
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`(“Litigation”), the Fintiv factors enumerated below weigh in favor of discretionary
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`denial. Apple Inc. v. Fintiv, IPR2020-00019, Paper 11, 5-6 (PTAB Mar. 20, 2020)
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`(precedential).
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`Preliminarily, Petitioner stated that it was challenging venue in the Litigation
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`and had moved to transfer the Litigation to the Northern District of California. Pet.
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`at 62. Petitioner’s motion to transfer, however, was denied on February 17, 2022
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`(corrected March 1, 2022). EX2001 (Public Version).
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`A. Fintiv Factor 1–Likelihood of Stay
`Petitioner advised that it will move to stay the Litigation if the IPR is
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`instituted. Pet. at 64. Petitioner contended that institution of an IPR would provide
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`an opportunity to simplify the Litigation, which would increase the likelihood that a
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`stay would be granted. Id. Petitioner also contended that a finding of invalidity in
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`the IPR would “relieve the Western District of Texas of the need to continue with
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`the companion litigation for the ‘868 patent.” Id. Neither contention is correct.
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`First, unless all claims asserted in the Litigation are found invalid in the IPR,
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`the district court will not be relieved of the need to continue with the Litigation.
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`Second, a stay is not likely to be granted on a contested motion in the WDTX. As
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`the “LegalMetric District Report Texas Western District Court in Patent Cases,
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`January, 2017–September, 2021” (EX2002) reveals, stays pending an IPR were
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`granted in the WDTX only 36.4% of the time during the five-year reporting period.
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`Id., p.3. The percentage is even lower for the judge assigned to the Litigation, Judge
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`Albright. His stay grant rate is only 28.6%. Id., pp. 70-71. It is more than 70% likely
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`that a stay will not be granted if an IPR is instituted.
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`Fintiv Factor 1 weighs strongly in favor of discretionary denial.
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`B. Fintiv Factor 2–Trial Date Versus FWD Due Date
`Trial is scheduled for February 13, 2023, “or as soon as practicable.” EX1007.
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`Petitioner emphasizes the phrase in quotes to support its contention that the trial date
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`is not reliable. Pet. at 63. To further support its contention, Petitioner discusses the
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`reliability of trial dates in general rather than addressing the facts specific to the
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`Litigation.
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`The facts specific to the Litigation suggest that this trial date is extremely
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`reliable. A review of the Agreed Scheduling Order confirms that the court and parties
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`have kept to the scheduling order fairly closely. EX1007. Indeed, although the
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`Markman hearing was held on February 22, 2022 instead of February 10, 2022 (this
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`was done at the request of Petitioner to accommodate its counsel’s schedule), the
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`Claim Construction Order was issued March 23, 2022 (EX2003). Judge Albright’s
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`average time to a claim construction decision is 12.1 months from the date of filing
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`of a case, which is May 25, 2021 for the Litigation. EX2002; EX2004. Judge
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`Albright, thus, is about three months ahead of schedule with his claim construction
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`decision.
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`Fintiv Factor 2 weighs strongly in favor of discretionary denial.
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`C. Fintiv Factor 3–Investment in the Proceeding
`Petitioner was served in the Litigation on May 28, 2021. EX2005. Petitioner
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`filed its Petition on December 22, 2021, almost seven months thereafter. Petitioner
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`stated that “almost no other court would be as far along in its trial calendar” within
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`six months. Pet. at 65. Petitioner’s statement is an express acknowledgement both
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`of the alacrity of proceedings in the WDTX and of the investment by the court and
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`parties in the Litigation.
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`Indeed, the parties have already disclosed extrinsic evidence and identified
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`expert witnesses for claim construction and indefiniteness (November 16, 2021);
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`served initial disclosures (February 15, 2022); submitted claim construction briefs
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`(completed January 27, 2022); and begun fact discovery (opened February 15,
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`2022). EX1007. As noted above, a Claim Construction Order was already issued.
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`EX2003. And, two claim terms of the ‘868 patent were construed. EX2003. It is
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`not likely that an institution decision will issue before the end of July 2022, which
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`means an FWD will not issue before July 2023. The parties’ and the court’s
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`investment will most likely be substantial before an FWD issues.
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`Fintiv Factor 3 weighs strongly in favor of discretionary denial.
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`D. Fintiv Factor 4–Overlap of Issues
`Petitioner stipulated that it would not assert invalidity of the challenged claims
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`in the Litigation using grounds asserted in the Petition. Pet. 67-68. The Petitioner’s
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`stipulation is quite limited in scope. The Board views stipulations like Petitioner’s
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`as only mitigating concerns of duplicate efforts and of potentially conflicting
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`decisions “to some degree.” See Apple Inc. v. Seven Networks, LLC, IPR2020-
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`00180, Paper 12, at 15 (PTAB Aug. 14, 2020). Such a stipulation, then, may slightly
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`favor institution.
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`Under the present facts, however, discretionary denial should be favored
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`instead. Petitioner asserted only four bases for challenging validity in its Petition,
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`and
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`relied upon only
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`three
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`references; Haberman, Haberman+Boger,
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`Haberman+Evans, and Haberman+Boger+Evans. Pet. 4. In the Litigation, Petitioner
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`cited eight references, and enumerated eight single reference, and numerous two-,
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`three-, four-, and five-reference combinations, for a total of 244 bases for
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`challenging validity, including the two of the four bases relied upon in the Petition.
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`Defendant Apple Inc.’s Preliminary Invalidity Contentions, EX2006, pp 40-54. If
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`both actions proceed simultaneously, not only is efficiency decreased, but also the
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`possibility of conflicting decisions is increased, assuming that all bases of invalidity
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`asserted by Petitioner in the litigation are of equal merit. It is possible that the claims
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`challenged in the Petition could be determined to be valid over the art relied upon in
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`the Petition, but invalid over art relied upon in the Litigation.
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`Fintiv Factor 4 weighs in favor of discretionary denial.
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`E. Fintiv Factor 5–Identity of Parties
`The Litigation involves the same parties. Petitioner argued that this factor is,
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`at worst, neutral. Pet. at 68. In Apple v. Seven Networks, however, the Board found
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`that, when the parties are the same, Fintiv factor 5 weighed slightly in favor of the
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`Patent Owner. Apple v. Seven Networks, at 16.
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`Fintiv Factor 5 weighs in favor of discretionary denial.
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`D. Fintiv Factor 6–Other Circumstances
`Unlike the situation in Apple v. Seven Networks, the number of prior art
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`challenges has not been limited in the Litigation. Indeed, more art and bases for
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`challenging the claims of the ‘868 Patent were raised in the Litigation. Also unlike
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`the situation in Apple v. Seven Networks, then, an IPR will not provide the parties
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`with an in-depth analysis of the ‘868 Patent, nor a full record that will enhance the
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`integrity of the patent system.
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`Petitioner made a weak showing on the merits. Patent Owner has pointed out
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`weaknesses in the Petition, on three separate bases, regarding each of the challenged
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`independent claims. Therefore, the merits, taken as a whole, do not favor Petitioner
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`and instead also weigh in favor of discretionary denial.
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`Fintiv factor 6 weighs in favor of discretionary denial.
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`IX. CONCLUSION
`For the above reasons, the Petition is deficient and institution of the IPR
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`should be denied.
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`Dated April 11, 2022
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`Mailing address for all correspondence:
`Saul Ewing Arnstein & Lehr LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
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`
`/s/ Brian R. Michalek
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`Brian R. Michalek (Reg. No. 65,816)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7836
`brian.michalek@saul.com
`
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`joseph.kuo@saul.com
`
`Brian R. Landry (Reg. No. 62,074)
`Saul Ewing Arnstein & Lehr LLP
`131 Dartmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
`
`Counsel for Patent Owner, BillJCo,
`LLC
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`39838176.5
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`Exhibit List
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`IPR2022-00310
`Patent No. 9,088,868
`
`Exhibit Document
`2001
`Amended Memorandum and Opinion & Order Denying Defendant
`Apple Inc.’s Motion to Transfer Venue [Public Version]
`LegalMetrics District Report for Texas Western District Court from
`January 2017 to September 2021
`Claim Construction Order
`Complaint
`Summons Returned by Apple
`Apple, Inc.’s Preliminary Invalidity Contentions
`
`
`
`
`2002
`
`2003
`2004
`2005
`2006
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`39838176.5
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`- 18 -
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`IPR2022-00310
`Patent No. 9,088,868
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`Certification of Word Count Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the foregoing complies with the type-
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`volume limitation in 37 C.F.R. § 42.24(b)(1). According to the word-processing
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`system’s word count, the document contains 3,208 words, excluding the parts of
`
`the brief exempted by 37 C.F.R § 42.24(b).
`
`Date: April 11, 2022
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`
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`
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`/Brian R. Landry/
`Reg. No. 62,074
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`39838176.5
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`IPR2022-00310
`Patent No. 9,088,868
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the foregoing was served in its entirety
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`by filing through the Patent Trial and Appeal Board End to End (PTAB E2E), as
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`well as providing a courtesy copy via e-mail to the following attorneys of record
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`for Petitioner listed below:
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`Larissa S. Bifano
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`Jonathan Hicks
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`Joseph Wolfe
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`
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`larissa.bifano@dlapiper.com
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`jonathan.hicks@dlapiper.com
`
`joseph.wolfe@us.dlapiper.com
`
`Date: April 11, 2022
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`
`
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`
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`/Brian R. Landry/
`Reg. No. 62,074
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`39838176.5
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`- 20 -
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`
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