Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 33
`Entered: June 27, 2023
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00310
`Patent 9,088,868 B2
`_______________
`
`
`Before THU A. DANG, LYNNE H. BROWNE, and
`GARTH D. BAER, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`

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`IPR2022-00310
`Patent 9,088,868 B2
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`I.
`
`INTRODUCTION
`
`A. Background
`In response to a Petition (Paper 2, “Pet.”) filed by Apple Inc.
`(“Petitioner”), we instituted inter partes review of claims 1, 2, 5, 20, 24, 25,
`28, and 43 (“the challenged claims”) of U.S. Patent No. 9,088,868 B2
`(Ex. 1001, “the ’868 patent”). See Paper 8 (“Dec. Inst.”). During trial,
`BillJCo, LLC (“Patent Owner”) filed a Response (Paper 20, “PO Resp.”)1, to
`which Petitioner filed a Reply (Paper 23, “Pet. Reply.”). In turn, Patent
`Owner filed a Sur-reply. Paper 25 (“PO Sur-reply”). An oral hearing was
`held with the parties on April 14, 2023. A transcript of the hearing has been
`entered into the record. Paper 32 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Decision is a Final
`Written Decision under 35 U.S.C. § 318(a) as to the patentability of the
`claims on which we instituted trial. Based on the record before us, Petitioner
`has shown by a preponderance of the evidence that claims 1, 2, 5, 20, 24, 25,
`28, and 43 of the ’868 patent are unpatentable.
`B. Real Parties in Interest
`The parties identify themselves as the only real parties in interest.
`Pet. 1; Paper 3, 2.
`C. Related Proceedings
`The parties indicate that the ’868 patent is the subject of the following
`district court cases: 1) BillJCo, LLC v. Apple Inc., No. 6:21-cv-00528 (W.D.
`Tex.) (“District Court Litigation”); 2) BillJCo, LLC v. Cisco Systems, Inc.,
`
`
`1 We refer to the public, redacted version of the Response.
`
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`No. 2:21-cv-00181 (E.D. Tex.); and 3) BillJCo, LLC v. Hewlett Packard
`Enterprise Company, No. 2:21-cv-00183 (E.D. Tex.). Pet. 1; Paper 3, 2.
`D. The ’868 Patent
`The ’868 patent, titled “Location Based Exchange Permissions,”
`issued on July 21, 2015, from Application No. 14/087,313, filed on
`November 22, 2013. Ex. 1001, codes (54), (45), (21), (22).
`The ’868 patent relates to “location based exchanges of data between
`distributed mobile data processing systems [(MSs)] for locational
`applications.” Id. at 1:20–24. The ’868 patent states that the “[a]dvantages
`of having a service as the intermediary point between clients, users, and
`systems, and their associated services, include[] centralized processing,
`centralized maintaining of data, . . . [and] having a supervisory point of
`control.” Id. at 1:39–46. But “[w]hile a centralized service has its
`advantages, there are also disadvantages.” Id. at 1:66–67. For example,
`according to the ’868 patent, a centralized service may “suffer from
`performance and maintenance overhead” and presents concerns about the
`“privacy” of users’ “personal information.” Id. at 2:6–7, 2:43–53.
`To address these alleged disadvantages, the ’868 patent states that “[a]
`reasonable requirement is to push intelligence out to the mobile data
`processing systems themselves, for example, in knowing their own locations
`and perhaps the locations of other nearby mobile data processing systems.”
`Id. at 2:59–62. Specifically, the ’868 patent describes “a new terminology,
`system, and method referred to as Location Based eXchanges (LBX).” Id.
`at 3:57–59. It is a “foundation requirement” of LBX “for each participating
`[mobile data processing system] to know, at some point in time, their own
`whereabouts.” Id. at 4:9–11. “When two or more MSs know their own
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`whereabouts, LBX enables distributed locational applications whereby a
`server is not required to middleman social interactions between the MSs.”
`Id. at 4:14–17.
`Whereabouts information may be communicated between MSs at
`great distances from each other provided there are privileges and/or charters
`in place making such whereabouts information relevant for the MS. Id.
`at 12:53–57. Whereabouts information of others will not be maintained
`unless there are privileges in place to maintain it. Id. at 12:58–59.
`Whereabout information may not be shared with others if there have been no
`privileges granted to a potential receiving MS. Id. at 12:59–61. Privileges
`can provide relevance to what whereabouts information is of use, or should
`be processed, maintained, or acted upon. Id. at 12:62–64.
`An illustration of an embodiment of the ’868 patent’s Whereabouts
`Data Record (WDR) is depicted in Figure 11A, reproduced below:
`
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`Figure 11A shows WDR 1100 comprising WDR fields 1100a–1100p. As
`shown in Figure 11A, MS ID field 1100a is set with “Unique MS identifier
`of the MS” invoking whereabout data insertion. Id. at 32:27–28. This field
`is used to distinguish the MS WDR on queue from other originated WDRs.
`Id. at 32:28–30.
`An illustration of an embodiment of the ’868 patent’s Granting Data
`Record (GDR) is depicted in Figure 35A, reproduced below:
`
`
`Figure 35A shows GDR 3500 comprising GDR fields 3500a–3500f. In
`Figure 35A, GDR 3500 is the main data record for defining a granting of
`permissions or charter. Id. at 142:54–55. Granting ID field 3500a contains
`a unique number generated for record 3500 to distinguish from all other
`records maintained. Id. at 32:28–30. Granting type field 3500t distinguishes
`the type of permission or charter for: a grantor granting all privileges to a
`grantee, grantor granting specific privilege(s) and/or grants of privileges
`(permission(s)) to a grantee, and a grantor granting enablement of a charter
`to a grantee. Id. at 142:66–143:8. Owner info field 3500b provides the
`owner (creator and/or maintainer) of GDR 3500. Id. at 143:8–19. Grantor
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`ID field 3500c provides an identifier of the granting grantor, and grantor
`type field 3500d provides the type of grantor ID field 3500c. Id.
`at 143:19–21. Grantee field 3500e provides an identifier of the grantee, and
`grantee type field 3500f provides the type of grantee ID field 3500e. Id.
`at 143:21–24.
`E. Illustrative Claim
`Of the challenged claims (claims 1, 2, 5, 20, 24, 25, 28, and 43),
`
`claims 1 and 24 are independent. Claim 1 is illustrative and is reproduced
`below.
`
`1. A method, comprising:
`accepting user input, from a user of a mobile application
`user interface of a user carried mobile data processing system,
`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 comprising:
`accessing at least one memory storing a first identifier
`and a second identifier and a third identifier wherein each
`identifier is determined by the mobile data processing system
`for at least one location based condition monitored by the
`mobile data processing system for the mobile data processing
`system triggering a location based action, the location based
`action performed by the mobile data processing system upon
`the mobile data processing system determining the at least one
`location based condition including whether identifier data
`determined by the mobile data processing system for a wireless
`data record received for processing by the mobile data
`processing system matches the third identifier and at least one
`of the first identifier and the second identifier, the wireless data
`record corresponding to a beaconed broadcast wireless data
`transmission that is beaconed outbound from an originating
`data processing system to a destination data processing system,
`the first identifier indicative of the mobile data processing
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`system of the mobile application user interface for use by the
`mobile data processing system in comparing the first identifier
`to the identifier data determined by the mobile data processing
`system for the wireless data record received for processing by
`the mobile data processing system, the second identifier
`indicative of originating data processing system identity data of
`the wireless data record received for processing for use by the
`mobile data processing system in comparing the second
`identifier to the identifier data determined by the mobile data
`processing system for the wireless data record received for
`processing by the mobile data processing system, the third
`identifier indicative of the originating data processing system of
`the wireless data record received for processing wherein the
`third identifier is monitored by the mobile data processing
`system for use by the mobile data processing system in
`comparing the third identifier to the wireless data record
`received for processing by the mobile data processing system;
`receiving for processing the wireless data record
`corresponding to the beaconed broadcast wireless data
`transmission that is beaconed outbound from the originating
`data processing system to the destination data processing
`system;
`determining the identifier data for the wireless data
`record received for processing by the mobile data processing
`system;
`comparing the identifier data for the wireless data record
`received for processing by the mobile data processing system
`with the third identifier and the at least one of the first identifier
`and the second identifier;
`determining the at least one location based condition of
`the user specified location based event configuration including
`whether the identifier data for the wireless data record received
`for processing by the mobile data processing system matches
`the third identifier and the at least one of the first identifier and
`the second identifier; and
`performing, upon the determining the at least one
`location based condition, the location based action in
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`accordance with the determining the at least one location based
`condition of the user specified location based event
`configuration including whether the identifier data for the
`wireless data record received for processing by the mobile data
`processing system matches the third identifier and the at least
`one of the first identifier and the second identifier.
`Ex. 1001, 283:55–284:65. Claim 24, directed to a “user carried mobile data
`processing system,” recites similar limitations. Id. at 286:40–287:56.
`F. Evidence
`Petitioner submits the following evidence:
`
`Evidence
`Declaration of Thomas La Porta, Ph.D.
`Haberman, US 2005/0096044 A1, published May 5, 2005
`(“Haberman”)
`Boger, US 2002/0159401 A1, published Oct. 31, 2002
`(“Boger”)
`Evans, US 6,327,535 B1, issued Dec. 4, 2001 (“Evans”)
`Patent Owner submits the following evidence:
`Evidence
`
`
`
`Declaration of Istvan Jonyer, Ph.D.
`Deposition of Dr. La Porta
`
`Exhibit
`No.
`1002
`1004
`
`1005
`1006
`
`Exhibit
`No.
`2008
`2010
`
`G. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1, 2, 5, 20, 24, 25, 28,
`43
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103, effective March 16,
`2013. Because the application from which the ’868 patent claims priority to
`8
`
`Reference(s)/Basis
`Haberman
`
`35 U.S.C. §2
`103
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`
`Claims Challenged
`1, 2, 5, 20, 24, 25, 28,
`43
`1, 2, 5, 20, 24, 25, 28,
`43
`1, 2, 5, 20, 24, 25, 28,
`43
`
`35 U.S.C. §2
`103
`
`Reference(s)/Basis
`Haberman, Boger
`
`103
`
`103
`
`Haberman, Evans
`
`Haberman, Boger, Evans
`
`II. ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner argues that a person of ordinary skill in the art (“POSITA”)
`would have had “at least a bachelor’s degree in computer science, computer
`engineering, or an equivalent, and two years of experience relating to
`wireless communications.” Pet. 5 (citing Ex. 1002 ¶¶ 37–38). Petitioner’s
`description of the level of ordinary skill in the art is supported by the
`testimony of Petitioner’s declarant, Dr. La Porta. Ex. 1002 ¶¶ 37–38. Patent
`Owner does not propose a description of the level of ordinary skill in the art
`or dispute Petitioner’s description. See generally PO Resp.
`We apply Petitioner’s definition of a POSITA at the time of the
`claimed invention because, based on the record, this proposal is consistent
`with the ’868 patent, the asserted prior art, and is supported by the testimony
`of Dr. La Porta.
`B. Claim Construction
`In an inter partes review proceeding, a claim of a patent is construed
`using the same standard used in a civil action under 35 U.S.C. § 282(b),
`including construing the claim in accordance with the ordinary and
`customary meaning of the claim as understood by one of ordinary skill in the
`
`
`was filed before this date, the pre-AIA version of § 103 applies.
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`art and the prosecution history pertaining to the patent. 37 C.F.R.
`§ 42.100(b). Only those terms in controversy need to be construed, and only
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir.
`2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999)).
`Petitioner submits that “the challenged claims should be interpreted
`according to their plain and ordinary meaning.” Pet. 6. Patent Owner
`presents a proposed construction for “user specified location based event
`configuration to perform mobile data processing system operations,” recited
`in independent claims 1 and 24. PO Resp. 16–22 (emphasis omitted).
`Patent Owner also presents a proposed construction for “identifier data . . .
`for a wireless data record,” recited in claims 1 and 24. Id. at 22–23
`(emphasis omitted).
`In its Reply, Petitioner takes issue with Patent Owner’s contention
`that “‘configuring a user specified location based event configuration to be
`monitored and triggered by the mobile data processing system’ refers to the
`act of ‘configuring privilege data.’” Pet. Reply 2 (citing PO Resp. 16–17).
`Petitioner also takes issue with Patent Owner’s contention that “a grantee
`identity in a privilege conveyance between a grantor and a grantee
`corresponds to the claimed identifier data.” Id. at 4 (citing PO Resp. 22–23).
`Petitioner then contends that claims 1 and 24 “only require that the first
`identifier be ‘indicative of the mobile data processing system.’” Id. at 11.
`In light of the parties’ arguments and evidence, we find that it is
`necessary to address the proposed claim construction of claim terms: “user
`specified location based event configuration to perform mobile data
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`processing system operations,” “identifier data . . . for a wireless data
`record,” and “first identifier indicative of the mobile data processing
`system,” as recited in independent claims 1 and 24, but only to the extent
`necessary to resolve the disputed issues before us.
`1.
`“user specified location based event configuration to
`perform mobile data processing system operations”
`
`Claims 1 and 24 recite “accepting user input . . . for configuring a
`user specified location based event configuration . . . wherein the mobile
`data processing system uses the user specified location based event
`configuration to perform mobile data processing system operations.”
`Ex. 1001, 283:56–63. We are unpersuaded by Patent Owner’s contention
`that “the subject claim limitation recites configuring privilege data.” PO
`Resp. 22. As Petitioner points out, the claims recite “‘location based event
`configuration’ and not ‘privilege data.’” Pet. Reply 2.
`Although Patent Owner references the testimonies of Dr. La Porta and
`Dr. Jonyer, and contends that “the intrinsic evidence establishes that the
`subject claim phrase relates to the configuring of privilege data” (PO
`Resp. 16–17 (citing Ex. 1002, 26, 47, 65)), we agree with Petitioner that “at
`no point does the claim or the specification describe ‘a user specified
`location based event configuration’ as privilege data.” Pet. Reply 2–3.
`Focusing on Patent Owner’s cited passage in the Specification of the ’868
`patent (PO Resp. 17), we find that, at most, the cited passage says “[t]he
`LBX platform includes a variety of embodiments for charter and permission
`definitions.” See Ex. 1001, 12:11–27 (emphasis added). While the cited
`passage says that embodiments of the invention relate to privilege data (id.),
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`nothing in the cited passage defines “user specified location based [ ]
`configuration” as “privilege data,” as Patent Owner asserts. Pet. Reply 2–3.
`We find that the passage cited by Patent Owner from the Specification
`of the ’868 patent to lack any clear definition that would support a
`construction calling for the “user specified location based configuration” to
`be limited to “privilege data.” PO Resp. 22. As Patent Owner’s reliance on
`the Specification does not support its proposed construction, we determine
`that the plain and ordinary meaning in light of the Specification and the
`claim language does not limit “user specified location based [ ]
`configuration” to “privilege data.” Therefore, for the foregoing reasons,
`based on the complete record, we determine that “user specified location
`based [ ] configuration” should not be narrowly construed to mean “privilege
`data,” as Patent Owner proposes. Id.
`
`2. “identifier data . . . for a wireless data record”
`Claims 1 and 24 recite “the location based action . . . determining the
`at least one location based condition including whether identifier data
`determined by the mobile data processing system for a wireless data record
`received for processing by the mobile data processing system matches the
`third identifier and at least one of the first identifier and the second
`identifier.” Ex. 1001, 284:3–11. Although we agree with Patent Owner that
`the claimed “identifier data” is compared with the claimed third identifier, as
`well as at least one of the first identifier and the second identifier, and that
`each of the first, second, and third identifiers is part of the previously-
`discussed “accepting user input . . . for configuring a user specified location
`based event configuration” limitation (PO Resp. 22–23), we are unpersuaded
`by Patent Owner’s contention that the identifiers “represent configured
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`privilege data.” Id. We are similarly unpersuaded by Patent Owner’s
`contention that, according to the Specification of the ’868 patent, “grantee
`identity corresponds to the claimed identifier data, which is then compared
`with configured privilege data.” Id. at 23.
`As Petitioner points out, the claims recite “‘location based event
`configuration’ and not ‘privilege data.’” Pet. Reply 2. Further, we agree
`with Petitioner that “the claim language does not provide any indication that
`the identifier data corresponds to the grantee in a grantor/grantee
`conveyance of a privilege.” Id. at 4.
`Focusing on Patent Owner’s cited passage in the Specification of the
`’868 patent (PO Resp. 23), we find that, at most, the cited passage says that
`“permission is granted from a grantor identity to a grantee identity,” wherein
`“[d]epending on what permission are determined relevant to (i.e., applicable
`to) a WDR being processed . . . , an action or plurality of actions which are
`associated with the permission can automatically occur.” See Ex. 1001,
`120:46–59. Although the cited passage says that permission is granted from
`a grantor identity to a grantee identity, and that actions associated with the
`permission can automatically occur (id.), nothing in the cited passage
`defines “identifier data” as “grantee identity.” PO Resp. 23.
`We find that the passage in the Specification of the ’868 patent cited
`by Patent Owner lacks any clear definition that would support a construction
`calling for the “identifier data” to be limited to “grantee identity.” PO
`Resp. 22–23. Therefore, for the foregoing reasons, based on the complete
`record, we determine that “identifier data” should not be narrowly construed
`to mean “grantee identity,” as Patent Owner proposes. Id.
`
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`3. “first identifier”
`
`Claims 1 and 24 recite “accessing at least one memory storing a first
`identifier and a second identifier and a third identifier,” with “the first
`identifier indicative of the mobile data processing system of the mobile
`application user interface for use by the mobile data processing system in
`comparing the first identifier to the identifier data.” Ex. 1001, 283:64–
`284:22. Although we agree with Petitioner that “[t]he instituted claims only
`require that the first identifier be ‘indicative of the mobile data processing
`system” (Pet. Reply 11), we are unpersuaded by Petitioner’s contention that,
`because “GPS information is indicative of the mobile device,” “GPS
`information is equivalent to the claimed first identifier.” Id. at 12.
`In claims 1 and 24, the recited term at issue is an “identifier.” See
`Ex. 1001, 283:64–284:22 (emphasis added). While the claim also recites
`that the first identifier be “indicative of the mobile device” (id.), we
`determine that the plain and ordinary meaning requires that an “identifier”
`be able to identify, not just be indicative. See, for example, Merriam-
`Webster’s Collegiate Dictionary, 10th Edition, 1998 (“identifier . . . n
`(1889): one that identifies”). We thus agree with Patent Owner’s contention,
`which is consistent with Dr. La Porta’s testimony, that “the ‘first identifier’
`must identify the mobile device.” PO Resp. 33 (citing Ex. 2010, 23:23–
`25:14 (“Q. SO what – what is required to satisfy something being indicative
`of the mobile data processing system? . . . A. –in this context. So it’s
`identifying the mobile device.”)).
`Furthermore, claims 1 and 24 also recite that the first identifier be
`stored in a “memory” along with second and third identifiers. See
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`Ex. 1001, 283: 64–65. Here, as Petitioner points out, “GPS functionality” is
`used “to obtain GPS data.” Pet. Reply 11 (emphasis added). That is, in the
`passages of Haberman cited by Petitioner to support its claim construction,
`GPS data is obtained using GPS functionality, rather than stored with
`identifiers. Id.
`
`We find Petitioner fails to provide any evidence that would support
`Petitioner’s proposed construction calling for the “first identifier” stored in
`memory along with second and third identifiers to encompass “GPS
`information.” Pet. Reply 12. Therefore, for the foregoing reasons, based on
`the complete record, we determine that “first identifier” should not be
`construed to encompass “GPS information,” as Petitioner proposes. Id.
`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, “would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of non-
`obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`D. Obviousness of Claims 1, 2, 5, 20, 24, 25, 28, and 43 over
`Haberman in view of Boger (Ground 2)
`Petitioner argues that claims 1, 2, 5, 20, 24, 25, 28, and 43 would have
`been obvious over Haberman. Pet. 7–32. Further, Petitioner argues that to
`the extent Haberman does not explicitly teach a first identifier or a third
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`identifier, Boger teaches a Bluetooth packet that includes an AM_ADDR
`address associated with a mobile device (i.e., a first identifier) and an access
`code (i.e., a third identifier). Id. at 34–40 (citing Ex. 1005 ¶¶ 4, 6, 9, 17, 21).
`Patent Owner counters that Haberman fails to disclose key elements
`of the claims. PO Resp. 26–35; see also PO Sur-reply 12–20. Patent Owner
`further contends that Petitioner’s combination of Haberman with Boger “was
`for Boger’s disclosure of using device addressing in a particular computer
`architecture called piconet,” wherein a POSITA “would not have combined
`Boger with Haberman.” PO Resp. 35–36; PO Sur-reply 20–21.
`We summarize the asserted prior art below.
`
`
`1.
`Haberman (Ex. 1004)
`
`Haberman, titled “Transmitter at Specific Address Transmitting
`
`Address-Specific Information Content,” discloses a method “for presenting
`to a person using a mobile device information content pertaining to a
`specific address when the mobile device is within proximity to the specific
`address.” Ex. 1004, codes (54), (57). The method includes transmitting
`from the specific address a transmission containing a broadcast, wherein the
`broadcast includes informational content that pertains to the specific address
`for presenting to a person using the mobile device. Id. at code (57). In one
`aspect, the informational content is presented to the person for the respective
`broadcast determined to be within a predetermined proximity to the mobile
`device. Id. ¶ 29.
`
`In a feature, the method includes storing a preferences profile from a
`person using the mobile device, wherein the preferences profile indicates
`types of informational content with which the person using the mobile
`device desires to be presented. Id. ¶ 34. If the type of informational content
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`does not match a type of informational content indicated in the preferences
`profile, then the informational content of the respective broadcast may be
`presented to the person using the mobile device. Id. An illustration of a
`mobile device that stores a preferences profile is depicted in Figure 14,
`reproduced below:
`
`
`Figure 14 shows a mobile device comprising “smart phone” 1402 with
`preferences profile 1404 stored therein. Id. ¶ 166. As shown in Figure 14,
`when a user selects content types “X” and “Y” for storing in the mobile
`device, broadcast “X” and broadcast “Y” are received and stored in database
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`1406, and are maintained in non-volatile memory of the mobile device. Id.
`In Figure 14, the user of the mobile device selects broadcast “X” from a list
`of stored broadcasts, for presentation of the informational content for the
`restaurant that is of current interest. Id.
`
`Boger (Ex. 1005)
`2.
`
`
`Boger, titled “Masterless Slave/Master Role Switch in a Bluetooth
`
`Piconet,” discloses a method by which “a new Bluetooth piconet is
`established among participants of an old Bluetooth piconet whose master has
`disappeared.” Ex. 1005, codes (54), (57). A piconet is defined as a network
`of one master and one or more slaves. Id. ¶ 4.
`
`The frequency hopping scheme and the channel access code of a
`piconet is defined based on the Bluetooth device address (BD_ADDR) of the
`master of the piconet. Id. ¶ 6. During formation of the piconet, the master
`assigns each slave an active member address (AM_ADDR), an integer from
`1 through 7, which uniquely identifies the slave within the piconet. Id.
`
` Transmission is done in packets that are made up of an access code, a
`packet header and a payload, wherein the packet header includes information
`for package acknowledgement and the AM_ADDR of the device for which
`the packet is intended. Id. ¶ 9. The master of a piconet uses the AM_ADDR
`to direct a packet to one of the slaves of the piconet, wherein a slave
`responds only to packets addressed to it. Id. ¶ 17.
`3.
`Analysis
`Having reviewed Petitioner’s arguments and supporting evidence in
`the complete record, we determine Petitioner has demonstrated by a
`preponderance of the evidence that claims 1 and 24, and claims 2, 5, 20, 25,
`
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`IPR2022-00310
`Patent 9,088,868 B2
`
`28, 43 respectively depending therefrom, would have been obvious over the
`combination of Haberman and Boger, notwithstanding Patent Owner’s
`arguments to the contrary. We address in detail Petitioner’s arguments and
`Patent Owner’s responses regarding Haberman and Boger with respect to the
`limitations of independent claims 1 and 24.
`“accepting user input, from a user of a mobile
`i.
`application user interface of a user carried 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”
`Relying on the testimony of Dr. La Porta for support, Petitioner
`presents evidence that Haberman describes a user storing “a preferences
`profile (i.e., user-specified location based event configuration to be
`monitored and triggered by the mobile data processing system) that
`‘represents the types of informational content with which the person using
`the mobile device desires to be presented.’” Pet. 13–14 (citing Ex. 1004
`¶¶ 25, 176, 181; Ex. 1002 ¶ 65) (emphasis omitted); see also Pet. Reply 5–8.
`According to Petitioner, in Haberman, the mobile device accepts user input
`to generate the preferences profile, wherein the user can select the types of
`information content that are preferred using a user interface of the mobile
`device. Pet. 14 (citing Ex. 1004 ¶ 121; Ex. 1002 ¶ 66).
`
`Petitioner contends that Haberman’s preferences profile is “location-
`based,” wherein, for example, “the broadcast includes both informational
`content pertaining to a particular location for presentation to a person and
`broadcast-identifying information comprising a broadcast identification.”
`Id. (quoting Ex. 1004 ¶ 16). Petitioner then contends that Haberman’s
`mobile device “monitors the preferences profile to determine when to store
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`IPR2022-00310
`Patent 9,088,868 B2
`
`or present content (uses the user specified location based event
`configuration to perform mobile data processing system operations),” such
`as, for example, “upon receiving ‘a plurality of transmission from wireless
`transmitters,’ the mobile device scans each respective broadcast ‘to
`determine if the informational content thereof matches informational content
`identified as being preferred,’ [i.e., the preferences profile].” Id. at 15
`(citing Ex. 1004 ¶ 168; Ex. 1002 ¶ 68).
`Patent Owner counters that “this claim limitation ‘recit[es]
`configuring privilege data,’” wherein “[t]he disclosed preference profile of
`Haberman fails to disclose the claimed limitation related to ‘configuring
`privilege data,’ because a ‘preference’ is a wholly different concept from a
`‘privilege’ (or a ‘permission’).” PO Resp. 26–27. Patent Owner
`acknowledges that “[t]here is no dispute that Haberman discloses the
`establishing of a ‘preference profile,’” but contends that “nowhere in
`[Petitioner’s] cited portions of Haberman is there any discussion of a user
`configuring a privilege or a permission.” Id. at 28 (citing Pet. 13, 51, 59:
`Ex. 1002, 26, 47, 65).
`Patent Owner’s contentions are based on its proposed construction
`that “the subject claim limitation recites configuring privilege data” (PO
`Resp. 22), which we do not adopt, as discussed supra § II(B)(1). Although
`embodiments of the ’868 patent relate to privilege data, the ’868 patent does
`not provide a definition for “user specified location based configuration” as
`limited to “privilege data.” Because we do not adopt Patent Owner’s
`proposed claim construction, Patent Owner’s argument that Haber