Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 8
`Date: July 1, 2022
`
`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, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`

`

`IPR2022-00310
`Patent 9,088,868 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`
`an 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”). BillJCo, LLC (“Patent Owner”) filed a Preliminary Response
`
`(Paper 6, “Prelim. Resp.”) to the Petition.1
`
`An inter partes review may not be instituted unless “the information
`
`presented in the petition . . . and any response . . . shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least
`
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
`
`decision to institute may not institute on fewer than all claims challenged in
`
`the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence
`
`of record, Petitioner demonstrates a reasonable likelihood of prevailing in
`
`showing that at least one of the challenged claims of the ’868 patent is
`
`unpatentable. Accordingly, we institute an inter partes review as to the
`
`challenged claims of the ’868 patent on all the grounds of unpatentability in
`
`the Petition.
`
`B. Real Parties in Interest
`
`The parties identify themselves as the only real parties in interest.
`
`Pet. 1; Paper 3, 2.
`
`
`1 Patent Owner originally filed the Preliminary Response and accompanying
`exhibits as a single document. We authorized Patent Owner to refile the
`Preliminary Response and accompanying exhibits as separate documents,
`and we expunged the original filing.
`
`2
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`IPR2022-00310
`Patent 9,088,868 B2
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`C. Related Matters
`
`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.,
`
`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 relates to “location based exchanges of data between
`
`distributed mobile data processing systems for locational applications.”
`
`Ex. 1001, 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
`
`3
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`IPR2022-00310
`Patent 9,088,868 B2
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`whereabouts.” Id. at 4:9–11. “When two or more [mobile data processing
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`systems] know their own whereabouts, LBX enables distributed locational
`
`applications whereby a server is not required to middleman social
`
`interactions between the [mobile data processing systems].” Id. at 4:14–17.
`
`E. Illustrative Claim
`
`
`
`Of the challenged claims, claims 1 and 24 are independent. Claim 1 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
`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
`
`4
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`IPR2022-00310
`Patent 9,088,868 B2
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`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
`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
`
`5
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`IPR2022-00310
`Patent 9,088,868 B2
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`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.
`
`F. Evidence
`
`Petitioner submits the following evidence:
`
`Evidence
`
`Declaration of Thomas La Porta, Ph.D. (“La Porta
`Declaration”)
`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”)
`
`G. Asserted Grounds
`
`Exhibit
`No.
`
`1002
`
`1004
`
`1005
`
`1006
`
`Petitioner asserts that the challenged claims are unpatentable on the
`
`following grounds:
`
`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
`1, 2, 5, 20, 24, 25, 28,
`43
`
`35 U.S.C. §
`
`Reference(s)/Basis
`
`103
`
`103
`
`103
`
`103
`
`Haberman
`
`Haberman, Boger
`
`Haberman, Evans
`
`Haberman, Boger, Evans
`
`6
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`IPR2022-00310
`Patent 9,088,868 B2
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`II. ANALYSIS
`
`A. 35 U.S.C. § 314(a)
`
`Patent Owner argues that we should exercise our discretion under
`
`35 U.S.C. § 314(a) to deny the Petition. Prelim. Resp. 11–16. Section
`
`314(a) states that
`
`[t]he Director may not authorize an inter partes review to be
`instituted unless the Director determines that the information
`presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a
`reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Under § 314(a), we have discretion to deny institution of an inter partes
`
`review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016).
`
`We consider several factors when determining whether to deny institution
`
`under § 314(a) based on a parallel district court proceeding, specifically
`
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`
`3. investment in the parallel proceeding by the court and the
`parties;
`
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`
`Mar. 20, 2020) (precedential) (“Fintiv”).
`
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`Patent 9,088,868 B2
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`1. Factor 1 – Whether the court granted a stay or evidence
`exists that one may be granted if a proceeding is instituted
`
`Under the first Fintiv factor, we consider “whether the court granted a
`
`stay or evidence exists that one may be granted if a proceeding is instituted.”
`
`Id. at 6. Petitioner argues that it “intends to move to stay the [District Court
`
`Litigation], and the opportunity for . . . simplification increases the
`
`likelihood that the [District Court] will grant a stay in view of IPR
`
`institution.” Pet. 64. Patent Owner argues that “a stay is not likely to be
`
`granted on a contested motion,” because the District Court grants stays in a
`
`low percentage of cases. Prelim. Resp. 11–12.
`
`Neither party identifies any statements by the District Court or other
`
`evidence that specifically addresses a stay of the District Court Litigation.
`
`See Pet. 64; Prelim. Resp. 11–12. We decline to speculate based on the
`
`record in this case whether the District Court would grant a stay of the
`
`District Court Litigation. See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). Thus, we
`
`determine that the first Fintiv factor is neutral.
`
`2. Factor 2 – Proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision
`
`Under the second Fintiv factor, we consider the “proximity of the
`
`court’s trial date to the Board’s projected statutory deadline for a final
`
`written decision.” Fintiv, Paper 11 at 6. Petitioner argues that the District
`
`Court “tentatively set trial for February 13, 2023,” but “[t]here is no
`
`guarantee trial will commence” on that date. Pet. 65. According to
`
`Petitioner, “‘a court’s general ability to set a fast-paced schedule is not
`
`particularly relevant,’ especially where ‘the forum [W.D. Tex.] itself has not
`
`historically resolved cases so quickly.’” Id. (alteration in original). Patent
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`Owner argues that the “trial date is extremely reliable,” because the District
`
`Court and parties “have kept to the scheduling order fairly closely.” Prelim.
`
`Rep. 12–13.
`
`The current trial date in the District Court Litigation is February 13,
`
`2023. Ex. 1007, 4. But the United States Court of Appeals for the Federal
`
`Circuit (“Federal Circuit”) recently ordered the District Court to transfer the
`
`District Court Litigation to the Northern District of California. Ex. 1012, 5.
`
`The evidence of record does not indicate when a trial may occur in the
`
`Northern District of California. Thus, we determine that the second Fintiv
`
`factor weighs against discretionary denial of institution.
`
`3. Factor 3 – Investment in the parallel proceeding by the
`court and the parties
`
`Under the third Fintiv factor, we consider the “investment in the
`
`parallel proceeding by the court and the parties.” Fintiv, Paper 11 at 6.
`
`Petitioner argues that “no discovery has taken place,” and although a claim
`
`construction hearing “is scheduled for February 10, 2022, it is unclear when
`
`the [District Court] will issue a [claim construction] order.” Pet. 67. Patent
`
`Owner argues that the District Court issued a claim construction order.
`
`Prelim. Resp. 13–14. Patent Owner also argues that Petitioner filed the
`
`Petition seven months after Patent Owner served its complaint in the District
`
`Court Litigation. Id. at 13.
`
`The evidence of record indicates that the District Court and the parties
`
`invested minimal resources in the District Court Litigation as to issues of
`
`unpatentability involving the ’868 patent. The District Court issued a claim
`
`construction order that addresses two terms in the ’868 patent. Ex. 2003,
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`Patent 9,088,868 B2
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`2–3. But the District Court stated only that those terms have their “[p]lain
`
`and ordinary meaning.” Id. And the evidence of record indicates that fact
`
`discovery is ongoing, expert discovery has not begun, and the deadline for
`
`dispositive motions is not until November 2022. Ex. 1007, 3. Further,
`
`Petitioner exercised reasonable diligence in filing the Petition about two
`
`months after serving its preliminary invalidity contentions. Pet. 70;
`
`Ex. 2006, 80. Thus, we determine that the third Fintiv factor weighs against
`
`discretionary denial of institution.
`
`4. Factor 4 – Overlap between issues raised in the petition
`and in the parallel proceeding
`
`Under the fourth Fintiv factor, we consider the “overlap between
`
`issues raised in the petition and in the parallel proceeding.” Fintiv, Paper 11
`
`at 6. Petitioner states that “if the Board institutes IPR, Petitioner will not
`
`assert invalidity of the challenged claims in the [D]istrict [C]ourt [L]itigation
`
`using the grounds asserted in this [P]etition.” Pet. 67–68. Patent Owner
`
`argues that “Petitioner’s stipulation is quite limited in scope” and only
`
`mitigates “concerns of duplicate efforts and of potentially conflicting
`
`decisions ‘to some degree.’” Prelim. Resp. 14. Patent Owner also argues
`
`that because Petitioner relies on more references and more combinations in
`
`the District Court Litigation than in the Petition, instituting an inter partes
`
`review would decrease “efficiency” and increase “the possibility of
`
`conflicting decisions.” Id. at 14–15.
`
`The Petition challenges claims 1, 2, 5, 20, 24, 25, 28, and 43, and
`
`relies on Haberman, Boger, and Evans. Pet. 4. Petitioner’s invalidity
`
`contentions in the District Court Litigation rely on Haberman, Boger, and
`
`Evans. Ex. 2006, 6–7. Nonetheless, Petitioner’s stipulation that it will not
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`IPR2022-00310
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`pursue the grounds asserted in the Petition in the District Court Litigation
`
`mitigates to some degree concerns of duplicative efforts and potentially
`
`conflicting decisions. Ex. 1011; see Sand Revolution II, LLC v. Continental
`
`Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB
`
`June 16, 2020) (informative). Thus, we determine that the fourth Fintiv
`
`factor weighs marginally against discretionary denial of institution.
`
`5. Factor 5 – Whether the petitioner and the defendant in the
`parallel proceeding are the same party
`
`Under the fifth Fintiv factor, we consider “whether the petitioner and
`
`the defendant in the parallel proceeding are the same party.” Fintiv,
`
`Paper 11 at 6. Here, Petitioner is the defendant in the District Court
`
`Litigation. Pet. 68; Prelim. Resp. 15. But, as we discussed for the second
`
`factor, the Federal Circuit recently ordered the District Court to transfer the
`
`District Court Litigation to the Northern District of California, and the
`
`evidence of record does not indicate when a trial may occur in the Northern
`
`District of California. Under these circumstances, we determine that the
`
`fifth Fintiv factor weighs against discretionary denial of institution.
`
`6. Factor 6 – Other circumstances that impact the Board’s
`exercise of discretion, including the merits
`
`Under the sixth Fintiv factor, we consider “other circumstances that
`
`impact the Board’s exercise of discretion, including the merits.” Fintiv,
`
`Paper 11 at 6. Petitioner argues that the ’868 patent “has never been
`
`challenged in a PTAB post-issuance proceeding,” the Office “did not
`
`consider the prior art references asserted in this [P]etition . . . during
`
`prosecution,” and “the strength of Petitioner’s patentability challenges on the
`
`preliminary record favor institution.” Pet. 69. Patent Owner argues that
`
`“Petitioner made a weak showing on the merits.” Prelim. Resp. 16. Patent
`
`11
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`Owner also contends that “an IPR will not provide the parties with an in-
`
`depth analysis of the ‘868 [p]atent” because “more art and bases for
`
`challenging the claims of the ‘868 [p]atent were raised in the [District Court]
`
`Litigation.” Id. at 15.
`
`As discussed below, on this record and at this stage of the proceeding,
`
`Petitioner presents a reasonably strong case that the challenged claims are
`
`unpatentable. See Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground
`
`raised in the petition seem particularly strong on the preliminary record, this
`
`fact has favored institution.”). For example, Petitioner’s evidence shows
`
`that Haberman teaches a “first identifier indicative of the mobile data
`
`processing system of the mobile application user interface,” which is the
`
`only limitation that Patent Owner disputes at this stage of the proceeding.
`
`See Section II.D.1. Thus, we determine that the sixth Fintiv factor weighs
`
`against discretionary denial of institution.
`
`7. Summary
`
`Based on our holistic view of the Fintiv factors, we decline to exercise
`
`our discretion under § 314(a) to deny the Petition.
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner argues that a person of ordinary skill in the art 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. Thomas La Porta. Ex. 1002
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`¶¶ 37–38. Patent Owner does not propose a description of the level of
`
`ordinary skill in the art or dispute Petitioner’s description. We adopt
`
`Petitioner’s description for purposes of this Decision.
`
`C. 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
`
`art and the prosecution history pertaining to the patent. 37 C.F.R.
`
`§ 42.100(b). Neither party proposes an express construction for any claim
`
`terms. Pet. 6. We determine that no claim terms require express
`
`construction for purposes of this Decision.
`
`D. Obviousness of Claims 1, 2, 5, 20, 24, 25, 28, and 43 over
`Haberman
`
`Petitioner argues that claims 1, 2, 5, 20, 24, 25, 28, and 43 would have
`
`been obvious over Haberman. Pet. 7–32. For the reasons discussed below,
`
`Petitioner demonstrates a reasonable likelihood of prevailing in showing that
`
`claims 1, 2, 5, 20, 24, 25, 28, and 43 would have been obvious over
`
`Haberman.
`
`1. Claim 1
`
`Claim 1 recites “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.”
`
`Ex. 1001, 283:56–63. Petitioner presents evidence that Haberman teaches
`
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`allowing a user of a mobile device to select the types of informational
`
`content that are preferred. Pet. 13–14 (citing Ex. 1004 ¶¶ 25, 121, 164, 176,
`
`181). Petitioner also presents evidence that Haberman teaches receiving a
`
`broadcast including informational content pertaining to a particular location
`
`and searching the user’s preference profile to determine if the broadcast’s
`
`information matches the user’s preferences. Id. at 14–16 (citing Ex. 1004
`
`¶¶ 16, 66, 84, 118, 120, 129, 168). At this stage of the proceeding,
`
`Petitioner shows sufficiently that Haberman teaches this limitation of
`
`claim 1.
`
`Claim 1 recites “accessing at least one memory storing a first
`
`identifier and a second identifier and a third identifier.” Ex. 1001, 283:64–
`
`65. Petitioner presents evidence that Haberman teaches storing the user’s
`
`preferences profile in a memory. Pet. 16–17 (citing Ex. 1004 ¶¶ 25, 166).
`
`Petitioner also presents evidence that Haberman teaches 1) an internal ID
`
`and a GPS location (i.e., first identifiers); 2) a transmitting party
`
`identification (i.e., a second identifier); and 3) a broadcast identification (i.e.,
`
`a third identifier). Pet. 17–21 (citing Ex. 1004 ¶¶ 27, 29, 33, 36, 47, 132).
`
`At this stage of the proceeding, Petitioner shows sufficiently that Haberman
`
`teaches this limitation of claim 1.
`
`Claim 1 recites “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.” Ex. 1001, 283:65–284:3. Petitioner
`
`presents evidence that Haberman teaches presenting a broadcast’s
`
`informational content to the user based on the GPS location, transmitting
`
`party identification, and broadcast identification. Pet. 21–23 (citing
`
`14
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`Ex. 1004 ¶¶ 16, 36, 47, 66, 120, 129, 132). At this stage of the proceeding,
`
`Petitioner shows sufficiently that Haberman teaches this limitation of
`
`claim 1.
`
`Claim 1 recites “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.” Ex. 1001, 284:3–11. Petitioner presents evidence that
`
`Haberman teaches presenting a broadcast’s informational content to the user
`
`when the user’s preferences profile matches the broadcast’s transmitting
`
`party identification and broadcast identification (i.e., the second and third
`
`identifiers). Pet. 23–26 (citing Ex. 1004 ¶¶ 27, 36, 129, 168). At this stage
`
`of the proceeding, Petitioner shows sufficiently that Haberman teaches this
`
`limitation of claim 1.
`
`Claim 1 recites “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.”
`
`Ex. 1001, 284:11–15. Petitioner presents evidence that Haberman teaches
`
`receiving a wireless broadcast including informational content pertaining to
`
`a particular location, as well as the broadcast’s transmitting party
`
`identification and broadcast identification. Pet. 26–27 (citing Ex. 1004 ¶¶ 8,
`
`120). At this stage of the proceeding, Petitioner shows sufficiently that
`
`Haberman teaches this limitation of claim 1.
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`Patent 9,088,868 B2
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`Claim 1 recites “the first identifier indicative of the mobile data
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`processing system of the mobile application user interface for use by the
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`mobile data processing system in comparing the first identifier to the
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`identifier data determined by the mobile data processing system for the
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`wireless data record received for processing by the mobile data processing
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`system.” Ex. 1001, 284:15–22. Petitioner presents evidence that Haberman
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`teaches an internal ID, such as an Internet address, that is indicative of the
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`mobile device and is used to download additional content from the Internet
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`address. Pet. 17–18 (citing Ex. 1004 ¶ 132). Petitioner alternatively
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`presents evidence that Haberman teaches GPS location information that is
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`indicative of the mobile device and is compared with positional data in a
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`broadcast. Id. at 18–19 (citing Ex. 1004 ¶¶ 29, 33 47).
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`Patent Owner argues that Haberman’s “‘Internet address’ . . . is not
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`‘indicative of the mobile data processing system of the mobile application
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`user interface’ for at least two reasons.” Prelim. Resp. 7. First, according to
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`Patent Owner, “the ‘Internet address’ of Haberman tells nothing about . . .
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`whether and what system is located at that ‘Internet address.’” Id. Second,
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`Patent Owner contends that “the ‘Internet address’ of Haberman cannot be
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`‘indicative of the mobile data processing system of the mobile application
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`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.” Id. (emphases omitted).
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`On this record, Patent Owner’s argument is unavailing. As discussed
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`above, Petitioner does not rely solely on Haberman’s Internet address as
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`teaching the first identifier. Pet. 17–19. Petitioner alternatively relies on
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`GPS location information. Id. at 18–19 (citing Ex. 1004 ¶¶ 29, 33 47). The
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`IPR2022-00310
`Patent 9,088,868 B2
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`portions of Haberman cited by Petitioner teach that the GPS location
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`information is indicative of the mobile device’s location. Ex. 1004 ¶¶ 33,
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`47. At this stage of the proceeding, Patent Owner does not dispute that the
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`GPS location information teaches the first identifier. See Prelim. Resp. 7–8.
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`On this record, Petitioner shows sufficiently that the GPS location
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`information teaches the first identifier.
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`Nonetheless, we note that Patent Owner appears to be correct
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`regarding Haberman’s Internet address. The portion of Haberman cited by
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`Petitioner teaches that “the mobile device contacts . . . the Internet address
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`and downloads from a server 306 additional informational content for
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`presentation using the mobile device.” Ex. 1004 ¶ 132. Thus, Haberman
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`describes the Internet address as indicative of server 306, not the mobile
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`device. Id. Patent Owner may present any arguments regarding the Internet
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`address again in the Response after institution.
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`Claim 1 recites “the second identifier indicative of originating data
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`processing 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 the
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`second 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.” Ex. 1001, 284:23–30. Petitioner presents
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`evidence that Haberman teaches a transmitting party identification that is
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`indicative of the broadcast transmitter and is compared to the user’s
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`preferences profile. Pet. 19–20 (citing Ex. 1004 ¶¶ 27, 36). At this stage of
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`the proceeding, Petitioner shows sufficiently that Haberman teaches this
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`limitation of claim 1.
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`IPR2022-00310
`Patent 9,088,868 B2
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`Claim 1 recites “the third identifier indicative of the originating data
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`processing system of the wireless data record received for processing
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`wherein the third identifier is monitored by the mobile data processing
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`system for use by the mobile data processing system in comparing the third
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`identifier to the wireless data record received for processing by the mobile
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`data processing system.” Ex. 1001, 284:30–37. Petitioner presents evidence
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`that Haberman teaches a broadcast identification that is indicative of the
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`broadcast’s author and is compared to the user’s preferences profile.
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`Pet. 20–21 (citing Ex. 1004 ¶ 27). At this stage of the proceeding, Petitioner
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`shows sufficiently that Haberman teaches this limitation of claim 1.
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`Claim 1 recites “receiving for processing the wireless data record
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`corresponding to the beaconed broadcast wireless data transmission that is
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`beaconed outbound from the originating data processing system to the
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`destination data processing system.” Ex. 1001, 284:38–42. Petitioner
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`presents evidence that Haberman teaches receiving a wireless broadcast
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`including informational content pertaining to a particular location, as well as
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`the broadcast’s transmitting party identification and broadcast identification.
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`Pet. 26–27 (citing Ex. 1004 ¶¶ 8, 120). At this stage of the proceeding,
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`Petitioner shows sufficiently that Haberman teaches this limitation of
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`claim 1.
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`Claim 1 recites “determining the identifier data for the wireless data
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`record received for processing by the mobile data processing system” and
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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.” Ex. 1001,
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`284:43–49. Petitioner presents evidence that Haberman teaches presenting
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`IPR2022-00310
`Patent 9,088,868 B2
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`the broadcast’s informational content to the user when the user’s preferences
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`profile matches the broadcast’s transmitting party identification and
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`broadcast identification (i.e., the second and third identifiers). Pet. 23–27
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`(citing Ex. 1004 ¶¶ 27, 36, 129, 168). At this stage of the proceeding,
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`Petitioner shows sufficiently that Haberman teaches this limitation of
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`claim 1.
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`Claim 1 recites “determining the at least one location based condition
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`of the user specified location based event configuration including whether
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`the identifier data for the wireless data record received for processing by the
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`mobile data processing system matches the third identifier and the at least
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`one of the first identifier and the second identifier.” Ex. 1001, 284:50–56.
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`Claim 1 also recites “performing, upon the determining the at least one
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`location based condition, the location based action in accordance with the
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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 identifi