DOCKET NO.: 337722-000232
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Joseph W. Wolfe, Reg. No. 73,173
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`IPR2022-00310
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Joseph W. Wolfe, Reg. No. 73,173
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`IPR2022-00310
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2022-00310– Petitioner’s Reply
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`CLAIM CONSTRUCTION ............................................................................ 2
`
`A.
`
`No construction is necessary ................................................................. 2
`
`1.
`
`2.
`
`“Location Based Event Configuration” ...................................... 2
`
`“Identifier Data . . . For A Wireless Data Record” .................... 4
`
`III. HABERMAN RENDERS OBVIOUS THE CHALLENGED CLAIMS
`OF THE ’868 PATENT ................................................................................... 5
`
`A.
`
`Haberman’s Preferences are “A User Specified Location Based
`Event Configuration” ............................................................................ 5
`
`1.
`
`Haberman’s Preferences are not Optional .................................. 7
`
`B.
`
`Haberman discloses “identifier data . . . for a wireless data record” .... 8
`
`1.
`
`Haberman’s User Grants the Sender a Right .............................. 8
`
`C.
`
`Haberman discloses the claimed “first identifier” ................................ 9
`
`1.
`
`2.
`
`Haberman’s IP address is the first identifier ............................. 10
`
`Haberman’s GPS information is the first identifier .................. 11
`
`Haberman discloses the claimed “second identifier” .......................... 12
`
`Haberman discloses the claimed “third identifier” ............................. 13
`
`D.
`
`E.
`
`IV.
`
`V.
`
`THE COMBINATION OF HABERMAN AND BOGER RENDERS
`OBVIOUS THE CHALLENGED CLAIMS................................................. 14
`
`NO NEXUS BETWEEN THE CHALLENGED CLAIMS AND
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS ..................................... 16
`
`A.
`
`B.
`
`Copying ............................................................................................... 16
`
`Commercial Success............................................................................ 17
`
`ii
`
`
`
`IPR2022-00310– Petitioner’s Reply
`
`C.
`
`Licenses ............................................................................................... 18
`
`VI. CONCLUSION .............................................................................................. 20
`
`iii
`
`
`
`IPR2022-00310– Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Chemours Company FC, LLC v. Daikin Industries, Ltd. 4 F.4th 1370
`1378 (Fed. Cir. 2021) .......................................................................................... 18
`
`Cirrus Design Corporation v. Fleming, 2021 WL 54778 (PTAB, Jan.
`6, 2021) ............................................................................................................... 17
`
`EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908
`(Fed.Cir.1985) ............................................................................................... 18, 19
`
`Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1224 (Fed. Cir. 2022) ................. 17
`
`In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed. Cir.
`1996) ................................................................................................................... 18
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325
`(Fed. Cir. 2004) ............................................................................................. 16, 18
`
`SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349,
`1358 (Fed.Cir.2000) ............................................................................................ 19
`
`iv
`
`
`
`IPR2022-00310– Petitioner’s Reply
`
`Exhibits
`
`Exhibit Description
`
`1001 U.S. Patent No. 9,088,868
`
`1002 Declaration of Dr. Thomas La Porta
`
`1003
`
`Prosecution History of U.S. Patent No. 9,088,868
`
`1004 U.S. Patent Publication No. 2005/0096044 to Haberman et al.
`
`1005 U.S. Patent Publication No. 2002/0159401 to Boger
`
`1006 U.S. Patent No. 6,327,535 to Evans et al.
`
`1007
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-00528-ADA, Dkt. 27,
`Agreed Scheduling Order.
`
`1008
`
`Thom Tillis letter to Andrew Hirschfeld dated November 2, 2021.
`
`1009
`
`“How reliable are trial dates relied on by the PTAB in the Fintiv
`analysis?”, Andrew Dufresne et al., 1600ptab.com (October 29,
`2021).
`
`1010
`
`Fintiv, Inc. v. Apple Inc., 6:21-CV-00926-ADA, Dkt. 41 2, Order.
`
`1011
`
`Erik Fuehrer letter to Brian R. Michalek dated November 23, 2021
`
`1012 May 26, 2022 Order Granting Apple Inc’s Petition for Writ of
`Mandamus
`
`v
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`
`As explained by the petition and preliminarily agreed to by the Board,
`
`claims 1, 2, 5, 20, 24, 25, 28 and 43 (the “Challenged Claims”) are obvious under
`
`two grounds: (1) Haberman and (2) Haberman in view of Boger. See Institution
`
`Decision, 20-21. Nothing in the Patent Owner Response (“POR") changes this
`
`determination.
`
`Patent Owner (PO) fails to address the substantive analysis of the petition or
`
`the institution decision in the Patent Owner Response (POR). Instead, for the first
`
`time, PO proposes narrow constructions for “location based event configuration”
`
`and “identifier data . . . for a wireless data record,” which PO uses to justify their
`
`position of non-obviousness. As laid out below, these constructions are both
`
`unnecessary and incorrect. Nevertheless, even construing these terms in the
`
`manner proposed by the PO, the Petitioner’s grounds still render the Challenged
`
`Claims obvious as discussed below.
`
`Finally, by failing to address the substantive analysis of the petition, PO
`
`concedes that the Petitioner’s arguments of obviousness are correct should the
`
`Board reject PO’s constructions. Accordingly, Petitioner maintains that the
`
`Challenged Claims are obvious under two distinct grounds. See Petition, 7-63.
`
`1
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`II.
`
`CLAIM CONSTRUCTION
`
`A.
`
`No construction is necessary
`
`Rather than address the substantive analysis of the Petition or Institution
`
`Decision, PO proposes constructions of “location based event configuration” and
`
`“identifier data . . . for a wireless data record” that go beyond their plain and
`
`ordinary meaning. As explained in the Petition, the challenged claims should take
`
`their ordinary and customary meaning under Phillips. Petition, 6. None of PO’s
`
`proposed constructions should be adopted in this proceeding for at least the reasons
`
`set forth below.
`
`1.
`
`“Location Based Event Configuration”
`
`As an initial matter, PO argues 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.” POR, pp. 16-
`
`17. PO provides no support for its construction in the intrinsic evidence. Instead,
`
`PO alleges that Petitioner’s expert describes this claim limitation as “reciting
`
`configuring privilege data.” POR, 16. First, this is incorrect. Petitioner’s expert
`
`opined that the headers “configuring privilege data” were merely typographical
`
`errors. EX2010, 77. The claim recites “location based event configuration” and
`
`not “privilege data.” Second, this purported characterization of the claims by
`
`expert does not supersede the intrinsic evidence that states otherwise. Specifically,
`
`at no point does the claim or the specification describe “a user specified location
`
`2
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`based event configuration” as privilege data. For this reason alone, the Board
`
`should disregard PO’s proposed construction of “location based event
`
`configuration.”
`
`Nevertheless, to the extent that “location based event configuration” can be
`
`construed as “privilege data,” PO’s construction of “privilege data” is also
`
`incorrect. PO alleges that “privilege” should be construed according to its plain
`
`and ordinary meaning, which is “a right granted to users, programs, processes, or
`
`services to perform certain functions on a computer.” POR, 22. PO then alleges
`
`that this definition is not inclusive of a “preference.” Id. To arrive at this position,
`
`PO has construed the term “preferences” in a vacuum and concluded that the
`
`definition of “privilege” does not include “preferences.” PO’s proposed narrowing
`
`of the plain and ordinary meaning of privilege to not include a preference should
`
`not be adopted.
`
`Further, the intrinsic evidence of the ’868 patent illustrates that the ’868
`
`patent defines privileged data in a manner that is broader than PO’s proposed
`
`construction. Specifically, the ’868 patent defines privileged data as any right
`
`“granted by one identity to another identity that can limit, enable, delegate or
`
`govern actions, feature(s), functionality, behavior(s), or any subset(s) thereof.”
`
`EX1001, 124:2-6. This definition is broader than PO’s proposed construction,
`
`which attempts to limit the definition of “privilege” to “a right granted to users,
`
`3
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`programs, processes, or services to perform certain functions on a computer.”
`
`Because PO’s proposed construction is narrower than the intrinsic evidence
`
`indicates, the Board should not adopt PO’s construction of privilege.
`
` Thus, PO’s construction of “location based event configuration” cannot be
`
`adopted and the Board should interpret the term according to its plain and ordinary
`
`meaning, as argued in the Petition.
`
`2.
`
`“Identifier Data . . . For A Wireless Data Record”
`
`PO alleges that the “identifier data . . . for a wireless data record” should be
`
`construed according to its plain and ordinary meaning, but then reads in several
`
`limitations from the specification to arrive at that plain and ordinary meaning.
`
`Specifically, PO alleges that a grantee identity in a privilege conveyance between a
`
`grantor and a grantee corresponds to the claimed identifier data. POR 22-23. This
`
`is incorrect. A plain reading of the claim language does not provide any
`
`indication that the identifier data corresponds to the grantee in a grantor/grantee
`
`conveyance of a privilege. Instead, PO’s proposed construction requires that this
`
`one embodiment, which spans only 13 lines of a nearly 150 page specification, be
`
`read into the claims. Such requirement goes beyond a plain and ordinary meaning
`
`of the claim language.
`
`4
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`Thus, PO’s construction of “identity data” cannot be adopted and the Board
`
`should interpret the term according to its plain and ordinary meaning, as argued in
`
`the Petition.
`
`III. HABERMAN RENDERS OBVIOUS THE CHALLENGED CLAIMS
`OF THE ’868 PATENT
`
`PO’s rebuttal is predicated on the Board adopting their constructions of
`
`“location based event configuration” and “identifier data.” Accordingly, if the
`
`Board does not adopt PO’s constructions, the instituted claims are invalid as
`
`obvious as articulated and unrebutted from the Petition. Petition, 6-63. While
`
`Petitioner submits that these constructions are both unnecessary and incorrect, even
`
`under PO’s proposed constructions, Haberman still renders the Challenged Claims
`
`obvious.
`
`A.
`
`Haberman’s Preferences are “A User Specified Location Based
`Event Configuration”
`
`As indicated above, PO argues, 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.” POR, pp. 16-
`
`17 and 26. This is incorrect for at least the reasons provided above.
`
`Nevertheless, even under this proposed construction, Haberman still teaches
`
`“configuring a user specified location based event configuration.” PO alleges that
`
`Haberman fails to teach “configuring a user specified location based event
`
`5
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`configuration” because Haberman’s preferences are not equivalent to a “privilege.”
`
`POR 26-30. With this position, PO concedes that Haberman teaches all of the
`
`privilege-related claim limitations if Haberman’s preferences are shown to be
`
`equivalent to a “privilege.” POR, 30. As outlined below, Haberman’s preferences
`
`are indeed equivalent to a “privilege,” and therefore Petitioner respectfully submits
`
`that Haberman teaches “configuring a user specified location based event
`
`configuration.” Petition, 7-32.
`
`The record includes substantial evidence to support the position that
`
`Haberman’s preferences read on the PO’s interpretation of the claimed “user
`
`specified location based event configuration.” Haberman describes that a user can
`
`store a “preferences profile” that “represents the types of informational content
`
`with which the person using the mobile device desires to be presented.” EX1004
`
`[0025]. “[T]he stored preferences profile indicates types of informational content
`
`with which the person using the mobile device desires to be presented, i.e., that
`
`which is preferred.” EX1004, [0176], [0181]; Petition, 13-14. As described in
`
`further detail below, these preferences are not optional. For example, Haberman
`
`teaches that “informational content of a broadcast is not presented for which the
`
`informational content is determined not to be preferred informational content.”
`
`EX1004, [0179]; Petition, 8-9; 13-19.
`
`6
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`Upon receiving an incoming transmission, mobile device 108 searches the
`
`preferences profile to determine if there is a preference to present content in the
`
`transmission. For example, Haberman teaches that the mobile device scans each
`
`respective broadcast “to determine if the informational content thereof matches
`
`informational content identified as being preferred in step 902.” EX1004, [0168];
`
`Petition, 24.
`
`1.
`
`Haberman’s Preferences are not Optional
`
`The preferences do not merely indicate that the user prefers to view certain
`
`content over other content (e.g., content A over content B); instead, Haberman’s
`
`preferences dictate whether the mobile device is permitted to present that type of
`
`content; or, put another way, Haberman’s preferences dictate whether the sending
`
`device is permitted to have their content presented to the user on the mobile device.
`
`For example, Haberman teaches “informational content of a broadcast is not
`
`presented for which the informational content is determined not to be preferred
`
`informational content.” EX1004, [0179]. In other words, Haberman’s explicitly
`
`provides that if a user defines a preference for presenting content A, and only
`
`content type A, the mobile device is not permitted to present content type B.
`
`Petition, 8, 14, 24.
`
`Accordingly, Haberman clearly indicates that the preferences dictate
`
`whether the mobile device is permitted to present the user with certain content or,
`
`7
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`taken another way, whether the sending device is permitted to have their content
`
`presented on the mobile device.
`
`Thus, for this reason alone, Haberman’s preferences are “a user specified
`
`location based event configuration.”
`
`B.
`
`Haberman discloses “identifier data . . . for a wireless data
`record”
`
`As provided in the Petition, Haberman discloses “identifier data . . . for a
`
`wireless data record.” See Petition, 24-26. PO has failed to rebut this position and
`
`only relies on their narrow construction that the identifier data must be the grantee
`
`identity in a privilege conveyance from a grantor to a grantee. Even under this
`
`narrow construction, the record clearly indicates that Haberman teaches such
`
`functionality.
`
`1.
`
`Haberman’s User Grants the Sender a Right
`
`Haberman describes that a user can store a “preferences profile” (i.e.,
`
`privilege data) that “represents the types of informational content with which the
`
`person using the mobile device desires to be presented.” EX1004 [0025]. “[T]he
`
`stored preferences profile indicates types of informational content with which the
`
`person using the mobile device desires to be presented, i.e., that which is
`
`preferred.” EX1004, [0176], [0181]; EX1002, ¶70; Petition, 13-14.
`
`The types of informational content with which the person using the mobile
`
`device desires to be presented can be content based or party based. For example,
`
`8
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`Haberman teaches that the “preferences profile may include a broadcaster
`
`identification by which broadcasts are screened or a transmitting party
`
`identification by which broadcasts are screened.” EX1004, [0026]. The
`
`broadcaster identification “represents the author of the informational content of a
`
`broadcast.” EX1004, [0027]. The transmitting party identification “represents the
`
`party of the transmitter by which the broadcast is transmitted in the transmission.”
`
`Id; Petition, 9, 19-21, 48.
`
`By indicating in their preferences profile that a broadcaster identification or
`
`a transmitting party identification is preferred, the user is granting the sending
`
`device (e.g., the broadcaster identification or the transmitting party identification)
`
`the right to present their information on the user’s device. For example, Haberman
`
`provides “for each respective broadcast that is received, screening broadcaster
`
`identifications and broadcast identifications against the received preferences
`
`profile to determine whether informational content of a respective broadcast is to
`
`be stored within the mobile device.” Id; Petition, 9, 21, 25.
`
`Accordingly, even under PO’s narrow construction, Haberman still discloses
`
`that claimed destination identity.
`
`C.
`
`Haberman discloses the claimed “first identifier”
`
`As provided in the Petition, Haberman discloses a “first identifier.” See
`
`Petition, 17-18. In particular, the Petitioner has laid out two examples in
`
`9
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`Haberman that read on the claimed first identifier: (1) an IP address of the mobile
`
`device; and (2) GPS coordinates of the mobile device. PO has failed to rebut these
`
`positions. Petition, 16-19.
`
`1.
`
`Haberman’s IP address is the first identifier
`
`As an initial matter, Petitioner submits that both the PO and the Board has
`
`misconstrued Petitioner’s position in the Petition. Petitioner previously submitted
`
`that the IP address of the mobile device, and not the Internet address, is one
`
`example of the claimed “first identifier.” For example, Petitioner provided that the
`
`“internal ID (first identifier) refers to an identifier that uniquely identifies the
`
`mobile device . . . such as the IP address.” Petition, 17. In the Institution
`
`Decision, the Board has incorrectly interpreted Petitioner’s argument by
`
`substituting “Internet address” for the IP address. Institution Decision, 16
`
`(“Petitioner presents evidence that Haberman teaches an internal ID, such as an
`
`Internet address . . . .”). Thus, to clarify, the Petitioner’s position is not that the
`
`Internet address referenced in Haberman is the first identifier. Instead, the
`
`Petitioner’s position is that Haberman discloses that the mobile device is an
`
`Internet-enabled device that is capable of downloading content from an Internet
`
`address, and thus, the mobile device must have an IP address, which identifies the
`
`mobile device. Petition, 17-18.
`
`10
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`As indicated in the Petition, this IP address is equivalent to the claimed first
`
`identifier. In particular, the IP address identifies the mobile device. For example,
`
`Haberman teaches “the informational content may include, inter alia, an Internet
`
`address. In this regard, the mobile device preferably is Internet-enabled, whereby
`
`additional informational content may be downloaded from the Internet address
`
`using the mobile device.” Petition, 17 (citing EX1004, [0132]).
`
`Thus, Haberman teaches the first identifier.
`
`2.
`
`Haberman’s GPS information is the first identifier
`
`PO incorrectly submits that the GPS information of Haberman is not
`
`indicative of the mobile data processing system because “GPS information . . .
`
`does nothing more than indicate a longitude and latitude for the GPS enabled
`
`device.” POR, 33-34. This is completely incorrect. The instituted claims only
`
`require that the first identifier be “indicative of the mobile data processing system.”
`
`The GPS coordinates of a device is certainly information indicative of the mobile
`
`data processing system. Petition, 18-19.
`
`Further, PO also submits that the GPS information is not utilized in
`
`comparison of configured privilege data. POR, 34. This too is incorrect.
`
`Haberman explicitly teaches that mobile device 108 determines a “proximity of the
`
`wireless transmitter of each transmission that is received” and that the mobile
`
`device includes GPS functionality to obtain GPS data. Petition, 18; EX1004,
`
`11
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`
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`IPR2022-00310 – Petitioner’s Reply
`
`[0029]; [0034]. Thus, Haberman’s mobile device can compare the GPS
`
`information “with the positional data contained in the transmission in determining
`
`proximity of the wireless transmitter.” Id. Such functionality allows the user of
`
`mobile device 108 to predefine a threshold proximity similar to the preferences in
`
`the preferences profile. For example, Haberman teaches “the method includes the
`
`step of determining, for each transmission that is received, those transmitters that
`
`are within a predefined proximity to the mobile device at the time of reception of
`
`the transmission, and wherein the scanning includes scanning only those
`
`transmissions that are received from transmitters that are determined to be within
`
`the predetermined proximity to the mobile device.” EX1004, [0047]. Therefore,
`
`Petitioner maintains that because the GPS information is indicative of the mobile
`
`device and because Haberman’s mobile device 108 utilizes proximity as a
`
`preference, Haberman’s GPS information is equivalent to the claimed first
`
`identifier. Petition, 18-19.
`
`Accordingly, Haberman’s GPS information is the “first identifier.”
`
`D.
`
`Haberman discloses the claimed “second identifier”
`
`PO incorrectly submits that Haberman fails to disclose the claimed “second
`
`identifier” because “the identifiers are properly understood to related[sic] to
`
`configured privilege data” and that “Haberman fails to describe . . . the second
`
`[identifier] . . . because it does not describe that these constitute privilege data.”
`
`12
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`POR 34. As indicated above in Section III(A), Haberman’s preference profile
`
`reads on the claimed “user configured location based event configuration.” Thus,
`
`PO’s position is incorrect. Petition, 19-20.
`
`E.
`
`Haberman discloses the claimed “third identifier”
`
`PO also incorrectly submits that Haberman fails to disclose the claimed
`
`“third identifier” because “the identifiers are properly understood to related[sic] to
`
`configured privilege data” and that “Haberman fails to describe . . . the third
`
`identifier because it does not describe that these constitute privilege data.” POR
`
`34. Similar to the “second identifier,” as indicated above in Section III(A),
`
`Haberman’s preference profile reads on the claimed “user configured location
`
`based event configuration.” Thus, PO’s position is incorrect. Petition, 20-21.
`
`PO further alleges that Haberman fails to disclose the “third identifier”
`
`because the “transmitting party identification” and the “broadcaster identification”
`
`identify different devices. POR, 35. This too is incorrect. Haberman discloses
`
`that “[e]ach transmission contains a transmitting party identification, wherein the
`
`transmitting party identification represents the party of the transmitter by which the
`
`broadcast is transmitted in the transmission. Furthermore, each broadcast includes
`
`both informational content for presentation to a person and broadcast-identifying
`
`information, wherein the broadcast-identifying information includes a broadcaster
`
`identification . . . the broadcaster identification represents the author of the
`
`13
`
`
`
`IPR2022-00310 – Petitioner’s Reply
`
`informational content of a broadcast.” EX1004, [0027]. There is simply no
`
`suggestion in Haberman that the transmitting party identification and the
`
`broadcaster identification identify different devices. Petition, 19-25.
`
`Furthermore, even assuming that the transmitting party identification and the
`
`broadcast-identifying information do indeed identify different devices (which
`
`Petitioner does not concede), such interpretation would be consistent with the
`
`claim language. The Challenged Claims only require that the second identifier be
`
`indicative of originating data processing system identity data of the wireless data
`
`record and the third identifier be indicative of the originating data processing
`
`system of the wireless data record. The device authoring the informational content
`
`of the transmission and the device transmitting the informational content can
`
`constitute devices of an overarching originating data processing system. The
`
`claims do not require the originating data processing system to include a single
`
`computing device. Petition, 18-25.
`
`Accordingly, Haberman teaches the claimed third identifier.
`
`IV. THE COMBINATION OF HABERMAN AND BOGER RENDERS
`OBVIOUS THE CHALLENGED CLAIMS
`
`PO does not dispute the Petitioner’s position that the combination of
`
`Haberman and of Boger renders the challenged claims obvious. Instead, PO only
`
`argues that a person skilled in the art would not have combined Boger with
`
`Haberman. In particular, PO argues that Boger’s “objectives are sharply contrast
`
`14
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`IPR2022-00310 – Petitioner’s Reply
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`to those of Haberman” because Boger utilizes a piconet and Haberman allegedly
`
`states that no network is created between a transmitter and mobile devices. POR,
`
`36-38. This is incorrect.
`
`Haberman provides that the wireless transmitter can send a transmission,
`
`where the transmission “may include a cellular transmission; a WiMAX
`
`transmission; a WiFi transmission; a Bluetooth transmission; or a satellite
`
`transmission.” EX1004, [0073]. For this reason alone, one skilled in the art would
`
`be motivated to combine Boger’s teachings that describe a typical arrangement of a
`
`Bluetooth network and a transmission in a Bluetooth network with the system of
`
`Haberman. Petition, 35-43.
`
`Further, PO’s basis for this conclusion is rooted in a misinterpretation of
`
`Haberman. PO alleges that Haberman states that “no network is created” between
`
`the wireless transmitter and the mobile device because Haberman provides that “no
`
`IP address is assigned to the mobile device 108 by the transmitter 102 as occurs
`
`when a wireless device registers with a WAN computer network.” POR, 37 (citing
`
`EX1004, [0019]). This is incorrect. As those skilled in the art understand, the
`
`cited portion of Haberman references an embodiment in which a wide area
`
`network (WAN) is implemented. This embodiment in Haberman is one example
`
`of a wireless communication network that may be implemented by Haberman. As
`
`provided above, Haberman may also utilize a Bluetooth network, which is not a
`
`15
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`IPR2022-00310 – Petitioner’s Reply
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`WAN. When Haberman describes utilizing a Bluetooth network, a network is
`
`created. Thus, PO’s citation to para. [0019] of Haberman has no bearing on the
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`Bluetooth embodiment. Petition, 35-43.
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`Accordingly, the Petitioner maintains that the combination of Haberman and
`
`Boger is proper and that the combination of Haberman and Boger renders obvious
`
`the challenged claims.
`
`V.
`
`NO NEXUS BETWEEN THE CHALLENGED CLAIMS AND
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS
`
`PO has failed to carry their burden to provide evidence for at least the
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`following objective indicia of non-obviousness: (1) copying of their claimed
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`invention; and (2) commercial success of their claimed invention; and has failed to
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`show a nexus between the challenged claims and the objective indicia of non-
`
`obviousness.
`
`A.
`
`Copying
`
`PO has failed to provide sufficient evidence of Petitioner copying PO’s
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`patented technology. It is established that “[o]ur case law holds that copying
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`requires evidence of efforts to replicate a specific product, which may be
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`demonstrated through internal company documents, direct evidence such as
`
`disassembling a patented prototype, photographing its features, and using the
`
`photograph as a blueprint to build a replica, or access to the patented product
`
`combined with substantial similarity to the patented product. See Iron Grip Barbell
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`16
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`IPR2022-00310 – Petitioner’s Reply
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`Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). Mere
`
`speculation that copying occurred is insufficient evidence to support a finding of
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`copying. See Cirrus Design Corporation v. Fleming, 2021 WL 54778 (PTAB, Jan.
`
`6, 2021) (affirmed by Fleming v. Cirrus Design Corp., 28 F.4th 1214, 1224 (Fed.
`
`Cir. 2022)).
`
`Here, PO has failed to any provide evidence of efforts to copy a product that
`
`embodies PO’s claimed invention. Instead, PO’s only evidence of copying
`
`includes several unsolicited emails sent by inventor William Johnson to an agent of
`
`Petitioner with a list of applications, including the then pending ’313 application,
`
`associated with PO’s LBX technology. See EX2012. These unsolicited emails
`
`fail to provide any evidence of actual copying efforts by the Petitioner; instead,
`
`these emails only show unsolicited attempts by the PO seeking to monetize their
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`portfolio. Furthermore, PO has failed to show evidence of a commercial product
`
`that Petitioner could have copied.
`
` Therefore, PO has failed to carry its burden of showing copying.
`
`B.
`
`Commercial Success
`
`PO has failed to show commercial success of their patented invention.
`
`In Ex Parte Proceedings before the Patent and Trademark Office, an
`
`applicant must show that the claimed features were responsible for the commercial
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`success of an article, otherwise, the applicant has not carried their burden to prove
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`17
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`IPR2022-00310 – Petitioner’s Reply
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`that a nexus existed between any commercial success and the novel features of the
`
`claimed invention. In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1690 (Fed.
`
`Cir. 1996). While not limited to such information, a PO usually demonstrates
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`commercial success through economic data or sales figures. See Chemours
`
`Company FC, LLC v. Daikin Industries, Ltd. 4 F.4th 1370 1378 (Fed. Cir. 2021).
`
`Here, PO has failed to provide any evidence of commercial success. PO has
`
`failed to offer any economic data or sales figures directed to the commercial
`
`success of iBeacon. In fact, PO provides no evidence or citations at all. Instead,
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`PO only provides a conclusory statement that the commercial success is directly
`
`attributable to the combination of features.
`
`Therefore, PO has failed to carry its burden of establishing commercial
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`success.
`
`C.
`
`Licenses
`
`Although licenses are provided in a separate section, licenses are typically
`
`used as evidence to show commercial success. See Iron Grip Barbell, 392 F.3d at
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`1324. It is well established that “[o]ur cases specifically require affirmative
`
`evidence of nexus where the evidence of commercial success presented is a
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`license, because it is often ‘cheaper to take licenses than to defend infringement
`
`suits.’” See id. (citing EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 908
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`(Fed.Cir.1985)). “Without a showing of nexus, ‘the mere existence of ... licenses
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`18
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`IPR2022-00310 – Petitioner’s Reply
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`is insufficient to overcome the conclusion of obviousness’ when there is a strong
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`prima facie case of obviousness.” See id. (citing SIBIA Neurosciences, Inc. v.
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`Cadus Pharm. Corp., 225 F.3d 1349, 1358 (Fed.Cir.2000)).
`
`PO provides three patent license agreements to support its position. POR
`
`46-47. Eac
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