UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC.,
`APPLE INC.
`
`Petitioners,
`
`- vs. -
`
`BillJCo, LLC,
`
`Patent Owner
`
`_____________________________
`
`EXPERT DECLARATION OF WILLIAM R. MICHALSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 10,477,994
`
`Petitioners' Ex. 1004, Page 1 of 89
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00420
`
`
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC.,
`APPLE INC.
`
`Petitioners,
`
`- vs. -
`
`BillJCo, LLC,
`
`Patent Owner
`
`_____________________________
`
`EXPERT DECLARATION OF WILLIAM R. MICHALSON, PH.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 10,477,994
`
`Petitioners' Ex. 1004, Page 1 of 89
`Hewlett Packard Enterprise Co. et al. v. BillJCo, LLC
`IPR2022-00420
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`
`
`Declaration of William R. Michalson
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION AND QUALIFICATIONS ....................................1
`
`UNDERSTANDING OF THE GOVERNING LAW...........................4
`
`Invalidity by Obviousness ..............................................................4
`
`Interpreting Claims Before the Patent Office.................................7
`
`Materials Relied on in Forming My Opinions ...............................8
`
`III. BACKGROUND OF THE ART.........................................................10
`
`Device-Locating Concepts, Including Periodically Beaconing
`Data to Locate Mobile Devices, Were Well-Known Long
`Before the ’994 Patent ..................................................................10
`
`IV. OVERVIEW OF THE ’994 PATENT................................................13
`
`Specification of the ’994 Patent....................................................13
`
`The Relevant Claims of the ’994 Patent.......................................20
`
`The Prosecution History of the ’994 Patent .................................26
`
`The Priority Date of the ’994 Patent.............................................26
`
`V.
`
`STATE OF THE ART PRIOR TO THE ’994 PATENT....................27
`
`The Person of Ordinary Skill in the Art .......................................27
`
`A POSITA Would Have Known of Multiple Ways to Track and
`Locate Mobile Devices.................................................................27
`
`Wrappe..........................................................................................30
`
`Philips ...........................................................................................35
`
`Weiser ...........................................................................................38
`
`Evans.............................................................................................41
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`i
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`Declaration of William R. Michalson
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`VI. CLAIM CONSTRUCTION................................................................43
`
`VII. SUMMARY OF OPINIONS ..............................................................43
`
`VIII. CLAIMS 1-3, 6, 8-10, 13-16, AND 19 ARE OBVIOUS OVER
`THE PRIOR ART ...............................................................................44
`
`GROUND 1: Claims 1-2, 6, 8-9 13-15, and 19 are Unpatentable
`as Obvious Over Wrappe and Philips...........................................44
`
`Analysis of the Claims and Prior Art .................................44
`
`Motivation to Combine and Combining Wrappe and
`Philips.................................................................................69
`
`GROUND 2: Claims 3, 10, and 16 are Unpatentable as Obvious
`Over Wrappe, Philips, and Weiser ...............................................76
`
`Claims 3, 10, and 16...........................................................76
`
`Motivation to Combine and Combining Wrappe, Philips,
`and Weiser..........................................................................78
`
`GROUNDS 3-4: Grounds 1-2 Each Further in View of Evans ...81
`
`IX. OBJECTIVE INDICIA OF NON-OBVIOUSNESS ..........................85
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`ii
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`I, William R. Michalson, hereby declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained on behalf of Hewlett Packard Enterprise Co.
`
`(“HPE”), Aruba Networks, LLC (“Aruba”), Cisco Systems, Inc. (“Cisco”), and
`
`Apple Inc. (“Apple”) (collectively, “Petitioners”) to provide my technical review,
`
`analysis, insights, and opinions concerning the validity of claims 1-3, 6, 8-10, 13-
`
`16, and 19 of U.S. Patent No. 10,477,994 (EX1001; “the ’994 Patent”) entitled
`
`“System and method for location based exchanges of data facilitiating [sic]
`
`distributed locational applications.” I understand that the ’994 patent is assigned to
`
`BillJCo LLC. (“BillJCo”).
`
`2.
`
`I am a professor in the Department of Robotics Engineering at the
`
`Worcester Polytechnic Institute, where I currently hold the position of Professor of
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`Robotics Engineering. I was a founding member of the faculty of the Robotics
`
`Program. I have held an appointment as a Professor of Electrical and Computer
`
`Engineering since 1991 and currently hold appointments as a Professor in the
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`Departments of Electrical and Computer Engineering, Computer Science, and
`
`Mechanical Engineering, in addition to my appointment to Robotics Engineering. I
`
`have been a faculty member at Worcester Polytechnic Institute since 1990.
`
`3.
`
`My emphasis at Worcester Polytechnic Institute is on teaching and
`
`conducting research on navigation, communications, and computer system design. I
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`1
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`have taught classes related to the fundamentals of navigation systems, robotics,
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`computer architecture, embedded system designs, advanced system architectures,
`
`and real-time system designs.
`
`4.
`
`Prior to joining Worcester Polytechnic Institute, I was employed as an
`
`engineer at Raytheon Company from 1981 until 1991. During that time, I worked on
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`various projects involving hardware and software design, including those relating to
`
`satellite, airborne, and ground-based systems for navigation and communications. I
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`have worked extensively in software programming, including during my
`
`employment at Raytheon and in a variety of projects relating to navigation and
`
`communications systems at Worcester Polytechnic Institute.
`
`5.
`
`I received a Ph.D. in electrical engineering from Worcester Polytechnic
`
`Institute in 1989. Before that, I received a M.S. degree in electrical engineering from
`
`Worcester Polytechnic Institute in 1985, and a B.S. degree in electrical engineering
`
`from Syracuse University in 1981.
`
`6.
`
`I have been issued multiple patents in the fields of geolocation devices
`
`and handheld Global Positioning System (“GPS”) devices. I have authored or co-
`
`authored over 100 original articles in the fields of communication networks,
`
`precision location systems, and GPS, including more than 15 journal papers and 90
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`conference papers. I am a Senior Member of the Institute of Electrical and
`
`Electronics Engineers (IEEE).
`
`2
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`7.
`
`A large part of my research work has involved GPS and GPS-related
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`technologies. I have been involved in numerous academic and consulting projects
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`involving navigation technologies and their association with geographic information
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`system technologies. In the early 2000s, I was involved with the development of
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`tracking and communications for soldiers operating in indoor and urban
`
`environments, as well as for tracking firefighters inside buildings and in other
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`locations where GPS is unreliable or unavailable. Some of these systems involved
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`the development of ad hoc networks of mobile nodes using technologies such as
`
`WiFi (802.11), Bluetooth, or Zigbee to allow determining the relative positions of
`
`nodes in the network and to communicate data to nodes in the network. In other
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`examples, in 2003, I worked on an academic project relating to a container tracking
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`system which explored the application of tracking and communication technologies
`
`to track shipping containers. Further, in 2000, I worked on an automotive based
`
`system which combined GPS and map data in an automotive environment. In
`
`addition, in 1996, I worked on a system that combined GPS and radio
`
`communications to remotely identify hazards to an engineer operating a freight train.
`
`In 1995, I worked on a differential GPS system that combined GP and radio
`
`technologies that determined the path traveled by off-road vehicles during forest
`
`operations. As a consultant, I have worked with the combination of GPS and radio
`
`communications in technologies relating to the transfer of traffic information to GPS
`
`3
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`devices in a vehicle, space shuttle docking operations, the combination of GPS and
`
`cellular communications for the tracking of individuals, and map-based handheld
`
`tracking devices.
`
`8.
`
`I attach as Exhibit 1003 is my curriculum vitae, which includes a more
`
`detailed list of my qualifications. My curriculum vitae also contains a list of all other
`
`cases in which, during the previous 4 years, I testified as an expert at trial or by
`
`deposition. My work on this case is being billed at a rate of $525 per hour, with
`
`reimbursement for actual expenses. I have no direct financial interest in the dispute
`
`between the Petitioners and BillJCo, and my compensation is not contingent upon
`
`the outcome of this inter partes review.
`
`II.
`
`UNDERSTANDING OF THE GOVERNING LAW
`Invalidity by Obviousness
`I understand that obviousness is analyzed from the perspective of a
`
`9.
`
`person of ordinary skill in the art (“POSITA”) at the time of the alleged invention. I
`
`also understand that a POSITA is presumed to have been aware of all pertinent prior
`
`art at the time of the alleged invention.
`
`10.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claimed invention as a whole would have
`
`been obvious to a POSITA in view of the prior art, and in light of the general
`
`knowledge in the art at the time the invention was made. I also understand that the
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`4
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`invention may be deemed obvious when a POSITA would have reached the claimed
`
`invention through routine experimentation.
`
`11.
`
`I understand that obviousness can be established by combining or
`
`modifying the disclosures of the prior art to achieve the claimed invention. It is also
`
`my understanding that where there is a reason to modify or combine the prior art to
`
`achieve the claimed invention, there must also be a reasonable expectation of success
`
`in so doing to render the claimed invention obvious. I understand that the reason to
`
`combine prior art references can come from a variety of sources, not just the prior
`
`art itself or the specific problem the patentee was trying to solve. I also understand
`
`that the references themselves need not provide a specific hint or suggestion of the
`
`alteration needed to arrive at the claimed invention; the analysis may include
`
`recourse to logic, judgment, and common sense available to a POSITA.
`
`12.
`
`I understand that when there is some recognized reason to solve a
`
`problem, and there are a finite number of identified, predictable solutions, a POSITA
`
`has good reason to pursue the known options within his or her technical grasp. If
`
`such an approach leads to the anticipated success, it is likely the product not of
`
`innovation but of ordinary skill and common sense. In such a circumstance, when a
`
`patent simply arranges old elements with each performing the same function it had
`
`been known to perform and yields no more than one would expect from such an
`
`arrangement, the combination is obvious.
`
`5
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`13.
`
`I understand that when considering the obviousness of an invention,
`
`one should also consider whether there are any objective indicia that support the
`
`non-obviousness of the invention. I further understand that objective indicia of non-
`
`obviousness include failure of others, copying, unexpected results, information that
`
`“teaches away” from the claimed subject matter, perception in the industry,
`
`commercial success, and long-felt but unmet need. I also understand that in order for
`
`objective indicia of non-obviousness to be applicable, the indicia must have some
`
`sort of nexus to the subject matter in the claim that was not known in the art. I
`
`understand that this nexus includes a factual connection between the patentable
`
`subject matter of the claim and the objective indicia alleged. I also understand that
`
`an independently made invention that is made within a comparatively short period
`
`of time is evidence that the claimed invention was the product of ordinary skill.
`
`14.
`
`Finally, I understand that patent examiners at the U.S. Patent and
`
`Trademark Office (“USPTO”) rely upon certain exemplary rationales in reviewing
`
`patent applications to understand whether the subject matter of the claims is obvious.
`
`I understand that the following is the list of exemplary rationales relied upon by
`
`patent examiners at the USPTO:
`
`(A) Combining prior art elements according to known methods to
`
`yield predictable results;
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`(B) Simple substitution of one known element for another to obtain
`
`predictable results;
`
`(C) Use of a known technique to improve similar devices (methods,
`
`or products) in the same way;
`
`(D) Applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results;
`
`(E)
`
`“Obvious to try” – Choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
`(F) Known work in one field of endeavor may prompt variations of
`
`it for use in either the same field or a different one based on
`
`design incentives or other market forces if the variations are
`
`predictable to one of ordinary skill in the art; and
`
`(G) Some teaching, suggestion, or motivation in the prior art that
`
`would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at
`
`the claimed invention.
`
`Interpreting Claims Before the Patent Office
`I understand that inter partes review is a proceeding before the USPTO
`
`15.
`
`for evaluating the validity of issued patent claims. I understand that, in an inter
`
`partes review, a claim term is interpreted in a manner consistent with the standard
`
`7
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`used in patent litigation, as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.
`
`Cir. 2005) (en banc). That standard generally construes the claims according to their
`
`“ordinary and customary” meaning in view of the claim language, specification, and
`
`file history, and where applicable, relevant other evidence.
`
`16.
`
`I understand that a patent’s “specification” includes all the figures,
`
`discussion, and claims within the patent. I understand that the USPTO will look to
`
`the specification and prosecution history to see if there is a definition for a given
`
`claim term, and if not, will apply the ordinary and customary meaning from the
`
`perspective of a POSITA at the time in which the alleged invention was made.
`
`Materials Relied on in Forming My Opinions
`In forming my opinions expressed in this declaration, I have relied on
`
`17.
`
`my own knowledge, experience, and expertise, as well as the knowledge of a
`
`POSITA in the relevant timeframe. In addition, I have reviewed and relied upon all
`
`documents referenced in this declaration including the following materials:
`
`• U.S. Patent No. 10,477,994 (“the ’994 Patent”) (EX1001);
`
`• Prosecution History of the ’994 Patent (EX1002);
`
`• PCT International Publication No. WO 2005/106523 (“Wrappe”)
`(EX1005);
`
`• U.S. Patent Application Publication No. 2007/0030824 (“Ribaudo”)
`(EX1006);
`
`• U.S. Patent No. 6,327,535 (“Evans”) (EX1007);
`
`8
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`• PCT International Publication No. WO 02/15601 A2 to Koninklijke
`Philips N.V. (“Philips”) (EX1013);
`
`• PCT International Publication No. WO 2006/005979 A1 to Nokia
`Corporation (“Nokia”) (EX1014);
`
`• UK Patent Application No. 0015454.2 (filed Jun. 26, 2000)
`(EX1015);
`
`• U.S. Patent Application Publication No. 2007/0136132 to Weiser et
`al. (“Weiser”) (EX1016);
`
`• PCT International Publication No. WO 02/078381 to Obnex
`Technologies HB (“Obnex”) (EX1017);
`
`• U.S. Patent No. 7,155,210 to Benson (“Benson”) (EX1018);
`
`• U.S. Patent No. 7,324,462 to Page et al. (“Page”) (EX1019);
`
`• U.S. Patent Application Publication No. 2004/0252197 to Fraley et
`al. (“Fraley”) (EX1020);
`
`• U.S. Patent No. 8,594,678 to Livneh (“Livneh”) (EX1021);
`
`• Radar and LORAN, July 1959 Popular Electronics, Clark E. Jackson
`(“LORAN”) (EX1022);
`
`• U.S. Patent No. 7,123,926 to Himmelstein (“Himmelstein”)
`(EX1023);
`
`• R. Gupta and S. R. Das, “Tracking moving targets in a smart sensor
`network,” 2003 IEEE 58th Vehicular Technology Conference. VTC
`2003-Fall (IEEE Cat. No. 03CH37484), 2003, pp. 3035-3039 Vol.
`5, doi: 10.1109/VETECF.2003.1286181 (“Gupta”) (EX1033); and
`
`• N. Bulusu, J. Heidemann, and D. Estrin, “GPS-less low cost outdoor
`localization
`for
`very
`small
`devices,”
`IEEE Personal
`Communications, Special
`Issue on “Smart Spaces and
`Environments,” vol. 7, no. 5, pp. 28–34, 2000 (“Bulusu”) (EX1034).
`
`9
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`III. BACKGROUND OF THE ART
`Device-Locating Concepts, Including Periodically Beaconing Data to
`Locate Mobile Devices, Were Well-Known Long Before the ’994
`Patent
`18. As the use of mobile devices became increasingly common in the early
`
`2000s, many approaches were developed for tracking and locating these devices.
`
`While some mobile devices were equipped with technology to track the device’s
`
`location (e.g., GPS), many devices were not.
`
`19. One common technique for locating devices involved using signals
`
`periodically sent (or “beaconed”) by nearby devices and using information conveyed
`
`by those signals to determine the device’s location. Ex. 1005, Abstract; EX1017,
`
`Abstract, pp. 4, 11. Examples of systems and methods of using beaconed data to aid
`
`in location determinations (among other things) include the Nokia, Philips, Wrappe,
`
`and Ribaudo references. See EX1005, EX1006, EX1013, EX1014.
`
`20. As shown, for example, in the Ribaudo reference, users’ mobile devices
`
`like PDAs and cell phones were also used for beaconing signals used for determining
`
`location. Ex. 1006, ¶[0077]. It was also known to use other devices, such as cell
`
`towers, access points, or other wireless networking devices, such as Wrappe’s
`
`“microcell beacons,” to transmit beaconed signals to aid in position determination.
`
`EX1005, Abstract, ¶¶[0009]-[0010], [0033]-[0035], [0039]-[0050].
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`21.
`
`The device that receives the beaconed signal may use the signal to
`
`ascertain information about its location. For example, each mobile device may
`
`beacon a signal to nearby mobile devices that identifies the beaconing mobile device
`
`to the receiving mobile device and can be used to inform the receiving mobile device
`
`of the distance between the two devices. See EX1006, ¶¶[0007], [0026], [0057].
`
`Alternatively, a device may beacon data, such as a “Store ID” or an identification
`
`code, such as at a bus stop, to nearby mobile devices so those devices can use that
`
`data as part of a process for identifying the device’s location. EX1005, ¶[0046]
`
`(referring to “the store ID broadcast by beacon 545”); EX1017, pp. 4 (describing a
`
`beacon using Bluetooth technology), 14 (describing beaconing data which causes a
`
`mobile device to send an SMS message including “an identification code specific to
`
`the location of the beacon, i.e. a particular bus stop or taxi station”).
`
`22. With the adoption and spread of techniques for determining the location
`
`of mobile devices, it became desirable and more common to build functionality for
`
`the mobile devices that would allow those devices to make use of the determined
`
`location. For instance, applications installed on the receiving mobile devices could
`
`customize the application user’s experience based on the device’s location. See, e.g.,
`
`EX1005, ¶[0044] (“If a mobile station can determine whether or not it is within the
`
`site, location based service information can be provided to the mobile station
`
`depending whether or not the mobile station is within the site through the cellular
`
`11
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`communication link of the mobile station. For example, when the mobile station
`
`enters the site, the base station may transmit information (e.g., coupon, special of the
`
`day, or a web page) about the site to the mobile station (e.g., according to the
`
`preferences of the user of the mobile station).”); EX1007, 17:35-40 (“As shown, the
`
`applications 608 can make calls to the device to ask the device where it is located.
`
`The device is configured to receive the calls and respond in an appropriate manner
`
`to the application. Once the application has the device's location information, it can
`
`then render location specific services to the device.”); EX1013, 1:20-2:15
`
`(discussing prior art disclosure in which “people carry[] personal communication
`
`and web browsing devices [and] interact[]with services that are location specific and
`
`customized to the user.”)
`
`23.
`
`In the example described above (i.e., the network of mobile devices that
`
`each beacon a signal to nearby devices), an application on the receiving mobile
`
`device could use the knowledge of the location of other devices to present content
`
`to the user of the device, such as a notification that other devices are nearby and
`
`information about the users associated with those devices (e.g., user profile
`
`information). EX1006, ¶¶[0026], [0087]. Alternatively, the beacon could be used to
`
`broadcast site-specific information to the mobile devices such as an advertisement,
`
`EX1018, Abstract, 4:4-7, or hot badges in match making application, EX1013,
`
`11:33-12:7.
`
`12
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`IV. OVERVIEW OF THE ’994 PATENT
`Specification of the ’994 Patent
`The ’994 Patent “relates generally to location based services for mobile
`
`24.
`
`data processing systems, and more particularly to location based exchanges of data
`
`between distributed mobile data processing systems for locational applications.”
`
`EX1001, 1:43-47.
`
`25.
`
`In the systems and methods disclosed in the ’994 Patent, “[a] common
`
`connected service is not required for location based functionality and features.” Id.,
`
`1:47-48. Instead, “[l]ocation based exchanges of data between distributed mobile
`
`data processing systems enable location based features and functionality in a peer to
`
`peer manner.” Id., 1:48-51.
`
`26.
`
`The ’994 Patent describes how the rise of the internet led to a number
`
`of new service offerings, including services provided to “mobile data processing
`
`systems” or “MSs.” EX1001, 2:7-23. Common examples of MSs include cell
`
`phones, laptops, and personal computers. EX1001, 3:35-44.
`
`27.
`
`The ’994 Patent states that, traditionally, companies offering services
`
`to a MS acted as “the intermediary point” between users, employing “centralized
`
`processing” and “centralized maintaining of data.” EX1001, 1:62-2:3. The ’994
`
`Patent notes several drawbacks of this centralized approach, including possible poor
`
`performance, costs of centralized storage of users’ data, and security or privacy
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`concerns of storing user information in a centralized database. EX1001, 2:24-53;
`
`3:3-19; 4:59-5:3.
`
`28.
`
`The ’994 Patent states that “[i]t is inevitable that as users are hungry for
`
`more features and functionality on their mobile data processing systems, processing
`
`will be moved closer to the device for optimal performance and infrastructure cost
`
`savings.” EX1001, 2:49-53.
`
`29.
`
`Thus, the ’994 Patent discloses a network of “location-based
`
`exchanges” or “LBXs,” which the ’994 Patent proposes as a superior alternative to
`
`the “centralized” approach to providing data to a MS. In the system discussed in the
`
`’994 Patent, certain processing is distributed throughout the network of devices (or
`
`“decentralized”) by “push[ing] intelligence out to the mobile data processing
`
`systems themselves.” EX1001, 3:20-26. The ’994 Patent describes techniques to
`
`allow users of MSs (e.g., mobile devices) to take advantage of “location dependent
`
`features and functionality” without having their location tracked and stored by a
`
`centralized service provider. EX1001, 4:8-13.
`
`30.
`
`Figures 1B and 1C of the ’994 Patent illustrate the purported difference
`
`between decentralized and centralized approaches. In the decentralized approach,
`
`shown in Figure 1B below (left), each of the five MSs (denoted by the number 2)
`
`communicates directly with the other MSs in its vicinity, without requiring a
`
`centralized service provider to facilitate the interaction. EX1001, 32:52-56. This
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`direct communication between devices is represented by the lines annotated in red.
`
`In contrast, in Figure 1C below (right), a prior-art single location-based service
`
`provider (called “Service(s)”) facilitates all interactions between the MSs (denoted
`
`as MS 1, MS 2,...MS N), and the MSs do not communicate directly with one another.
`
`EX1001, 33:31-54. The communication between the devices and the centralized
`
`server is represented by the lines annotated in red.
`
`Figures 1B and 1C of the ’994 Patent (annotated)
`
`EX1001, Figure 1B (left); Figure 1C (prior art) (right).
`
`31.
`
`The ’994 Patent states that a LBX network allows MS devices to take
`
`advantage of location-based functionality by allowing direct “peer-to-peer”
`
`communications between MSs. Specifically, the ’994 Patent discloses that within
`
`each MS of the LBX network, there are “permissions” and “charters,” as illustrated
`
`below in green below in annotated Figure 1A:
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`15
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`Figure 1A of the ’994 Patent (Annotated)
`
`EX1001, Figure 1A, 32:16-41.
`
`32. How a user configures these permissions and charters governs how a
`
`MS interacts with other MSs in specified circumstances. EX1001, 38:32-39. In
`
`certain instances, these “locally maintained configurations” enable a user to receive
`
`alerts “when MSs are newly nearby, or are newly departing being nearby.” EX1001,
`
`12:18-25. In other examples, a LBX can be used for “peer to peer content delivery
`
`and local MS configuration of that content.” EX1001, 12:31-41.
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`33. Once the permissions and charters are set for the MSs in the LBX
`
`network, they are able to take advantage of location-based functionality. For
`
`instance, in certain embodiments, the ’994 Patent teaches that the LBX
`
`configurations can be set to provide “a nearby, or nearness, status using a peer to
`
`peer system and method.” EX1001, 12:10-14. In particular, the LBX system uses
`
`“nearby detection means of one MS when in the vicinity of another MS.” EX1001,
`
`12:7-10. In one such embodiment, “locally maintained configurations govern
`
`functionality when MSs are newly nearby, or are newly departing being nearby.
`
`Nearby status, alerts, and queries are achieved in a LBX manner.” EX1001, 12:18-
`
`25.
`
`34.
`
`The ’994 Patent further discloses that, in addition to providing a nearby
`
`or nearness status, LBX can be used for “peer to peer content delivery and local MS
`
`configuration of that content.” EX1001, 12:31-32. More specifically, “[u]sers make
`
`local configurations to enjoy location based content delivery to other MSs.”
`
`EX1001, 12:32-35. “Content is delivered under a variety of circumstances for a
`
`variety of configurable reasons.” EX1001, 12:35-36. “Content maintained local to
`
`an MS is delivered asynchronously to other MSs for nearby alerts, arrival or
`
`departure to and from geofenced areas, and other predicated conditions of nearby
`
`MSs.” EX1001, 12:36-39.
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`35.
`
`Further, the ’994 Patent discloses that the communications between
`
`MSs can be in the form of wireless data records, which is referred to as a “WDR.”
`
`EX1001, 444:59-63 (“Many embodiments are better described by redefining the
`
`“W” in acronyms used throughout this disclosure for the more generic “Wireless”
`
`use, rather than “Whereabouts” use. Thus, WDR takes on the definition of Wireless
`
`Data Record.”). According to the ’994 Patent, a WDR may consist of a variety of
`
`data fields, including (a) MS ID, which is a unique MS identifier; (b) DATE/TIME
`
`STAMP identifying the date and time at which the WDR was generated; (c)
`
`LOCATION representing the location of the device originating the WDR, and other
`
`location-related information like SPEED, HEADING, and ELEVATION. EX1001,
`
`Fig. 11; 41:22-42:47. In addition to these data fields, the WDR optionally may
`
`contain other fields, as illustrated in Figure 11A of the ’994 Patent:
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`Figure 11A of the ’994 Patent
`
`EX1001, Figure 11A.
`
`36.
`
`The independent claims of the ’994 Patent recite, respectively, a system
`
`(claim 1), method (claim 8), and computer-readable media (claim 14) for sending
`
`information from a “beaconing data processing system” to a “user carried mobile
`
`data processing system[].” EX1001, 448:28-451:20.
`
`37.
`
`The claims recite “periodically beaconing” a broadcast unidirectional
`
`“wireless data record.” EX1001, 448:35-36, 449:38-39, 450:31-32. This “wireless
`
`data record” includes (1) a “data field containing a signal strength” of the sending
`
`device’s system, and (2) “application identifier data.” Id.; see also id. at 41:36-42:61;
`
`78:64-85:11; FIG. 11A.
`
`19
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`38.
`
`The claimed “wireless data record” includes “no physical location
`
`coordinates of the beaconing data processing system.” Id. Upon receipt of the
`
`“wireless data record” by a “user carried mobile data processing system,” the system
`
`can present certain location-based content to a user. Id. One example of such
`
`location-based content being presented to a user of a “user carried mobile data
`
`processing system” is automatically “being alerted to nearby people needing
`
`assistance and nearby fire engines or police cars that need access to roads.” Id.,
`
`13:14-16.
`
`The Relevant Claims of the ’994 Patent
`The ’994 Patent includes 19 claims, and claims 1, 8, and 14 are
`
`39.
`
`independent claims. See EX1001, 448:28-451:20. I have been asked to evaluate the
`
`patentability of claims 1-3, 6, 8-10, 13-16, and 19 of the ’994 patent. Those claims
`
`are reproduced in full below. Claim 1 recites:
`
`1. A beaconing data processing system, comprising:
`
`one or more processors;
`
`a Bluetooth communications interface; and
`
`a memory coupled to the one or more processors, wherein
`the one or more processors access the memory and control
`operations of the beaconing data processing system, the
`operations comprising:
`
`broadcast
`a
`outbound
`beaconing
`periodically
`unidirectional wireless data record communicated through
`the Bluetooth communications interface to serve as a
`
`20
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`physical location reference contributing to physical
`location determination processing of one
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