Apple Inc. v. BillJCo LLC
`
`IPR2022-00420 (U.S. Pat. No. 10,477,994)
`
`IPR2022-00426 (U.S. Pat. No. 8,761,804)
`
`IPR2022-00427 (U.S. Pat. No. 10,292,011)
`
`IPR2022-00310 (U.S. Pat. No. 9,088,868)
`
`April 14, 2023
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`

`

`U.S. Patent No. 10,477,994
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`2
`
`

`

`U.S. Patent No. 10,477,994
`
`GROUNDS
`
`CLAIMS
`
`BASIS
`
`1
`
`2
`
`3
`
`4
`
`1-2, 6, 8-9, 13-15, and 19
`
`§ 103(a)
`
`3, 10 and 16
`
`§ 103(a)
`
`1-2, 6, 8-9, 13-15, and 19
`
`§ 103(a)
`
`3, 10 and 16
`
`§ 103(a)
`
`(EX1001, 1; Pet., 8-14)
`
`PRIOR ART
`Obvious over
`Wrappe and Philips
`Obvious over
`Wrappe, Philips, and Weiser
`Obvious over
`Wrappe, Philips, and Evans
`Obvious over
`Wrappe, Philips, Weiser, and Evans
`
`Summary of Technology
`A beacon, which cannot receive information, transmits data records to a mobile
`device to serve as a physical location reference. The data records include a signal
`strength and an application identifier and do not include physical coordinates.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
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`

`

`Claim 1 of the ’994 Patent
`
`1. A beaconing data processing system, comprising:
`mobile data processing systems in response to a receipt
`of the broadcast unidirectional wireless data record in the
`one or more processors; and
`one or more user carried mobile data processing systems,
`a Bluetooth communications interface; and
`and
`periodically beaconing outbound a broadcast unidirectional wireless data
`record
`a memory coupled to the one or more processors, wherein the
`not
`configured to process
`inbound communications
`one or more processors access the memory and control
`communicated through the Bluetooth communications interface to serve as a physical
`resulting from the receipt of the broadcast unidirectional
`operations of the beaconing data processing system,
`the
`wireless data record in the one or more user carried
`location reference contributing to physical location determination processing of one or
`operations comprising:
`mobile
`data
`processing
`systems,
`the
`broadcast
`more user carried mobile data processing systems in a Bluetooth wave spectrum range
`unidirectional wireless
`data
`record
`communicated
`periodically beaconing outbound a broadcast unidirectional
`vicinity of the beaconing data processing system, the beaconing data processing system:
`through the Bluetooth communications interface to serve
`wireless data record communicated through the Bluetooth
`as the physical location reference including:
`communications interface to serve as a physical location
`reference contributing to physical location determination
`no physical location coordinates of the beaconing data
`processing of one or more user carried mobile data
`processing system,
`processing systems in a Bluetooth wave spectrum range
`no physical location coordinates of the beaconing data processing system,
`a data field containing a signal strength of the
`vicinity of the beaconing data processing system,
`the
`beaconing data processing system, and
`beaconing data processing system:
`a data field containing a signal strength of the beaconing data processing system, and
`application identifier data stored in the memory.
`not soliciting an inbound communication to the beaconing
`data processing system from the one or more user carried
`
`’994 Patent at Claim 1
`
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`4
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`

`

`Prior Art
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`5
`
`

`

`Wrappe Overview
`
`Wrappe
`
`(EX1005, [0052])
`
`(EX1005, [0050])
`
`(EX1005, FIG. 5)
`
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`(EX1005, [0036])
`
`6
`
`

`

`Wrappe Overview, cont’d
`
`Wrappe discloses embodiments that transmit signal strengths and do not transmit
`physical location coordinates and instead look up location information in a database.
`(Pet., 42)
`
`Wrappe
`
`(EX1005, [0043])
`
`(EX1005, [0013])
`
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`7
`
`(EX1005, [0051])
`
`

`

`Philips Overview
`
`Philips
`
`(EX1013, FIG. 1)
`
`(EX1013, 5:30-6:4)
`
`(EX1013, FIG. 6C)
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`(EX1013, 8:4-9)
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`8
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`

`

`Issues
`
`Whether Wrappe beacons a wireless data record that includes no
`physical location coordinates of the beaconing data processing system
`
`Whether Wrappe beacons a data field containing the signal
`strength periodically
`
`Whether a POSITA would have been motivated to combine Wrappe
`and Philips
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`9
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`

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`What is Not at issue
`
`Wrappe discloses beaconing a wireless data record periodically
`(Pet., 36-40; Pet. Reply, 4-7; EX1005, [0050])
`
`Wrappe discloses beaconing a data field containing a signal strength
`(Pet., 42-44; Pet. Reply, 4-7; EX1005, [0012], [0043], [0050])
`
`Philips discloses the application identifier data
`(Pet., 44-46; Pet. Reply, 7-9; EX1013, 7:15-17, 7:29-8:27)
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`10
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`

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`Wrappe’s Beaconed Signal Includes
`No Physical Location Coordinates
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`11
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`

`

`Wrappe’s Beaconed Signals Include No Physical
`Location Coordinates
`
`Petitioner has shown how Wrappe
`discloses embodiments that, instead
`of transmitting physical location
`coordinates, look up position
`information using identifiers.
`(Pet., 41-42; Pet. Reply, 3-4; Michalson Decl., ¶ 115-118)
`
`PO’s only rebuttal is that
`Wrappe generally operates in a
`GPS environment. (POR, 11-13; PO Sur-Reply, 2-4)
`• However, GPS signals are not beaconed
`by Wrappe’s microcell beacons, nor
`does Petitioner rely on GPS signals as
`teaching the claimed data record.
`(Pet. Reply, 4; EX1005, [0005])
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`12
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`PO’s Arguments Fail to Show That Wrappe’s Wireless
`Data Record Includes No Physical Location Coordinates
`
`PO argues that GPS signals are not
`sent from satellites. (PO Sur-Reply, 3)
`
`PO’s arguments in the Sur-Reply do
`nothing other than:
`
`• PO has not cited to any discussion in
`Wrappe that discloses GPS signals
`being transmitted by anything other
`than satellites. (PO Sur-Reply, 3)
`
`• Even if PO is correct, Petitioner still does
`not rely on the GPS signals as teaching
`the claimed wireless data record.
`(PO Sur-Reply, 3)
`
`• Cite to embodiments in Wrappe that
`Petitioner does not even rely on for
`teaching the claims; and (PO Sur-Reply, 4)
`
`• Argue that Wrappe generally operates in a
`hybrid GPS environment. (PO Sur-Reply, 4)
`
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`13
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`

`

`Wrappe Teaches Beaconing the
`Signal Strength Periodically
`
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`14
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`

`

`Wrappe’s Signal Strength Can Be Part of the Beaconed
`Signal and is Therefore Beaconed Periodically
`
`It is undisputed that Wrappe beacons an outbound signal periodically and that
`Wrappe also beacons a signal strength. (Pet., 42-44; POR, 13-15; Pet. Reply, 4-7)
`
`Wrappe
`
`•
`
`PO’s only dispute is whether the signal
`strength is also beaconed periodically.
`
`• Wrappe discloses that the signal
`transmission strength can be part of
`the outbound signal. The signal
`transmission strength is therefore
`also beaconed periodically.
`
`(EX1005, [0043])
`
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`15
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`

`

`PO’s Arguments That It Would Not Be Obvious To
`Include The Signal Strength In The Beaconed Signal Fail
`
`PO argues that including the signal strength in the beaconed signal would not be obvious
`because “it requires additional effort and extra costs due to initial calibration and ongoing
`maintenance (frequent recalibrations),” as well as calibration by the end user. (POR, 14-15)
`Wrappe
`
`Neither of these arguments are true:
`
`•
`
`•
`
`“There would be no more calibrations
`required when the transmission strength
`value is beaconed periodically compared
`to when it is not beaconed periodically.”
`(Pet. Reply, 6)
`
`Calibrations are not performed by the
`end user. (Pet. Reply, 6-7)
`
`(EX1005, [0046])
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`(EX1005, [0048])
`
`16
`
`

`

`A POSITA Would Have Been
`Motivated to Combine
`Wrappe and Philips
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`17
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`

`

`Petitioner Has Provided Ample Rationale As To Why
`A POSITA Would Have Combined Wrappe And Philips
`
`A POSITA would have combined Wrappe and Philips because:
`
`1. Application identifiers were a known way to cause a mobile device to be able to
`automatically provide received data from a beacon. (Pet., 26-30, 45-46; Pet. Reply, 7-8)
`
`2. Application identifiers allowed mobile device to receive application specific data
`automatically, improving the user experience. (Pet., 26-30, 45-46; Pet. Reply, 7-8)
`
`3. Application identifiers “allowed the prompt provision of site-specific data, such as
`advertisements, and would have permitted them to be provided to the user with minimal,
`if any user involvement.” (Pet., 26-30, 45-46; Pet. Reply, 7-8)
`
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`18
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`

`

`PO’s Argument on why a POSITA Would Not Have
`Been Motivated to Combine Wrappe and Philips Fails
`
`PO’s sole argument why a POSITA would not combine Wrappe and Philips is that
`Philips is allegedly a two-way communication system and uses Bluetooth, which
`allegedly contradicts the claims. (POR, 14-15; PO Sur-Reply, 6-8)
`
`1. The claims themselves recite a “Bluetooth communications interface,” so Bluetooth
`cannot be “contrary” to the claims as PO alleges. (POR, 14-15; PO Sur-Reply, 6-8)
`
`2. Philips references Bluetooth inquiry messages as an optional feature and is not limited to
`two-way communications. (Pet. Reply, 8-9)
`
`3. Even if Philips was limited to two-way communications, “a POSITA would be able to
`incorporate [the application identifier data] into the beacon signals of Wrappe without
`having to utilize any allegedly required two-way communications protocols. (Pet. Reply, 9)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`19
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`

`

`U.S. Patent No. 10,292,011
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`20
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`

`

`U.S. Patent No. 10,292,011
`
`GROUNDS
`
`CLAIMS
`
`BASIS
`
`1
`
`2
`
`3
`
`4
`
`1-3, 9, 11-13, and 19-20
`
`§ 103(a)
`
`1-3, 9, 11-13, and 19-20
`
`§ 103(a)
`
`1-3, 9, 11-13, and 19-20
`
`§ 103(a)
`
`1-3, 9, 11-13, and 19-20
`
`§ 103(a)
`
`(EX1001, 1; Pet., 6-10)
`
`PRIOR ART
`Obvious over
`Ribaudo and Lorincz
`Obvious over
`Ribaudo and Wrappe
`Obvious over
`Ribaudo, Lorincz, and Evans
`Obvious over
`Ribaudo, Wrappe, and Evans
`
`Summary of Technology
`A beacon periodically transmits data records to a mobile device to serve as a physical
`location reference. The data records include a signal strength and application context
`identifier data and does not include physical coordinates. A location-based application
`on the mobile device then presents content to the user interface.
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`21
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`

`

`Claim 1 of the ’011 Patent
`
`1. A system including one or more sending data processing systems wherein
`carried mobile data processing system upon the receiving user carried mobile
`each sending data processing system of the one or more sending data
`data processing system determining with a local memory maintained location
`processing systems comprise:
`based configuration monitored with background processing of the receiving
`user carried mobile data processing system during mobility of the receiving
`periodically beaconing outbound a broadcast unidirectional wireless data record for
`one or more processors; and
`user carried mobile data processing system anticipating receipt of the
`memory coupled to the one or more processors and storing instructions,
`physically locating in a region of the sending data processing system one or more receiving
`broadcast unidirectional wireless data record having the application context
`wherein the one or more processors, based on the instructions, perform
`identifier data in response to a user activating the location based application
`user carried mobile data processing systems…
`operations comprising:
`with the user interface of the receiving user carried mobile data processing
`system wherein the location based application:
`periodically beaconing outbound a broadcast unidirectional wireless data
`record for physically locating in a region of the sending data processing
`invokes a location based API of the receiving user carried mobile data
`system one or more receiving user carried mobile data processing
`processing system for the location based configuration anticipating the
`application context identifier data identifying location based content for presenting by a
`systems,
`the broadcast unidirectional wireless data record received
`receipt of the broadcast unidirectional wireless data record having the
`directly from the sending data processing system in each receiving user
`application context identifier data,
`location based application of the receiving user carried mobile data processing system to a
`carried mobile data processing system of the one or more receiving user
`is notified upon the receipt of the broadcast unidirectional wireless data
`user interface of the receiving user…
`carried mobile data processing systems, and including:
`record having the application context identifier data configured in the
`no physical location coordinates of the sending data processing system,
`location based configuration, and
`a data
`field containing a
`signal
`strength of
`the
`sending data
`presents the location based content to the user interface of the receiving user
`processing system
`carried mobile data processing system,
`the location based content
`presents the location based content to the user interface of the receiving user carried mobile
`originating from another data processing system that is remote to both the
`application context identifier data identifying location based content for
`data processing system…
`sending data processing system and the receiving user carried mobile data
`presenting by a location based application of the receiving user carried
`processing system.
`mobile data processing system to a user interface of the receiving user
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`’011 Patent at Claim 1
`
`22
`
`

`

`Prior Art
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`23
`
`

`

`Ribaudo Overview
`
`Ribaudo
`
`(EX1005, [0016])
`
`(EX1005, Fig. 1)
`
`(EX1005, [0057])
`
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`24
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`

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`Ribaudo Overview, cont’d
`
`Ribaudo discloses that the availability of the user identifies “location based
`content for presenting”
`
`Detecting a match and
`notifying the users
`
`Various information is
`presented to the users when
`there is a match
`
`The information presented
`can be location based
`
`Ribaudo
`
`Ribaudo
`
`Ribaudo
`
`(Pet., 40; EX1005, [0070])
`
`(Pet., 41; EX1005, [0059])
`
`(Pet. Reply, 41; EX1005, [0078])
`
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`25
`
`

`

`Lorincz Overview
`
`Lorincz
`
`(EX1006, FIG. 1)
`
`(EX1006, 4)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`26
`
`

`

`Wrappe Overview
`
`Wrappe
`
`(EX1008, [0050])
`
`(EX1008, [0043])
`
`(EX1008, FIG. 5)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`27
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`

`

`Issues
`
`Ground 2:
`
`• Whether Ribaudo’s availability of the user identifies location based
`content for presenting
`
`Ground 1:
`
`• Whether beaconing periodically is obvious in view of Ribaudo
`
`•
`
`If not, whether a POSITA would have been motivated to combine
`Ribaudo and Lorincz
`
`• Whether Ribaudo’s availability of the user identifies location based
`content for presenting
`
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`28
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`

`

`What is Not at Issue
`
`Ribaudo’s beaconed signals teach “beaconing” in both Grounds 1 and 2
`(Pet., 27-31, 55-56; Pet. Reply, 2-4; POR, 16-18; EX1005, [0045], [0057], [0065], [0070], [0084])
`
`Petitioner’s motivation to combine Ribaudo and Wrappe in Ground 2
`(Pet., 57)
`
`Petitioner’s arguments related to the patentability of dependent claims
`2-3, 9, 12-13, and 19 on both Grounds 1 and 2 (Pet., 52-55, 58)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`

`

`Ribaudo’s Availability Of The
`User Identifies Location Based
`Content For Presenting
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`

`

`Ribaudo Teaches Identifying Location Based Content
`For Presenting
`
`PO argues that the content presented
`in Ribaudo “is the same no matter
`what is the location.” (POR, 21)
`
`• The presented content is not the same
`regardless of location. Ribaudo explicitly
`discloses that different content can be
`presented in different locations. (Pet., 41;
`Pet. Reply, 7; EX1005, [0078], [0098])
`Ribaudo
`
`PO then argues that different amounts
`of content can be shared at the same
`location, which means it is user-based
`and not location-based. (POR, 22)
`
`• There is nothing in the claims that precludes the
`“location based content” from also being
`user-based. (Pet. Reply, 7-8)
`
`(EX1005, [0078])
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`31
`
`

`

`Periodically Beaconing is Obvious
`in View of Ribaudo
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`

`

`Petitioner Has Established a Rational Underpinning
`Supporting Obviousness
`
`Petitioner argues that Ribaudo’s signal could have been beaconed periodically
`because it was well-known in the art that periodicity reduces power requirements.
`(Pet., 29; Pet. Reply, 2; Michalson Decl., ¶ 77; Michalson Dep. Tr. 21:2-22:12, 39:13-42:2)
`
`–
`
`PO’s attempts to rebut:
`•
`“Saving on battery power does not necessitate periodic transmission.” (POR, 17)
`This argument fails because it is not necessary to show that a feature is necessitated to show obviousness,
`only an articulated reasoning with some rational underpinning. (Pet. Reply, 2)
`Non-periodic beaconing can also reduce power requirements. (POR, 18)
`If this is true, then there are two solutions for reducing power requirements, and both would be within the
`technical grasp of a POSITA. (Pet. Reply, 2-3)
`“[a] POSITA would avoid periodic beaconing with a network with many nodes.” (POR, 18)
`Lorincz uses periodic beaconing with multiple nodes, disproving this argument. (Pet. Reply, 3)
`
`•
`
`•
`
`–
`
`–
`
`–
`
`This argument is irrelevant because Ribaudo uses a single node. (Pet. Reply, 3)
`
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`33
`
`

`

`The Recent Federal Circuit Decision in Intel
`Corporation v. PACT XPP Schweiz AGis Informative
`
`The Federal Circuit held that:
`
`Intel Corporation v. PACT XPP Schweiz AG
`
`See Liqwd, 941 F.3d at 1138
`There is a motivation to combine when “there’s a known technique to address a known problem
`using ‘prior art elements according to their established functions.’”
`
`Intel Corporation v. PACT XPP Schweiz AG
`
`Intel Corporation v. PACT XPP Schweiz AG, 61 F.45th 1373,
`1380 (Fed. Cir. 2023)
`
`See Liqwd, 941 F.3d at 1138
`To “address a known problem[,] … ‘[i]t’s not necessary to show that a combination is the best
`option, only that it be a suitable option.”
`
`Intel Corporation v. PACT XPP Schweiz AG, 61 F.45th 1373,
`1380 (Fed. Cir. 2023)
`Broadcasting Ribaudo’s signal periodically is clearly a suitable option of applying a known
`technique to reduce power requirements, and therefore the limitation is obvious is view of Ribaudo.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`34
`
`

`

`A POSITA Would Have Been
`Motivated to Combine
`Ribaudo and Lorincz
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`

`

`PO’s Arguments on why a POSITA Would Not Have
`Been Motivated to Combine Ribaudo and Lorincz Fail
`
`PO argues that:
`1. Ribaudo and Lorincz allegedly teach
`fundamentally different methods of
`proximity determination and location
`determination, respectively. (POR, 19; PO Sur-Reply, 5)
`
`•
`
`•
`
`2.
`
`However, Ribaudo shares information based on the
`location of matches and Lorincz analyzes the distance
`between nodes. They therefore use overlapping
`concepts and are not fundamentally different.
`(Pet., 24; Pet. Reply, 5)
`
`Lorincz utilizes multiple beacons while
`Ribaudo utilizes a single beacon. (POR, 19;
`PO Sur-Reply, 6)
`
`The only feature taken from Lorincz is the timing and
`configuration of beaconed signals; a different number of
`beacons would not prevent a POSITA from implementing
`this feature in Ribaudo. (Pet., 29-31; Pet. Reply, 5-6)
`
`3. Ribaudo is allegedly inappropriate for use
`with Lorincz because Lorincz requires
`substantial offline calibration.
`(POR, 20; PO Sur-Reply, 6-7)
`
`•
`
`•
`
`“[a] POSITA could easily implement the periodic
`nature of Lorincz’s beaconing [into Ribaudo] without
`having to install and calibrate the entire Lorincz
`system.” (Pet. Reply, 6)
`
`For PO’s argument to be viable, Ribaudo must
`be limited to scenarios where offline calibration
`is infeasible.
`
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`36
`
`

`

`The Federal Circuit has Confirmed that Physical/Bodily
`Incorporation is not Required for Obviousness
`
`The Federal Circuit held that:
`In re Mouttet
`
`See Liqwd, 941 F.3d at 1138
`“It is well-established that a determination of obviousness based on teachings from multiple
`references does not require an actual, physical substitution of elements.”
`
`In re Keller
`
`In re Mouttet, 686 F.3d 1322, 1332 (2012)
`
`See Liqwd, 941 F.3d at 1138
`“The test for obviousness is not whether the features of a secondary reference may be bodily
`incorporated into the structure of the primary reference.....”
`
`In re Sneed
`
`In re Keller, 642 F.2d 413, 425 (CCPA 1981)
`
`See Liqwd, 941 F.3d at 1138
`“[I]t is not necessary that the inventions of the references be physically combinable to render
`obvious the invention under review.”
`
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`
`37
`
`In re Sneed, 710 F.2d 1544, 1550 (Fed.Cir.1983)
`
`

`

`U.S. Patent No. 8,761,804
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`

`

`U.S. Patent No. 8,761,804
`
`(EX1001, 1; Pet., 4-6)
`
`GROUNDS
`
`1
`
`2
`
`CLAIMS
`
`1, 10-12
`
`1, 10-12
`
`BASIS
`
`§ 103(a)
`
`§ 103(a)
`
`PRIOR ART
`Obvious over
`Himmelstein and Myr
`Obvious over
`Himmelstein, Myr, and Evans
`
`Summary of Technology
`A beacon that transmits data records to a mobile device. The data records
`include an originator identity, an application identifier, location information,
`and reference information describing the location information.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`

`

`Claim 1 of ’804 Patent
`
`1. A method by a sending data processing system, the method comprising:
`maintaining, by the sending data processing system, a configuration for when to
`perform beaconing of the broadcast unidirectional wireless data record; and
`accessing, by the sending data processing system, identity information for describing
`transmitting, by the sending data processing system, the broadcast unidirectional
`an originator identity associated with the sending data processing system;
`wireless data record for receipt by a plurality of receiving mobile data processing
`accessing, by the sending data processing system, application information for an
`systems in a wireless vicinity of the sending data processing system wherein
`application in use at the sending data processing system;
`the broadcast unidirectional wireless data record is beaconed by the sending
`data processing system in accordance with the configuration for when to perform
`accessing, by the sending data processing system, location information associated with
`beaconing, and wherein the broadcast unidirectional wireless data record
`the sending data processing system;
`includes at least:
`reference information for
`accessing, by the sending data processing system,
`transmitting, by the sending data processing system, the broadcast unidirectional wireless
`the identity information for describing the originator identity associated with the
`further describing the location information associated with the sending data
`sending data processing system wherein the identity information is for an alert
`processing system;
`data record for receipt by a plurality of receiving mobile data processing systems in a
`determined by each receiving mobile data processing system of the plurality of
`preparing, by the sending data processing system, a broadcast unidirectional wireless
`wireless vicinity of
`the sending data processing system wherein the broadcast
`receiving mobile data processing systems that the each receiving mobile data
`data record including:
`processing system is in the wireless vicinity of the sending data processing system,
`unidirectional wireless data record is beaconed by the sending data processing system in
`the identity information for describing the originator identity associated with the
`the application information for
`the application in use at
`the sending data
`sending data processing system,
`accordance with the configuration for when to perform beaconing, and wherein the
`processing system,
`the application information for
`the application in use at
`the sending data
`broadcast unidirectional wireless data record includes at least:
`the location information associated with the sending data processing system to be used
`processing system,
`by the each receiving mobile data processing system for determining their own
`location relative to the location information, and
`the location information associated with the sending data processing system, and
`the reference information for further describing the location information associated
`the reference information for further describing the location information associated
`with the sending data processing system for describing to the each receiving mobile
`with the sending data processing system;
`data processing system useful
`information associated with the sending data
`processing system.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`’804 Patent at Claim 1
`
`40
`
`

`

`Issues
`
`What does “beaconing” mean and does it need to be construed?
`
`Whether the combination of Himmelstein and Myr discloses beaconing
`as construed by PO
`
`Whether the combination of Himmelstein and Myr discloses
`“transmitting . . . the broadcast unidirectional wireless data record for
`receipt by a plurality of receiving mobile data processing systems . . .”
`
`Whether a POSITA would combine Myr with Himmelstein
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`

`

`Ground 1:
`Obviousness over
`Himmelstein and Myr
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`

`

`Himmelstein: System and Method for Providing
`Information to Users Based on the User’s Location
`
`Himmelstein
`
`Himmelstein
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`43
`
`(EX1005, 2:59-67; 5:51-54; 6:5-10; Figures 1, 3C, 3D;
`Pet.,10-11, 25-28.)
`
`

`

`Myr Overview: Traffic Information Gathering via Cellular
`Phone Networks for Intelligent Transportation Systems
`
`Myr
`
`(EX1006, [0001], [0092]; Pet.,13-14)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`44
`
`

`

`Himmelstein-Myr Discloses
`“Beaconed/Beaconing”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`45
`
`

`

`Patent Owner’s Construction
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`(Pet., 8-9)
`
`beaconed /
`beaconing
`
`1. “‘[A] device that sends out a radio signal to show the position
`of something such as a ship, aircraft, etc.’ or ‘a radio signal
`that is broadcast to help guide ships, airplanes, etc.’” (POR, 16)
`2. “[A] transmission that is transmitted to mobile units [that]
`indicate[s] a location of the sending unit.” (POR, 22)
`3. “[A] signal that is designed to attract attention to a
`specific location or that is intended to indicate the position
`of something.” (POR, 22)
`4. “[A] beacon is a transmission made to indicate a location
`of the transmitter.” (POR, 17)
`5. “[A] beacon is a transmission sent with the intent that it
`can be used to locate the transmitter.” (POR, 17)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`46
`
`

`

`Applying PO’s construction of “beaconing/beaconed”
`
`Himmelstein discloses a transmission sent with the intent that it can be used to
`locate the transmitter
`
`Himmelstein
`
`Petition
`
`(Pet., 25)
`
`(EX1005, FIG.3B, 3D)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`47
`
`

`

`Patent Owner’s Construction
`
`PO’s Constructions are Not Supported by the Intrinsic Record
`• The intrinsic evidence of the 804 Patent provides no support for construing beaconing in
`accordance with PO’s proposals (Pet. Reply, 2-4)
`‒ The specification equates beaconing with periodic broadcasting (Pet. Reply 2-4)
`’804 Patent
`
`’804 Patent
`
`(EX1001, 113:52-56)
`
`(EX1001, 114:14-17)
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(EX1001, 24:19-26)
`
`48
`
`

`

`Patent Owner’s Construction
`
`PO’s Constructions are Not Supported by the Extrinsic Record
`• PO’s expert did not differentiate a beacon from a broadcast based on intent – PO’s expert
`differentiated a beacon from a broadcast based on usage (Pet. Reply, 4)
`
`Petitioner’s Expert: Dr. Long
`
`Q.
`
`Is there any way in your mind of differentiating whether
`something is -- is a broadcast that is not a beacon?
`
`A. Again, it comes -- it comes down to use. You don't
`always have to use something, what it was – what that
`creator intended it for. So you could have a broadcast
`and you could decide, well, you know what, I’m going to
`use that as a beacon.
`
`(Dep. Transcript 24:5-12)
`
`I didn't mean to,
`I'll rephrase it.
`I'll rephrase it.
`Q. Well,
`you know, change the question. How -- how would
`you differentiate whether a broadcast
`is a beacon or
`not a beacon?
`
`think I've already answered the question.
`I
`A. Well,
`It depends on the usage. So let's go back -- let's go
`back to the radio transmitter; okay. The intended use
`of the radio transmitter is for me to communicate with
`somebody. Okay. When I got my CB radio, I want to
`have a conversation.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(Dep. Transcript 25:1-10)
`
`49
`
`

`

`Himmelstein-Myr Discloses
`“Transmitting. . . The broadcast
`unidirectional wireless
`data record . . .”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`50
`
`

`

`Patent Owner’s Construction
`
`Term / Phrase
`
`Patent Owner’s Proposal(s)
`
`Petitioner’s Proposal
`
`“Transmitting . . . The broadcast
`unidirectional wireless data record
`for receipt by a plurality of receiving
`mobile data processing systems in
`a wireless vicinity of the sending
`data processing system. . .”
`
`“[T]he wireless data record . . .
`Transmitted by the sending
`data processing system via a
`unidirectional beacon directly
`to the wireless devices in the
`vicinity of the sending data
`processing system”
`
`(POR, 19)
`
`Plain and Ordinary Meaning.
`No Construction Needed.
`
`(Pet., 8-9)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`51
`
`

`

`Applying PO’s Construction…
`
`Himmelstein discloses direct transmission from a sender to a receiver
`Petition
`Himmelstein
`
`(EX1005, 2:65-3:1)
`
`(Pet., 41-42; Pet. Reply 9-12)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`(EX1005, 7:40-52)
`
`52
`
`

`

`“Transmitting. . . The broadcast unidirectional
`wireless data record”
`
`PO’s rebuttals are not persuasive:
`
`• Petitioner allegedly “concedes” the primary
`embodiment of Himmelstein relied on in
`the Petition (Sur-reply, 9)
`‒ Petitioner maintains the primary
`embodiment argument
`• There cannot be a “defined” network; the
`devices have to be unknown to the sender
`(Sur-reply, 6)
`
`’804 Patent
`
`• Control over the sending of messages in a
`piconet is controlled by a master, and there is
`therefore no direct connection between any
`slave to another slave (Sur-Reply, 11)
`‒ Fails to account for the master directly
`communicating with a slave (Pet. Reply, 11)
`
`(EX1001, 4:42-44; Pet. Reply, 6)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`53
`
`

`

`A POSITA would be motivated to
`combine Myr with Himmelstein
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`54
`
`

`

`A POSITA Would Combine Himmelstein and Myr
`
`Myr teaches the configuration for when to perform beaconing (Pet., 38-40)
`
`Petition
`
`Himmelstein
`
`(EX1006, [0092])
`
`PO does not dispute that Myr teaches
`the claimed configuration
`
`(Pet., 38; Pet. Reply, 12)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`55
`
`

`

`A POSITA Would Combine Himmelstein and Myr
`
`The only dispute is whether a POSITA would combine the
`teachings of Myr with Himmelstein
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`56
`
`

`

`A POSITA Would Combine Himmelstein and Myr
`
`PO presents three rebuttals:
`
`1. Himmelstein does not teach that a cell phone could be used as part of the
`Himmelstein system (Sur-reply, 12)
`
`2. Himmelstein teaches away from using cell phone in its system (POR, 30-31; Sur-reply, 12-13)
`
`3. Utilizing the piconet of Himmelstein would subvert the purpose of Myr
`(POR 31; Sur-reply, 13-14)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`57
`
`

`

`A POSITA Would Combine Himmelstein and Myr
`
`PO Rebuttal #1: Himmelstein does not teach that a cell phone could be used as part
`of the Himmelstein system
`
`• As stated in the Petition, Petitioner is relying
`on Myr for its teaching of the configuration
`for when to perform beaconing (Pet., 21, 38-40)
`
`Himmelstein
`
`‒ Petitioner is not incorporating
`Myr’s devices into Himmelstein’s
`computing environment
`
`(EX1005, 7:53-55)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`58
`
`

`

`A POSITA Would Combine Himmelstein and Myr
`
`PO Rebuttal #2: Himmelstein teaches away from using cell phone in its system
`
`Himmelstein
`
`• As stated in the Petition, Petitioner is
`relying on Myr for its teaching of the
`configuration for when to perform
`beaconing (Pet., 21, 38-40)
`
`(EX1005,1:28-35)
`
`• The portion of Himmelstein relied on by
`PO describes limitations of conventional
`mobile communication systems
`(Pet. Reply 13-14; EX1005, 1:17-50)
`
`(EX1005, at 13:16-19)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`59
`
`

`

`A POSITA Would Combine Himmelstein and Myr
`
`PO Rebuttal #3: Utilizing the piconet of Himmelstein wo