IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`BILLJCO, LLC,
`
`Plaintiff,
`
`v.
`
`CISCO SYSTEMS, INC.,
`
`Defendant.
`
`Plaintiff,
`
`BILLJCO, LLC,
`
`v.
`
`HEWLETT PACKARD ENTERPRISE
`COMPANY, ARUBA NETWORKS, LLC
`
`Defendants.
`
`Case No. 2:21-cv-00181-JRG
`(Lead Case)
`
`Case No. 2:21-cv-00183-JRG
`(Member Case)
`
`DEFENDANTS’ PRELIMINARY INVALIDITY CONTENTIONS
`
`1
`
`Exhibit 2017
`
`

`

`
`
`Defendants Hewlett Packard Enterprise Company, Aruba Networks, LLC, and Cisco
`
`Systems, Inc. (collectively “Defendants”) hereby provide their Preliminary Invalidity Contentions
`
`pursuant to the Joint Scheduling Order entered by the Court on August 26, 2021 (Dkt. 28) and the
`
`Docket Control Order entered by the Court on October 26, 2021 (Dkt. 44). Based on their
`
`investigation to date, Defendants hereby produce the prior art references on which these
`
`Contentions are based and other documents as mandated by the Joint Scheduling Order, the Docket
`
`Control Order, and the Local Rules of the Eastern District of Texas.
`
`I.
`
`INTRODUCTION
`
`These Preliminary Invalidity Contentions address the asserted claims identified by Plaintiff
`
`BillJCo, LLC (“BillJCo”) in its Preliminary Infringement Contentions. Should the Court allow
`
`BillJCo to later assert infringement of additional claims not asserted in BillJCo’s Preliminary
`
`Infringement Contentions, or to supplement its infringement contentions with additional
`
`infringement theories with respect to the asserted claims, Defendants reserve the right to
`
`supplement their Preliminary Invalidity Contentions to assert invalidity of those additional claims
`
`and/or to assert invalidity based on the additional infringement theories. Defendants also reserve
`
`the right to supplement their Preliminary Invalidity Contentions in response to information learned
`
`in fact or expert discovery, including identification of additional prior art. Defendants’ Preliminary
`
`Invalidity Contentions are based in whole or in part on their present understanding of the asserted
`
`claims and BillJCo’s Infringement Contentions, including the priority date of the asserted patents
`
`identified by BillJCo in its Infringement Contentions, including 8,761,804 (“the ’804 patent”),
`
`10,292,011 (“the ’011 patent”), and 10,477,994 (“the ’994 patent”) (collectively, the “Asserted
`
`Patents”). Defendants’ Invalidity Contentions are responsive at least to the same level of
`
`specificity of BillJCo’s Infringement Contentions.
`
`2
`
`

`

`
`
`Defendants’ Invalidity Contentions may consider BillJCo’s apparent claim constructions,
`
`to the extent BillJCo’s constructions can be understood from BillJCo’s Infringement Contentions.
`
`Such apparent constructions may be inconsistent with the constructions that Defendants ultimately
`
`will proffer in this case. By including prior art that would anticipate or render obvious the asserted
`
`claims of the Asserted Patents based on BillJCo’s disclosed and apparent claim constructions, or
`
`based on any other particular claim construction, Defendants are not adopting BillJCo’s claim
`
`constructions, nor are Defendants admitting to the correctness of any particular claim construction.
`
`The Court has established separate deadlines for the parties’ proposed claim constructions, and
`
`Defendants will disclose their proposed constructions according to those deadlines. Solely for
`
`purpose of these Preliminary Invalidity Contentions, Defendants may, if necessary, apply
`
`alternative, and even inconsistent, claim construction positions. Defendants reserve all rights to
`
`amend these Preliminary Invalidity Contentions after the Court issues its claim construction ruling,
`
`or if the Court permits BillJCo to amend its Infringement Contentions.
`
`Defendants do not concede that BillJCo’s Infringement Contentions provide the requisite
`
`level of specificity, and Defendants provide these Invalidity Contentions without waiving any right
`
`to receive from BillJCo full and complete specific infringement contentions. Moreover, nothing
`
`herein admits in any way that any of the accused products, or any of Defendants’ other products,
`
`infringe any of the asserted claims.
`
`II.
`
`RELATED INVALIDITY CONTENTIONS AND DISCLOSURES
`
`Defendants expressly incorporate by reference as if fully set forth herein, and intends to
`
`rely on, each of the contentions, charts, prior art references, and other statements made or disclosed
`
`in any petitions for inter partes review filed by any party or third-party as to any asserted patent.
`
`Defendants also incorporate by reference as if fully set forth herein all contentions, charts, prior
`
`3
`
`

`

`
`
`art references, and other statements relating to any ground of invalidity identified by any potential
`
`or actual licensee to any asserted patent and by any party in any other past, present, or future
`
`litigation involving many asserted patent or patents related to any asserted patent, including,
`
`without limitation, the following matter: BillJCo, LLC v. Apple, Inc., Case No. 6:21-cv-00528
`
`(W.D. Tex.). Defendants also incorporate by reference all grounds of invalidity identified in any
`
`present or future reexamination, covered business method (CBM) patent review, or other post-
`
`issuance review by the Patent and Trademark Office of any asserted patent. Defendants also
`
`incorporate by reference the production of documents associated with any grounds for invalidity
`
`for any asserted patent identified in this paragraph. Defendants also incorporate any grounds of
`
`invalidity known to BillJCo or any affiliated party whether or not disclosed. Defendants also
`
`request that all such contentions from every case involving any asserted patent be produced to
`
`Defendants as soon as possible after they are served on, or become known to, BillJCo.
`
`Defendants’ discovery and investigation in connection with this lawsuit is continuing.
`
`Thus, these Invalidity Contentions are based on information obtained to date. Among other things,
`
`discovery is still underway, witnesses remain to be deposed, and the Court has not yet construed
`
`any terms of the Asserted Patents. Accordingly, Defendants’ Preliminary Invalidity Contentions
`
`are subject to modification, amendment, or supplementation in accordance with the Joint
`
`Scheduling Order, the Local Rules of the Eastern District of Texas, and/or the Federal Rules of
`
`Civil Procedure as this action progresses and additional information is obtained.
`
`III.
`
`IDENTIFICATION OF PRIOR ART
`
`Defendants identify the following prior art to the Asserted Patents. Defendants contend
`
`that the prior art disclosed below generally all relate to the subject matter of one or more Asserted
`
`Patents and, collectively, they are all relevant at least as background of the art to each of the
`
`4
`
`

`

`
`
`Asserted Patents, irrespective of the sub-section in which they are expressly cited. Defendants
`
`expressly reserve the right to at least use and rely on any of the prior art cited herein to establish
`
`or otherwise support Defendants’ contentions as to what was known in the state of the art during
`
`the pertinent time frame for the Asserted Patents. Defendants further incorporate by reference all
`
`references listed on the face of the Asserted Patents. The inclusion or omission of a reference that
`
`is listed on the face of one or more of the Asserted Patents should not be deemed a waiver to rely
`
`on such references.
`
`A.
`
`Anticipation
`
`Appendices 804-, 011- and 994- are claim charts that specifically identify prior art that
`
`anticipates and/or renders obvious each of the asserted claims of the Asserted Patents. In addition
`
`to the references specifically identified in the appendices, Defendants also reserve the right to rely
`
`on any of the patents or publications deriving from applications in the respective claimed priority
`
`chains of the Asserted Patents, the references cited on the face of the Asserted Patents and related
`
`patents, any admitted prior art references in the specifications of the Asserted Patents and related
`
`patents, the prosecution histories of the Asserted Patents and related patents, the references cited
`
`in any USPTO (including PTAB) proceedings related to any Asserted Patent or Related Patents,
`
`or any references known to BillJCo or any affiliated party and the references cited in any invalidity
`
`contentions that have been or will be submitted in any action or proceedings involving any
`
`Asserted Patents or Related Patents. Defendants may also rely on expert testimony and any
`
`additional prior art located or developed during the course of discovery. Furthermore, Defendants
`
`may rely on any of the prior art references in these Preliminary Invalidity Contentions to
`
`demonstrate a motivation to combine. Defendants may also rely on expert testimony to
`
`demonstrate a motivation to combine. Defendants may also rely on (i) foreign counterparts of U.S.
`
`5
`
`

`

`
`
`patents identified in these Preliminary Invalidity Contentions; (ii) U.S. counterparts of foreign
`
`patents and foreign patent applications identified in these invalidity contentions; and (iii) U.S. and
`
`foreign patents and patent applications corresponding to articles and publications identified in
`
`these Preliminary Invalidity Contentions. Moreover, Defendants reserve the right to rely on
`
`uncited portions of the identified prior art, rely on other references (irrespective of whether such
`
`references themselves qualify as prior art) to show the state of the art, and/or to rely on expert
`
`testimony to provide context to, or aid in, understanding the cited portions of the identified prior
`
`art.
`
`In some instances, Defendants treat certain prior art as anticipatory where certain elements
`
`are inherently present in light of the apparent claim constructions applied in BillJCo’s Infringement
`
`Contentions. Defendants currently take no position as to whether the preamble of any asserted
`
`claim is limiting, and expressly reserve all rights to take any position with respect to such
`
`preambles for purposes of claim construction, invalidity, inequitable conduct, non-infringement,
`
`or otherwise. To the extent that any claim identified above is found not to be anticipated by a
`
`corresponding reference, such claim would have been obvious over that reference. Attached hereto
`
`are the following charts setting forth where in the prior art references each element of the asserted
`
`claims are found:
`
`1.
`
`Prior Art Patents and Patent Publications
`
`The following prior art patents and published patent applications invalidate the asserted
`
`claims of the Asserted Patents:
`
`Prior Art Patents and Publications
`U.S. Patent App. Pub. No. 2002/0002036 (“Uehara”)
`U.S. Patent App. Pub. No. 2002/0010629 (“Diamond”)
`U.S. Patent App. Pub. No. 2002/0159401 (“Boger”)
`U.S. Patent App. Pub. No. 2002/0169539 (“Menard”)
`U.S. Patent App. Pub. No. 2003/0007464 (“Balami”)
`
`Issue/Publication Date
`Jan. 3, 2002
`Jan. 24, 2002
`Oct. 31, 2002
`Nov. 14, 2002
`Jan. 9, 2003
`
`6
`
`

`

`
`
`Prior Art Patents and Publications
`U.S. Patent App. Pub. No. 2003/0014181 (“Myr”)
`U.S. Patent App. Pub. No. 2003/0148773
`(“Spriestersbach”)
`U.S. Patent App. Pub. No. 2004/0145459 (“Himmelstein”)
`U.S. Patent App. Pub. No. 2004/0152474 (“Chen”)
`U.S. Patent App. Pub. No. 2004/0203567 (“Berger”)
`U.S. Patent App. Pub. No. 2004/0229565 (“Himeno”)
`U.S. Patent App. Pub. No. 2004/0235493 (“Ekerborn”)
`U.S. Patent App. Pub. No. 2004/0239498 (“Miller”)
`U.S. Patent App. Pub. No. 2005/0096044 (“Haberman”)
`U.S. Patent App. Pub. No. 2005/0136845 (“Masuoka”)
`U.S. Patent App. Pub. No. 2005/0186965 (“Pagnois”)
`U.S. Patent App. Pub. No. 2005/0283503 (“Hancock”)
`U.S. Patent App. Pub. No. 2002/0132614 (“Vanlujit”)
`U.S. Patent App. Pub. No. 2006/0122921 (“Comerford”)
`U.S. Patent App. Pub. No. 2007/0030824 (“Ribaudo”)
`U.S. Patent App. Pub. No. 2007/0032225 (“Konicek”)
`U.S. Patent App. Pub. No. 2007/0139191 (“Quatro”)
`U.S. Patent App. Pub. No. 2007/0149210 (“McKiou”)
`U.S. Patent App. Pub. No. 2007/026504 (“Vincent”)
`U.S. Patent App. Pub. No. 2007/0270133 (“Hampel”)
`U.S. Patent App. Pub. No. 2007/0282678 (“Dendi”)
`U.S. Patent App. Pub. No. 2008/0056215 (“Kopikare”)
`U.S. Patent App. Pub. No. 2008/0114675 (“Ward”)
`U.S. Patent App. Pub. No. 2008/0167106 (“Lutnick”)
`U.S. Patent App. Pub. No. 2008/0248801 (“Fletcher”)
`U.S. Patent App. Pub. No. 2009/0029718 (“Nilsson”)
`U.S. Patent App. Pub. No. 2009/0176481 (“Hamilton”)
`U.S. Patent App. Pub. No. 2012/0064855 (“Mendelson”)
`U.S. Patent App. Pub. No. 2015/0018011 (“Mendelson”)
`U.S. Patent App. Pub. No. 2017/0132665 (“Hampel”)
`U.S. Patent No. 6,032,042 (“Kauppi”)
`U.S. Patent No. 6,169,894 (“McCormick”)
`U.S. Patent No. 6,177,905 (“Welch”)
`U.S. Patent No. 6,327,535 (“Evans”)
`U.S. Patent No. 6,456,234 (“Johnson”)
`U.S. Patent No. 6,501,421 (“Dutta”)
`U.S. Patent No. 6,501,421 (“Mikkola”)
`U.S. Patent No. 6,529,164 (“Carter”)
`U.S. Patent No. 6,529,728 (“Pfeffer”)
`U.S. Patent No. 6,571,112 (“Ramaswamy”)
`U.S. Patent No. 6,683,538 (“Wilkes”)
`U.S. Patent No. 6,731,238 (“Johnson”)
`U.S. Patent No. 6,748, 318 (“Jones”)
`
`7
`
`Issue/Publication Date
`Jan. 16, 2003
`Aug. 7, 2003
`
`Jul. 29, 2004
`Aug. 5, 2004
`Oct. 14, 2004
`Nov. 18, 2004
`Nov. 25, 2004
`Dec. 2, 2004
`May 5, 2005
`Jun. 23, 2005
`Aug. 25, 2005
`Dec. 22, 2005
`Mar. 7, 2006
`Jun. 8, 2006
`Feb. 8, 2007
`Feb. 8, 2007
`Jun. 21, 2007
`Jun. 28, 2007
`Nov. 15, 2007
`Nov. 22, 2007
`Dec. 6, 2007
`Mar. 6, 2008
`May 15, 2008
`Jul. 10, 2008
`Oct. 9, 2008
`Jan 29, 2009
`Jul. 9, 2009
`Mar. 15, 2012
`Jan. 15, 2015
`May 11, 2017
`Feb. 29, 2000
`Jan. 2, 2001
`Jan. 23, 2001
`Dec. 4, 2001
`Sep. 24, 2002
`Dec. 31, 2002
`Mar. 4, 2003
`Mar. 4, 2003
`Mar. 4, 2003
`May 27, 2003
`Jan. 27, 2004
`May 4, 2004
`Jun. 8, 2004
`
`

`

`
`
`Prior Art Patents and Publications
`U.S. Patent No. 6,754,484 (“Hiltunen”)
`U.S. Patent No. 6,833,787 (“Levi”)
`U.S. Patent No. 6,845,241 (“Edlund”)
`U.S. Patent No. 6,847,823 (“Lehikoinen”)
`U.S. Patent No. 6,879,838 (“Rankin”)
`U.S. Patent No. 6,888, 811 (“Eaton”)
`U.S. Patent No. 6,987,985 (“Purkayastha”)
`U.S. Patent No. 6,961,541 (“Overy”)
`U.S. Patent No. 6,983,146 (“Spratt”)
`U.S. Patent No. 6,987,985 (“Purkayastha”)
`U.S. Patent No. 7,010,267 (“Vanluijt”)
`U.S. Patent No. 7,050,786 (“Caci”)
`U.S. Patent No. 7,063,263 (“Swartz”)
`U.S. Patent No. 7,079,500 (“Menon”)
`U.S. Patent No. 7,092,943 (“Roese”)
`U.S. Patent No. 7,116,988 (“Dietrich”)
`U.S. Patent No. 7,123,926 (“Himmelstein”)
`U.S. Patent No. 7,124,186 (“Piccionelli”)
`U.S. Patent No. 7,155,210 (“Benson”)
`U.S. Patent No. 7,187,997 (“Johnson”)
`U.S. Patent No. 7,233,801 (“Winn”)
`U.S. Patent No. 7,324,957 (“Boys”)
`U.S. Patent No. 7,363,028 (“de Clerq”)
`U.S. Patent No. 7,551,930 (“Lempio”)
`U.S. Patent No. 7,587,207 (“Davies”)
`U.S. Patent No. 7,647,055 (“Gum”)
`U.S. Patent No. 7,751,829 (“Masuoka”)
`U.S. Patent No. 7,924,149 (“Mendelson”)
`U.S. Patent No. 8,014,720 (“Lortz”)
`U.S. Patent No. 8,032,153 (“Dupray”)
`U.S. Patent No. 8,045,482 (“Davis”)
`U.S. Patent No. 8,046,000 (“Sylvain”)
`U.S. Patent No. 8,082,096 (“Dupray”)
`U.S. Patent No. 8,086,398 (“Sanchez”)
`U.S. Patent No. 8,099,107 (“Thomson”)
`U.S. Patent No. 8,150,416 (“Ribaudo”)
`U.S. Patent No. 8,311,543 (“Dravida”)
`U.S. Patent No. 8,355,410 (“Hall”)
`U.S. Patent No. 8,489,112 (“Roeding”)
`U.S. Patent No. 8,504,099 (“Corson”)
`U.S. Patent No. 8,565,781 (“Nilsson”)
`U.S. Patent No. 8,616,975 (“Saund”)
`U.S. Patent No. 8,626,829 (“Franco”)
`U.S. Patent No. 8,682,350 (“Altman”)
`
`8
`
`Issue/Publication Date
`Jun. 22, 2004
`Dec. 21, 2004
`Jan. 18, 2005
`Jan. 25, 2005
`Apr. 12, 2005
`May 3, 2005
`Jan. 17, 2006
`Nov. 1, 2005
`Jan. 3, 2006
`Jan. 17, 2006
`Mar. 7, 2006
`May 23, 2006
`Jun. 20, 2006
`Jul. 18, 2006
`Aug. 15, 2006
`Oct. 3, 2006
`Oct. 17, 2006
`Oct. 17, 2006
`Dec. 26, 2006
`Mar. 6, 2007
`Jun. 19, 2007
`Jan. 29, 2008
`Apr. 22, 2008
`Jun. 23, 2009
`Sep. 8, 2009
`Jan. 12, 2010
`Jul. 6, 2010
`Apr. 12, 2011
`Sep. 6, 2011
`Oct. 4, 2011
`Oct. 25, 2011
`Oct. 25, 2011
`Dec. 20, 2011
`Dec. 27, 2011
`Jan. 17, 2012
`Apr. 3, 2012
`Nov. 13, 2012
`Jan. 15, 2013
`Jul. 16, 2013
`Aug. 6, 2013
`Oct. 22, 2013
`Dec. 31, 2013
`Jan. 7, 2014
`Mar. 25, 2014
`
`

`

`
`
`Prior Art Patents and Publications
`U.S. Patent No. 8,738,024 (“Kerr”)
`U.S. Patent No. 8,743,848 (“Ibrahim”)
`U.S. Patent No. 8,780,871 (“Grandhi”)
`U.S. Patent No. 8,836,580 (“Mendelson”)
`U.S. Patent No. 8,866,673 (“Mendelson”)
`U.S. Patent No. 8,941,485 (“Mendelson”)
`U.S. Patent No. 9,109,903 (“Wu”)
`U.S. Patent No. 9,137,771 to Wrappe
`U.S. Patent No. 9,204,257 to Mendelson
`U.S. Patent No. 9,264,858 to Cedervall
`U.S. Patent No. 9,424,547 to Gazdzinski
`U.S. Patent No. 9,961,507 to Mendelson
`U.S. Patent No. 10,798,669 to Pagonis
`International App. Publication No. WO 1999/16036
`(“Eldridge”)
`International App. Publication No. WO 2002/01813
`(“Davies”)
`International App. Publication No. WO 2002/074051
`(“Fano”)
`International App. Publication No. WO 2003/058928
`(“Chithambaram”)
`International App. Publication No. WO 2003/081391
`(“Moon”)
`International App. Publication No. WO 2003/100348
`(“Overy”)
`International App. Publication No. WO 2004/019632
`(“Ostrup”)
`International App. Publication No. WO 2004/071126
`(“Rowitch”)
`International App. Publication No. WO 2004/111676
`(“Eves”)
`International App. Publication No. WO 2005/004509
`(“Sohn”)
`International App. Publication No. WO 2005/106523
`(“Wrappe”)
`International App. Publication No. WO 2006/135542
`(“Bull”)
`International App. Publication No. WO 2009/036497
`(“MacNaughtan”)
`Australian Patent No. AU 2003223314 (“Dewald”)
`European Patent App. No. EP1480393 (“Maletz”)
`European Patent App. No. EP1506688 (“Melpignano”)
`European Patent App. No. EP1642475 (“Sohn”)
`Japanese Patent No. JP3642561 (“Yoshiaki”)
`
`9
`
`Issue/Publication Date
`May 27, 2014
`June 3, 2014
`Jul. 15, 2014
`Sep. 16, 2014
`Oct. 21, 2014
`Jan. 27, 2015
`Aug. 18, 2015
`Sep. 15, 2015
`Dec. 1, 2015
`Feb. 16, 2016
`Aug. 23, 2015
`May 1, 2018
`Oct. 6, 2020
`Apr. 1, 1999
`
`Jan. 3, 2002
`
`Sep. 26, 2002
`
`Jul. 17, 2003
`
`Oct. 2, 2003
`
`Dec. 4, 2003
`
`Mar. 4, 2004
`
`Aug. 19, 2004
`
`Dec. 23, 2004
`
`Jan. 13, 2005
`Oct. 11, 2005
`
`Dec. 21, 2006
`
`Mar. 26, 2009
`
`Oct. 8, 2003
`Nov. 24, 2004
`May 2, 2007
`Apr. 5, 2006
`Aug. 17, 2001
`
`

`

`
`
`Prior Art Patents and Publications
`Japanese Patent No. JP2001339408 (“Masatomo”)
`Japanese Patent No. JP2002027526 (“Keiji”)
`Japanese Patent No. JP2002176403 (“Manabu”)
`Japanese Patent No. JP2002223466 (“Toshiyuki”)
`Japanese Patent No. JP2003099661 (“Jiro”)
`Japanese Patent No. JP2004078277 (“Takayuki”)
`Japanese Patent No. JP2004153449 (“Fumio”)
`Japanese Patent No. JP2004343268 (“Yasuhiro”)
`Japanese Patent No. JP2005268842 (“Yasuhiro”)
`Japanese Patent No. JP2005510821 (“Rankin”)
`Japanese Patent No. JP2005528049 (“Pagonis”)
`Japanese Patent No. JP2006099299 (“Minako”)
`Japanese Patent No. JP2007329839 (“Michihiko”)
`Japanese Patent No. JP2009543221 (“Mechalay”)
`Japanese Patent No. JPH0962998A (“Hiroki”)
`South Korea Patent No. KR100483312 (“Su”)
`South Korea Patent No. KR100678514 (“Ki”)
`South Korea Patent No. KR20060056656 (“Ki”)
`South Korea Patent No. KR20060073860 (“Geun”)
`Chinese Patent No. CN1286072C (“Rankin”)
`
`
`2.
`
`Prior Art Non-Patent Publications
`
`Issue/Publication Date
`Dec. 7, 2001
`Jan. 25, 2002
`Jun. 21, 2002
`Aug. 9, 2002
`Apr. 4, 2003
`Mar. 11, 2004
`May 27, 2004
`Dec. 2, 2004
`Sep. 29, 2005
`Apr. 21, 2005
`Sep. 15, 2005
`Apr. 13, 2006
`Dec. 20, 2007
`Dec. 3, 2009
`Mar. 7, 1997
`Nov. 21, 2003
`Feb. 2, 2007
`May 25, 2006
`Jun. 29, 2006
`Nov. 22, 2006
`
`The following prior art non-patent publications relate to the invalidity of the asserted claims
`
`of the Asserted Patents:
`
`Prior Art Publication
`The GSM System for Mobile Communications
`Rahnema, Moe Overview of the GSM System and
`Protocol Architecture
`Abhaya Asthana et al., An Indoor Wireless System for
`Personalized Shopping Assistance
`Brewer, Eric et al., A Network Architecture for
`Heterogeneous Mobile Computing
`Benelli, G. et al., HIPS: Hyper-Interaction within Physical
`Space
`Oppermann, Reinhard, A Nomadic Information System for
`Adaptive Exhibition Guidance
`Bahl, Paramvir, Radar: An In-Building RF-Based User
`Location and Tracking System
`Afifi, Hossam et al., Applications and Services in Wireless
`Networks
`
`Date of Publication
`1992
`1993
`
`1994
`
`1998
`
`1999
`
`1999
`
`2000
`
`2001
`
`10
`
`

`

`
`
`Prior Art Publication
`Wu et al., Admission Control with Space Borders for
`Wireless Networks
`“802.11 Wireless Networks: The Definitive Guide,” Gast
`et al. (“Gast”)
`Andreas Butz, Taming the Urge to Click, Adapting the
`User Interface of a mobile Museum Guide
`F.J.Gonzalez-Castano, J. Garcia-Reinoso, Bluetooth
`Location Networks
`Hoffmann, Mario et al., Multilateral Security in Mobile
`Applications and Location Based Services
`Takada, Yohei, An Information Service System using
`Bluetooth in an Exhibit Hall
`Hiramatsu, Ayako et al., Operation support for the
`location-aware exhibit information service system using
`Bluetooth communication
`Varshney, Upkar, Location Management for Mobile
`Commerce Applications in Wireless Internet Environment
`Thongthammachart, Saowanee, Bluetooth Enables In-door
`Mobile Location Services
`Myrhaug, Hans et al., AmbieSense – A System and
`Reference Architecture for Personalised Context-Sensitive
`Information Services for Mobile Users
`Kawamura, Nobuyuki, A Pre-Download Method for
`Exhibit Information Service Systems Using Bluetooth
`Light, John et al., The Walkabout architecture for location-
`aware Computing
`Zhang, Jingyuan, Location Management in Cellular
`Networks
`Ungrangsi, Rachanee, An Implementation of Indoor
`Location Detection Systems Based on Identifying Codes
`“MoteTrack: A Robust, Decentralized Approach to RF-
`Based Location Tracking,” Lorincz et al. (“MoteTrack”)
`Lech, Till et al., AmbieAgents: A Scalable Infrastructure
`for Mobile and Context-Aware Information Services
`Priyantha, Nissaka Bodhi, The Cricket Indoor Location
`System
`Bloozy Bluetooth Advertising – Bluetooth Proximity
`Marketing
`Al-Shawabkeh, Mahmoud et al., Proposed Bluetooth
`Middleware Profile for On-location Universal Format
`Announcement
`Munnelly, Jennifer, Context Awareness in Mobile Phone
`Based Applications Using Bluetooth
`
`11
`
`Date of Publication
`2001
`
`2002
`
`2002
`
`2002
`
`2002
`
`2003
`
`2003
`
`2003
`
`2003
`
`2004
`
`2004
`
`2004
`
`2004
`
`2004
`
`2005
`
`2005
`
`2005
`
`2005
`
`2005
`
`2005
`
`

`

`
`
`Prior Art Publication
`Huang, Albert, A Privacy Conscious Bluetooth
`Infrastructure for Location Aware Computing
`Julie A. Kientz et al., Where’s My Stuff? Design and
`Evaluation of a Mobile System for Locating Lost Items for
`the Visually Impaired
`Kawakubo, Saki et al., Wireless Network System for
`Indoor Human Positioning
`Brimicombe, Allan, Mobile Space-Time Envelopes for
`Location- Based Services
`Ratti, Carlo et al., Mobile Landscapes: Using Location
`Data from Cell-Phones for Urban Analysis
`Tang, Karen et al., Putting People in their Place: An
`Anonymous and Privacy-Sensitive Approach to Collecting
`Sensed Data in Location-Based Applications
`Suomela, Riku, Constructing and Examining Location-
`Based Applications and Their User Interfaces by Applying
`Rapid Software Development and Structural Analysis
`Keshav, Travis, Location Management in Wireless
`Cellular Networks
`Mohamed Al-Arag et al., Location-Based Advertising
`Using Bluetooth
`Zaafir Barahim, Low-Cost Bluetooth Mobile Positioning
`for Location-Based Application
`D’Souza, Matthew, Wireless Position Location System for
`Indoor Environments
`Chandra, Ranveer, Beacon-Stuffing: Wi-Fi Without
`Association
`Rooney, S. An Open Source Approach to Wireless
`Positioning Techniques
`Liu, Hui, Survey of Wireless Indoor Positioning
`Techniques and Systems
`Vincent Lenders et al., Location-based Trust for Mobile
`User generated Content: Applications, Challenges and
`Implementations
`Silva, Adriana De Souza, Alien Revolt (2005-2007): A
`Case Study of the First Location-Based Mobile Game in
`Brazil
`Schilit, Bill, The PARCTAB mobile computing system
`The Salutation Consortium: Geographic Computing –
`Enabling New Markets for Hand Held and Palm-Size
`Information Appliances – A Salutation White Paper
`Pascoe, Bob, The Salutation Consortium, Salutation-Lite –
`Finland- Bind Technologies for Mobile Devices, White
`Paper
`
`12
`
`Date of Publication
`2005
`
`2006
`
`2006
`
`2006
`
`2006
`
`2006
`
`2006
`
`2006
`
`2007
`
`2007
`
`2007
`
`2007
`
`2007
`
`2007
`
`2008
`
`2008
`
`Oct. 1993
`Dec. 16, 1998
`
`Jun. 6, 1999
`
`

`

`
`
`Date of Publication
`Jan. 2000
`Jan. 2001
`
`Jan. 2001
`
`Aug. 2001
`
`Aug. 24, 2001
`
`Sep. 2001
`
`Dec. 2001
`
`Jan. 2002
`
`Aug. 1, 2002
`
`Jan. 2003
`
`Oct. 2, 2003
`
`Jan. 2001
`Jun. 19, 2001
`
`Prior Art Publication
`Terziyan, Vagan, Mobile e-Commerce Transaction Model
`Priyanha Nissanka Bodhi, Providing Precise Indoor
`Location Information to Mobile Devices
`Duri, Sastry et al., An approach to providing a seamless
`end-user experience for location-aware applications
`An Inexpensive Bluetooth – Based Indoor Positioning
`ASCII JP – Ericsson, Marubeni and Handspring are
`Japan’s first Bluetooth demonstration experiment
`Roy Want et al., Expanding the Horizons of Location-
`Aware Computing
`Hightower, Jeffrey, A Survey and Taxonomy of Location
`Systems for Ubiquitous Computing
`Cheverst, Keith et al., Using and Determining Location in
`a Context Sensitive Tour Guide
`Banerjee, Suman, Rover Technology: Enabling Scalable
`Location-Aware Computing
`Allen Ka Lun Miu, Design and Implementation of an
`Indoor Mobile Nativation System
`Kaasinen, Eija, User needs for location-aware mobile
`services
`Pfeifer, Tom, Commercial Hybrid IR/RF Local
`Positioning System
`Bernhard Kölmel and Anatol Porak, Real Life Scenarios
`of Location Based Advertising
`Chung, Jen-Yao, Interactive Wireless Electronic Billboard Apr. 2004
`Collins, Jonathan, Lost and Found in Legoland, RFID
`Apr. 28, 2004
`Journal
`Eagle, Nathan, Social Serendipity: Proximity Sensing and
`Cueing
`Lauri Aalto, Nicklas Gothlin, Jani Korhonen, and Timo
`Ojala. Bluetooth and WAP Push Based Location-Aware
`Mobile Advertising System
`Core V2.0 + EDR – Specification Volumes – Specification
`of the Bluetooth System – Master Table of Contents and
`Compliance Requirements
`Ng, CK et al., Enhanced Distance-Based Location
`Management of Mobile Communication Systems Using a
`Cell Coordinates Approach
`Hanlon, Mike, Bluetooth – enabled proximity dating
`service
`3GPP TS 44.018 v 6.12.0
`Sayed, Ali et al., Network-Based Wireless Location –
`Challenges Faced in Developing Techniques for Accurate
`Wireless Location Information
`
`May 2004
`
`Jun. 6, 2004
`
`Nov. 4, 2004
`
`Jan. 2005
`
`Feb. 12, 2005
`
`Apr. 2005
`Jul. 2005
`
`13
`
`

`

`
`
`Prior Art Publication
`3GPP TS 24.007 v 6.5.0
`Mahmud, Uzwani Binti, Mobile Advertising Using
`Bluetooth Pull-Based Technology
`Wang, Zhijun et al., A speed-adaptive strategy for location
`management cost reduction in cellular networks
`Turk, T., Location Based Services (LBS) and Related
`Standards
`3GPP TS 24.008 v 6.15.0
`Applications of location-based services: A Selected
`Review
`Core V2.1 + EDR – Specification Volumes – Specification
`of the Bluetooth System - Master Table of Contents and
`Compliance Requirements
`International Journal of Medical Informatics
`Core V3.0 + HS - Specification Volumes – Specification
`of the Bluetooth System - Master Table of Contents and
`Compliance Requirements
`Core V4.0 + - - Specification Volumes – Specification of
`the Bluetooth System - Master Table of Contents and
`Compliance Requirements
`3GPP TS 45.002 v 6.12.0
`
`
`3.
`
`Prior Art Products and Systems
`
`Date of Publication
`Sep. 2005
`Jan. 2006
`
`Apr. 27, 2006
`
`Sep. 7, 2006
`
`Dec. 2006
`Jun. 2007
`
`Jul. 26, 2007
`
`Oct. 2007
`Apr. 21, 2009
`
`Jun. 30, 2010
`
`Nov. 2015
`
`The following prior art products and systems relate to the invalidity of the asserted claims
`
`of the Asserted Patents:
`
`Date Available
`Prior Art Products/Systems
`2003
`Takada / Kawamura system
`2004
`AmbieSense system
`2005
`MoteTrack System
`2007
`GSM base stations
`2007
`802.11 access points
`Defendants reserve the right to rely on each of the systems identified in the table above as
`
`prior art to the Asserted Patents, including at least the systems described in various claim charts,
`
`for example 804-GSM, 804-802.11, 011-MoteTrack, and 994-MoteTrack. On information and
`
`belief, each of the systems above are prior art to the Asserted Patents under 35 U.S.C. §§ 102(a)
`
`and (b) because they were known or used before the earliest priority date of one or more of the
`
`Asserted Patents.
`
`14
`
`

`

`
`
`In addition to the products in the chart above, Defendants continue to investigate the
`
`identities of the individuals or entities involved in the first sale, offer for sale, or public use of prior
`
`art products that were made using the methods recited by the asserted claims of the Asserted
`
`Patents, and Defendants will produce additional documents relating to the invalidity of the asserted
`
`claims by those products as they become available.
`
`B.
`
`Obviousness
`
`Under 35 U.S.C. § 103, a patent is invalid if the claimed subject matter as a whole would
`
`have been obvious to one of ordinary skill in the art at the time the invention was made. Pre-AIA
`
`35 U.S.C. § 103(a). In general, a claimed invention is unpatentable if the differences between it
`
`and the prior art “are such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person having ordinary skill in the art to which said subject matter
`
`pertains.” Pre-AIA 35 U.S.C. § 103(a); Graham v. John Deere Co., 383 U.S. 1, 13–14 (1966). The
`
`ultimate determination of whether an invention is or is not obvious is a legal conclusion based on
`
`underlying factual inquiries including the (1) scope and content of the prior art; (2) the level of
`
`ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and
`
`(4) objective evidence of nonobviousness. Miles Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 877
`
`(Fed. Cir. 1993); see also Graham, 383 U.S. at 17–18.1
`
`KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) (“KSR”) reaffirmed Graham,
`
`holding that a claimed invention can be obvious even if there is no teaching, suggestion, or
`
`motivation (the “TSM test”) for combining the prior art to produce that invention. In determining
`
`
`
`1 To date, BillJCo has not offered any objective evidence of non-obviousness. Defendants reserve
`the right to supplement their Invalidity Contentions to respond to any such evidence should BillJCo
`raise them in the future.
`
`15
`
`

`

`
`
`whether a claim is obvious, “[o]ften, it will be necessary for a court to look to interrelated teachings
`
`of multiple patents; the effects of demands known to the design community or present in the
`
`marketplace; and the background knowledge possessed by a person having ordinary skill in the
`
`art, all in order to determine whether there was an apparent reason to combine the known elements
`
`in the fashion claimed by the patent at issue.” KSR. at 418. In KSR, the Supreme Court unanimously
`
`rejected the TSM test long used by the United States Court of Appeals for the Federal Circuit to
`
`determine when references can be combined to find a claim obvious under § 103. In its place, the
`
`Court directed the immediate application of a broad, flexible analysis in determining the
`
`patentability/validity of claimed subject matter when tested against the statutory mandate that
`
`claims be non-obvious. Id. at 415.
`
`To be nonobvious, an improvement must be “more than the predictable use of prior art
`
`elements according to their established functions.” KSR at 417. “The proper question [for a court
`
`to ask is] whether a [person] of ordinary skill, facing the wide range of needs created by
`
`developments in the field of endeavor, would have seen a benefit to upgrading” the disclosure of
`
`one prior art reference with that of another. Id. at 424. “Common sense teaches . . . that familiar
`
`items may have obvious uses beyond their primary purposes, and in many cases a person of
`
`ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”
`
`Id. at 420. The person of ordinary skill in the art should not be limited to looking at prior art
`
`designed to solve the same problem nor to approaching that art from the perspective of solving the
`
`problem the patentee claimed to have been solving. Id. at 419–20. Any suggested obviousness
`
`combinations set forth herein are in the alternative to Defendants’ anticipation contentions and are
`
`not to be construed to