Trials@uspto.gov
`571-272-7822
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`
`Paper 41
`Date: June 27, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00426
`Patent 8,761,804 B2
`___________
`
`
`Before THU A. DANG, LYNNE H. BROWNE, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 41
`Date: June 27, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE INC.,
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00426
`Patent 8,761,804 B2
`___________
`
`
`Before THU A. DANG, LYNNE H. BROWNE, and GARTH D. BAER,
`Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
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`IPR2022-00426
`Patent 8,761,804 B2
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`I.
`
`INTRODUCTION
`A. BACKGROUND
`Apple Inc. (“Petitioner”)1 filed a Petition (Paper 4, “Pet.”) requesting
`
`an inter partes review of claims 1 and 10–12 (“the challenged claims”) of
`U.S. Patent No. 8,761,804 B2 (Ex. 1001, “the ’804 patent”). BillJCo, LLC
`(“Patent Owner”) filed a Preliminary Response (Paper 8, “Prelim. Resp.”) to
`the Petition. Pursuant to 35 U.S.C. § 314, we instituted this inter partes
`review as to all of the challenged claims and all grounds raised in the
`Petition. Paper 16 (“Institution Dec.”).
`
`Following institution, Patent Owner filed a Response. Paper 28 (“PO
`Resp.”). Petitioner filed a Reply to Patent Owner’s Response (Paper 34,
`“Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 36, “PO Sur-
`reply”). On April 14, 2023, we held an oral hearing. A transcript of the
`hearing is included in the record. Paper 40.
`
`We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
`Written Decision issued pursuant to 35 U.S.C. § 318(a). For the reasons we
`discuss below, we determine that Petitioner has proven by a preponderance of
`the evidence that claims 1 and 10–12 are unpatentable.
`B. RELATED PROCEEDINGS
`The parties indicate that the ’804 patent is the subject of the following
`district court cases: BillJCo, LLC v. Apple Inc., No. 6:21-cv-00528 (W.D.
`Tex.); BillJCo, LLC v. Cisco Systems, Inc., No. 2:21-cv-00181 (E.D. Tex.)
`
`
`1 Cisco Systems, Inc., Hewlett Packard Enterprise Co., and Aruba
`Networks, LLC were originally parties to this proceeding, but have now been
`terminated. Paper 14; Paper 25.
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`(“ED Litigation”); and BillJCo, LLC v. Hewlett Packard Enterprise
`Company, No. 2:21-cv-00183 (E.D. Tex.). Pet. 1; Paper 6, 2.
`C. REAL PARTY IN INTEREST
`The parties identify themselves as the real parties in interest. Pet. 1;
`Paper 6, 2.
`
`D. THE ’804 PATENT
`The ’804 patent “relates generally to location based services for mobile
`data processing systems, and more particularly to location based exchanges
`of data between distributed mobile data processing systems for locational
`applications.” Ex. 1001, 1:20–24. The ’804 patent’s claims recite a “sending
`data processing system,” that accesses four types of information associated
`with the sending data processing system: “identity information,” “application
`information,” “location information,” and “reference information.” Id.
`at 117:60–118:7. The four types of accessed information are combined into a
`“broadcast unidirectional wireless data record” that the sending data
`processing system transmits to “receiving mobile data processing systems in
`a wireless vicinity of the sending data processing system.” Id. at 118:24–52.
`E. CHALLENGED CLAIMS
`Of the challenged claims, claim 1 is independent. Claim 1 is
`
`reproduced below.
`
`1. A method by a sending data processing system, the
`method comprising:
`accessing, by the sending data processing system, identity
`information for describing an originator identity associated with
`the sending data processing system;
`accessing, by
`the sending data processing system,
`application information for an application in use at the sending
`data processing system;
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`accessing, by the sending data processing system, location
`information associated with the sending data processing system;
`accessing, by the sending data processing system, reference
`information for further describing the location information
`associated with the sending data processing system;
`preparing, by the sending data processing system, a
`broadcast unidirectional wireless data record including:
`the identity information for describing the originator
`identity associated with the sending data processing system,
`the application information for the application in use at the
`sending data processing system,
`the location information associated with the sending data
`processing system, and
`the reference information for further describing the
`location information associated with the sending data processing
`system;
`maintaining, by the sending data processing system, a
`configuration for when to perform beaconing of the broadcast
`unidirectional wireless data record; and
`transmitting, by the sending data processing system, 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 wherein the
`broadcast unidirectional wireless data record is beaconed by the
`sending data processing system in accordance with
`the
`configuration for when to perform beaconing, and wherein the
`broadcast unidirectional wireless data record includes at least:
`the identity information for describing the originator
`identity associated with the sending data processing system
`wherein the identity information is for an alert determined by each
`receiving mobile data processing system of the plurality of
`receiving mobile data processing systems that the each receiving
`mobile data processing system is in the wireless vicinity of the
`sending data processing system,
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`the application information for the application in use at the
`sending data processing system,
`the location information associated with the sending data
`processing system to be used by the each receiving mobile data
`processing system for determining their own location relative to
`the location information, and
`the reference information for further describing the
`location information associated with the sending data processing
`system for describing to the each receiving mobile data
`processing system useful information associated with the sending
`data processing system.
`
`
`Ex. 1001, 117:60–118:52.
`F. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 15.
`
`
`
`Claims Challenged
`1, 10–12
`1, 10–12
`
`35 U.S.C. §2 References/Basis
`103
`Himmelstein3, Myr 4
`103
`Himmelstein, Myr, Evans5
`PRELIMINARY MATTERS
`II.
`A. LEVEL OF ORDINARY SKILL
`Petitioner argues that a person of ordinary skill in the art would have
`had “a bachelor’s degree in computer science, computer engineering, or an
`equivalent, as well as two years of professional experience, and a POSITA
`would have had a working knowledge of hardware and software for location
`
`
`2 Because the challenged claims of the challenged patent have an effective
`filing date before March 16, 2013, we apply the pre-AIA (“America Invents
`Act”) version of § 103. Leahy-Smith America Invents Act (“AIA”), Pub. L.
`No. 112-29, 125 Stat. 284, 285–88 (2011).
`3 U.S. 7,123,926 B2, Oct. 17, 2006 (Ex. 1005, “Himmelstein”).
`4 U.S. 2003/0014181 A1, published Jan. 16, 2003 (Ex. 1006, “Myr”).
`5 U.S. 6,327,535 B1, Dec. 4, 2001 (Ex. 1007, “Evans”).
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`tracking of mobile devices,” and that “[l]ack of work experience can be
`remedied by additional education and vice versa.” Pet. 8 (citing Ex. 1004
`¶ 34). Patent Owner does not contest Petitioner’s description. PO Resp. 13.
`We adopt Petitioner’s description as it is consistent with the prior art and
`patent specification before us and supported by credible expert testimony.
`See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art
`itself may reflect an appropriate level of skill).
`B. CLAIM CONSTRUCTION
`In an inter partes review, the claims of a patent shall be construed
`using the same claim construction standard that would be used to construe the
`claims in a civil action under 35 U.S.C. § 282(b), including construing the
`claims in accordance with the ordinary and customary meaning of such
`claims as understood by one of ordinary skill in the art and the prosecution
`history pertaining to the patent. 37 C.F.R. § 42.100(b); see also Phillips v.
`AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). Under that standard,
`and absent any special definitions, we give claim terms their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). We construe claim terms only as relevant to the
`parties’ contentions and only to the extent necessary to resolve the issues in
`dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.,
`868 F.3d 1013, 1017 (Fed. Cir. 2017).
`1. Beacon
`This term appears in several forms (i.e., “beaconing” and “beaconed”)
`in claim 1. Citing several extrinsic dictionary definitions, Patent Owner
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`contends beaconing means more than just simply transmitting, but rather
`transmitting with the intent of locating the transmitter. PO Resp. 15–17.
`Petitioner argues the term’s ordinary meaning is not limited to locating, and
`no further express construction is needed. Pet. Reply 2–5.
`We agree with Petitioner. The ’804 patent’s specification equates
`beaconing with a simple periodic broadcast. See Ex. 1001, 113:35–56
`(explaining that “[s]ervice(s) associated with antennas periodically broadcast
`(beacon) their reference whereabouts . . . for being received by MSs in the
`vicinity”); id. at 29:66–67 (describing “a continuous, or pulsed, broadcast or
`beaconing by the antenna”). Moreover, Patent Owner’s construction is
`problematic because claim 1 already has language that accounts for the
`location-related features that Patent Owner seeks to add through its claim
`construction. Specifically, claim 1 requires that the beaconed broadcast
`includes “location information associated with the sending data processing
`system to be used by the each receiving mobile data processing system for
`determining their own location relative to the location information and the
`reference information for further describing the location information
`associated with the sending data processing system.” Ex. 1001, 118:43–49.
`To the extent Patent Owner seeks to change the location-related features to
`something different from what the claim expressly recites, we decline to do
`so. We agree with Petitioner that no additional express construction is
`necessary to determine patentability.
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`2. "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”
`This language appears in claim 1. Patent Owner asserts we should
`construe this term to preclude a defined network of devices, and to require
`transmission directly to the wireless devices in the vicinity of the sending
`data processing system. PO Resp. 19. Petitioner argues the term’s ordinary
`meaning does not preclude a defined network of devices, and no further
`express construction is needed. Pet. Reply 2, 5–6. We agree with Petitioner.
`As Petitioner notes, nothing in the disputed claim language precludes a
`defined network of devices and the ’804 patent’s specification expressly
`describes “locating as many MSs as possible in a wireless network.” Pet.
`Reply 6 (quoting Ex. 1001, 4:42–44 (emphasis added)). Likewise, neither
`the at-issue claim language nor the specification precludes a transmission to
`the receiving system through an intermediary. Thus, we decline to limit this
`term to direct transmissions, as Patent Owner suggests. We agree with
`Petitioner that no additional express construction is necessary to determine
`patentability.
`C. SUMMARY OF PRIMARY ASSERTED PRIOR ART REFERENCES
`1. Himmelstein (Ex. 1005)
`Himmelstein discloses “a system and method for providing
`information to users based on the user’s location.” Ex. 1005, code (54).
`Figure 1 is reproduced below.
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`Figure 1 depicts “a vehicle communication system.” Id. at 2:26.
`Himmelstein’s “vehicle communication system 10 generally includes one or
`more base stations 14, each of which is in wireless communication with a
`plurality of remote units 16.” Id. at 2:60–63. “Each mobile unit 16 can
`communicate with another mobile unit 16, the closest base station 14, or the
`base station 14 which provides the strongest communication signal.” Id.
`at 2:65–3:1. According to Himmelstein, “[c]ommunications between mobile
`units 16 . . . are accomplished through a stream of transmitted
`communication packets.” Id. at 4:31–33. These packets include “a plurality
`of information fields which can be generally categorized by three different
`functional groups: 1) transmission administrative information 55; 2) sender
`information 56; and 3) receiver information 57.” Id. at 4:52–56.
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`2. Myr (Ex.1006)
`Myr teaches “[t]he process of collecting and transmitting cell phone
`position data is well known” and “it is time and cost effective if the data are
`received in the form of periodic data packets in real time, such as, 1 to 3
`minutes.” Ex. 1006 ¶¶ 91–92.
`
`III. UNPATENTABILITY ANALYSIS
`A. OBVIOUSNESS OF CLAIM 1
`Petitioner argues that claim 1 would have been obvious over
`Himmelstein and Myr. Pet. 19–49. For the reasons explained below, we find
`Petitioner has shown by a preponderance of evidence that claim 1 would have
`been obvious over Himmelstein and Myr.
`1. Disputed Elements
`Claim 1 requires
`
`the sending data processing system, a
`maintaining, by
`configuration for when to perform beaconing of the broadcast
`unidirectional wireless data record; and transmitting, by the
`sending data processing system, 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 wherein the broadcast unidirectional wireless
`data record is beaconed by the sending data processing system in
`accordance with
`the configuration for when to perform
`beaconing.
`Ex. 1001, 118:21–31. Petitioner relies on Himmelstein for teaching the
`claimed unidirectional wireless broadcast, and adds Myr for teaching periodic
`transmission as a time- and cost-effective method of transmission. See
`Pet. 20–21, 41–42.
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`Specifically, Petitioner explains, “Himmelstein discloses the
`preparation of communication packet 50, which corresponds to the claimed
`broadcast unidirectional wireless data record.” Id. at 41 (citing Ex. 1004
`¶ 97). Himmelstein further teaches transmitting the communication packet
`wirelessly from one mobile unit to other units within the sending unit’s
`wireless vicinity. Id. at 41–42 (citing Ex. 1005, 2:65–3:1, 7:16–19, 7:48–52).
`Although Himmelstein does not teach beaconing its wireless data record in
`accord with a maintained configuration for when to do so, Petitioner explains
`that Myr discloses that feature and a skilled artisan would have been
`motivated to employ Myr’s transmission strategy so that “the sending device
`[would] only provide the signal at advantageous times and thereby make the
`most efficient use of the power of the sending device.” Id. at 21; see id. at 42
`(citing Ex. 1006, ¶¶ 92, 96). In contesting obviousness, Patent Owner raises
`several arguments related to this element. We address these arguments
`below.
`
`a. “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”
`Patent Owner argues that Himmelstein does not teach claim 1’s
`“transmitting” to mobile units because in Himmelstein, all communications
`are processed through and controlled by a base station (in Himmelstein’s
`primary embodiment) or a master node (in Himmelstein’s piconet
`architecture). PO Resp. 26–27. According to Patent Owner, in both of
`Himmelstein’s embodiments there is no communication directly from one
`mobile unit to other mobile units “because transmission[s] must be processed
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`through a central base station controller or ‘master’ device.” Id. at 27. We
`disagree with Patent Owner’s argument for several reasons.
`First, Patent Owner’s argument is premised on its construction of
`“transmitting . . . the broadcast unidirectional wireless data,” which we do not
`adopt for the reasons explained above in Section II.B.2. In addition, we
`agree with Petitioner that Himmelstein teaches claim 1’s “transmitting,” even
`under Patent Owner’s construction—i.e. “the wireless data record . . . is
`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.” PO Resp. 19; see Pet. Reply 9–11. Even though, as Patent Owner
`explains, in Himmelstein’s piconet architecture, “a ‘master’ device would
`take the place of the base station controller” (PO Resp. 26), nothing in
`claim 1 precludes using a master device as the sending system. Rather, as
`Petitioner explains, in Himmelstein’s piconet architecture, “the primary or
`master device is the ‘sending data processing system’” that can “talk directly
`to other mobile units,” without an intervening base station. Pet. Reply 11
`(quoting Ex. 1005, 7:49–52).
`In light of the Petition’s analysis and for the reasons explained above,
`we agree with Petitioner that Himmelstein’s piconet embodiment teaches
`“transmitting . . . the broadcast unidirectional wireless data record for receipt
`by a plurality of receiving mobile data processing system[s],” as claim 1
`requires.
`
`b. Beaconing the Broadcast Unidirectional Wireless Data
`Record
`Patent Owner also argues that Petitioner’s obviousness challenge fails
`because Petitioner’s asserted combination does not teach the claimed
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`“beaconing.” PO Resp. 20–23. Specifically, according to Patent Owner,
`“[u]nlike a beacon, there is no disclosure in Myr of a signal that is designed
`to attract attention to a specific location or that is intended to indicate the
`position of something.” PO Resp. 22. We disagree with Patent Owner’s
`argument for several reasons.
`First, Patent Owner’s argument is premised on its construction of
`beaconing, which we reject for the reasons explained above in Section II.B1.
`In addition, we agree with Petitioner that the asserted combination of
`Himmelstein and Myr teaches beaconing, even under Patent Owner’s
`construction—i.e. “send[ing] out a radio signal to show the position of
`something.” PO Resp. 16; see Pet. Reply 7–9. As Petitioner explains,
`Himmelstein teaches transmitting the sending station’s location information,
`which then “may be used by each receiving mobile data processing system
`for determining their own location relative to the location information.”
`Pet. 46; see Ex. 1005, 10:26–29. Thus, even if Patent Owner is correct in its
`characterization of Myr, that argument does not undermine obviousness
`because it is undisputed that Himmelstein teaches the alleged missing feature
`from Myr and the only feature Petitioner relies on Myr for is configured,
`periodic transmission. See Pet. 20–21 (explaining that in Himmelstein,
`“there is no discussion of whether the signal is continuously or periodically
`beaconed out,” but that “Myr teaches a POSA that its system is configured to
`periodically beacon its signal”); see also id. at 42 (explaining Petitioner’s
`reliance on Myr for periodic transmission). In other words, Patent Owner’s
`argument is not persuasive because it attacks Myr individually, rather than
`the combined teachings of Himmelstein and Myr that are asserted in the
`Petition. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
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`In light of the Petition’s analysis and for the reasons explained above,
`we agree with Petitioner that together, Himmelstein and Myr teach claim 1’s
`“beaconing” a broadcast unidirectional wireless data record according to a
`maintained configuration for when to do so, as claim 1 requires.
`c. Petitioner's Rationale for Combining Himmelstein and Myr
`The Petition explains in detail why one skilled in the art would have
`been motivated to include Myr’s periodic transmission in Himmelstein’s
`system signal. See Pet. 26–30. Specifically, Petitioner explains, with
`relevant support from Dr. Long, that a skilled artisan “would have been
`motivated to use Myr’s teaching of periodic beaconing of its signals in order
`to provide accurate location information while using as little power as needed
`from the device.” Pet. 21 (citing Ex. 1004 ¶ 58). Petitioner goes on to
`explain that “[b]y adopting the beaconing aspect of Myr, the Himmelstein
`system would have been able to have the sending device only provide the
`signal at advantageous times and thereby make the most efficient use of the
`power of the sending device.” Id. Petitioner also asserts that its proposed
`combination of Himmelstein and Myr is an obvious combination of
`Himmelstein’s system with Myr’s periodic transmission, yielding only
`predictable results. Pet. Reply 12–13 (citing KSR Intern. Co. v. Teleflex Inc.,
`550 U.S. 398, 416–422 (2007)).
`Patent Owner raises several arguments in contesting whether a skilled
`artisan would have combined Himmelstein and Myr. First, Patent Owner
`argues that conserving power was not a concern in Himmelstein because
`Himmelstein’s mobile devices were “interfaced with the vehicle’s
`electromechanical system” and thus could run off the vehicle’s generator
`instead of batteries. PO Resp. 30. We disagree with this argument because
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`using power more efficiently is beneficial, regardless of the power source.
`See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021)
`(determining that the Board’s rejection of “increasing energy efficiency,” as a
`motivation to combine lacked substantial evidence). Moreover, nothing in
`Patent Owner’s argument undermines that Petitioner’s proposed combination
`amounts to no more than using a known technique in a known device,
`yielding only predictable results, and therefore obvious under KSR’s
`framework. See PO Resp. 28–31; PO Sur-reply 12–14.
`Next, Patent Owner contends Himmelstein teaches away from the
`proposed combination because it “expressly states that systems based on cell
`phones are not appropriate in its system.” PO Resp. 30 (citing Ex. 1005,
`1:28–35). We disagree with this argument because, as Petitioner explains,
`the at-issue passage in Himmelstein’s background section addresses
`conventional communication environments, but does not extend to the
`improved communication environment in Himmelstein on which Petitioner
`relies. See Pet. Reply 13–14. To the contrary, right after Patent Owner’s
`asserted Himmelstein passage that disparages cell phones, Himmelstein states
`that “[t]he present invention . . . eliminates these pitfalls.” Ex. 1005,
`1:54–55. Thus, we agree with Petitioner that Himmelstein does not teach
`away from Petitioner’s proposed combination.
`Last, Patent Owner argues that a skilled artisan would not have
`combined Himmelstein’s seven-unit piconet embodiment with Myr because
`doing so would subvert Myr’s overall purpose of “gathering and aggregating
`traffic information from a large number of cell phones across a wide
`geographic area.” PO Resp. 31. We disagree with this argument because the
`intended purpose of Myr’s overall system is not relevant to Petitioner’s
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`combination, which uses only Myr’s periodic transmission in Himmelstein’s
`piconet-architecture system. See Pet. 20–21, 42. Patent Owner does not
`point to anything in Myr that undermines Petitioner’s combination—i.e.,
`using Myr’s periodic transmission in Himmelstein’s system of a small
`number of cell phones, across a narrow geographic area.
`Given Petitioner’s explanation that Myr’s periodic transmission would
`be a time- and cost-effective method of transmission in Himmelstein’s
`system, Petitioner has articulated sufficient reasoning with rational
`underpinning to support the legal conclusion that its proffered combination
`would have been obvious. See KSR, 550 U.S. at 418. In addition, we agree
`with Petitioner that its proposed combination would have been obvious
`because it amounts to no more than using a known technique (Myr’s periodic
`transmission) in a known device (Himmelstein’s mobile units), yielding the
`predictable result of a mobile unit that periodically transmits information.
`See Pet. Reply 13; KSR, 550 U.S. at 417.
`2. Additional Undisputed Elements in Claim 1
`Petitioner asserts that Himmelstein and Myr teach the additional,
`undisputed elements in claim 1. See Pet. 22–49. Specifically, Petitioner
`corresponds Himmelstein’s identification number 70 to claim 1’s “identity
`information” because it provides a unique identification for the sending
`mobile unit. Pet. 26. Petitioner corresponds Himmelstein’s communication
`identifier field 65 to claim 1’s “application information” because it identifies
`whether the communication is a voice or data transmission. Id. at 27–28.
`Petitioner corresponds Himmelstein’s position 72 to claim 1’s “location
`information” because it represents the sending mobile unit’s position. Id.
`at 31. Petitioner corresponds Himmelstein’s acceleration, deceleration, or
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`direction/heading to claim 1’s “reference information” because it further
`describes location information associated with the sending data processing
`system. Id. at 34. Next, Petitioner explains that Myr teaches maintaining a
`configuration for when records are transmitted, as well as transmitting
`records in accord with the maintained configuration, as claim 1 requires. Id.
`at 38–40, 42. Other than the arguments addressed above, Patent Owner does
`not additionally challenge Petitioner’s showing for claim 1. We have
`reviewed Petitioner’s arguments and evidence and, based on Petitioner’s
`analysis outlined above, we agree with Petitioner that Himmelstein and Myr
`teach each element in claim 1.
`3. Objective Indicia of Nonobviousness
`Patent Owner asserts that objective evidence of nonobviousness
`demonstrates that the challenged claims were not obvious. See PO Resp. 32–
`41. We address Patent Owner’s arguments below.
`a. Copying
`Patent Owner suggests that evidence of copying supports that the
`challenged claims are not obvious. PO Resp. 33–38. According to Patent
`Owner, we should infer copying based on Petitioner’s access to the
`’804 patent and Petitioner’s release of products that embody the challenged
`claims. Id. (citing Liqwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1138
`(Fed. Cir. 2019). As the court in Liqwd recognized, access to a patent
`coupled with circumstantial evidence showing changes to a competitor’s
`design can be sufficient to support copying. Liqwd, Inc. v. L’Oreal
`USA ,Inc., 941 F.3d 1133, 1138 (Fed. Cir. 2019). This may happen when, for
`example, “the defendant’s engineering design team had settled on one design
`and ‘suddenly changed direction’ to adopt a feature disclosed in the patent as
`
`17
`
`
`
`IPR2022-00426
`Patent 8,761,804 B2
`
`soon as it issued.” Id. (quoting DePuy Spine, Inc. v. Medtronic Sofamor
`Danek, Inc., 567 F.3d 1314, 1328 (Fed. Cir. 2009)).
`Here, we find the circumstantial evidence is not sufficient to suggest
`that Petitioner copied the patented technology. As Petitioner notes, the only
`alleged access involves unsolicited communications between 2010 and 2014
`sent to Petitioner’s agent seeking to monetize Patent Owner’s then-pending
`patent applications. See Pet. Reply 16–17; PO Resp. 34–35. Patent Owner
`further alleges that “[i]n or around June 2013,” Petitioner “publicly
`announced its rollout of [ ] iOS7,” which Patent Owner alleges embodies the
`challenged claims. PO Resp. 35–38. These general allegations are not
`sufficient to infer that Petitioner changed its design to incorporate the
`patented features based on its access to Patent Owner’s technology. See
`Liqwd, 941 F.3d at 1138 (noting the “primary concern . . . to avoid treating
`mere infringement as copying simply because the claims of a patent arguably
`read on a competitor product”).
`b. Commercial Success
`Patent Owner suggests that evidence of commercial success further
`supports that the challenged claims are not obvious. Specifically, according
`to Patent Owner, the claimed features were commercially successful because
`“Petitioner touted the claimed features of the invention in connection with
`products using the iBeacon technology covered by the ’804 Patent.” PO
`Resp. 38. In addition, Patent Owner asserts that several companies “have
`entered into licensing agreement[s] pertaining to the patented technology
`covered by the ’804 patent.” Id. at 39.
`We find Patent Owner’s evidence unconvincing for several reasons.
`First, the alleged touting relates to the products’ functionality, not their
`
`18
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`
`IPR2022-00426
`Patent 8,761,804 B2
`
`commercial success. See PO Resp. 38–39 (citing Ex. 2028). In addition,
`Patent Owner’s licensing is unconvincing because, as Petitioner notes, the
`asserted licenses address some 30+ patents, only one of which is the
`’804 patent, and Patent Owner “failed to provide any evidence regarding the
`weight or importance of the ’804 Patent to these agreements.” Pet. Reply 21.
`In sum, we have reviewed Patent Owner’s arguments and evidence
`regarding objective evidence of non-obviousness and, for the reasons
`outlined above, do not find them persuasive enough to outweigh Petitioner’s
`evidence that the challenged claims would have been obvious.
`4. Claim 1 Conclusion
`Other than the arguments addressed above, Patent Owner does not
`additionally challenge Petitioner’s showing for claim 1. We have reviewed
`Petitioner’s arguments and evidence and, based on Petitioner’s analysis
`outlined above, we find that Petitioner has shown by a preponderance of
`evidence that claim 1 would have been obvious over Himmelstein and Myr.
`B. OBVIOUSNESS OF DEPENDENT CLAIMS 10–12
`Petitioner presents evidence explaining how Himmelstein teaches the
`additional features recited in dependent claims 10–12. See Pet. 50–59. Other
`than the arguments discussed above for claim 1, Patent Owner does not
`additionally challenge Petitioner’s obviousness showing for claims 10–12.
`Having reviewed the arguments and weighed the evidence, we agree with
`Petitioner that Himmelstein teaches the additional features recited in claims
`10–12. Thus, we find Petitioner has shown by a preponderance of evidence
`that claims 10–12 would have been obvious over Himmelstein and Myr.
`
`19
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`IPR2022-00426
`Patent 8,761,804 B2
`
`
`C. ALTERNATIVE OBVIOUSNESS GROUND
`Petitioner adds an additional reference, Evans, for an alternative
`ground challenging claims 1 and 10–12. Pet. 59–60. Because Petitioner has
`shown these same claims would have been obvious without adding Evans, we
`do not address these alternative grounds.
`
`IV. CONCLUSION
`For the foregoing reasons, we determine Petitioner has demonstrated
`
`by a preponderance of the evidence that claims 1 and 10–12 of the
`’804 patent are unpatentable. 6 Our conclusions are summarized in the
`following table.
`
`
`Claim(s)
`
`
`35
`U.S.C.
`§
`1, 10–12 103
`1, 10–12 103
`
`Overall
`Outcome
`
`
`
`Reference(s)/Basis
`
`Himmelstein, Myr
`Himmelstein, Myr,
`Evans7
`
`
`Claims
`Shown
`Unpatentable
`1, 10–12
`
`
`Claims
`Not shown
`Unpatentable
`
`
`
`1, 10–12
`
`
`
`
`6 Should Patent Owner wish to pursue amendment of the challenged claims in
`a reissue or reexamination proceeding su
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