Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 16
`Date: July 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT PACKARD ENTERPRISE CO., ARUBA NETWORKS, LLC.,
`APPLE INC.
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00426
`Patent 8,761,804 B2
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`571-272-7822
`
`
`
`
`Paper 16
`Date: July 12, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`HEWLETT PACKARD ENTERPRISE CO., ARUBA NETWORKS, LLC.,
`APPLE INC.
`Petitioner,
`
`v.
`
`BILLJCO LLC,
`Patent Owner.
`____________
`
`IPR2022-00426
`Patent 8,761,804 B2
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`IPR2022-00426
`Patent 8,761,804 B2
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`Hewlett Packard Enterprise Co., Aruba Networks, LLC, and Apple
`Inc. (together, “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. With our authorization, Petitioner filed a Reply to Patent
`Owner’s Preliminary Response. Paper 11 (“Reply”).
`An inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Further, a
`decision to institute may not institute on fewer than all claims challenged in
`the petition. 37 C.F.R. § 42.108(a). Based on the arguments and evidence
`of record, Petitioner demonstrates a reasonable likelihood of prevailing in
`showing that at least one of the challenged claims of the ’804 patent is
`unpatentable. Accordingly, we institute an inter partes review as to the
`challenged claims of the ’804 patent on all the grounds of unpatentability in
`the Petition.
`B. Related Matters
`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. originally was a party to this proceeding, but has now
`been terminated. Paper 14.
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`2
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`IPR2022-00426
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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. 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,” which
`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.
`D. Illustrative Claim
`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;
`accessing, by the sending data processing system, location
`information associated with the sending data processing system;
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`Patent 8,761,804 B2
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`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,
`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
`
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`Patent 8,761,804 B2
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`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.
`E. Evidence
`Petitioner submits the following evidence:
`
`Exhibit
`No.
`1004
`1005
`1006
`1007
`
`Evidence
`Declaration of Darrell D.E. Long
`U.S. 7,123,926 B2, Oct. 17, 2006 (“Himmelstein”)
`U.S. 2003/0014181 A1, published Jan. 16, 2003 (“Myr”)
`U.S. 6,327,535 B1, Dec. 4, 2001 (“Evans”)
`F. Asserted Grounds
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds:
`Claims Challenged
`1, 10–12
`1, 10–12
`
`References/Basis
`35 U.S.C. §
`Himmelstein, Myr
`103
`Himmelstein, Myr, Evans
`103
`II. ANALYSIS
`A. Discretionary Denial based on Fintiv
`Relying on the framework from Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”),
`Patent Owner argues we should deny the Petition based on related district
`court cases. Prelim. Resp. 9–19. We disagree.
`“[W]here the PTAB determines that the information presented at the
`institution stage presents a compelling unpatentability challenge, that
`determination alone demonstrates that the PTAB should not discretionarily
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`deny institution under Fintiv.” Interim Procedure for Discretionary Denials
`in AIA Post-Grant Proceedings with Parallel District Court Litigation at
`4–5.2 Further, “[c]ompelling, meritorious challenges are those in which the
`evidence, if unrebutted in trial, would plainly lead to a conclusion that one or
`more claims are unpatentable by a preponderance of the evidence.” Id. at 4.
`Here, we agree with Petitioner that “[t]he merits of Petitioners’
`arguments are strong.” Pet. 70. Patent Owner disputes Petitioner’s showing
`for two claim limitations. See Prelim. Resp. 5–9. At this stage, we disagree
`with Patent Owner’s arguments. Specifically, as explained below,
`Petitioner’s evidence plainly shows that Himmelstein teaches the first
`disputed limitation: “reference information for further describing the
`location information associated with the sending data processing system.”
`See Section II.E.1. As also explained below, Petitioner’s evidence further
`plainly shows that Myr teaches the second disputed feature: “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.” See Section II.E.2. Because Petitioner presents compelling
`evidence of unpatentability at this stage, we decline to exercise our
`discretion under § 314(a) to deny the Petition.
`B. Level of Ordinary Skill in the Art
`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
`
`
`2 Available at
`https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion
`ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf.
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`Patent 8,761,804 B2
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`would have had a working knowledge of hardware and software for location
`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 propose a description of the level of ordinary
`skill in the art or dispute Petitioner’s description. At this stage, we agree
`with and adopt Petitioner’s description.
`C. Claim Construction
`Neither party proposes an express construction for any claim terms.
`Pet. 9; Prelim. Resp. 2 n.1. We determine that no claim terms require
`express construction for purposes of this Decision. See Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (“we need only construe terms ‘that are in controversy, and only
`to the extent necessary to resolve the controversy’” (quoting Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).
`D. Description of Primary 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.
`Hamelstein’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.
`E. Unpatentability Analysis
`In its first asserted unpatentability grounds, Petitioner argues that
`claims 1 and 10–12 would have been obvious over Himmelstein and Myr.
`Pet. 19–59. Petitioner relies primarily 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 id. at 10–16, 20–21. Petitioner further adds Evans for its second
`asserted unpatentability grounds, in case “the claimed wireless data record
`should be construed to require ‘at least a date/time stamp field, a location
`field, and a confidence field.’” Id. at 60; see id. at 61 (citing Ex. 1007).
`Patent Owner raises several arguments in contesting Petitioner’s showing,
`which we address below.
` “reference information”
`1.
`The challenged claims require “accessing . . . reference information
`for further describing the location information associated with the sending
`data processing system.” Ex. 1001, 118:4–7. Petitioner explains that
`Himmelstein teaches this feature because Himmelstein’s microprocessor
`“calculate[s] the speed, direction, and acceleration or deceleration rate of
`the vehicle,” and places that information in communication packets. Pet. 34
`(quoting Ex. 1005, 3:58–61).
`
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`Patent Owner contends Petitioner’s challenge fails because “[t]he
`acceleration of a vehicle in Himmelstein does not ‘further describ[e]’ its
`‘location.’” Prelim. Resp. 7. According to Patent Owner, “[t]he vehicle is
`in the exact same location whether it is increasing speed, slowing down,
`maintaining a steady speed (whether zero or non-zero).” Id.
`We disagree with Patent Owner’s argument for several reasons. First,
`Patent Owner ignores that, in addition to acceleration/deceleration,
`Petitioner relies on Himmelstein’s direction for the claimed “reference
`information.” See Pet. 34. At this stage, we agree with Petitioner that a
`vehicle’s direction is “reference information for further describing the
`location information associated with the sending data processing system,” as
`recited in claim 1.3 In addition, we also disagree with Patent Owner that
`Himmelstein’s acceleration/deceleration is not reference information.
`Prelim. Resp. 7. Although the vehicle’s acceleration/deceleration may not
`impact its position at any one moment, acceleration/deceleration would
`impact its future location. Thus, we agree with Petitioner that
`acceleration/deceleration is “reference information for further describing the
`location information” as claimed. Further, as Petitioner notes, the ’804
`patent itself characterizes “accelerometer values” as “Location Reference
`Info[rmation].” Ex. 1001, 61:2, 20–21; see Pet. 32. We decline to read into
`the claims a current-location requirement that would exclude the
`specification’s accelerometer embodiment. See Nellcor Puritan Bennett,
`
`
`3 As Petitioner notes, the ’804 patent characterizes “heading” as “Location
`Reference Info[rmation],” which confirms that Himmelstein’s direction is
`likewise “reference information for further describing the location
`information,” as recited in claim 1. Ex. 1001, 61:2, 20; see Pet. 32.
`
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`Inc. v. Masimo Corp., 402 F.3d 1364, 1368 (Fed. Cir. 2005) (“[A]
`construction that excludes all of the embodiments of an invention is rarely, if
`ever, correct.” (internal quotation marks omitted)). At this stage, we agree
`with Petitioner that Himmelstein teaches “accessing . . . reference
`information for further describing the location information associated with
`the sending data processing system,” as claim 1 requires.
`2. “beacon[ing]. . . in accordance with the configuration for
`when to perform beaconing”
`The challenged claims further recite “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, 118:29–31. Petitioner relies on Myr for teaching this
`feature. See Pet. 42. Specifically, Petitioner explains, “Myr discloses a
`maintained configuration for when cell phone records are beaconed from the
`cell phones (i.e., periodically every 1 to 3 minutes) in order to obtain traffic
`information.” Id. (citing Ex. 1006, ¶¶ 92, 96; Ex. 1004 ¶ 98).
`Patent Owner argues that Myr is deficient because “Myr does not
`disclose periodic beaconing.” Prelim. Resp. 8. Instead, Patent Owner
`asserts, Myr describes “the receipt of data from ‘the cell phone network
`operator’, who ‘collect[s] and transmit[s] cell phone position data.’” Id.
`(quoting Ex. 1006 ¶ 91).
`At this stage, we disagree with Patent Owner’s argument. The at-
`issue passage in Myr states “[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. To the extent Patent Owner is arguing
`Myr discloses periodic receipt rather than transmission, we disagree because
`
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`transmission and reception are two sides of the same interaction, so Myr’s
`transmission strategy seemingly would match its reception strategy. To the
`extent Patent Owner is asserting Myr’s transmission is from the wrong
`party—i.e., from a network operator rather than from a cell phone—that
`argument fails because the only feature Petitioner relies on Myr for is
`periodic transmission, regardless of source/destination. 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). Thus, at this stage, we agree with Petitioner that Myr teaches
`periodic transmission—i.e., “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,” as recited in claim 1.
`3. Uncontested Elements
`Other than the arguments outlined above, Patent Owner does not
`additionally challenge Petitioner’s analysis. We have reviewed Petitioner’s
`arguments and the underlying evidence cited in support, see Pet. 19–63, and
`are persuaded that, at this stage, Petitioner demonstrates a reasonable
`likelihood of prevailing in showing that the challenged claims are
`unpatentable over the asserted prior art.
`III. CONCLUSION
`Petitioner demonstrates a reasonable likelihood of prevailing in
`showing the unpatentability of at least one of the challenged claims of the
`’804 patent. At this stage of the proceeding, we have not made a final
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`determination with respect to the patentability of any of the challenged
`claims.
`
`IV. ORDER
`
`It is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1 and 10–12 of the ’804 patent is instituted with respect to
`all grounds of unpatentability set forth in the Petition; and
`FURTHER ORDERED that, pursuant to 35 U.S.C. § 314(c) and
`37 C.F.R. § 42.4(b), inter partes review of the ’804 patent shall commence
`on the entry date of this Order, and notice is hereby given of the institution
`of a trial.
`
`
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`IPR2022-00426
`Patent 8,761,804 B2
`
`PETITIONER:
`
`Jeffrey Blake
`jblake@merchantgould.com
`
`Andrew Sommer
`sommera@gtlaw.com
`
`Larissa Bifano
`Larissa.bifano@dlapiper.com
`
`Elana Araj
`araje@gtlaw.com
`
`Dan Stier
`kstier@merchantgould.com
`
`Rose Prey
`preyr@gtlaw.com
`
`
`PATENT OWNER:
`
`Brian Michalek
`Brian.michalek@saul.com
`
`Joseph Kuo
`Joseph.kuo@saul.com
`
`Brian Landry
`Brian.landry@saul.com
`
`
`14
`
`
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