Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`Paper: 16
`Entered: July 21, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`HEWLETT PACKARD ENTERPRISE CO., ARUBA NETWORKS, LLC,
`and APPLE INC.,
`Petitioner,
`v.
`BILLJCO LLC,
`Patent Owner.
`_______________
`
`IPR2022-00427
`Patent 10,292,011 B2
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
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`
`
`Paper: 16
`Entered: July 21, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`HEWLETT PACKARD ENTERPRISE CO., ARUBA NETWORKS, LLC,
`and APPLE INC.,
`Petitioner,
`v.
`BILLJCO LLC,
`Patent Owner.
`_______________
`
`IPR2022-00427
`Patent 10,292,011 B2
`_______________
`
`
`Before THU A. DANG, ROBERT J. WEINSCHENK, and
`GARTH D. BAER, Administrative Patent Judges.
`
`DANG, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
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`IPR2022-00427
`Patent 10,292,011 B2
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`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Hewlett Packard Enterprise Co., Aruba Networks, LLC, and Apple
`Inc. (collectively, “Petitioner”) filed a Petition requesting an inter partes
`review of claims 1–3, 9, 11–13, 19, and 20 (the “challenged claims”) of U.S.
`Patent No. 10,292,011 B2 (Ex. 1001, “the ’011 patent”). Paper 4 (“Pet.”).
`BillJCo LLC (“Patent Owner”) filed a Preliminary Response. Paper 8
`(“Prelim. Resp.”). With our authorization, Petitioner filed a Reply to Patent
`Owner’s Preliminary Response. Paper 11 (“Reply”).
`Under 37 C.F.R. § 42.4(a), the Board has authority to determine
`whether to institute an inter partes review. Applying the standard set forth
`in 35 U.S.C. § 314(a), which requires demonstration of a reasonable
`likelihood that Petitioner would prevail with respect to at least one
`challenged claim, we grant Petitioner’s request and institute an inter partes
`review of all challenged claims.
`
`Related Proceedings
`B.
`Petitioner identifies the ’011 patent as the subject of BillJCo, LLC v.
`Cisco Systems., Inc., Case No. 2:21-cv-181 (E.D. Tex); BillJCo, LLC v
`Apple Inc., Case No. 6:21-cv-528 (W.D. Tex.); and BillJCo, LLC v. Hewlett
`Packard Enterprise Co., et al., Case No. 2:21-cv-183 (E.D. Tex). Pet. 3;
`Paper 6, 2 (collectively, “the Related Litigations”).
`
`The ’011 Patent
`C.
`The ’011 patent, titled “System and Method for Location Based
`Exchange Network,” issued on May 14, 2019, from Application No.
`16/147,532, with a filing date of September 28, 2018. Ex. 1001, codes (54),
`
`
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`(45), (21). The ’011 patent relates to “location based services for mobile
`data processing systems,” and more particularly, to “location based
`exchanges [“LBX”] of data between distributed mobile data processing
`systems for locational applications.” Id. at 1:36–40.
`An illustration of an embodiment of the ’011 patent’s location based
`services is depicted in Figures 1A and 1B, reproduced below:
`
`
`
`
`Figure 1A depicts a single mobile data processing system (MS) 2. Id.
`at 29:17–20. As shown in Figure 1A, each MS 2 comprises LBX
`character 4, which is a “processing behavior” that provides each MS with the
`processing ability to participate in an LBX. Id. at 29:21–23. LBX character
`4 in turn includes peer interaction processing (PIP) code 6 for interacting
`
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`with other MSs. Id. at 29:40–43. LBX character 4 further includes PIP data
`8 that comprises permissions 10 and charters 12 through which MS users
`can determine the conditions under which they may want to interact with
`other MSs. Id. at 32:4–15; 38:18–22. Lastly, each MS 2 includes send
`queue 24 and receive queue 26, which are the interfaces through which MSs
`send and receive communication data, respectively, to nearby MSs. Id. at
`30:33–39. For example, these may be notifications or alerts “when MSs are
`newly nearby, or are newly departing being nearby.” Id. at 12:3–12.
`
`
`Figure 1B depicts a location based exchange (LBX) comprising a
`group of MSs that interact with one another in a peer-to-peer manner
`without a service. Id. at 29:17–20; 32:39–43. In an LBX, MSs that are in
`proximity communicate with each other directly through bidirectional or
`
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`unidirectional communication path 42 and provide location features and
`functionality. Id. at 1:41–44; 32:63–67. According to the ’011 patent, in an
`LBX, a “common connected service is not required for location based
`functionality and features.” Id. at 1:40–41.
`
`The Challenged Claims
`D.
`Of the challenged claims (1–3, 9, 11–13, and 19–20), claims 1, 11,
`and 20 are the independent claims. Claims 2–3, and 9 depend from claim 1,
`and claims 12–13, and 19 depend from claim 11. Independent claim 1 is
`illustrative and is reproduced below:
`
`1. A system including one or more sending data processing
`systems wherein each sending data processing system of the
`one or more sending data processing systems comprise:
`
`
`
`one or more processors; and
`
`memory coupled to the one or more processors and storing
`instructions, wherein the one or more processors, based on the
`instructions, perform operations comprising:
`
`periodically beaconing outbound a broadcast
`
`unidirectional wireless data record for physically locating in a
`region of the sending data processing system one or more
`receiving user carried mobile data processing systems, the
`broadcast unidirectional wireless data record received directly
`from the sending data processing system in each receiving user
`carried mobile data processing system of the one or more
`receiving user carried mobile data processing systems, and
`including:
`
`no physical location coordinates of the sending data
`
`processing system,
`
`a data field containing a signal strength of the sending
`data processing system, and
`
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`application context identifier data identifying location based
`content for presenting by a location based application of the
`receiving user carried mobile data processing system to a user
`interface of the receiving user carried mobile data processing
`system upon the receiving user carried mobile data processing
`system determining with a local memory maintained location
`based configuration monitored with background processing of
`the receiving user carried mobile data processing system during
`mobility of the receiving user carried mobile data processing
`system anticipating receipt of the broadcast unidirectional
`wireless data record having the application context identifier
`data in response to a user activating the location based
`application with the user interface of the receiving user carried
`mobile data processing system wherein the location based
`application:
`
`invokes a location based API of the receiving user carried
`
`mobile data processing system for the location based
`configuration anticipating the receipt of the broadcast
`unidirectional wireless data record having the application
`context identifier data,
`
`is notified upon the receipt of the broadcast
`unidirectional wireless data record having the application
`context identifier data configured in the location based
`configuration, and
`
`presents the location based content to the user interface
`
`of the receiving user carried mobile data processing system, the
`location based content originating from another data processing
`system that is remote to both the sending data processing
`system and the receiving user carried mobile data processing
`system.
`
`Ex. 1001, 448:11–67.
`
`Asserted Grounds of Unpatentability
`E.
`Petitioner challenges the patentability of claims 1–3, 9, 11–13, and
`19–20 on the following grounds (Pet. 11–12):
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`
`Claims Challenged
`1–3, 9, 11–13, 19–20
`1–3, 9, 11–13, 19–20
`1–3, 9, 11–13, 19–20
`1–3, 9, 11–13, 19–20
`
`
`
`35 U.S.C. §
`103
`103
`103
`103
`
`References/Basis
`Ribaudo1, Lorincz2
`Ribaudo, Wrappe3
`Ribaudo, Lorincz, Evans4
`Ribaudo, Wrappe, Evans
`
`II. ANALYSIS
`
`A.
`
`Discretionary Denial Under 35 U.S.C. § 314(a)
`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. 21–31. 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
`
`
`1 US Patent Publication No. 2007/0030824 A1, published February 8, 2007,
`filed August 8, 2006 (Ex. 1005, “Ribaudo”).
`2 Lorincz, K. and Welsh, M., MoteTrack: A Robust, Decentralized Approach
`to RF-Based Location Tracking (Ex. 1006, “Lorincz”).
`3 WIPO Publication No. 2005/106523 A1, published November 10, 2005,
`filed April 2, 2004 (Ex. 1008, “Wrappe”).
`4 US Patent No. 6,327,535 B1, issued December 4, 2001, filed April 5, 2000
`(Ex. 1007, “Evans”).
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`deny institution under Fintiv.” Interim Procedure for Discretionary Denials
`in AIA Post-Grant Proceedings with Parallel District Court Litigation
`at 4–5.5 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.
`We agree with Petitioner that discretionary denial is not warranted
`here. Pet. 64. Patent Owner disputes Petitioner’s showing for four claim
`limitations. See generally Prelim. Resp. 6–18. At this stage, we disagree
`with Patent Owner’s arguments. Specifically, as explained below,
`Petitioner’s evidence plainly shows that the combination of Ribaudo and
`Lorincz teaches the first disputed limitation, “periodically beaconing
`outbound a broadcast unidirectional wireless data record for physically
`locating in a region of the sending data processing system one or more
`receiving user carried mobile data processing systems.” See Section
`II.D.4.a.ii. Also, as explained below, Petitioner’s evidence plainly shows
`that Ribaudo in view of Lorincz teaches the second disputed limitation, “a
`data field containing a signal strength of the sending data processing
`system,” wherein Petitioner explains why a skilled artisan would have been
`motivated to include Lorincz’s data field containing a signal strength in
`Ribaudo’s wireless broadcast. See Section II.D.4.a.iii. Also, Petitioner’s
`evidence plainly shows that the combination of Ribaudo and Lorincz teaches
`the third disputed limitation, an “application context identifier data
`
`
`5 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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`identifying location based content for presenting by a location based
`application of the receiving user carried mobile data processing system to a
`user interface of the receiving user carried mobile data processing system.”
`See Section II.D.4.a.iv. Lastly, Petitioner’s evidence plainly shows that the
`combination of Ribaudo and Lorincz also teaches the fourth disputed
`limitation, “wherein the location based application . . . presents the location
`based content to the user interface of the receiving user carried mobile data
`processing system.” See Section II.D.4.a.v.
` Because Petitioner presents compelling evidence of unpatentability at
`this stage, we decline to exercise our discretion under § 314(a) to deny the
`Petition.
`
`B. Claim Construction
`We construe each claim “in accordance with the ordinary and
`customary meaning of such claim 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) (2020). Under this standard, claim terms are generally given
`their plain and ordinary meaning as would have been understood by a person
`of ordinary skill in the art (POSITA) at the time of the invention and in the
`context of the entire patent disclosure. See Phillips v. AWH Corp., 415 F.3d
`1303, 1313 (Fed. Cir. 2005) (en banc).
`
`At this stage of the proceeding, neither Petitioner nor Patent Owner
`proposes any claim construction. Pet. 12–13; See generally Prelim. Resp.
`Therefore, we do not perceive a need to construe any claim terms of the ’011
`patent for purposes of determining whether to institute trial. See, e.g.,
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The
`Board is required to construe ‘only those terms . . . that are in controversy,
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`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)
`(holding that “only those terms need to be construed that are in controversy,
`and only to the extent necessary to resolve the controversy”))); see also
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
`1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes
`review).
`
`C. Principles of Law
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of non-
`obviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`D. Claims 1–3, 9, 11–13, and 19–20 as Obvious over Ribaudo and
`Lorincz (ground 1); and Claims 1–3, 9, 11–13, and 19–20 as
`Obvious over Ribaudo, Lorincz, and Evans (ground 3)
`
`Petitioner contends that Ribaudo and Lorincz render obvious claims
`1–3, 9, 11–13, and 19–20 of the ’011 patent. Pet. 22–51 (ground 1). In
`response, Patent Owner contends that “[t]he Petition fails to demonstrate
`Ribaudo’s disclosure of multiple elements recited by independent claims 1,
`
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`11 and 20 of the ’011 Patent” or that “it would have been obvious to a
`POSITA to combine Ribaudo with Lorincz.” Prelim. Resp. 6.
`Alternatively, Petitioner contends that Ribaudo and Lorincz in further
`view of Evans renders obvious claims 1–3, 9, 11–13, and 19–20 of the ’011
`patent. Pet. 58–61 (ground 3). In response, Patent Owner contends that this
`ground does not “overcome any of the deficiencies in the Petition [with
`respect to ground 1] requiring denial of institution.” Prelim. Resp. 20.
`1.
`Ribaudo
`Ribaudo, titled “System and Method for Providing Communication
`Services to Mobile Device Users Incorporating Proximity Determination,”
`published on February 8, 2007, with a filing date of August 8, 2006.
`Ex. 1005, codes (54), (43), (22). Ribaudo discloses a system and method for
`mobile devices to detect and interact with other mobile devices in proximity
`through communication services. Id. ¶¶ 2, 16. An illustration of Ribaudo’s
`communication services system and method is depicted in Figure 1,
`reproduced below.
`
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`Figure 1 shows a schematic of a communications services system for
`mobile device users. Id. ¶ 15. As shown in Figure 1, mobile devices 12a–b
`are connected to data center 14 through network 16. Users of mobile
`devices 12 provide user information to data center 14 so that data center 14
`can determine matches between mobile users. Id. ¶ 27. Mobile device users
`may submit user profiles to the data center 14 in any suitable manner
`according to particular needs. Id. These user profiles include personal
`information about the user including “interests, affiliations, associations,
`events, business networking, social networking, dating, employment,
`exchanging goods and services, connecting friends and acquaintances,
`12
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`genealogy trees, and other suitable categories.” Id. ¶ 29. Data center 14
`then stores these user profiles in database 32 and compares the user profiles
`of multiple users to generate match data 26, which are downloaded to each
`mobile device 12. Id. ¶¶ 39–41.
`Data center 14 also assigns one or more identifiers for each mobile
`user, including a client ID, field ID, and one more match IDs. Id. ¶ 45. The
`client ID is comprised of a public ID that is transmitted from mobile device
`12 and is used to detect matches in proximity. Id. ¶ 46. The match ID
`includes the comparisons of user profiles made by data center 14 as well as
`the field ID. Id. ¶ 48. The field ID comprises specific data points of a user
`profile that is distributed to matched users. Id. ¶ 47.
`After the match IDs are downloaded, the user of mobile device 12a
`may launch an application on the mobile device in order to detect other
`mobile devices in proximity. Id. ¶ 84. Mobile devices 12 then beacon their
`client IDs to other mobile devices within a suitable range. Id. These client
`IDs are used to determine if there is another client ID within a wireless
`proximity. Id. ¶ 85. Mobile device 12a then uses the matched data, which
`was previously downloaded, to determine if the user of the detected client ID
`is part of the match data 26a for mobile device 12a. Id. Once a match is
`detected, communications between mobile devices may ensue. Id. ¶ 87. For
`example, once mobile devices 12a and 12b are determined to be a match and
`a detection event occurs between them, the field ID may be displayed on
`mobile device 12b to indicate a matched value. Id. ¶ 47. The field ID may
`include a commonality between the two mobile users such as a university
`attended. Id.
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`Lorincz
`2.
`Lorincz, titled “MoteTrack: A Robust, Decentralized Approach to
`RF-Based Location Tracking,” was published in May 2005. Ex. 1006, 42.
`Lorincz discloses a tracking system called MoteTrack, in which the location
`of a mobile node is computed using radio signal strength signatures received
`from various beacon nodes. Id. at Abstract. This allows the location of the
`mobile node to be detected with “meter-level accuracy.” Id. at 1. An
`illustration of Lorincz’s MoteTrack system is depicted in Figure 1,
`reproduced below. Id. at 4.
`
`
`
`
`
`Figure 1 illustrates a method in which the position of mobile node M
`is estimated using signals broadcast from beacons B1–B3. Id. at 4. In the
`MoteTrack system, beacon nodes B1–B3 are distributed throughout an area
`such as a building. Id. These beacon nodes broadcast periodic messages
`comprising sourceID and powerLevel, wherein sourceID represents the
`identification of the beacon, while powerLevel represents the power level
`
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`used to transmit the message. Id. at 4–5. Mobile node M wishing to
`determine its location “listens” to the beacon messages and acquire a
`“reference signature” comprising the combined beacon messages received
`over a period of time. Id. at 5. These beacon messages broadcasting at a
`range of transmission power levels exhibit different characteristics at the
`receiver, which allow the location of the mobile device to be estimated. Id.
`The beacon nodes may vary the transmission power, which increases the
`accuracy of the receiving mobile node’s tracking by “several meters.” Id.
`
`Lorincz provides a real-world example of how the MoteTrack system
`can be implemented. If a fire occurs in a large building, firefighters who
`cannot see because of heavy smoke may be able to determine their location
`using MoteTrack. Id. at 1. The beacon nodes, which have been previously
`installed in the building, can transmit messages to the firefighters who are
`wearing a heads-up display. Id. Using these messages, the location of the
`firefighters may be determined, allowing the firefighters to search for safe
`exit routes. Id.
`3.
`
`Evans
`
`Evans, titled “Location Beaconing Methods and Systems,” issued on
`December 4, 2001, with a filing date of April 5, 2000. Ex. 1007, codes (54),
`(45), (22). Evans discloses “hierarchical tree structures [that] are utilized to
`ascertain a device context or location.” Id. at code (57). An illustration of
`Evans’ hierarchical tree structure is depicted in Figure 2, reproduced below.
`
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`Figure 2 is an illustration of a Master World, which “is a hierarchical tree
`structure that represents a universally acceptable description of the world,”
`and a Secondary World, which “constitute[s] company- or organization-
`specific views of the world that can link with the Master World.” Id. at
`2:39–45. According to Evans, a device may determine its own location
`within a Master World and one or more Secondary Worlds. Id. at 2:33–36.
`As shown in Fig. 2, the Master World is comprised of multiple nodes 202.
`Each node constitutes a “geographic division (e.g., political or natural entity)
`of the Earth.” Id. at 9:64–67. The Secondary World, on the other hand, is
`comprised of multiple nodes 206 and is “defined by a third party
`organization or company and contains nodes that comprise physical and/or
`logical entities that are unique to that organization.” Id. at 13:43–47.
`
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`4.
`
`
`Analysis
`a.
`Independent Claims 1, 11, and 20
`i.
`Preamble: a “system” (claim 1), a
`“method” (claim 11); a “non-transitory
`computer readable medium” (claim 20)
`
`
`
`Petitioner contends that Ribaudo discloses a system for providing
`
`communication services to users of multiple mobile devices 12. Pet. 25–26
`(citing Ex. 1005 ¶ 15, Fig. 1). Petitioner contends Ribaudo teaches that “[i]n
`these systems, each mobile device may include processors, memory, and any
`suitable combination of hardware, software, and firmware.” Pet. 26 (citing
`Ex. 1005 ¶¶ 19, 32–33; Ex. 1004 ¶ 72). Additionally, Petitioner contends
`that “[e]ach mobile device 12 in Ribaudo ‘may include any suitable types of
`devices capable of communicating with other devices’ and, therefore,
`corresponds to the claimed ‘sending data processing system.’” Pet. 26
`(citing Ex. 1005 ¶ 18; Ex. 1004 ¶ 73). Petitioner then contends that “within
`each of these mobile devices, the memory module 22 corresponds to the
`‘memory coupled to the one or more processors and storing instructions.’”
`Id. (citing Ex. 1005 ¶¶ 32–33).
`
`Petitioner also contends that “Ribaudo describes a ‘method for
`proximity determination.’” Pet. 25 (citing Ex. 1005, Abstract; Ex. 1004
`¶ 72). According to Petitioner, a POSITA would have understood that “the
`methods disclosed by Ribaudo would be performed in a location network
`expanse,” which a POSITA would have understood to mean “within the
`coverage area of a network used by Ribaudo’s mobile device.” Id. at 26
`(citing Ex. 1005 ¶¶ 20–21, 24–27; Ex. 1004 ¶ 72). Additionally, Petitioner
`contends that “Ribaudo discloses ‘software . . . to provide the functionality
`
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`described herein,’” wherein this software, when executed, “is operable to
`perform proximity determination techniques,” and therefore “corresponds to
`the claimed ‘non-transitory computer readable medium.’” Pet. 27 (citing
`Ex. 1005 ¶ 19; Ex. 1004 ¶ 74).
`
`At this stage of the proceeding, Patent Owner does not present
`arguments in the Preliminary Response addressing the specific merits of
`Petitioner’s contentions with respect to the preambles. See generally Prelim.
`Resp. 6–18. Having reviewed all of Petitioner’s assertions regarding the
`limitations in the preambles, as well as all supporting evidence, we
`determine on this record that Petitioner has made sufficient showing that the
`combination of Ribaudo and Lorincz (ground 1), and thus, the combination
`of Ribaudo, Lorincz and Evans (ground 3), teach a “system” as recited in
`claim 1, a “method” as recited in claim 11, and a “non-transitory computer
`readable medium” as recited in claim 20.6
`
`ii.
`
`“periodically beaconing outbound a
`broadcast unidirectional wireless data
`record [] for physically locating in a region
`of the sending data processing system one or
`more receiving user carried mobile data
`processing systems” (claims 1, 11, 20)
`
`Petitioner contends that the above claim limitations relate to “the
`
`sending data processing system periodically sending (or ‘beaconing’) an
`outbound signal (referred to as a ‘broadcast unidirectional wireless data
`
`
`6 Because Petitioner has shown that the recitations in the preambles are
`satisfied by the combination of Ribaudo and Lorincz, there is no need at this
`time to determine whether the preambles are limiting. See Realtime Data,
`912 F.3d at 1375.
`
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`record’) to physically locate one or more nearby devices . . . that are ‘in a
`region of the sending data processing system,’” which are “taught and
`rendered obvious by the combination of Ribaudo and Lorincz.” Pet. 27
`(citing Ex. 1001, 448:19–23. 449:35–40, 450:42–47; Ex, 1004 ¶¶ 76–81).
`Petitioner then contends “Ribaudo teaches that, in certain examples, each
`mobile device beacons outbound a signal that includes a ‘client ID’ to alert
`other devices of its presence.” Id. at 28 (citing Ex. 1005 ¶¶ 46, 57, 65;
`Ex. 1004 ¶ 76). According to Petitioner, the “beaconed signal in Ribaudo,
`including the client ID and availability level of the user, corresponds to the
`claimed broadcast unidirectional wireless data record, and the mobile device
`12 beaconing that signal corresponds to the claimed sending data processing
`system.” Id. (citing Ex. 1004 ¶ 76). To support its contentions, Petitioner
`provides an annotated Figure 1 of Ribaudo, as seen below.
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`Annotated Figure 1 of Ribaudo in the Petition shows a communications
`services system for mobile device users. Petitioner contends that Figure 1 of
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`Ribaudo illustrates that “the beaconing of the signal by mobile device 12b to
`nearby mobile devices 12a and 12c is unidirectional.” Id. at 28–29 (citing
`Ex. 1005, Fig. 1; Ex. 1004 ¶ 76). According to Petitioner, “[t]he beaconed
`signal is received by nearby mobile devices, such as cellular telephones or
`any other type of portable devices . . . each of which functions as a
`‘receiving user carried mobile data processing system.’” Id. at 29 (citing Ex.
`1005 ¶¶ 12, 18; Ex. 1004 ¶ 77)). Thus, according to Petitioner, the receiving
`mobile device “can use the received client ID to determine that the receiving
`mobile device is in physical proximity to the sending mobile device.” Id.
`(citing Ex. 1005 ¶¶ 46, 57, 59, 65, 70; Ex. 1004 ¶ 77).
`
`Petitioner further contends that “Lorincz also discloses periodically
`beaconing outbound a signal used for tracking a location of a mobile
`device.” Pet. 29–30 (citing Ex. 1006, 4–5; Ex. 1004 ¶¶ 78–79). In
`particular, Petitioner contends that “Lorincz describes a system in which
`‘beacon nodes broadcast periodic beacon messages’ detectable by a mobile
`node,” wherein “[t]hese signals are used to locate the mobile node within the
`network of beacon nodes.” Id. at 30 (citing Ex. 1006, 4–5; Ex. 1004 ¶ 78).
`According to Petitioner, “Lorincz describes how the system makes location
`determinations: ‘Beacon nodes broadcast periodic beacon messages, which
`consist of a tuple of the format {sourceID, powerLevel},’” wherein each
`mobile node that wishes to use MoteTrack to determine its location “listens
`for some time period to acquire . . . the set of beacon messages received over
`some time interval.” Id. at 31 (citing Ex. 1006, 4–5; Ex. 1004 ¶ 79).
`Petitioner then contends that a POSITA would have been motivated to
`combine Ribaudo and Lorincz because “the techniques of Lorincz, which are
`meant to improve accuracy and efficiency of location determinations, would
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`naturally complement the techniques of Ribaudo for determining the
`proximity of mobile devices.” Pet. 22 (citing Ex. 1004 ¶¶ 65–70).
`According to Petitioner, both Ribaudo and Lorincz “are directed to
`determining a location of one or more mobile devices,” with Lorincz
`disclosing “techniques for more accurately estimating the location of mobile
`devices within a given area,” wherein a POSITA “would have been
`motivated by the desire for increased location accuracy to implement aspects
`of the MoteTrack system described in Lorincz (e.g., the use of signal
`strength to determine device location) in the systems described in Ribaudo.”
`Id. at 22–23 (citing Ex. 1005 ¶¶ 6, 223; Ex. 1006, 1–5; Ex. 1004 ¶¶ 65–69).
`In alternative ground 3, Petitioner also relies on Evans for teaching the
`limitation “a wireless data record.” Pet. 58. Petitioner contends that,
`although “in a Related Litigation,” Petitioner “asserted that 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. (citing Ex. 1009 at
`10-12)), “[w]hile Petitioner[] do[es] not believe that ‘wireless data record’
`needs construction in this proceeding, if the Board requires these fields in
`the wireless data record, they are taught by Evans.” Id. at 58–59 (citing Ex.
`1004 ¶¶ 129–130).
`
`Patent Owner replies that, although Petitioner relies on Ribaudo for
`disclosing the “periodically beaconing” limitation (Prelim. Resp. 10 (citing
`Pet. 28; Ex. 1005 ¶ 46)), “Ribaudo. . . does not disclose outbound broadcast
`of data record for physically locating other users.” Id. at 10–11 (emphasis in
`original). Patent Owner contends that “Ribaudo discloses a method for
`determining whether mobile devices are ‘in proximity to one another’” (id.
`at 11 (citing Ex. 1006, Abstract)), wherein “Ribaudo teaches identification
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`of ‘who’ is nearby but does not disclose broadcast of a physical location as
`taught by the ’011 patent.” Id.
`Although Patent Owner acknowledges that “Lorincz describes RF
`based location tracking where the location of each mobile node (called
`MoteTrack) is computed using a received radio signal strength signature
`from numerous beacon nodes,” Patent Owner contends “Ribaudo and
`Lorincz teach fundamentally different methods.” Prelim. Resp. 12.
`According to Patent Owner, “[t]he Petition’s obviousness argument
`regarding Lorincz [for] this claim element is limited to Lorincz’s alleged
`disclosure of periodic beaconing of Ribaudo’s beaconing system” (id. (citing
`Pet. 30–31)), wherein “the proposed combination does not address
`Ribaudo’s failure to disclose a beaconing outbound a data record for
`physically locating a receiver user.” Id.
`
`We find Patent Owner’s arguments unavailing. In particular, although
`Patent Owner contends that Ribaudo does not teach a data record for
`physically locating one or more receiving user carried mobile processing
`systems (Prelim. Resp. 10–11), as Petitioner points out, Ribaudo’s receiving
`mobile device “can use the received client ID to determine that the receiving
`mobile device is in physical proximity to the sending mobile device.” See
`Pet. 29 (citing Ex. 1005 ¶¶ 46, 57, 59, 65, 70; Ex. 1004 ¶ 77). In particular,
`Ribaudo’s mobile device 12 broadcasts a beaconed signal including a client
`ID to nearby mobile devices that are within a certain range to detect matches
`that are located in proximity to the sending device. Ex. 1005 ¶¶ 46, 57. We
`are unpersuaded by Patent Owner’s contention that Ribaudo merely “teaches
`identification of ‘who’ is nearby,” wherein “location determination” differs
`from “proximity determination.” Prelim. Resp. 6, 11. That is, similar to the
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`’011 patent, which discloses determining whether mobile devices are in
`proximity to communicate with each other directly through bidirectional or
`unidirectional communication path 42 (see Ex. 1001, 1:41–44; 32:63–67),
`Ribaudo’s mobile device 12 broadcasts a beaconed signal to receiving
`mobile devices for determining whether the receiving devices are physically
`located nearby the area/region of mobile
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