UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`GOOGLE LLC,
`
`Petitioners
`
`v.
`
`RYAN HARDIN and ANDREW HILL,
`
`Patent Owners.
`
`Case IPR2022-01329
`
`U.S. Patent No. 10,049,387
`
`Petition for Inter Partes Review of
`
`U.S. Patent No. 10,049,387
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`Table of Contents
`
`INTRODUCTION ........................................................................................... 1
`I.
`GROUNDS FOR STANDING ........................................................................ 2
`II.
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 3
`III.
`IV. OVERVIEW OF THE ’387 PATENT ............................................................ 3
`A.
`The Shared Specification ...................................................................... 3
`B.
`Prosecution History .............................................................................10
`1.
`The ’094 Application ................................................................13
`2.
`The ’392 Application ................................................................13
`3.
`The ’204 Application ................................................................15
`4.
`The ’285 Application ................................................................17
`5.
`The ’961 Application ................................................................18
`6.
`The ’786 Application ................................................................19
`OVERVIEW OF THE PRIOR ART REFERENCES ...................................20
`A.
`Hardin ’665 .........................................................................................20
`B.
`Salmre ..................................................................................................20
`LEVEL OF ORDINARY SKILL IN THE ART ...........................................21
`VI.
`VII. CLAIM CONSTRUCTION ..........................................................................21
`VIII. DETAILED EXPLANATION OF GROUNDS ............................................22
`A.
`The ’387 Patent Claims Are Not Supported by the Disclosure of the
`’094 or ’392 Application .....................................................................22
`The ’387 Patent’s Priority Date ...........................................................27
`i
`
`V.
`
`B.
`
`

`

`C.
`
`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`X.
`
`IX.
`
`Hardin ’665 in View of Salmre Renders Claims 19-28 and 33-34
`Obvious................................................................................................28
`POSAs WOULD HAVE BEEN MOTIVATED TO COMBINE HARDIN
`’665 AND SALMRE ......................................................................................62
`PTAB DISCRETION UNDER 35 U.S.C. §314(a) SHOULD NOT
`PRECLUDE INSTITUTION ........................................................................68
`XI. MANDATORY NOTICES UNDER 37 C.F.R. §42.8 ..................................70
`A.
`Real Parties-in-Interest ........................................................................70
`B.
`Related Matters ....................................................................................70
`C.
`Lead and Backup Counsel ...................................................................72
`D.
`Service Information .............................................................................72
`E.
`Power of Attorney ...............................................................................72
`XII. FEES ..............................................................................................................72
`
`ii
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`PETITIONERS’ EXHIBIT LIST
`
`DESCRIPTION
`U.S. Patent No. 10,049,387
`File History of U.S. Patent No. 10,049,387 (Application No.
`15/694,786)
`Declaration of David H. Williams
`Curriculum Vitae of David H. Williams
`U.S. Patent Publication No. US 2010/0279665 A1 (“Hardin
`’665”)
`U.S. Patent Publication No. US 2006/0116817 A1 (“Salmre”)
`U.S. Patent No. 8,433,296 (“the ’296 patent”)
`File History of U.S. Patent No. 8,433,296 (Application No.
`12/434,094)
`U.S. Patent No. 8,977,247 (“the ’247 patent”)
`File History of U.S. Patent No. 8,977,247 (Application No.
`13/856,392)
`U.S. Patent No. 9,286,625 (“the ’625 patent”)
`File History of U.S. Patent No. 9,286,625 (Application No.
`14/608,285)
`U.S. Patent Publication No. US 2014/0279018 A1 (“the ’018
`publication”)
`File History of U.S. Patent Application No. 14/292,204 (“the
`’204 application”)
`U.S. Patent No. 9,779,418
`File History of U.S. Patent No. 9,779,418 (Application No.
`15/009,961)
`USPTO Memo: Interim Procedure for Discretionary Denials in
`AIA Post-Grant Proceedings with Parallel District Court
`Litigation, June 21, 2022
`Complaint – Hardin et al. v. Samsung Elecs. Co., Ltd. et al.,
`2:21-cv-00290-JRG, ECF No. 1 (E.D. Tex. July 30, 2021)
`Return of Service – Hardin et al. v. Samsung Elecs. Co., Ltd. et
`al., 2:21-cv-00290-JRG, ECF No. 4 (E.D. Tex. Aug. 9, 2021)
`United States District Courts – National Judicial Caseload
`Profile, https://www.uscourts.gov/sites/default/files/
`fcms_na_distprofile0331.2022.pdf (last visited July 26, 2022)
`Plaintiffs’ Objections And Response To Defendants’ Second
`
`iii
`
`Exhibit No.
`1001
`1002
`
`1003
`1004
`1005
`
`1006
`1007
`1008
`
`1009
`1010
`
`1011
`1012
`
`1013
`
`1014
`
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`DESCRIPTION
`Set Of Interrogatories To Plaintiff, Hardin et al. v. Samsung
`Elecs. Co., Ltd. et al., 2:21-cv-00290-JRG, served July 1, 2022
`Geofencing, Techopedia,
`https://www.techopedia.com/definition/14937/geofencing (last
`visited July 26, 2022)
`Jonathan P. Munson & Vineet K. Gupta, Location-Based
`Notification as a General-Purpose Service, Proceedings of the
`2nd International Workshop on Mobile Commerce 40 (2002)
`What We Do, Locating What’s Important To You, Cell-Loc,
`http://web.archive.org/web/20030411221815/http://cell-
`loc.com/what_locating.html (last visited July 26, 2022)
`Alan Cohen, Location, Location, Location, PC Mag., available
`at
`https://books.google.com/books?id=eIvagv988JgC&pg=PA82#
`v=onepage&q&f=false (last visited July 26, 2022)
`U.S. Patent No. 7,133,685
`U.S. Patent No. 7,164,986
`U.S. Patent No. 8,536,999
`U.S. Patent Publication No. US 2008/0094256 A1
`Plaintiffs’ Claim Construction Brief – Hardin et al. v. Samsung
`Elecs. Co., Ltd. et al., 2:21-cv-00290-JRG, ECF 58 (E.D. Tex.
`July 8, 2022)
`Defendants’ Claim Construction Brief – Hardin et al. v.
`Samsung Elecs. Co., Ltd. et al., 2:21-cv-00290-JRG, ECF 67
`(E.D. Tex. July 25, 2022)
`U.S. Patent No. 8,010,134
`U.S. Patent No. 10,380,636
`Letter from Andrew Trask to Rex Mann, dated August 2022
`
`Exhibit No.
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`1027
`1028
`1029
`1030
`
`1031
`
`1032
`1033
`1034
`
`iv
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`LISTING OF CHALLENGED CLAIMS
`
`Reference
`
`[19.pre]
`
`Claim Limitation
`Claim 19
`A method comprising:
`
`[19.a]
`
`[19.b]
`
`[19.c]
`
`[19.d]
`
`[19.e]
`
`sending a request, via a particular application program executing in
`a mobile device, to at least one program of computer executable
`instructions operating in the mobile device, to reserve a particular
`selected geographic area of interest for having a specific identifier
`associated with the particular selected geographic area of interest
`provided to the particular application program
`
`after it has been determined that the mobile device has at least
`entered the particular selected geographic area of interest,
`
`wherein the request comprises data representing a) the specific
`identifier to be associated with the particular selected geographic
`area of interest,
`
`b) a particular latitude value, a particular longitude value, and a
`particular radius value to be used for establishing a particular
`perimeter boundary for the particular selected geographic area of
`interest, and c) information specifying at least one particular area
`bound by the particular perimeter boundary as the particular
`selected geographic area of interest, and wherein the at least one
`program of computer executable instructions comprises at least one
`instruction for:
`
`receiving, on the mobile device, from an application program
`during its execution in the mobile device, one or more requests to
`reserve at least one selected geographic area of interest, wherein
`the at least one selected geographic area of interest in each of the
`one or more requests is being requested via said application
`program to be reserved for having a particular identifier associated
`with the at least one selected geographic area of interest provided
`to said application program
`
`v
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`after it has been determined, by at least use of at least one
`processor tangibly embodied by the mobile device and of location
`information representing at least one physical geographic location
`of the mobile device as determined by a location-determination
`component tangibly embodied by the mobile device, that the
`mobile device has at least entered the at least one selected
`geographic area of interest, and
`
`wherein each of the one or more requests comprises data
`representing a) said particular identifier, represented by a data
`string, as content provided via said application program to be
`associated with the at least one selected geographic area of interest,
`
`b) at least one latitude value, at least one longitude value, and at
`least one radius value, each being provided via said application
`program, to be used for establishing a perimeter boundary for the
`at least one selected geographic area of interest, and c) information
`specifying at least one area bound by the perimeter boundary as the
`at least one selected geographic area of interest;
`
`registering said application program, in a memory tangibly
`embodied by the mobile device, for having said particular
`identifier provided to said application program after it has been
`determined, by at least use of the at least one processor and of the
`location information, that the mobile device has at least entered the
`at least one selected geographic area of interest;
`
`storing, in the memory, at least one record, for said application
`program, associated with said particular identifier and the at least
`one selected geographic area of interest;
`
`obtaining the location information representing at least one
`physical geographic location of the mobile device as determined
`by the location-determination component; and
`
`after it has been determined, by at least use of the at least one
`processor, of the location information, and of the at least one
`selected geographic area of interest associated with the at least one
`record stored in the memory for said application program, that the
`mobile device has at least entered the at least one selected
`vi
`
`[19.f]
`
`[19.g]
`
`[19.h]
`
`[19.i]
`
`[19.j]
`
`[19.k]
`
`[19.l]
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`geographic area of interest associated with the at least one record
`stored in the memory and has remained therein for at least a
`designated length of time,
`
`[19.m]
`
`providing at least said particular identifier associated with the at
`least one record stored in the memory to said application program.
`
`Claim 20
`
`[20.pre]
`
`The method of claim 19, further comprising:
`
`[20.a]
`
`implementing, in the mobile device, the at least one program of
`computer executable instructions.
`
`[21.pre]
`
`[21.a]
`
`Claim 21
`The method of claim 19 wherein the at least one program of
`computer executable instructions further comprises at least one
`instruction for:
`
`determining, by at least use of the at least one processor, of the
`location information, and of the at least one selected geographic
`area of interest associated with the at least one record stored in the
`memory for said application program, that the mobile device has at
`least entered the at least one selected geographic area of interest
`associated with the at least one record stored in the memory and
`has remained therein for at least the designated length of time.
`
`[22.pre]
`
`The method of claim 21 wherein:
`
`Claim 22
`
`[22.a]
`
`storing the at least one record includes storing the at least one
`record after availability for the at least one selected geographic
`area of interest to be reserved per each of the one or more requests
`has been positively determined; and
`
`[22.b]
`
`the at least one program of computer executable instructions
`
`vii
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`further comprises at least one instruction for: determining
`availability for the at least one selected geographic area of interest
`to be reserved for said application program.
`
`[23.pre]
`
`[23.a]
`
`Claim 23
`The method of claim 21, further comprising:
`
`after the providing at least said particular identifier associated with
`the at least one record stored in the memory to said application
`program wherein said application program is the particular
`application program, displaying, on the mobile device via a
`graphical user interface tangibly embodied by the mobile device
`and via the particular application program, content related to the at
`least one selected geographic area of interest.
`
`Claim 24
`
`[24.pre]
`
`The method of claim 21, further comprising:
`
`[24.a]
`
`creating a notification indicating that the mobile device has at least
`entered the at least one selected geographic area of interest
`associated with the at least one record stored in the memory
`wherein the at least one selected geographic area of interest is the
`particular selected geographic area of interest.
`
`Claim 25
`
`[25.pre]
`
`The method of claim 21 wherein the at least one program of
`computer executable instructions further comprises at least one
`instruction for:
`
`[25.a]
`
`receiving a data value representing the designated length of time.
`
`[26.pre]
`
`The method of claim 21
`
`Claim 26
`
`viii
`
`

`

`[26.a]
`
`[27.pre]
`
`[27.a]
`
`[28.pre]
`
`[28.a]
`
`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`wherein the at least one instruction for receiving, on the mobile
`device, from an application program during its execution in the
`mobile device, one or more requests to reserve at least one selected
`geographic area of interest includes being at least one instruction
`for receiving, on the mobile device, from at least one other
`application program during its execution in the mobile device, one
`or more other requests to reserve at least one other selected
`geographic area of interest.
`
`Claim 27
`The method of claim 26 wherein the at least one program of
`computer executable instructions further comprises at least one
`instruction for:
`
`using the at least one selected geographic area of interest with said
`particular identifier to establish, in the memory, the at least one
`selected geographic area of interest in each of the one or more
`requests as an area reserved for content related to said application
`program and not an area reserved for content related to the at least
`one other application program.
`
`Claim 28
`The method of claim 25 wherein the at least one program of
`computer executable instructions further comprises at least one
`instruction for:
`
`providing at least said particular identifier associated with the at
`least one record stored in the memory to said application program
`after it has been determined, by at least use of the at least one
`processor, of the location information, and of the at least one
`selected geographic area of interest associated with the at least one
`record stored in the memory for said application program, that the
`mobile device, following a designated start time and during a
`designated duration of time, has at least entered the at least one
`selected geographic area of interest and has remained therein for at
`
`ix
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`least the designated length of time; and
`
`[28.b]
`
`receiving a data value representing the designated duration of time.
`
`[33.pre]
`
`The method of claim 22, further comprising:
`
`Claim 33
`
`[33.a]
`
`[34.pre]
`
`[34.a]
`
`[34.b]
`
`after the providing at least said particular identifier associated with
`the at least one record stored in the memory to said application
`program wherein said application program is the particular
`application program, displaying, on the mobile device via a
`graphical user interface tangibly embodied by the mobile device
`and via the particular application program, content related to the at
`least one selected geographic area of interest.
`
`Claim 34
`The method of claim 22 wherein:
`
`the at least one instruction for receiving, from an application
`program during its execution in the mobile device, one or more
`requests to reserve at least one selected geographic area of interest
`includes being at least one instruction for receiving, from at least
`one other application program during its execution in the mobile
`device, one or more other requests to reserve at least one other
`selected geographic area of interest; and
`
`the at least one program of computer executable instructions
`further comprises at least one instruction for: using the at least one
`selected geographic area of interest with said particular identifier
`to establish, in the memory, the at least one selected geographic
`area of interest in each of the one or more requests as an area
`reserved for content related to said application program and not an
`area reserved for content related to the at least one other
`application program.
`
`x
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`I.
`
`INTRODUCTION
`
`This Petition presents a compelling case of obviousness based on the broken
`
`priority chain of Patent 10,049,387 (“’387 patent”). As explained, although the
`
`’387 patent purports to claim priority to an application filed in 2009, that
`
`application provides no written description support for a critical limitation found in
`
`every claim of the ’387 patent. Specifically, each independent claim requires
`
`“receiving, on the mobile device, from an application program during its execution
`
`in the mobile device, one or more requests to reserve” a geographic location. The
`
`2009 application, however, discloses receiving such a request only from a
`
`“sponsor”—which is disclosed as an entirely separate entity not located on the
`
`mobile device.
`
`An examiner of an intermediate application in the purported priority chain
`
`recognized precisely this issue. Following a claim amendment attempting to
`
`conflate the “application program” and the “sponsor,” the examiner rejected the
`
`claims based on, inter alia, §112. As the examiner pointed out, the specification
`
`contained no support for the notion of the “sponsor” and the “application program”
`
`being one and the same; rather, as the examiner explained, the application
`
`developer and sponsor are “two different parties.” (EX1014, 90-91.) Patent
`
`Owners (“POs”) never responded to that §112 rejection, and instead abandoned the
`
`application and pursued the subject matter in a later-filed application before a
`
`1
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`different examiner.
`
`The inability of the ’387 patent to claim priority to the 2009 application is
`
`fatal to the validity of its claims. The 2009 application was published in 2010 as
`
`Hardin ’665—a patent publication with an identical specification as the ’387
`
`patent. The next application in the chain leading to the ’387 patent, meanwhile,
`
`was not filed until 2013. Thus, because the ’387 patent is not entitled to its 2009
`
`priority date, Hardin ’665 is necessarily prior art.
`
`Unsurprisingly, Hardin ’665 discloses nearly all of what the ’387 patent
`
`claims. And the missing claim limitation—namely, receiving, on a mobile device,
`
`a request from an application program on the mobile device—is supplied expressly
`
`by Salmre, a 2006 patent publication. Together, Hardin ’665 and Salmre present a
`
`compelling case for obviousness of the challenged claims.
`
`Accordingly, Samsung Electronics Co., Ltd., Samsung Electronics America,
`
`Inc., and Google LLC (“Petitioners”) request inter partes review (“IPR”) of claims
`
`19-28 and 33-34 of the ’387 patent.1
`
`II. GROUNDS FOR STANDING
`
`Petitioners certify that the ’387 patent is available for IPR, and that
`
`1 Together with two concurrently filed petitions, Petitioners request IPR of ’387
`
`patent claims 1-34.
`
`2
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`Petitioners are not barred or estopped from requesting this review of the challenged
`
`claims. Petitioners file this Petition within one year of service of POs’ complaint
`
`against Petitioners. (EX1019.)
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioners respectfully request review and cancellation under 35 U.S.C.
`
`§311 of claims 19-28 and 33-34 in view of:
`
`Prior Art
`
`2010/0279665 (“Hardin ’665”), published 11/4/2010; prior art under AIA 35
`U.S.C. §102(a)(1) (EX1005)
`
`2006/0116817 (“Salmre”), published 6/1/2006; prior art under AIA 35 U.S.C.
`§102(a)(1) (EX1006)
`
`Ground
`
`Claims
`
`Basis
`
`1
`
`19-28, 33-34 Obviousness based on Hardin ’665 in view of
`Salmre.
`
`IV. OVERVIEW OF THE ’387 PATENT
`
`A.
`
`The Shared Specification
`
`The ’387 patent issued on 8/14/2018, from Application 15/694,786.
`
`(EX1001.) The ’387 patent purports to claim priority through a series of
`
`applications to Application 12/434,094 (“’094 application”) (which published as
`
`Hardin ’665), filed 5/1/2009. (Id.) The ’387 patent and each of the purported
`
`3
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`priority applications share the same specification. (EX1001; EX1007; EX1009;
`
`EX1011; EX1013; EX1015.)
`
`The specification describes a system that uses a centralized “content delivery
`
`platform” for registering applications on a mobile device for content delivery.
`
`(EX1001, Abstract.) The operator of the content delivery platform establishes
`
`geographic areas, which a sponsor can reserve via the content delivery platform for
`
`delivery of content associated with that sponsor to a particular application on the
`
`mobile device. (Id., Abstract, 1:61-65.) When the mobile device enters a
`
`sponsor’s reserved geographic area, the content delivery platform delivers that
`
`sponsor’s content to the application on the mobile device. (Id., Abstract, 2:2-5.)
`
`According to the specification, “sponsors” can (i) reserve geographic areas, and (ii)
`
`provide “advertisements or other content controlled by the sponsor” to the content
`
`delivery platform for later delivery to mobile devices. (See, e.g., EX1001, 3:10-16,
`
`9:13-15.)
`
`Figure 1 of the ’387 patent illustrates the architecture of the system
`
`originally disclosed in the ’094 application (and published as Hardin ’665),
`
`including a content delivery platform (in red), a developer (in green), sponsors (in
`
`yellow), and mobile devices (in blue):
`
`4
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`(Id., FIG. 1 (annotated).) The specification explains:
`
`System 100 can provide for exclusive delivery of
`
`advertising or other content to registered applications
`
`running on mobile devices located within a particular
`
`proximity to a reserved geographic area…. Content
`
`delivery platform 112 receives a request from developer
`
`platform 108 to register a program or other application
`
`for use on mobile devices. Content delivery platform
`
`112 can use the registered application program to provide
`5
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`selected content to mobile devices.
`
`(Id., 3:17-29; see also id., 9:58-10:2, 10:7-10.) The specification explains that a
`
`sponsor can reserve geographic areas by sending requests to the content delivery
`
`platform:
`
`Sponsor A 121, sponsor C 123, or sponsor B 125 can
`
`reserve an exclusive interest in a particular geographic
`
`area by sending a request to content delivery platform
`
`112.… The request can also include time limitations,
`
`limitations based on the length of time a mobile device
`
`remains within a given geographic area, or other desired
`
`limitations.
`
`(Id., 3:40-51; see also id., FIG. 4 (“Receive Sponsor’s request for selected area”),
`
`2:27-36 (“the content delivery system reserves exclusive interests in geographic
`
`areas for particular sponsors based on the sponsors’ requests”), 3:6-16 (“Sponsors
`
`can reserve an exclusive interest, or in some embodiments a semi-exclusive
`
`interest, in a geographic area….”), 3:30-39 (“a geographical area reserved by one
`
`or more of the sponsors.”), 9:3-6 (“a method 400 for allowing sponsors to reserve
`
`particular geographic areas”), 9:13-15 (“These geographic areas are areas the
`
`sponsor wishes to reserve….”), 9:36-51 (“a sponsor’s request for a selected area
`
`6
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`is received”).)2 The specification further explains that “the sponsor can establish
`
`perimeters defining geographic areas” or the geographic areas may be predefined.
`
`(Id., 9:11-35.)
`
`The architecture described in the specification includes “sponsors” that
`
`communicate with content delivery platform 112. (Id., 3:40-51.) Each sponsor
`
`can reserve with the content delivery platform geographic areas for content
`
`delivery to mobile devices when the device “physically enters or remains within
`
`the sponsor’s reserved area for a desired length of time.” (Id., 4:13-5:29, 9:52-
`
`10:2; see also id., 2:15-26.) The delivered content can include advertisements, still
`
`images, animations, videos, audio, alphanumeric identifiers, or other content. (Id.)
`
`Importantly, nothing in the specification indicates that the geographic area is
`
`reserved by an application running on the mobile device. (EX1003, ¶¶68, 105-
`
`110.) Indeed, there is no reference to any entity other than a sponsor reserving a
`
`geographic area. (Id.) That is, there is no disclosure of a registered application
`
`running on a mobile device requesting to reserve a geographic area.
`
`Figure 2 depicts a user of registered application 231 located within a first
`
`sponsor’s reserved area 207 and an object of interest 233 located in a second
`
`sponsor’s reserved area 205:
`
`2 All bold/italics/underline added unless noted.
`
`7
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`(EX1001, FIG. 2, 5:52-56.) Although Figure 2 shows that registered application
`
`231 sends “request 213” to content delivery platform 212, request 213 is a request
`
`for content, not a request to reserve a geographic area. (Id., 6:4-35; see also id.,
`
`1:65-2:2, 11:54-57.) Further, request 213 may include “information indicating the
`
`location of object of interest 233, a request for content, information indicating the
`
`location of registered application 231, information indicating the identity of the
`
`registered application 231, and a previously received request identifier.” (Id., 6:6-
`
`12.) Nothing in the specification discloses that an application program can request
`
`to reserve a geographic area. (EX1003, ¶¶70, 106-108.)
`
`In addition, the specification describes the content delivery platform as a
`8
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`separate component that is remote from the mobile device. (EX1001, 12:1-21
`
`(“[T]he mobile device can forward information associated with a target location
`
`to the content delivery platform, or the content delivery server can obtain location
`
`information from a third party application or device…or otherwise.”); see also id.,
`
`FIGs. 1-3, 3:30-34 (“a registered application program is provided to mobile
`
`devices by developer platform 108, content delivery platform 112…”), 11:46-49
`
`(“a method of interaction between a mobile device and a content providing
`
`platform”), 11:66-12:1 (“[A] session can be initiated between the application on
`
`the mobile device, and the content delivery platform.”).) For example, the
`
`specification explains that the content delivery platform communicates with
`
`multiple mobile devices (and therefore cannot be hosted on the mobile devices).
`
`(Id., FIG. 3, 7:12-35; see also id., 10:3-19 (“[M]ultiple devices may execute copies
`
`of the same registered application…and multiple different registered applications
`
`may be executed on multiple devices.”).) The specification also explains that the
`
`content delivery platform communicates with mobile devices via the internet and
`
`communication towers. (Id., FIG. 1, 3:52-4:12 (“System 100 can include a
`
`network, for example Internet 131, through which content delivery platform 112,
`
`can communicate to other networked devices; and communication towers
`
`144….”).) POSAs would have understood that if the content delivery platform
`
`was on the same mobile device as the registered application, then it would not need
`9
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`to communicate with the mobile device via the internet or communication towers.
`
`(EX1003, ¶¶113-115.)
`
`Indeed, the specification explains that the content delivery platform “may be
`
`implemented in a processing system executing a set of instructions stored in
`
`memory, or on a removable computer readable medium,” such as that shown in
`
`Figure 7. (EX1001, 13:3-18; see also id., FIG. 7, 2:38-44.) POSAs would have
`
`understood that such a generic statement, especially when made in the context of
`
`the entire specification, does not provide any teaching that the content delivery
`
`platform is implemented on a mobile device. (EX1003, ¶116.) Moreover, the
`
`specification explains that the content delivery platform can be implemented in
`
`hardware and/or software. (EX1001, 13:44-53.) Nothing in the specification
`
`discloses a content delivery platform implemented on the same mobile device as
`
`the registered application programs. (EX1003, ¶¶111-118.)
`
`B.
`
`Prosecution History
`
`To demonstrate why the ’387 patent’s priority date is no earlier than
`
`1/29/2015, and not the 5/1/2009 filing date of its ultimate parent application, a
`
`discussion of the prosecution histories of the application chain is necessary. The
`
`’387 patent was filed on 9/2/2017, as Application 15/694,786 (“’786 application”).
`
`(EX1001, Cover.) The ’387 patent was filed as a continuation of Application
`
`15/009,961 (“’961 application”), which was filed 1/29/2016 and issued as Patent
`
`10
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`9,779,418 (EX1015) (“’418 patent”). (EX1002, 11.) The ’418 patent was filed as
`
`a continuation of Application 14/608,285 (“’285 application”), which was filed
`
`1/29/2015 and issued as Patent 9,286,625 (EX1011) (“’625 patent”). (Id.) The
`
`’625 patent was filed as a continuation of Application 13/856,392 (“’392
`
`application”), which was filed 4/3/2013 and issued as Patent 8,977,247 (EX1009)
`
`(“’247 patent”). (Id.) The ’247 patent was filed as a continuation of the ’094
`
`application, which was filed 5/1/2009, published as Hardin ’665 on 11/4/2010, and
`
`issued as Patent 8,433,296 (EX1007) (“’296 patent”). (Id.) In addition,
`
`Application 14/292,204 (“’204 application”) was filed as a division of the ’392
`
`application, but was later abandoned. (EX1013.) This is the ’387 patent’s family
`
`tree3:
`
`3 Petitioners have also filed IPR petitions challenging the parent and child
`
`applications of the ’387 patent.
`
`11
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`Appl. 12/434,094
`Patent 8,433,296
`Filed 5/1/09
`Issued 4/30/13
`
`Appl. 13/856,392
`Patent 8,977,247
`CON
`Filed 4/3/13
`Issued 3/10/15
`
`Appl. 14/292,204
`DIV
`Filed 5/30/2014
`Aband 2/23/17
`Examiner Nguyen
`
`12
`
`Appl. 14/608,285
`Patent 9,286,625
`CON
`Filed 1/29/15
`Issued 3/15/16
`Examiner Akonai
`
`Appl. 15/009,961
`Patent 9,779,418
`CON
`Filed 1/29/16
`Issued 10/3/17
`Examiner Akonai
`
`Appl. 15/694,786
`Patent 10,049,387
`CON
`Filed 9/2/17
`Issued 8/14/18
`Examiner Akonai
`
`Appl. 16/019,285
`Patent 10,984,447
`CON
`Filed 6/26/18
`Issued 4/20/21
`Examiner Akonai
`
`Appl. 17/182,809
`CON
`Filed 2/23/21
`Pending
`
`

`

`IPR2022-01329
`U.S. Patent No. 10,049,387
`
`1.
`
`The ’094 Application
`
`The first application in the chain, the ’094 application, was filed 5/1/2009
`
`and published as Hardin ’665 on 11/4/2010. As-filed claim 1 recited, inter alia,
`
`“reserving respective ones of the plurality of geographic areas for delivery of
`
`content associated with respective ones of a plurality of sponsors.” (EX1008, 37.)
`
`As-filed independent claims 8 and 15 included similar limitations. (Id., 38-40.)
`
`Thus, the as-filed independent claims of the ’094 application did not recite which
`
`entity (e.g., sponsors, application programs) submits requests to reserve geographic
`
`areas. As-filed dependent claims 5, 12, and 19, however, recited “receiving, from
`
`a sponsor, a request to obtain an interest in a s