• Opensky Industries, LLC v. VLSI Technology LLCInstitution denied
  PTAB · Dec 23, 2021 · IPR2021-01056 · APJ Jason W Melvin · IPR · Institution

  The Board denied institution of IPR on claims 1–3, 5, 6, 9–11, and 13 because Petitioner likely could not produce its relied-upon expert for cross-examination.

  RulingsInstitution decision

  • BurdenInstitution denied meritsInstitution denied

    “Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “trial is instituted. Prelim. Reply 9. That suggestion, however, stands at odds with Dr. Singh’s agreement to work exclusively with PQA. See IPR2021-01229, Ex. 1033 (declaration describing PQA’s engagement of Dr. Singh), Ex. 1034 (engagement agreement between PQA and Dr. Singh). Petitioner submits that because Dr. Singh submitted his declaration in the Intel IPR and in the PQA IPR, “[i]t is unfathomable that a witness who submits two declarations would refuse to testify.” Prelim. Reply 10. But that argument ignores that Dr. Singh has agreed to work exclusively with PQA, which has not given any indication that it would release Dr. Singh from his agreement. Moreover, we have no evidence from Dr. Singh that he would be willing to testify here. Without some factual support to demonstrate that it reasonably expects Dr. Singh to cooperate, in light of the exclusive agreement with PQA, Petitioner’s assertion is speculation and does not demonstrate sufficiently that Dr. Singh would likely participate in this proceeding. Petitioner challenges PQA’s assertion of its exclusive agreement with Dr. Singh as “vague and ethically questionable” (id. at 9–10). This is more speculation. As noted above, PQA has produced its agreement with Dr. Singh (IPR2021-01229, Ex. 1034) and we have no basis to question the agreement’s legitimacy. Petitioner allowed this unusual situation by relying on a prior declaration by Intel’s expert, rather than retaining its own expert for a new declaration. Whether the agreement with Dr. Singh complies with ethical rules and whether it permits Dr. Singh to testify here are matters not before us. Moreover, they may present issues of contract law for the courts to decide, which may cause delay and prevent us from meeting our statutory deadlines, were we to institute a trial with the issues unresolved.” slip op. at 7

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Given the facts surrounding Dr. Singh’s testimony, we do not consider him likely to be a willing participant in this proceeding. It is Petitioner’s burden to show unpatentability, and in support of its case Petitioner has brought forth the testimony of an expert that Petitioner likely cannot produce for cross-examination and would likely be excluded.9 Under the circumstances, we determine that the Petition does not warrant institution.” slip op. at 9

  Discretionary denial
  Patents in suitUS 7,523,373
• Opensky Industries, LLC v. VLSI Technology LLCInstituted
  PTAB · Dec 23, 2021 · IPR2021-01064 · APJ Jason W Melvin · IPR · Institution

  Instituted inter partes review of claims 1, 14, 17, 18, 21, 22, and 24 on all four asserted § 103 grounds because Petitioner showed a reasonable likelihood of prevailing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “In our view, Petitioner correctly emphasizes Fintiv’s language noting that the Board generally disfavors discretionary denial when litigation did not involve the petitioner, unless “the issues are the same as, or substantially similar to those already or about to be litigated, or other circumstances weigh against redoing the work of another tribunal.” Fintiv, IPR2020-00019, Paper 11, 13–14. Indeed, in multiple decisions Patent Owner cites for support, the Board determined that instituting review would require resolving issues that would also have been resolved by a district court. E.g., Fitbit, Inc. v. Philips N. Am. LLC, IPR2020-00828, Paper 13, 15–16 (considering the patent owner’s litigation with a non-petitioning party that would overlap with the inter partes review at issue); Mylan Labs. Ltd. v. Janssen Pharmaceutica N.V., IPR2020-00440, Paper 17, 19–23 (same, and additionally considering litigation involving the petitioner). Here, because the Intel litigation did not resolve issues presented by this proceeding, there is no chance of an inconsistent outcome. Indeed, “redoing the work of another tribunal” would only arise when that tribunal has resolved a dispute at issue before the Board. Patent Owner has not argued that resolving a dispute in this proceeding would conflict with an aspect of the Intel litigation. Thus, we do not agree with Patent Owner that, because “the [litigation] parties and the District Court invested enormous amounts of time and money litigating validity and infringement issues relating to the ’759 patent,” instituting review here would mean redoing the work of another tribunal. Prelim. Resp. 17.” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied

    “any relationship between those petitioners when weighing the General Plastic factors.” Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11, 9 (Apr. 2, 2019). In Valve, however, the petitioner and the prior petitioner were co-defendants accused of infringement based on the same product. Id. at 9–10. Patent Owner argues that the Board has found a relationship between petitioners when one uses substantive challenges from an earlier petition. Prelim. Resp. 21 (citing Ericsson Inc. v. Uniloc 2017 LLC, IPR2019-01550, Paper 8, 12). Ericsson imposed a relationship in light of the derivative nature of the petition at issue. Ericsson, IPR2019-01550, Paper 8, 12. That decision, however, has not been designated as precedential or informative by the Board, and other decisions have determined that factor 1 weights against discretionary denial for an independent petitioner. E.g., United Fire Protection Corp. v. Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10 (determining that petitioner independence weighed against discretionary denial, but that substantive similarity with an unrelated prior petition meant the factor only moderately weighed against discretionary denial). We determine that factor 1 weighs somewhat against discretionary denial because Petitioner has not filed a prior petition, but did copy its substantive grounds from a prior petition. That the Board has not substantively addressed the merits of the prior petitions, in our view, weighs against discretionary denial, because that approach best balances the desires to improve patent quality and patent-system efficiency against the potential for abuse of the review process by repeated attacks on patents. See General Plastic, IPR2016-01357, Paper 19, 16–17. We view substantive consideration as an important factor in that balance, because to determine otherwise would asymmetrically insulate patent owners from potential abuse without addressing the desire to improve patent quality. Patent Owner suffers no abuse from having this tribunal consider the merits of these grounds for the first time.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied

    “The Federal Circuit held that “the Patent Office, when applying § 325(d), cannot deny institution of IPR based on abusive filing practices then grant a nearly identical reexamination request that is even more abusive.” Vivint, 14 F.4th at 1354. It found important that, when the Board denied Alarm.com’s IPR petition, the Board considered Alarm.com’s earlier petitions and reasoned that “allowing similar, serial challenges to the same patent, by the same petitioner, risks harassment of patent owners and frustration of Congress's intent in enacting the [AIA].” Id. at 1353 (quoting IPR2016-01091, Paper 11, 12) (alteration in original) (emphasis omitted). The facts here are not remotely similar. The Intel IPRs were not denied for abusive filing practices, but rather were denied to avoid overlap with a parallel district-court litigation. See IPR2020-00106, Paper 17, 4–13; IPR2020-00498, Paper 16, 4–10. This proceeding involves a different petitioner, which has not before petitioned for review of the ’759 patent. Those facts show that this Decision does not involve potentially abusive filing practices by the same challenger, as was at issue in Vivint. Patent Owner has not identified how instituting review would be inconsistent with a prior decision on this patent. As explained above, because the invalidity issues presented at trial were different from those considered in the prior application of Fintiv, we reach a different conclusion under that doctrine based on different facts here. Thus, Vivint is not germane to our decision.” slip op. at 14

  § 103 obviousnessDiscretionary denialcites KSR
  Patents in suitUS 7,725,759
• Target Corporation v. Proxicom Wireless, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00934 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1–3, 5, 6, 8, 17, 18, 40, 41, 44, 48–53, and 56 are unpatentable as obvious over Perttila and Emmons; claim 9 is unpatentable over Perttila, Emmons, and Insolia.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “While contending that a person of ordinary skill in the art with respect to the challenged claims “should also have 1–2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications,” Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 10–11. The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. C. Claim Construction” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 7:25–8:11 (“Patent Owner says on the one hand, ‘Located in proximity to requires some physical manifestation.’ No argument about that. Of course, it does. But . . . Patent Owner ignores that an intangible can have a physical presence and location.”).6 There is, accordingly, no controversy regarding whether “an 6 In related IPR2020-00931, referenced by Petition in the hearing of this proceeding (see, e.g., Tr. 8:7–9), Petitioner’s counsel similarly represented that “there’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’” IPR2020-00931, Paper 28 at 8:17–19 (oral hearing transcript). entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, our decision does not depend on an express construction of this term or on whether the recited “entity” or “object” may be intangible. We conclude, therefore, that there is no need for us to construe this term.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “Petitioner further contends that Emmons provides additional implementation details for purchasing goods on-line from the merchant and that “[i]mplementing Perttila’s ‘electronic commerce arrangement’ by allowing the purchase of goods directly from a user’s mobile device as taught by Emmons would have further enhanced Perttila’s e-commerce system.” Pet. 28–29 (emphases omitted) (citing Ex. 1003 ¶¶ 104–105; Ex. 1006 ¶¶ 28, 70; Ex. 1010, 4:16–5:3). In light of such teachings, Petitioner alleges, a person of ordinary skill in the art “would have found it obvious and straightforward” to apply Emmons’s teachings of a mobile selfservice checkout and delivery system in implementing Perttila’s system for processing e-commerce transactions and “would have known that such a combination (yielding the claimed limitations) would predictably work and provide the expected functionality.” Id. at 29–30 (citing Ex. 1003 ¶ 108). In the Institution Decision, we noted that Patent Owner had raised certain arguments in its Preliminary Response with respect to implementation of Emmons’s teachings (including those of Recktenwald and Attia, incorporated by reference in Emmons) with Perttila’s commerce arrangement, but we found, notwithstanding those arguments, that Petitioner sufficiently supported its proposed rationale for the combination for purposes of institution of trial and that Patent Owner’s arguments were not sufficiently persuasive to undermine Petitioner’s showing. Inst. Dec. 20–21. We found, for example, that Emmons describes a system for “self service checkout and product delivery,” allowing a user to complete the purchase and delivery of products utilizing a mobile telephone to scan product information from information carrying indicia, attain information, and allow for mobile purchase; that Perttila suggests that electronic coupons and merchant-media arrangements may be located at or near the same location where such a coupon would be redeemed and validated to facilitate merchant transactions; and that Petitioner’s reliance on Emmons’s system and method to allow for full purchase of goods at a redemption site where an e-coupon can be used, as in Perttila, is supported by the testimony of Mr. Williams and the cited references. Id. (citing Ex. 1003 ¶¶ 102–104; Ex. 1006 ¶¶ 28, 39, 40; Ex. 1010, 2:45–63). In its post-institution briefing, Patent Owner repeats substantively the same arguments that we found unpersuasive in the Institution Decision (see PO Resp. 45–58; PO Sur-reply 25–28), and we remain persuaded by Petitioner’s evidence in support of the combination, including the testimony of Mr. Williams and the disclosures of the cited references (see, e.g., Ex. 1003 ¶¶ 102–108, 147; Ex. 1006 ¶¶ 9, 25, 28, 39, 42, 70; Ex. 1010, 2:47–55, 3:18–25, 3:56–60, 4:16–5:13, Fig. 2; Pet. 28–30; see also Pet. Reply 17–23).” slip op. at 20

  • Obviousness (§103) › KSR rationalesUnpatentableUnpatentable

    “Based on the record presented and as discussed above, we find that Petitioner has sufficiently shown the combination of Perttila and Emmons teaches or suggests each of these limitations and, as stated above, that Petitioner has provided sufficient reasons to combine the relied upon teachings from those references. f. Conclusion Regarding Claim 1 For the foregoing reasons, we conclude that Petitioner has shown by a preponderance of the evidence that claim 1 is unpatentable over the combination of Perttila and Emmons.” slip op. at 32

  Patent outcomesUS 8,385,896 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,385,896
• Target Corporation v. Proxicom Wireless, LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00977 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 1, 5, 9, 12–15, 22, and 24 are unpatentable; claim 22 was not shown unpatentable over Mgrdechian and Kulakowski because the proposed modification defeats that reference’s covert identifier security.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a Bachelor’s degree in Electrical Engineering, or a related field, and approximately 3-5 years of professional experience in the field of wireless communications.” Pet. 17. Petitioner acknowledges that “graduate education could substitute for professional experience” and “significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 8–20, 36–38). Patent Owner concedes that the level of skill as defined by Petitioner “is sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 16–17. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther

    “Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner contends that it “interprets the claim terms according to their plain and ordinary meaning consistent with the [S]pecification.” Pet. 18 (citing Ex. 1003 ¶¶ 22–24). Petitioner asserts that the challenged claims use “a term of degree (e.g., ‘short range wireless connection’),” but does not explain how this assertion affects claim construction. Id. Petitioner acknowledges that “[a] district court in another proceeding has construed terms in related patents,” but argues that those “constructions do not impact the outcome of this IPR, because the prior art meets the claims under these constructions.” Id. (citing Ex. 1003 ¶ 67; Ex. 1021). “Patent Owner does not propose any terms for construction . . . .” PO Resp. 15–16. We determine that no express construction of any term is necessary.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Patent Owner’s arguments are reiterations of arguments presented in the Preliminary Response and which we addressed in the Institution Decision. As we explained, Although Mgrdechian largely discusses the dating application embodiment of its messaging system (see Ex. 1005, 11:53–14:45), Mgrdechian contemplates use in other applications (see id. at 14:49–15:42). One such application “includes the use of the service and/or hardware for the electronic commerce applications including micropayments.” Id. at 15:11–13. To this end, a device’s profile information can include “items or services for sale.” Id. at 11:23–33; see also id. at 21:6–8 (disclosing that profile information may include “any items or services for sale”), 21:53–55 (disclosing that users can include information about “items for sale” in their profile information). By disclosing that “the service and/or hardware” can be used for “electronic commerce applications” (see id. at 15:11–13), we understand Mgrdechian’s descriptions of its dating application, particularly those upon which Petitioner relies, to apply to the electronic commerce application. Inst. Dec. 33. As we also explained in the Institution Decision, We further agree with Petitioner’s mapping and arguments that Mgrdechian discloses basing authorization for the electronic commerce transaction on the identifier, authentication information, and location information. Mgrdechian’s server uses the device ID (the identifier) received from Device A to retrieve profile information (the authentication information) associated with that ID (regarding User B). Ex. 1005, 10:62–11:22. The profile information of both users can include filter parameters that restrict from what entities a user will accept messages. Id. at 13:50–14:33. And, as noted above, the server can use the device’s GPS location information “to provide responses to User A’s request to initiate messaging or other actions” rather than relying on “direct communications between devices.” Id. at 7:16–19. Id. f. Conclusion For the foregoing reasons, we conclude that Petitioner has shown, by” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentableUnpatentable

    “Patent Owner’s arguments are not consistent with Swartz’s disclosure. Swartz discloses that a user’s “shopping list may be derived from a number of sources.” Ex. 1007, 39:12–13. One such source for creating a shopping list is “the item selection method, i.e., selecting from a store’s list of available goods.” Id. at 40:50–51. Selecting from the store’s list of available goods provides “assurance of a match between items selected by a customer and items including brand, quantity and price available at the facility” and, thus, “permits for home delivery of items.” Id. at 40:56–60. As Mgrdechian discloses a user, such as a business, providing a list of items for sale (see, e.g., Ex. 1005, 11:28–33), incorporating Swartz’s teaching of home delivery of items selected for purchase does not require the “complete redesign” of Mgrdechian’s system as asserted by Patent Owner. We determine that Petitioner has set forth reasoning with rational underpinning for modifying Mgrdechian to initiate delivery of purchased goods. Accordingly, for the foregoing reasons, Mgrdechian and Swartz support Petitioner’s contentions that Mgrdechian and Swartz disclose the subject matter of claims 12 and 14, and we conclude that Petitioner has shown by a preponderance of the evidence that these claims are unpatentable as being obvious over the combination of Mgrdechian and Swartz.” slip op. at 37

  Patent outcomesUS 8,369,842 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 8,369,842
• Target Corporation v. Proxicom Wireless LLCAll claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00980 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–4, 6–10, 12, 15, 17, 19, 21, 32–34, and 39 are unpatentable as obvious under § 103.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “(citing Ex. 1005, 12:18–26). Petitioner notes that the profile may contain a list of friends using their identifiers. Id. at 21 (citing Ex. 1005, 5:31–35, 8:5–14, 11:34–52; Ex. 1003, Williams Decl. ¶¶ 81–82). Petitioner further notes that Mgrdechian’s remote server can maintain a positional database, can use the IDs of the devices it receives from the initiating device to determine that other devices are in range of the devices corresponding to the received IDs, and return profile information concerning those other devices to the initiating device. Id. at 34–35 (citing Ex. 1005, 20:1–47, Fig. 10; Ex. 1003, Williams Decl. ¶¶ 106–108). Other than its reference to returning all or some of the profile information associated with each device ID back to the initiating device (Ex. 1005, 12:18–31), Petitioner does not cite disclosure in Mgrdechian that explicitly describes the remote server returning device IDs to the initiating device. See Pet. 34–35. Petitioner notes, however, that for profile information concerning friends or devices that are out of range of the initiating device, but are within the range of target devices, it would have been obvious to include the identifier of the friend or out of range device to facilitate communication. Id. at 21. The Patent Owner Response does not address Petitioner’s contentions concerning claim limitation [1.d] specifically. Based on the evidence and arguments of record, we find that, although Mgrdechian does not disclose claim limitation [1.d] explicitly for purposes of anticipation, Petitioner has demonstrated that Mgrdechian would have at least suggested claim limitation [1.d] to a person of ordinary skill in the art.6” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “first unique identifier received in the first receiving step and (b) said further information with (c) the second unique identifier received in the second receiving step.” As discussed above, we find that Mgrdechian discloses or suggest claim limitation [1.g] to a person of ordinary skill. See Section V.B.2.g. We further agree with Petitioner that taken in context, Petitioner has demonstrated that a person of ordinary skill would have had reason to combine Kaplan’s teachings of comparing information received from another device to locally stored information to determine if further information from a server is necessary. Having considered the evidence and arguments of record, we find that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Mgrdechian and Kaplan to arrive at claim limitation [1.g] (and, likewise, claim limitation [7.g]) and that Petitioner has shown by a preponderance of the evidence that the challenged claims are accordingly unpatentable over the combination of Mgrdechian and Kaplan.” slip op. at 38

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Patent Owner notes that Petitioner references an embodiment of Gujar in which a pen computer is augmented with a tag reader used with three electronic tags and in which a processor checks to ensure that a user’s bringing an ID card to a reader has not triggered multiple events. PO Resp. 38. Patent Owner argues that in some circumstances in Mgrdechian, as in cases where Device A detects Device B at least two consecutive times, sending Device B’s ID twice informs the remote computing system that Device B is still in the vicinity and not sending Device B’s ID informs the remote computing system that Device B has left the vicinity. Id. According to Patent Owner, this phenomenon in Mgrdechian would be defeated by Gujar, where an accidental double tap of a user’s card could result in the unwanted printing two copies of a document. Id. at 38–39. Thus, according to Patent Owner, “it cannot be fairly said that a POSITA would have looked to selectively modify the Mgrdechian system to implement the electronic ‘double rap’ tag prevention problem of Gujar.” Id. at 39 (citing Ex. 2020, problem all by itself, that is, by presenting the user of Device A with a list of available adjacent users, and making the user of Device A select the specific profiles that she wants to review before the remote computing system downloads the full profiles onto Device A.” Id. at 39–40. Petitioner responds that Patent Owner incorrectly argues that suppressing sending redundant IDs as taught be Gujar would prevent Mgrdechian from determining proximity information between wireless devices. Pet. Reply 17. According to Petitioner, the existence of a tradeoff between conserving resources and providing the most up to date proximity information does not mean a person of ordinary skill would not have had reason to limit the number of transmissions during a predetermined time period to reduce queries. Id. In fact, according to Petitioner, a person of ordinary skill would have been motivated to apply Gujar’s teaching to Mgrdechian because “Gujar’s ‘double rap’ prevention scheme exists to suppress unnecessary transmission of redundant identifiers to the server— precisely the rationale explained in the Petition.” Pet. Reply 18 (citing Pet. 66; Ex. 1003, Williams Decl. ¶ 203; Ex. 1014, 14:51–15:24). We agree with Petitioner. Patent Owner’s identification of a circumstance in which a tradeoff may exist in the combination of Mgrdechian and Gujar does not change the fact that, consistent with the goals of Mgrdechian, Gujar teaches an implementation that compares identifiers to suppress redundant transmissions.” slip op. at 39

  Patent outcomesUS 8,385,913 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,385,913
• Target Corporation v. Proxicom Wireless, Inc.All claims unpatentable
  PTAB · Nov 30, 2021 · IPR2020-00979 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–8 are unpatentable: claims 1–7 are anticipated by Mgrdechian, and claims 1–8 are also obvious over combinations including Mgrdechian.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Although Mgrdechian distinguishes between device IDs and profile information associated with device IDs, Mgrdechian consistently refers to profile information as associated with device IDs, e.g., the server uses the device ID to locate the corresponding profile information. See, e.g., Ex. 1005, 11:53–57. Mgrdechian discloses embodiments in which “the one or more wireless identifications are unique identifications” and “the unique identifications include a Bluetooth identification or an RFID.” Id. at 3:33–36. Mgrdechian also explicitly states that “profile information . . . may be associated with a wireless device ID.” Id. at 8:33–34, 11:26–27 (referencing Figs. 3C, 3D showing in a dating application the types of profile information that may be associated with a wireless device ID). As the information (e.g., location, school, religion, occupation, interest, favorite, entertainment, and photo) in the profile in Figures 3C and 3D would be associated with a specific user, we find that Mgrdechian explicitly discloses to a person of ordinary skill associating a unique wireless ID with a specific profile. ordinarily skilled artisan. See Dayco Prods., 329 F.3d at 1368 (Fed. Cir. 2003) (“[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” (quoting In re Baxter Travenol Labs., 952 F.2d at 390 (Fed. Cir. 1991))). Although Mgrdechian describes a portion of the profile information being returned to Device A without explicitly enumerating returning Device C’s wireless ID, Mgrdechian’s disclosure that profiles may be associated with wireless IDs informs a person of ordinary skill that the wireless ID would be among the information returned because the wireless ID is a key piece of reference information essential for Device A to scan for and recognize Device C. See Ex. 1005, 20:56–58 (“a user may scan for profiles in the vicinity, e.g., by transmitting an identification request); see also id. at 10:45–47 (“When an identification request is received, one or more of these devices may access and transmit a device ID back to [the] initiating device . . . in a reply.”). As Petitioner points out, Mgrdechian discloses a “daisy chain”” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “As Petitioner points out, Patent Owner’s arguments that a newly detected Device C ID might no longer match because the ID may change periodically “acknowledges that the ID does match and will always match if the ID is ‘static’ and will continue to match until it is changed at a later time when the ID is ‘dynamic’ or ‘pseudo-random.’” Pet. Reply 7. “When the ID matches, inquiries to the server are reduced—providing the very benefit that Mgrdechian itself seeks.” Id.; see also id. at 6 (explaining that a person of ordinary skill would have been motivated to compare a received ID with locally saved profiles to eliminate or reduce redundant requests to the server). We agree with Petitioner that [a] POSITA would have understood that the profile information returned from the server for Device C includes its ID to enable [D]evice A to search for and recognize [D]evice C’s profile when [D]evice C responds with its ID to Device A’s “identification request” later and to directly message [D]evice C using its ID via the “local wireless protocol.” Pet. Reply 2 (citing Pet. 22, 27–29, 33–35, 3940; Ex. 1003, Williams Decl. ¶¶ 87, 100–101, 113; Ex. 1005, 12:18–26, 13:32–34, 20:1–47, 20:56–21:6). In consideration of the above, we agree with Petitioner that Mgrdechian discloses or would at least have suggested claim limitation [1.c] to a person of ordinary skill in the art.6” slip op. at 22

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentableNot shown unpatentable

    “We are not persuaded by Petitioner’s arguments, which rely on Kulakowski’s teachings of using “covert, changing identifiers” in order to “advantageously improve security and detect spoofed or ‘cloned’ client wireless devices.” Pet. 63 (emphasis added). Kulakowski discloses a security method in which a device sends a message to a server, the message having embedded therein a covert identifier. Ex. 1013 ¶¶ 6, 37. The server extracts the covert identifier upon receiving the message and compares the extracted covert identifier with stored values corresponding to the client credentials to determine if the device is an authentic device or a cloned device. Id. ¶ 48. “The covert identifier is generated by operational events occurring during actual operation of a client device. . . . The covert data stored by the client device and subsequently used in messages to a server.” Id. ¶ 15. “Such values are covert because their nature makes them difficult for hackers to detect and duplicate in cloned client devices . . . .” Id. ¶ 34. Thus, Kulakowski teaches that its “covert identifiers” are covert and provide added security because they are known only to the particular device and the server. Neither Petitioner nor Petitioner’s declarant explains adequately why it would have been obvious to use this covert teaching to enhance the security of Mgrdechian’s system by transmitting the covert identifier to another client device. We agree with Patent Owner that, by transmitting the identifier to other devices, the modification proposed by Petitioner “creates the very risk Kulakowski is trying to prevent.” PO Resp. 55. By transmitting this information to devices sending an identification request (see, e.g., Ex. 1005, 10:38–47), the information would no longer be “covert,” and the Petition does not explain adequately how this information would “improve security and detect spoofed or ‘cloned’ client wireless devices.” See Pet. 62. For the foregoing reasons, on this record, Petitioner has not shown, by a preponderance of the evidence, that claims 3 and 4 are unpatentable over the proposed combinations including Mgrdechian and Kulakowski.” slip op. at 41

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Petitioner’s expert, David Williams, that a person of ordinary skill would have understood that “[e]ach wireless protocol requires use of the device identifier that is specific to that protocol and that different wireless protocols have different capabilities, (e.g., speed, range, energy consumption)” (Ex. 1003, Williams Decl. ¶ 83 (citing Ex. 1015 ¶¶ 103, 122)) for the proposition that it was well known for a user to control how many and which unique IDs are transmitted by his device via a short range RF transmission and that Bluetooth Device Addresses, WLAN MAC addresses, and other types of unique IDs may be used by the server. As Mgrdechian discloses a different wireless protocol may be used to respond to an inquiry, we find that a person of ordinary skill would have understood that multiple identifiers would be included in the initial profile information to facilitate communication between the devices using a protocol different from the inquiry protocol. See Ex. 1003, Williams Decl. ¶ 83. Thus, we find that Mgrdechian would have suggested the limitations of claim 8 to a person of ordinary skill in the art.8 10. Conclusion In consideration of the above, we find that Petitioner has demonstrated by a preponderance of the evidence that Mgrdechian discloses all the limitations of claims 1–7 to a person of ordinary skill in the art. We further find that Petitioner has demonstrated by a preponderance of the 8 Although paragraph 83 of Mr. Williams Declaration cites to Behrens, we do not rely on Behrens for this ground. Instead, we credit Mr. Williams’s testimony as evidence of what a person of ordinary skill would have known at the time.” slip op. at 35

  Patent outcomesUS 9,161,164 unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 9,161,164
• Target Corporation v. Proxicomm Wireless, LLCAll claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00903 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–5, 7, 10, 11, 16–20, 25, and 26 are unpatentable as anticipated by Eagle and obvious over Eagle.

  RulingsFinal written decision

  • BurdenDecided for petitioner

    “onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in burden to demonstrate unpatentability by a preponderance of the evidence.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “The language of claim limitation 1.d is not limited to the devices interacting with each other, but to previous interactions between the entities associated with the devices. To the extent Patent Owner’s claim construction arguments address the meaning of the claim language, Patent Owner’s arguments appear aimed at limiting the claim to a “stored state” derived from previous interactions between the entities where those interactions occurred using only those devices having the first unique ID and the second unique ID. PO Resp. 19–20. That is not the language of the claims—the claims recite only “a stored state resulting from previous interactions utilizing said server between the entities associated with the first and second unique identifiers” (emphasis added). In construing claim limitations 1.d and 16.c, we focus on the language in the claim and apply the plain and ordinary meaning. Patent Owner asserts that during prosecution of the ’129 patent, the applicant asserted that “the claimed ‘stored state’ must result from ‘previous interactions specifically between the two entities (or devices) associated with the first and second unique identifiers.’” PO Resp. 22 (citing Ex. 1002, 209). In this context, applicant sought to distinguish a reference by arguing that, for example, declining a credit card for overdrawing its limit was not a previous action between the entities associated with the first and second unique IDs. Ex. and “or devices” into the claim, we understand Applicant’s argument to indicate devices are an alternative to entities and not a further limitation on the term “entities.” In sum, applying the plain and ordinary meaning, the “stored state” language of claim limitation 1.d recites that the interactions (i) must have occurred previously, (ii) must have used the server and (iii) must have been between entities associated with the unique IDs of the first and second devices. The language of limitation 1.d does not recite (i) that there is any specific relationship between the entities associated with the first and second unique IDs, (ii) that the entities associated with the first and second unique IDs must be different, (iii) that the previous interactions between the entities associated with the first and second devices must have occurred using the first and second devices themselves (i.e., an entity can be associated with multiple devices), and (iv) that the interactions utilizing the server occurred at any particular time, except to the extent that the interactions occurred “previously.”” slip op. at 10

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “reference teaches. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011). “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a single prior art reference must expressly or inherently disclose each claim limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior invention, the prior art reference—in order to anticipate under 35 U.S.C. § 102—must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching’ that every claim element was disclosed in that single reference.” (quoting In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))) (emphasis omitted).” slip op. at 12

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “suggests that Eagle is not analogous art because it is purportedly ‘limited to connecting “new” people’ while ‘[i]n contrast, the ’129 specification refers to “social networking” generally.’” Pet. Reply 19 (alteration in original) (quoting PO Resp. 49). Noting that Patent Owner does not dispute that both the ’129 patent and Eagle concern facilitating wireless communications, Petitioner argues that both the ’129 patent and Eagle are further concerned with security and privacy in peer-to-peer wireless communications. Id. at 19–20; see also Pet. 24–25. We agree with Petitioner that, notwithstanding their differences, to a person of ordinary skill, the ’129 patent and Eagle address sufficiently related subject matter. Having determined that Eagle discloses the limitations of claim 1, we find that claim 1 would have been obvious to a person of ordinary skill over Eagle.” slip op. at 33

  Patent outcomesUS 9,038,129 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,038,129
• Target Corporation v. Proxicom Wireless, Inc.All claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00904 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1, 5–8, 10, 12, 14, 15, 18, and 20–22 are unpatentable as anticipated by or obvious over Eagle, or obvious over Eagle and Mgrdechian.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningOther

    “V. CLAIM CONSTRUCTION Throughout the proceedings, neither party proposed a special definition or explicit construction of any claim term. See Dec. to Inst. 11; PO Resp. 9–10. For purposes of this Decision, we apply the plain and ordinary meaning to the claim language.” slip op. at 8

  • Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble not limitingOther

    “server performing the steps of.” Pet. 24–25. Petitioner cites Eagle as disclosing a server utilizing a large area wireless network, such as a cellular phone network or the Internet, to exchange information between the server and the BlueAware application running on the Bluetooth enabled phones, e.g., a Requester device (a first wireless device) and an identified device (a second wireless device) that identify themselves with unique identification codes. Id. (citing Ex. 1004, code (57), ¶¶ 4, 9–10, 19–20, 22, 48–49, 51; Ex. 1003, Williams Decl. ¶¶ 104–106). Patent Owner does not respond explicitly to Petitioner’s contentions concerning the preamble of claim 1. Based on the evidence of record, we are persuaded that Petitioner has demonstrated Eagle discloses the preamble of claim 1.4 b) Claim Limitation 1.a Petitioner identifies claim limitation 1.a as reciting “receiving first identification information from the first wireless device, the first identification information communicated from the first wireless device to the server via the wireless Wide Area Network.” See Pet. 26–27. Petitioner cites Eagle as disclosing that each time a Requester device (the claimed first device) detects a new device, it communicates to a central server (the claimed server), using a long-range cellular network (the claimed wireless Wide Area Network), a notification message (notification message sent from the device to be received by the server), containing its own identifier, such that the server receives the Requester ID (the claimed first identification 4 We need not decide whether the preamble is limiting because Petitioner has shown that Eagle discloses the recitation in the preamble. See Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002) (“Generally, the preamble does not limit the claims.”).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “comparing the information disclosure policy data and the first identification information” (the comparing step), as recited in claim limitation 1.f. See PO Resp. 15–32. As a threshold matter, Patent Owner contends that by recognizing Eagle does not explicitly disclose the claimed comparison and by relying on what a person of ordinary skill would have understood, the Petition effectively acknowledges that Eagle does not support Petitioner’s anticipation claim 1. Id. at 16–17. To the extent Patent Owner argues that Petitioner’s reliance on a person of ordinary skill’s understanding of the reference precludes anticipation, Patent Owner’s argument is unavailing. As discussed above, whether a reference anticipates is assessed from the perspective of an ordinarily skilled artisan, Dayco Prods., 329 F.3d at 1368, and “the dispositive question regarding anticipation [i]s whether one skilled in the art would reasonably understand or infer from the [prior art reference’s] teaching that every claim element was disclosed in that single reference.” In re Baxter Travenol, 952 F.2d at 390 (emphasis omitted). Based on Petitioner’s mapping of Eagle to claim 1, Patent Owner slip op. at 20

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “been motivated to combine the teachings of Eagle with those of Mgrdechian because in Eagle the device log of the requesting device, not the server, already limits re-sending identifiers based on a timestamp that precludes sending messages to the server during a specific time period. PO Resp. 44. As Petitioner notes, however, because Eagle’s device logs are periodically removed, resulting in multiple messages being sent to the server as the devices react over time, a person of ordinary skill would have had reason to employ Mgrdechian’s “more sophisticated way for determining whether detecting a new device warrants transmission of a message to the server.” Pet. Reply. 22 (citing Pet. 53–59; Ex. 1003, Williams Decl. ¶¶ 187–196). Thus, we agree with Petitioner that a person of ordinary skill would have had reason to look to Mgrdechian to improve Eagle’s performance by reducing the number of messages required. “portable profile” described at column 15, line 46–column 16, line 2 of the reference, which is different from the profile discussed by Mgrdechian at column 12, lines 36–44 because the portable profile is not sent by the server. PO Resp. 48. According to Patent Owner, Petitioner’s citations of Mgrdechian’s portable profile does not support Petitioner’s theory because that profile information is not sent from the server, as required by claims 8, 14, and 21. Id. at 49–50. Patent Owner contends that Petitioner’s analysis of Mgrdechian ignores the claim requirements that the server return information that limits re-sending of identifiers already reported by the first wireless device (claim 8 and 22) and limit actions previously performed by the first wireless device (claim 14). PO Sur-reply 23–24. Although Petitioner cites to a portion of Mgrdechian that discusses portable profiles, Petitioner contends that Patent Owner’s emphasis on Mgrdechian’s portable profiles being retrieved from queried devices rather than a central server constitutes a strawman argument because the Petition does not rely on Mgrdechian’s disclosure of portable profiles retrieved from a second device. Pet. Reply 23–24. Instead, Petitioner asserts that Mgrdechian’s relevant teachings are (1) the system’s prevention of automatically retrieving profile information that is already available locally and (2) the earlier disclosure of storing profile information retrieved from the server. Pet. Reply 23–24 (citing Pet 54–55; Ex. 1005, 12:18–44; Ex. 1003, Williams Decl. ¶¶ 190–191). According to Petitioner, it was well known for a device to refer to cached information before requesting information from a server. Id. at 24 (citing Ex. 1003, Williams Decl. ¶¶ 96– 100, 185–198). saving profile information received from the server about the second device for later use.” Pet. 54 (citing Ex. 1005, 12:23–28; Ex. 1003, Williams Decl. ¶ 97). Noting that Eagle recognizes the benefit of limiting transmissions, e.g., to those devices that have newly come within range, Petitioner cites Mgrdechian as teaching “implementation details for determining whether the detection of a new device warrants transmission of a message to the server.” Id. at 55–56 (citing Ex. 1003, Williams Decl. ¶ 99). The subject matter Petitioner cites from Mgrdechian states that a user may select specific target devices for further and subsequent queries, based on the content of initial profile information, rather than retrieving profile information for all device IDs. Ex. 1005 15:46–67. Petitioner’s analysis is based on the first device receiving and saving information from the server during an initial encounter and based on that saved information, the first device declining to send messages to the server in subsequent encounters. We agree with Petitioner’s analysis that this combination of Eagle and Mgrdechian discloses the features recited in claims 8, 14, and 22 because the decision made locally by the first device to limit re-sending of identifiers is based on information previously received from the server. Having considered all the evidence and arguments of record, we find that Petitioner has demonstrated that a person of ordinary skill would have had reason to combine the teachings of Eagle and Mgrdechian and that the combined teachings would have disclosed the limitations of claim 8, 14, and 22 to a person of ordinary skill in the art. Therefore, we conclude that Petitioner has demonstrated by a preponderance of the evidence that claims 8, 14, and 22 would have been unpatentable as obvious over the combined teachings of Eagle and Mgrdechian.” slip op. at 43

  Patent outcomesUS 7,936,736 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,936,736
• Target Corporation v. Proxicom Wireless, LLCSome claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00933 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 19–23 are unpatentable as obvious over Perttila and Insolia; claims 25, 26, 28, and 29 were not shown unpatentable over Perttila and Davis.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a Bachelor’s degree in Electrical Engineering, or a related field, and approximately 3-5 years of professional experience in the field of wireless communications.” Pet. 14. Petitioner acknowledges that “graduate education could substitute for professional experience” and “significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 36–38). Patent Owner concedes that the level of skill as defined by Petitioner “is sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term.” slip op. at 10

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008, 5:47–64, Fig. 1. The personal terminal is transported by user 16. Id. at 5:65–66. The interaction terminal can be associated with product 18, such as a beverage, equipment 20, such as a vending machine, or promotional object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal and the interaction terminal communicate when the personal terminal is brought within proximity of the interaction terminal. Id. at 9:12–18. A benefit, such as a loyalty point, can be awarded to the user for interacting with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies that incorporating Insolia’s reward of loyalty points into Perttila’s system would provide incentives for a customer to engage with the merchant-media arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s declarant, which Patent Owner does not rebut. Accordingly, for the foregoing reasons, Perttila and Insolia support Petitioner’s contentions. We further determine that Petitioner has set forth reasoning with rational underpinning for modifying Perttila to include a loyalty reward system as taught by Insolia.” slip op. at 25

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008, 5:47–64, Fig. 1. The personal terminal is transported by user 16. Id. at 5:65–66. The interaction terminal can be associated with product 18, such as a beverage, equipment 20, such as a vending machine, or promotional object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal and the interaction terminal communicate when the personal terminal is brought within proximity of the interaction terminal. Id. at 9:12–18. A benefit, such as a loyalty point, can be awarded to the user for interacting with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies that incorporating Insolia’s reward of loyalty points into Perttila’s system would provide incentives for a customer to engage with the merchant-media arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s declarant, which Patent Owner does not rebut. Accordingly, for the foregoing reasons, Perttila and Insolia support Petitioner’s contentions. We further determine that Petitioner has set forth reasoning with rational underpinning for modifying Perttila to include a loyalty reward system as taught by Insolia.” slip op. at 25

  Patent outcomesUS 8,374,592 mixed
  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 8,374,592
• Target Corporation v. Proxicom Wireless, LLCAll claims unpatentable
  PTAB · Nov 8, 2021 · IPR2020-00932 · APJ Sean P O’Hanlon · IPR · Final written decision

  Claims 9, 22, 28, 35, 38–41, and 51 are unpatentable: claims 9, 22, and 51 over Perttila, and claims 9, 22, 28, 35, and 38–41 over Perttila and Swartz.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Notwithstanding the arguments in its briefing, Petitioner’s counsel acknowledged during the hearing that the claims require the entity or object to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . . that physical presence is connoted by the word ‘proximity’ and by ‘located.’”). There is, accordingly, no controversy regarding whether “an entity or object located in proximity to the second device” requires the entity or object to have a physical presence. Moreover, as explained below our decision does not depend on an express construction of this term. We conclude, therefore, that there is no need for us to construe this term.” slip op. at 12

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Patent Owner concedes that the level of skill as defined by Petitioner “is generally sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 15–16. However, Patent Owner also notes that “Petitioner’s proposed level of skill in the art does not include any reference to electronic commerce” and contends that “a POSITA should also have 1-2 years of experience designing or implementing systems for electronic commerce including the use of wireless communications.”6 Id. at 16 (citing Ex. 2010 ¶¶ 6–9, 22–24). The level of ordinary skill in the art may be evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill proposed by Petitioner appears to be consistent with that of the references, and we apply Petitioner’s proposed level of ordinary skill for purposes of this Decision. We note that we would reach the same conclusions herein using Patent Owner’s alternate definition.” slip op. at 9

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “As we noted in the Institution Decision, Perttila’s merchant-media arrangement includes RFID tag 38 (or, alternatively, a Bluetooth link). See Inst. Dec. 19. Petitioner maps the short-range transmitter to the recited second device (see Pet. 28; Inst. Dec. 19) and maps the electronic coupon to the recited identity or related information (see Pet. 30; Inst. Dec. 19). Petitioner maps the billboard and, separately, its contents to the recited entity or object, which is in proximity to the short-range transmitter. See Pet. 30; Pet. Reply 7–8; Inst. Dec. 19. Perttila’s server uses the merchant ID code to generate an “electronic coupon that corresponds to the content promoted by the billboard.” E.g., Ex. 1006 ¶¶ 27, 33. Thus, Perttila supports Petitioner’s contentions. Patent Owner equates “merchant-media arrangement” as a billboard; that is, a single entity. In the Institution Decision, we noted that the merchant-media arrangement includes a billboard and the RFID tag or Bluetooth link is “co-located” at the merchant-media arrangement. Inst. Dec. 19–20. Petitioner maps the “short-range communicator,” which it defines as the RFID tag or Bluetooth link, to the recited second device. Pet. Reply 7; see also Pet. 30–31. Thus, we disagree with Patent Owner’s assertion that the Petition maps the merchant media arrangement, as a singular entity, to both the recited second device and the recited entity or object. We further disagree with Patent Owner’s assertion that the electronic coupon does not correspond to the content promoted by the billboard. See PO Resp. 40–41. Perttila discloses that the “downloadable electronic coupon . . . corresponds to the content promoted by the billboard.” Ex. 1006 ¶ 27 (emphasis added). Perttila’s remote server uses the merchant-media ID code “to associate the promotional information with an e-coupon to be provided to the user visiting this billboard location.” Id. ¶ 28.” slip op. at 18

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “coupon void] request from the redemption data-processing station 54, the source server 24 performs coupon-verification and credit actions and updates its coupon-database accordingly.” Ex. 1006 ¶ 42 (emphasis added). Petitioner relies on Swartz to teach credit actions to be performed by Perttila’s server. E.g., Pet. 50 (“charging a customer’s ‘credit account’ associated with the customer’s mobile device”). Petitioner’s declarant opines that “Perttila itself recognizes the benefits of a central server handling ‘coupon-verification and credit actions,’ and a [person of ordinary skill in the art] would have understood that Swartz’s teachings provide known implementation details for such an arrangement.” Ex. 1003 ¶ 100. Mr. Williams testifies that an ordinarily skilled artisan would have understood that modifying Perttila’s server to provide the credit actions taught by Swartz “would have improved Perttila’s ‘electronic commerce arrangement.’” Id. Patent Owner’s declarant testifies that “Petitioner’s arguments for why a POSITA would have been motivated to combine [Perttila and Swartz] are not true to the disclosures of Perttila, and imply that the phrases used in Perttila have a different meaning than they do in the context of Perttila.” Ex. 2010 ¶ 94. Dr. Foley, however, does not address Perttila’s disclosure of its server performing “credit actions,” which is the basis for Mr. Williams’s opinion that it would have been obvious to incorporate Swartz’s teachings into Perttila’s system. See, e.g., Ex. 1003 ¶ 100; Pet. 48 (citing same). We credit the testimony of Petitioner’s declarant, which relies on Swartz to provide details regarding the credit actions performed by Perttila’s server and which Patent Owner’s declarant does not address squarely. Therefore, we determine that Petitioner has set forth reasoning with rational underpinning explaining why it would have been obvious to combine the teachings of Perttila and Swartz.” slip op. at 31

  Patent outcomesUS 8,090,359 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips
  Patents in suitUS 8,090,359

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.