UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00830
`Patent 8,296,351 B2
`____________
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Snap's Exhibit No. 1026
`Page 001
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNAP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner.
`____________
`
`Case IPR2019-00830
`Patent 8,296,351 B2
`____________
`
`
`Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`Snap's Exhibit No. 1026
`Page 001
`
`
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`Snap Inc. (“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–
`
`319 to institute an inter partes review of claims 1, 2, 4–6, 8, 9, 11, 14–18,
`
`20,21, and 23 of U.S. Patent No. 8,296,351 B2, issued on October 23, 2012
`
`(Ex. 1001, “the ’351 patent”). Paper 2 (“Pet.”). BlackBerry Ltd. (“Patent
`
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We have
`
`jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a).
`
`To institute an inter partes review, we must determine that the
`
`information presented in the Petition shows “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). Having considered both the Petition and
`
`the Preliminary Response, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood that it would prevail in showing the
`
`unpatentability of any of claims 1, 2, 4–6, 8, 9, 11, 14–18, 20, 21, and 23 of
`
`the ’351 patent. Accordingly, we do not institute an inter partes review.
`
`
`
`
`
`A. The ʼ351 Patent (Ex. 1001)
`
`I. BACKGROUND
`
`The ʼ351 patent is directed to a “System and Method for Pushing
`
`Information to a Mobile Device.” Ex. 1001, code (54). The ’351 patent
`
`claims priority through a series of continuation applications to provisional
`
`application No. 60/307,265, filed on July 23, 2001. Id. at codes (63) and
`
`(60). The “invention relates to pushing information to a mobile handheld
`
`communication device,” through the use of “an information source, a
`
`wireless network, and a proxy content server.” Id. at 1:18–24, 47–49.
`
`The Specification explains that “[t]he proxy content server is coupled
`
`to [an] information source and the wireless network and receives
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`Snap's Exhibit No. 1026
`Page 002
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`
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`information from the information source.” Id. at code (57). The
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`Specification describes storing information received from an information
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`source in a “proxy content server” that sorts the information into a “plurality
`
`of channels based on pre-defined information categories.” Id. at 1:50–67.
`
`The proxy content server may receive and aggregate different types of
`
`information from different information sources, such as content servers 10a,
`
`advertising servers 10b, and other advertising sources 10c. Id. at 3:6–10,
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`2:31–33. These concepts are shown below in Figure 1:
`
`
`
`Figure 1 of the ’351 patent depicts a block diagram of an embodiment of the
`system for pushing information to a mobile device. Id. at 1:61–62.
`
`The “proxy content server” functions as a gateway between computer
`
`network 16 and wireless network 22. Id. at 2:57–58. The “proxy content
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`Snap's Exhibit No. 1026
`Page 003
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`
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`server” receives information from one or more “information sources” and
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`pushes that information to one or more mobile devices. Id. at 2:59–63. In
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`addition, “Proxy Content Server 18 stores received information 12 to a
`
`particular channel 21 based on user-specific information categories.” Id. at
`
`4:28–31. As described in the Specification, “Proxy Content Server 18 also
`
`provides a method of combining the information so that the mobile device
`
`user has a consistent and transparent experience of receiving both
`
`information content and advertising content.” Id. at 4:63–66.
`
`The Specification notes that information may be transmitted from a
`
`selected channel over a wireless network and to the mobile device, resulting
`
`in targeted advertising. Id. at 1:56–58. These concepts are illustrated in
`
`Figure 8 below:
`
`
`
`Figure 8 of the ’351 patent represents a flow diagram illustrating an
`exemplary method of pushing information to a mobile device based on a
`triggering event.
`
`
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`Snap's Exhibit No. 1026
`Page 004
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`
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`As depicted in Figure 8, information is pushed to the mobile device based on
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`a “triggering event.” One example of a triggering event is a timer firing
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`(block 400 above), controlled by the Proxy Content Server. Id. at 13:24–27.
`
`Examples of significant time intervals that might trigger a timer are
`
`lunchtime, suppertime, and other significant times of the day. Id. at 13:27–
`
`31. If a triggering event is detected, Proxy Content Server 18 determines if
`
`any of the information categories assigned to a particular channel 21 are
`
`relevant to the triggering event. Id. at 13:36–39. If the Proxy Content
`
`Server determines that the triggering event is relevant to information in a
`
`channel, the Proxy Content Server then determines the type of information.
`
`Id. at 13:36–47. If it is advertising information, it is passed on to the mobile
`
`device; if it is content information, then meta tags are added. Id. at 13:47–
`
`51. The ’351 patent provides one example of meta tags as “embedded
`
`control sequences that the Proxy Content Server 18 has inserted to indicate
`
`when advertising should be inserted.” Id. at 8:27–29.
`
`The Specification further describes transmission of different types of
`
`“advertising information,” including “static” and “dynamic” advertising
`
`information, that combine to form an advertisement. Id. at 6:41–59.
`
`“[S]tatic advertising content . . . may include static information relating to
`
`the identity of an advertiser, such as a logo, a company banner, a location
`
`sensitive address, or other information that does not often change.” Id. at
`
`7:35–39. The Specification describes “dynamic advertising content” as
`
`information that “may change or vary at any given time.” Id. at 7:39–44
`
`(emphasis added). “For example, the dynamic advertising content 52B may
`
`include regularly changing advertising information, such as a special
`
`offering, a discount, a discount coupon, a sale, or other time-sensitive
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`Snap's Exhibit No. 1026
`Page 005
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`
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`information.” Id. More specifically, the proxy content server may also
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`combine advertising information from different advertising channels and/or
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`different types of advertising information “in order to generate a complete
`
`advertisement or information bulletin.” Id. at 8:49–59. For example, the
`
`proxy content server may combine static advertising information with
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`dynamic advertising information or default advertising information for
`
`display as a complete advertisement. Id. at 11:2–10.
`
`
`
`B. Illustrative Claim
`
`Claim 1, reproduced below, is illustrative of the claims at issue:
`
`1. A system for pushing information to a mobile device,
`comprising:
`
`a proxy content server that receives information over a computer
`network from an information source and stores the information
`to one of a plurality of channels based on pre-defined information
`categories, wherein the plurality of channels comprise memory
`locations included in at least one of the proxy content server or a
`proxy content server database;
`
`the proxy content server to receive a feedback signal over a
`wireless network that indicates a position of the mobile device,
`and to use the feedback signal to select a channel for transmission
`of the information from the selected channel over the wireless
`network to the mobile device, wherein the information comprises
`at
`least one of static advertising
`information, dynamic
`advertising information, default advertising information, or
`content information, and wherein a combination of the static
`advertising information with one of the dynamic or default
`advertising information comprises an advertisement or an
`information bulletin.
`
`Ex. 1001, 14:7–28. Independent claim 14 (also challenged) is similar
`
`in scope to claim 1. Id. at 15:9–27.
`
`
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`Snap's Exhibit No. 1026
`Page 006
`
`
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`C. Related Proceedings
`
`According to Patent Owner,1 the following matters are related
`
`proceedings involving the ’351 patent, or related patents. Paper 5.
`
`i.
`ii.
`
`BlackBerry Ltd. v. Snap, Inc., Case No. 2:18-cv-02693 (C.D. Cal.)
`BlackBerry Ltd. v. Facebook, Inc. et al., Case No. 2:18-cv-01844
`(C.D. Cal.)
`iii. BlackBerry Ltd. v. Twitter, Inc., Case No. 2:19-cv-1444 (C.D. Cal)
`iv.
`Snap, Inc. v. BlackBerry Limited, Case No. IPR2019-00714
`v.
`Snap, Inc. v. BlackBerry Limited, Case No. IPR2019-00715
`vi.
`Snap, Inc. v. BlackBerry Limited, Case No. IPR2019-00829
`vii. Snap, Inc. v. BlackBerry Limited, Case No. IPR2019-00937
`viii. Snap, Inc. v. BlackBerry Limited, Case No. IPR2019-00938
`ix.
`Snap, Inc. v. BlackBerry Limited, Case No. IPR2019-00939
`x.
`Facebook, Inc. et al., v. Blackberry Limited, Case No. IPR2019-
`00940
`Facebook, Inc. et al., v. Blackberry Limited, Case No. IPR2019-
`00941
`
`xi.
`
`
`
`D. References
`
`Petitioner relies on the following references:
`
`U.S. Patent Publication No. 2002/0052781 A1, filed May 25, 2001,
`
`published May 2, 2002 (Ex. 1004, “Aufricht”);
`
`International Publication No. WO 00/77978 A2, filed June 13, 2000,
`
`published Dec. 21, 2000 (Ex. 1005, “Boyle”); and,
`
`U.S. Patent No. 7,032,031 B1, filed May 15, 2001, issued Apr. 18,
`
`2006 (Ex. 1007, “Jungck”).
`
`1 Petitioner’s identification of related matters pursuant to 37 C.F.R.
`§ 42.8(b)(2) was allegedly deficient at the time of filing. Compare Pet. 1,
`with Prelim. Resp. 43–44 and Paper 5. Patent Owner requests that we deny
`institution because of Petitioner’s failure to comply with 37 C.F.R.
`§ 42.8(b)(2). See id. Because we deny the Petition on the merits, we need
`not address this argument, nor do we address Patent Owner’s request to deny
`institution pursuant to 35 U.S.C. §314(a). See Prelim. Resp. 40.
`
`Snap's Exhibit No. 1026
`Page 007
`
`
`
`Petitioner also relies on the testimony of Samrat Bhattacharjee, Ph.D.
`
`(Ex. 1002).
`
`E. Grounds Asserted
`
`
`
`Petitioner challenges claims 1, 2, 4–6, 8, 9, 11, 14–18, 20, 21, and 23
`
`of the ʼ351 patent on the following grounds (Pet. 2):
`
`References
`
`Basis
`
`Claims Challenged
`
`Aufricht
`
`Boyle
`
`§ 1022
`
`1, 2, 4–6, 8, 9, 11, 14–18, 20, 21, and 23
`
`§ 102
`
`1, 4–6, 9, 11, 14–18, 21, and 23
`
`Boyle and Jungck
`
`§ 103(a) 8 and 20
`
`
`
`II. ANALYSIS
`
`A petition must show how the challenged claims are unpatentable
`
`under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
`
`Petitioner bears the burden of demonstrating a reasonable likelihood that
`
`Petitioner would prevail with respect to at least one challenged claim for a
`
`petition to be granted. 35 U.S.C. § 314(a).
`
`A. Claim Construction
`
`In an inter partes review, we construe claim terms in an unexpired
`
`patent “in accordance with the ordinary and customary meaning of such
`
`claim as understood by one of ordinary skill in the art and the prosecution
`
`history pertaining to the patent,” as the claims would be construed “in a civil
`
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
`2013. Because the application from which the ’351 patent issued was filed
`before that date, our citations to Title 35 are to its pre-AIA version.
`
`Snap's Exhibit No. 1026
`Page 008
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`
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`action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2018). Only terms
`
`which are in controversy need to be construed, and then only to the extent
`
`necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`Petitioner proposes construing three claim terms, “proxy content
`
`server,” “static advertising information,” and “dynamic advertising
`
`information.” Pet. 21–23. Patent Owner generally agrees with Petitioner’s
`
`proposed constructions for “static advertising information” and “dynamic
`
`advertising information” because these were agreed upon claim
`
`constructions in the related district court proceeding. Prelim. Resp. 14–15;
`
`Ex. 2001, 9.
`
`Patent Owner contends that “proxy content server” need not be
`
`construed. Prelim. Resp. 16. Because Petitioner states that “the construction
`
`adopted [for ‘proxy content server’] by the Board is irrelevant for purposes
`
`of this proceeding,” whereas “[t]he art asserted in this petition discloses a
`
`‘proxy content server’ under both Patent Owner’s and Petitioner’s proposed
`
`constructions,” we decline to construe this term. Pet. 22. Further, we
`
`conclude that, regardless of how we construe “proxy content server,”
`
`Petitioner has not shown a reasonable likelihood of prevailing with respect
`
`to any challenged claim.
`
`We do find it necessary to discuss the terms “static advertising
`
`information” and “dynamic advertising information,” as well as the parties
`
`agreed on claim constructions for these terms.
`
`1. “static advertising information”
`
`All challenged independent claims recite this phrase. Ex. 1001, 14:7–
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`Snap's Exhibit No. 1026
`Page 009
`
`
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`15:27. Petitioner contends a person of ordinary skill in the art would
`
`understand this phrase to mean “advertising information that relates to the
`
`identity of an advertiser or that does not often change.” Pet. 22–23. Patent
`
`Owner agrees with this construction. Prelim. Resp. 15 (citing Ex. 1001,
`
`7:35–39).
`
`
`
`We adopt the parties’ agreed on construction of “static advertising
`
`information” as “advertising information that relates to the identity of an
`
`advertiser or that does not often change.”
`
`
`
`2. “dynamic advertising information”
`
`All challenged independent claims recite this phrase. Ex. 1001, 14:7–
`
`16:21. Petitioner contends a person of ordinary skill in the art would
`
`understand this phrase to mean “advertising information that regularly
`
`changes,” which is also the agreed upon construction in the related district
`
`court litigation. Pet. 23; Ex. 2001, 9. Patent Owner agrees. Prelim. Resp.
`
`14–15.
`
`
`
`The parties’ agreed construction is based on just one set of examples
`
`provided in the Specification. Ex. 1001, 7:40–44 (“For example, the
`
`dynamic advertising content 52B may include regularly changing
`
`advertising information . . . .”). Thus, we further examine what a person of
`
`ordinary skill in the art would understand this term to capture in accordance
`
`with its ordinary and customary meaning in light of the Specification.
`
`Further, interpreting the term “dynamic advertising information” as
`
`“regularly changing advertising information” begs the additional inquiry as
`
`to what “regularly changes” encompasses within the bounds of the
`
`Specification. After a review of the Specification, we determine that an
`
`important component in the meaning of this claim term is that “dynamic
`
`Snap's Exhibit No. 1026
`Page 0010
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`
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`advertising content . . . may change or vary at any given time.” Id. at 7:39–
`
`40 (emphasis added). The Specification states that the dynamic advertising
`
`may change or vary at any given time and thereafter provides a set of
`
`examples as including “regularly changing advertising information, such as
`
`a special offering, a discount, a discount coupon, a sale, or other time-
`
`sensitive information.” Id. at 7:40–44. The agreed definition by the parties
`
`is thus just one example. See id. (“For example . . . may include regularly
`
`changing advertising information”). Thus, we determine an important
`
`characteristic of dynamic advertising information is its ability to “change or
`
`vary at any given time,” but this “may include regularly changing
`
`advertising information.”
`
`
`
`Accordingly, “dynamic advertising information” means “advertising
`
`information that may change or vary at any given time, including advertising
`
`information that regularly changes.”
`
`We need not construe any additional terms in order to determine
`
`whether to institute trial, and we do not construe any other terms expressly.
`
`
`
`1. Anticipation
`
`B. Principles of Law
`
`To establish anticipation, each and every element in a claim, arranged
`
`as recited in the claim, must be found in a single prior art reference. Net
`
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). “To
`
`anticipate a claim, a prior art reference must disclose every limitation of the
`
`claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d
`
`1473, 1477 (Fed. Cir. 1997).
`
`Snap's Exhibit No. 1026
`Page 0011
`
`
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`2. Obviousness
`
`A claim is unpatentable under § 103(a) if the differences between the
`
`claimed subject matter and the prior art are such that the subject matter, as a
`
`whole, would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`
`obviousness is resolved on the basis of underlying factual determinations,
`
`including: (1) the scope and content of the prior art; (2) any differences
`
`between the claimed subject matter and the prior art; (3) the level of skill in
`
`the art;3 and (4) where in evidence, so-called secondary considerations.
`
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
`
`An invention “composed of several elements is not proved obvious
`
`merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.” KSR Int’l Co., 550 U.S. at 418. The relevant
`
`inquiry is whether Petitioner has set forth “some articulated reasoning with
`
`some rational underpinning to support the legal conclusion of obviousness.”
`
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Further, “rejections on
`
`obviousness grounds cannot be sustained by mere conclusory statements.”
`
`Id.
`
`3 Based on the current record, including our review of the ’351 patent and
`cited prior art, we agree with Petitioner’s assessment of the level of ordinary
`skill in the art and apply it for purposes of this Decision. See Pet. 3–4
`(arguing that a person of ordinary skill in the art “would have had at least a
`B.S. degree in computer science, electrical engineering, or an equivalent,
`and at least two years of experience in the relevant field, e.g., computer
`networking”).
`
`
`Snap's Exhibit No. 1026
`Page 0012
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`
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`C. Anticipation Based on Aufricht
`
`Petitioner challenges the patentability of claims 1, 2, 4–6, 8, 9, 11, 14–
`
`18, 20, 21, and 23 of the ’351 patent under 35 U.S.C. § 102 based on
`
`Aufricht. Pet. 23–52. In support thereof, Petitioner identifies the disclosures
`
`in Aufricht alleged to describe the subject matter in the challenged claims.
`
`Id.
`
`We have reviewed Petitioner’s contentions and supporting evidence.
`
`Given the evidence of record, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that any
`
`of the challenged claims of the ’351 patent are anticipated by Aufricht. We
`
`begin our analysis with a brief summary of Aufricht, and then the reasons
`
`for our determination.
`
`1. Overview of Aufricht (Ex. 1004)
`
`Aufricht discloses displaying interactive advertisements as well as
`
`other objects on a mobile device. Ex. 1004, code (57). More specifically,
`
`Aufricht describes “advertisement pages with interactive content” that can
`
`be displayed on mobile devices. Ex. 1004 ¶ 149. Figure 3, reproduced
`
`below, illustrates an exemplary interactive advertisement described by
`
`Aufricht:
`
`Snap's Exhibit No. 1026
`Page 0013
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`
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`Figure 3 of Aufricht represents an example advertisement shown on a Palm
`device. Id. ¶ 17.
`
`As shown in Figure 3, an interactive advertisement “CNET Wants To Send
`
`You To R Link” 302 is displayed on the home screen of Palm device 106.
`
`Id. ¶ 151. The advertisement is displayed along with the time, a battery
`
`indicator, and a number of icons for applications installed on the Palm
`
`device 106. See id. at Fig. 3.
`
`Aufricht’s system allows advertisers to submit advertisements. Id.
`
`¶ 210. The server then targets these advertisements to particular user mobile
`
`devices based on, for example, the user’s profile or the device’s location. Id.
`
`¶¶ 168–172. In addition to its advertisement-targeting embodiment,
`
`Aufricht’s server also “maintains a collection of channels.” Id. ¶ 85. In
`
`Aufricht’s nomenclature, “a channel” is “a collection of objects,” such as
`
`“content, applications, services, images, movies, music, links, etc.” Id. A
`
`Snap's Exhibit No. 1026
`Page 0014
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`
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`user can select from the channels available via the server. Id. ¶ 96. When
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`the user device then enters “a synchronization process,” the server “obtain[s]
`
`from providers . . . the objects defined by the channels, and cause[s] those
`
`objects to be stored on the client,” thereby “load[ing] the client . . . with the
`
`selected channels.” Id. ¶ 97.
`
`2. Discussion – Independent Claims 1 and 14
`
`We focus our analysis of those claim limitations that are dispositive
`
`for purposes of this decision. Claims 1 and 14 require “static advertising
`
`information” and “dynamic advertising information,” in a combined
`
`advertising technique: “a combination of the static advertising information
`
`with one of the dynamic or default advertising information comprises an
`
`advertisement or information bulletin.” Ex. 1001, 14:25–28. Because
`
`Petitioner relies on a combination of static and dynamic advertising
`
`information, our analysis of Aufricht focuses on that particular combination.
`
`According to Petitioner, Aufricht discloses a system for loading
`
`information, such as advertising information, on mobile devices by using a
`
`server to automatically push information to mobile devices. Pet. 23–24.
`
`Petitioner contends that “Aufricht discloses advertisements which both relate
`
`to the identity of an advertiser (i.e., static advertiser information) and which
`
`regularly change (i.e., dynamic advertising information.) (Ex. 1002,
`
`¶ 59[1e].).” Pet. 38–39. Petitioner relies on an example from paragraph 165
`
`of Aufricht, which states: “if the time of day is lunch time . . . an
`
`advertisement relating to a restaurant . . . may be transmitted to client 108 on
`
`device 402.” Pet. 39. Petitioner reasons that:
`
`In order to transmit an advertisement relating to a restaurant to
`the client, the server must necessarily include information
`relating to the identity of the restaurant. (Ex. 1002, ¶ 59[1e].)
`
`Snap's Exhibit No. 1026
`Page 0015
`
`
`
`include static
`transmitted advertisement will
`the
`Thus,
`advertising information. (Id.) An advertisement that is displayed
`during lunch time is time sensitive (or, as Aufricht recites, “time
`specific.”) (Ex. 1004, ¶ 164.) Therefore, it regularly changes,
`and is dynamic advertising information. (Ex. 1002, ¶ 59[1e].) As
`such, this advertisement includes a combination of dynamic and
`static advertising information. (Id.)
`
`Pet. 39.
`
`
`
`Petitioner relies on another example where “Aufricht discloses a
`
`system which will return an advertisement for ‘an Italian restaurant in the
`
`location of the National Theatre that is still open at 10 p.m.’” Id. (quoting
`
`Ex. 1004 ¶ 174). According to Petitioner, the information “regularly
`
`changes because it is displayed due to the fact that it is 10 p.m. and the
`
`restaurant remains open (i.e., it comprises dynamic advertising
`
`information).” Id. (citing Ex. 1002 ¶ 59[1e]). Thus, Petitioner concludes,
`
`“this advertisement is another combination of dynamic and static advertising
`
`information.” Id. at 40. Notably, Petitioner does not contend that the
`
`combination of advertisements includes “default advertising information.”
`
`See id. at 39.
`
`Patent Owner challenges Petitioner’s lack of showing as to how the
`
`advertisements are generated as well as a failure to prove “‘a combination’
`
`of two different types of advertising information, much less a combination
`
`of the particular ‘dynamic’ and ‘static’ advertising information required by
`
`all Challenged Claims.’” Prelim. Resp. 22. According to Patent Owner,
`
`“Aufricht does not generate its advertisements by ‘combin[ing]’ different
`
`types of advertising information, Aufricht lacks ‘dynamic advertising
`
`information,’ and Petitioner’s argument that Aufricht ‘necessarily’ discloses
`
`Snap's Exhibit No. 1026
`Page 0016
`
`
`
`‘static advertising information’ is based on speculation unsupported by
`
`facts.” Id. at 23.
`
`Patent Owner examines both examples relied on by Petitioner and
`
`argues that in both cases the same advertisement submitted to the server is
`
`eventually loaded onto a user’s device, without any evidence that a
`
`combination of static and dynamic advertising occurs as required by the
`
`claims.
`
`Petitioner cites to advertisements “relating to a restaurant
`suitable for teenagers” or “an Italian restaurant” as allegedly
`disclosing a combination of different types of advertising
`information. Pet. at 39 (citing Aufricht ¶¶ 165, 174). But
`Aufricht merely states that “an advertiser submits to server 104
`an advertisement and/or other material” and later that same
`“advertisement and/or other materials . . . are loaded on the users’
`devices.” Aufricht ¶¶ 195-197. Aufricht is silent as to how the
`advertisement is generated in the first instance, and Aufricht’s
`server does not subsequently make any changes to that
`advertisement. Aufricht, therefore, does not disclose that any of
`its advertisements are the result of “combin[ing]” two different
`types of advertising information, as claimed.
`
`Prelim. Resp. 23–24.
`
`Patent Owner next argues that Aufricht’s disclosure of displaying
`
`advertisements for restaurants at a particular time of day fails to disclose the
`
`claimed “dynamic advertising information.” Id. at 24. Patent Owner argues
`
`that because the agreed-upon construction requires changes, and Petitioner
`
`has failed to identify any changes at all to Aufricht’s advertisements,
`
`Aufricht does not disclose this claim limitation. This is so because
`
`“[m]erely transmitting a given advertisement at a particular time of day does
`
`not entail any change to the content of that advertisement, and thus does
`
`disclose that any information in that advertisement is ‘dynamic,’ i.e., that it
`
`Snap's Exhibit No. 1026
`Page 0017
`
`
`
`‘regularly changes.’” Id. We agree with Patent Owner. Our specific
`
`reasoning is set forth below.
`
`
`
`Petitioner has not sufficiently shown on this record that Aufricht’s
`
`disclosure of transmitting a given advertisement at a particular time of day
`
`discloses the claim requirement for “dynamic advertising information,” or
`
`the related requirement of “a combination of the static advertising
`
`information with . . . dynamic . . . advertising information.” Ex. 1001,
`
`14:22–28. Petitioner does not identify any instance where Aufricht replaces
`
`old advertising information with new advertising information on a regular
`
`basis. Petitioner’s evidence and arguments also do not persuasively
`
`establish how Aufricht’s advertising information may change or vary at any
`
`given time, which we determined to be the proper meaning for “dynamic
`
`advertising information.” Put simply, an advertisement that is delivered at
`
`lunchtime or after 10:00 PM is not per se advertisement that changes and is
`
`not information that may change or vary at any given time merely because it
`
`is transmitted at various specific times.
`
`Furthermore, according to the parties’ proposed claim construction for
`
`dynamic advertising information, such an advertisement has not been shown
`
`to be “advertising information that regularly changes.” Although the
`
`embodiment of Aufricht relied on by Petitioner selects and transmits an
`
`advertisement based on particular criteria, say an advertisement for an Italian
`
`restaurant in a certain location, Aufricht does not explain that the
`
`advertisement content changes regularly. For example, the cited portions do
`
`not demonstrate that the Italian restaurant advertisement would be any
`
`different at different times or even that at different times some other Italian
`
`restaurant would be advertised.
`
`Snap's Exhibit No. 1026
`Page 0018
`
`
`
`We have considered Dr. Bhattacharjee’s testimony but do not find it
`
`persuasive. This testimony is nearly a copy of the Petition, thus not
`
`particularly helpful. See 37 C.F.R. § 42.65(a); see also InfoBionic, Inc. v.
`
`Braemer Mfg., LLC, IPR2015-01704, Paper 11 at 14–15 (PTAB Feb. 16,
`
`2016). More importantly, Dr. Bhattacharjee does not persuasively explain
`
`how Aufricht’s advertising regularly changes. For example, Dr.
`
`Bhattacharjee testifies that “[a]n advertisement that is displayed only during
`
`lunch time is regularly changing (or, as Aufricht recites, ‘time specific.’) (Id.
`
`¶ 164.).” Ex. 1002 ¶ 59[1e]. We do not find this testimony persuasive
`
`because displaying the same advertisement during an extended period –
`
`lunchtime – does not persuasively establish that that the advertisement
`
`regularly changes (to any other advertisement), or that the advertisement
`
`may vary at any given time.
`
`
`
`Further, Petitioner’s example of an advertisement arriving for a
`
`particular restaurant after 10:00 P.M. (Pet. 39) is the result of the user
`
`specifically requesting the advertisement at that time. “[T]he user enters the
`
`location of the device and the time of day for which advertisements should
`
`be selected,” and the user must thereafter “sync this information to [the]
`
`server.” Ex. 1004 ¶ 174. We do not agree with Petitioner that the
`
`advertisement delivered at the request of the user for a specific location4 at
`
`10:00 P.M., may change or vary at any given time, or regularly change. The
`
`fact that a particular restaurant advertisement may be transmitted at a time
`
`when a user is more likely to be interested in food served at that restaurant
`
`4 Petitioner’s 10:00 P.M. example from Aufricht where the user inputs a
`location would also seemingly not meet other claim limitations requiring “a
`feedback signal . . . that indicates a position.” See Ex. 1001, claim 1.
`
`Snap's Exhibit No. 1026
`Page 0019
`
`
`
`does not mean any change to that advertisement has occurred. For the
`
`reasons set forth above, Petitioner has not persuasively shown that Aufricht
`
`discloses the requirement of “a combination of the static advertising
`
`information with one of the dynamic or default advertising information
`
`comprises an advertisement or information bulletin,” (Ex. 1001, 14:25–28),
`
`as required by claims 1 and 14.
`
`
`
`We have reviewed Petitioner’s arguments and evidence concerning
`
`claims 1 and 14 and, for the reasons set forth above, we are not persuaded
`
`that Petitioner has shown a reasonable likelihood of prevailing in
`
`demonstrating that claims 1 and 14 are anticipated by Aufricht.
`
`3. Discussion – Dependent Claims 2, 4–6, 8, 9, 11, 15–18, 20, 21, and
`23
`
`We reach the same conclusion with respect to dependent claims 2, 4–6,
`
`8, 9, 11, 15–18, 20, 21, and 23, as Petitioner’s showing for these claims
`
`relies on the analysis set forth with respect to either independent claim 1 or
`
`claim 14. See Pet. 40–52.
`
`
`
`D. Anticipation Based on Boyle
`
`Petitioner challenges the patentability of claims 1, 4–6, 9, 11, 14–18,
`
`21, and 23 of the ’351 patent under 35 U.S.C. § 102 based on Boyle.
`
`Pet. 52–80. In support thereof, Petitioner identifies the disclosures in each
`
`reference alleged to describe the subject matter in the challenged claims. Id.
`
`We have reviewed Petitioner’s contentions and supporting evidence.
`
`Given the evidence of record, we are not persuaded that Petitioner has
`
`demonstrated a reasonable likelihood of prevailing on its assertion that any
`
`of the challenged claims of the ’351 patent are anticipated by Boyle. We
`
`Snap's Exhibit No. 1026
`Page 0020
`
`
`
`begin our analysis with a brief summary of Boyle, and then the reasons for
`
`our determination.
`
`1. Overview of Boyle (Ex. 1005)
`
`Boyle discusses transmitting targeted advertising to mobile devices,
`
`and “the advertiser may identify desired recipients for its advertisements
`
`based upon demographic and geographic characterization of the
`
`subscribers.” Ex. 1005, code (57). Boyle’s advertising environment is
`
`shown in Figure 1, reproduced below:
`
`
`
`Figure 1 of Boyle shows a network data distribution system. Id. at 11:8–9.
`
`Boyle’s “network data distribution system” includes “ad server 130,” “local
`
`device[s] 100,” “MWDD [mobile wireless display devices] 150,”
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