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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner
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`v.
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`BILLJCO LLC,
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`Patent Owner
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`CASE: IPR2022-00129
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`U.S. PATENT NO. 8,566,839
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107(a)
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`39744072.4
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`TABLE OF CONTENTS
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`Page
`SECTION 1. Introduction ........................................................................... - 1 -
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`SECTION 2. Alleged Grounds of Unpatentability .................................... - 2 -
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`SECTION 3. ALL GROUNDS: Lutnick fails to disclose an object
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`containing both information and instructions, and petitioner has not shown it
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`obvious to do so. ................................................................................................... - 5 -
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`SECTION 4. ALL GROUNDS: Lutnick fails to disclose a “condition for
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`detecting a particular user action” and the petition fails to show it would have been
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`obvious to modify lutnick to do so. .................................................................... - 11 -
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`SECTION 5. The Petition Should be Denied Under § 314(a) ................. - 15 -
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`A.
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`Fintiv Factor 1–Likelihood of Stay ............................................. - 15 -
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`B.
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`C.
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`Fintiv Factor 2–Trial Date Versus FWD Due Date .................... - 16 -
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`Fintiv Factor 3–Investment in the Proceeding ............................ - 17 -
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`D.
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`Fintiv Factor 4–Overlap of Issues ............................................... - 18 -
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`E.
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`F.
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`Fintiv Factor 5–Identity of Parties .............................................. - 19 -
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`Fintiv Factor 6–Other Circumstances ......................................... - 20 -
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`SECTION 6. Conclusion .......................................................................... - 21 -
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`IPR2022-00129
`IPR2022-00129
`Patent No. 8,566,839
`Patent No. 8,566,839
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`SECTION 1. INTRODUCTION
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`Petitioner Apple, Inc. (“Petitioner”) has not met its burden in demonstrating
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`that U.S. Patent No. 8,566,839 (“the ’839 patent”) is more likely than not invalid,
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`and, as such, institution should be denied.
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`Petitioner’s contention that all claims of the ’839 patent are invalid as obvious
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`lacks merit. Petitioner relies on one primary prior art reference—U.S. Patent
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`Application Publication 2008/0167106 A1 (EX1005) to Lutnick (“Lutnick”). The
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`Petition is facially defective in that it fails to demonstrate “a reasonable likelihood
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`that the Petitioner would prevail with respect to at least one of the claims challenged
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`in the petition” under 35 U.S.C. § 314(a).
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`First, the Lutnick reference fails to disclose transmission of an “object” to a
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`“receiving data processing system” combining both “information and instructions,”
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`as recited by each independent claim 1 and 25 of the ’839 patent. Second, Lutnick
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`also fails to disclose instructions for triggering presentation of information
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`containing a “condition for detecting a particular user action by a user,” as recited
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`by each challenged independent claim.
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`Neither the Petition, nor the declaration submitted by Petitioner’s expert,
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`provide an articulated reasoning with a rational underpinning to support a legal
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`conclusion of obviousness. (KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
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`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).). The Petition only provides
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`“mere conclusory statement[s]” (id.) that the claims are obvious, and lacks cogent
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`reasoning as to why a person of ordinary skill in the art would modify the cited
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`IPR2022-00129
`Patent No. 8,566,839
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`reference in the specific manner that is recited in each of the challenged claims.
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`Petitioner’s expert declaration (EX1003) merely repeats the attorney
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`arguments in the Petition. In summary, the IPR Petition fails to show a reasonable
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`likelihood that at least one of the challenged claims of the ’839 patent is
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`unpatentable.
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`Finally, in view of the pending litigation in the Western District of Texas, the
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`Board should exercise its discretion pursuant to 35 U.S.C. § 314(a) and deny review.
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`For all of these reasons, the Board should not institute inter partes review of
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`the ’839 patent and should deny the Petition in its entirety.
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`SECTION 2. ALLEGED GROUNDS OF UNPATENTABILITY
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`Petitioner alleges the following grounds of unpatentability under 35 U.S.C. §
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`103 against independent claims 1 and 25 and dependent claims 2-3, 8, 20, 21, 23-
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`24, 26-27, 32, 44-45, and 47-49 of the ’839 patent. Pet. at 2. All are deficient in
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`meeting the challenged claims.1
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`1 Patent Owner disputes Petitioner’s proposed claim constructions, but no claim
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`construction is necessary for purposes of this POPR, given the fundamental flaws in
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`the Petition. If IPR is instituted, Patent Owner will provide appropriate constructions
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` Grounds Reference(s)
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`1. § 103
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`Lutnick
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`Challenged Claims
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`1-3, 8, 21, 23-27, 32, 45, 47
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`2. § 103
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`Lutnick in view of Rankin
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`3. § 103
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`Lutnick in view of Evans
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`20 and 44
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`23 and 47
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`4. § 103
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`Lutnick in view of Bluetooth Core 24 and 48
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`The ’839 patent relates, in part, to specific and particularized inventions
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`associated with beacon technology and the related protocols and specifications
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`which facilitate and enable aspects of the beacon technology ecosystem including
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`devices capable of beaconing, manufacturers of beacon transmitting devices,
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`application developers, and beacon deployers.
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`Independent claim 1 of the ’839 patent recites in pertinent part:
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`A method for information presentation by a receiving data processing
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`system, said method comprising:
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`receiving, by said receiving data processing system, an object, said
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`object containing information and instructions for presenting said
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`of terms of the ’839 patent in its Patent Owner Response, and expressly reserves the
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`right to do so.
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`IPR2022-00129
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`information, said instructions including an event specification to be
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`monitored by said receiving data processing system for triggering when
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`to present said information, said event specification including a
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`whereabouts condition and a condition for detecting a particular user
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`action by a user of said receiving data processing system, said
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`whereabouts condition determining if a location of said receiving data
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`processing system is in a vicinity of another data processing system;
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`…”.
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`EX1001, claim 1 (excerpted).
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`The requirements of the invention are explained by the language in claim 1
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`itself. The claim language explains that the claimed “object” must “contain[]
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`information and instructions for presenting said information.” As the claim itself
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`makes clear, the “object” contains both information and instructions for presenting
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`the information. The object is received by the “receiving data processing system.”
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`The claim language further explains that the “instructions” include an “event
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`specification.” This event specification includes (1) a whereabouts condition and (2)
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`a condition for detecting a particular user action.
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`Independent claim 25 contains the same above-quoted claim phrase; the only
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`difference is that claim 25 recites originator instructions, whereas claim 1 recites
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`instructions. Pet. at 18. Petitioner refers to this limitation as [1.a] and [25.d]. Pet. at
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`17-18. Petitioner addresses claims 1 and 25 together.
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`SECTION 3. ALL GROUNDS: LUTNICK FAILS TO DISCLOSE AN
`OBJECT
`CONTAINING
`BOTH INFORMATION
`AND
`INSTRUCTIONS, AND PETITIONER HAS NOT SHOWN IT
`OBVIOUS TO DO SO.
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`The Petition fails to demonstrate Lutnick’s disclosure of transmission of an
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`“object” to a “receiving data processing system” containing both “information” and
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`the specific “instructions,” as recited by claims 1 and 25 of the ’839 patent. Nor has
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`Petitioner demonstrated that it would have been obvious to a POSITA to combine
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`transmission of a promotion (information) and a program for displaying the
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`promotion (instructions) in a single object sent to a mobile gaming device (a
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`receiving data processing system).
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`Petitioner identifies Lutnick’s “mobile gaming device” (“MGD” as Petitioner
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`refers to it) as the device purportedly constituting a “receiving data processing
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`system” for receiving the “object” recited by ’839 patent. Pet. at 14, citing Lutnick,
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`Abstract, [0092], [0193]; see also Pet. at 18.
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`Petitioner contends that Lutnick’s disclosure of “promotions” constitutes the
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`“information” component of the claimed “object.” Pet. at 21, citing Lutnick [0290].
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`Petitioner also contends that Lutnick discloses the mobile gaming device receiving
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`the claimed “instructions.” Pet. at 21, citing Lutnick [0184]; see also Pet. at 22, citing
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`Lutnick [0119].
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`Lutnick, however, fails to disclose transmission of both “information”
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`(promotion) and “instructions” (a program executing the promotion) combined
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`within an a single “object” sent to the “receiving data processing system” (mobile
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`gaming device), as recited by independent claims 1 and 25.
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`Petitioner admits as much by noting that “Lutnick expressly discloses
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`transmitting both promotions and instructions together to a device, for example a
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`casino server.” Pet. at 24 (underlying & italics in original, bold added), citing
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`Lutnick [0183]. A “casino server” is not the “mobile gaming device” that Petitioner
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`contends constitutes the “receiving data processing system” that receives the object.
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`Moreover, the actual “device” referred to in the portion of Lutnick cited by
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`Petitioner (paragraph 183) is also not the “mobile gaming device” purportedly
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`receiving the claimed object. The device referred to in paragraph 183 is a “marketer”
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`device, not the mobile gaming device. Lutnick [00183].
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`Figure 1 in Lutnick makes clear that “marketer devices” 125 are separate
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`components from “mobile gaming devices” 110, 115, 120 that Petitioner identifies
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`as the claimed “receiving data processing system” receiving an “object.” See below
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`EX1005, Figure 1 (color added). A “marketer device” is part of the casino business
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`operations; it is not a device used by a gambler with a mobile gaming device.
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`A “marketer” using a “marketer device” is a very different component within
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`the promotions management system disclosed by Lutnick than a player using a
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`mobile gaming device. A marketer is a business customer of the casino that is billed
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`by the casino for sending the promotion to the player of the mobile gaming device.
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`Lutnick [0100]. The marketer device 125 interacts with the casino’s server 105, see
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`Lutnick [0183], which may include a marketer database 445. Id. [0186].
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`Furthermore, Lutnick fails to disclose that the “marketer device” combines
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`promotion and instructions. Lutnick discloses that “[m]arketer devices may transmit
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`information to the casino server include [sic] information describing promotions to
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`run (e.g., graphics and audio associated with promotions), when to run the
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`promotions, … and so on.” Lutnick [0183] (italics added). Petitioner implies that the
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`transmission of “when to run the promotions” could constitute “instructions.”
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`However, that disclosure refers to data transmission (i.e., information about best
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`time to run) to be compiled on the casino’s server for subsequent evaluation, not
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`“instructions” actually causing a promotion to display on a mobile gaming device.
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`Lutnick expressly refers to “when to run the promotions” as information
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`transmission, as that is actually what it is. Lutnick [0183]. Nothing disclosed in
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`Lutnick identified in the Petition demonstrates disclosure of an “object” sent to a
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`“receiving data processing system” (here, a mobile gaming device) containing both
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`“information” and the specific “instructions” recited by both claims 1 and 25 of the
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`’839 patent.
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`Petitioner contends it would have been obvious to a POSITA to include both
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`a promotion (information) and a program regarding when to present the promotion
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`(instructions) to a mobile gaming system. Pet. at 24. But, as discussed above, such a
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`program does not qualify as instructions as claimed. And the only basis for this
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`position is Petitioner’s argument that Lutnick discloses a motivation to download
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`both a promotion and a program due to possible connectivity issues between a
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`mobile gaming device and another device such as the casino server. Pet. at 24, citing
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`Lutnick [0289] and EX1003 ¶ 90.
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`Lutnick, however, describes presentation of advertisement when there is
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`disruption in communication between the mobile gaming device and the casino
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`server. Lutnick [0289] (“if there is a disruption in the communication, the mobile
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`gaming device may be prevented from allowing the player to game. A disruption in
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`communication might the present a good opportunity for the presentation of the
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`promotions, since the player may not be able to play games.”). Lutnick, therefore,
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`describes pre-programing the mobile gaming device to display information
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`(promotion) if and when the mobile gaming device disconnects from the casino
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`server. Nothing within the cited disclosures of Lutnick describes or suggests an
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`advantage to combining transmission of a promotion with programming for
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`displaying the promotion within a combined object.
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`Indeed, while a POSITA would have known to combine promotions
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`(information) with other data (additional information), e.g., text with graphics,
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`combining promotions with a program would have been contrary to conventional
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`wisdom at the time of the invention and common sense. Conventional wisdom at the
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`time of the invention taught a POSITA to avoid transmission of promotions with
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`program instructions because doing so could make transmission more difficult, e.g.,
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`due to size. Only through the use of inappropriate hindsight, i.e., hindsight that
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`includes knowledge gleaned only from the applicant's (patent owner’s) disclosure
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`IPR2022-00129
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`(In re McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971)), would a POSITA modify
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`the disclosure of Lutnick to include transmission of a promotion and a program for
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`executing the promotion in a combined object sent to a mobile gaming device.
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`Petitioner alleges additional motivation to pre-download promotions onto the
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`mobile gaming device exists for example due to size considerations causing
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`excessive delay in downloading the promotion to be displayed. Pet. at 24-25, citing
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`EX1003 ¶ 90. However, this argument actually teaches away from combining
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`promotion and programming in a single object. If Lutnick describes pre-
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`downloading due to size considerations, common sense would dictate that
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`promotions should be downloaded separately from programming to avoid size
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`constraints. Furthermore, even if a POSITA would have been motivated to pre-
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`download promotions, Petitioner has not shown motivation to pre-download
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`promotions (information) with programs (instructions).
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`The Petition and the supporting evidence simply offers no articulated reason
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`supporting the conclusion that a POSITA would have modified Lutnick’s disclosure
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`of transmittal of a promotion to the mobile gaming device to also include in the same
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`transmittal a program for operating the promotion on the device. Lutnick teaches a
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`POSITA to transmit each separately.
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`SECTION 4. ALL GROUNDS: LUTNICK FAILS TO DISCLOSE A
`“CONDITION FOR DETECTING A PARTICULAR USER ACTION”
`AND THE PETITION FAILS TO SHOW IT WOULD HAVE BEEN
`OBVIOUS TO MODIFY LUTNICK TO DO SO.
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`IPR2022-00129
`Patent No. 8,566,839
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`The Petition also fails to demonstrate Lutnick’s disclosure of an object
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`containing event specific instructions including “a condition for detecting a
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`particular user action by a user,” as recited by both claims 1 and 25 of the ’839
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`patent.2 Petitioner similarly fails to demonstrate that it would have been obvious to
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`a POSITA to modify Lutnick to include specific instructions conditioned to detect a
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`particular user action.
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`2 Petitioner falsely suggests that the express claim limitation “condition for
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`detecting a particular user action by a user” may not be “entitled to patentable
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`weight.” Pet. at 26 (“to the extent the limitation … is entitled to patentable weight”).
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`However, by their express terms, both claims 1 and 25 require a method or system
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`containing object instructions including both a “whereabouts condition” and “a
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`condition for detecting a particular user action by a user”. EX1001. Petitioner offers
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`no explanation or justified reason how these claim elements can be simply ignored.
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`Nor does the Petition identify how the claim phrase should be construed in the
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`section of the Petition addressing claim construction, as required by 37 CFR §
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`42.104(b)(3). Pet. at 8-9.
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`Petitioner alleges that Lutnick discloses “a condition for detecting a particular
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`user action by a user” “in several ways.” Pet. at 26, citing EX1003 ¶ 93. Each of the
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`alleged disclosures in Lutnick, however, actually fails to show a “condition for
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`detecting a particular user action by a user,” as claimed in the ’839 patent.
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`First, Petitioner argues that Lutnick’s disclosure of a mobile gaming system
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`in which a user provides “preferences in advertising” constitutes “a condition for
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`detecting a particular user action”. Pet. at 26, citing Lutnick [0224]; see also EX1003
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`¶ 94. Lutnick discloses “[i]n various embodiments, a player may influence the
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`promotions that are presented to him” because “[w]hen the player has input into
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`which promotions are presented to him, the player may be more likely to respond
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`positively to the promotions.” Lutnick [224]. Lutnick, however, describes obtaining
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`user preferences in advance of the user receiving an object with “whereabout
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`conditions” and “conditions for determining a particular user action”.
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`Claims 1 and 25 require that the instructions including “an event specification
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`to be monitored by said receiving data processing system for triggering when to
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`present information,” including “a condition for detecting a particular user action
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`…”. This specific claim language indicates that the instructions are monitoring a
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`particular user action triggered after the user receives the object, and not a preference
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`received beforehand.
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`Lutnick discloses that “a player may influence the promotions that are
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`presented to him. When the player has an input into which promotions are presented
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`to him, the player may be more likely to respond positively to the promotions.”
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`Lutnick [0224]. Lutnick indicates that the player provides input before receiving
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`promotions from the casino. For example, a player might provide input indicating a
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`preference for card games versus slot machines. Thereafter, the casino would only
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`send promotions for card games. The disclosure does not teach the casino sending
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`an object containing promotions and instructions containing a condition for detecting
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`a particular user action after receiving the object.
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`Second, Petitioner argues that Lutnick’s disclosure of sending a promotion in
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`response to a user “achieving a winning outcome” is a condition for detecting a
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`particular user action by a user. Pet. at 27, citing Lutnick [0250-254]. Petitioner’s
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`expert argues that sending a promotion to the mobile gaming device after a winning
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`game is a user action condition because a particular user action (i.e., interacting with
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`the software on the mobile gaming device) is detected, where the promotion is
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`conditioned on the interaction. EX1003 ¶ 95. However, winning a game is not a
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`“particular user action by a user of said receiving data processing system”; instead,
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`it is a category of responses by the mobile gaming device, not the user.
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`Third, Petitioner argues that Lutnick’s disclosure of sending a signal from a
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`beacon when a user comes within range constitutes a “condition for detecting a
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`particular user action”. Pet. at 27, citing Lutnick [0146]. A “condition for detecting
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`a particular user action” requires that a user interact with the “receiver data
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`processing systems,” as opposed to the receiver device experiencing a simple
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`location trigger.
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`Petitioner’s argument conflates the “whereabouts” condition with the
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`separate requirement of a “condition for detecting a particular user action by a user”.
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`Claims 1 and 25 require that the “instructions” include an event specification
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`monitored by the receiving data processing system separately triggered by (1)
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`whereabouts conditions and (2) conditions for detecting a user action by a user of
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`the receiving data processing system. If sending a signal when a user comes within
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`range of a beacon constituted “a condition for detecting a particular user action,” the
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`claim would not need to separately include the “whereabouts” limitation.
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`Petitioner argues that, if Lutnick does not expressly disclose a condition for
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`detecting a particular user action by a user of said receiving data processing system,
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`it nonetheless would have been obvious to implement such a condition. Pet. at 28.
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`Petitioner’s argument is based on its expert’s opinion that “Lutnick expressly
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`discloses that user preferences can be used to provide promotions with content that
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`is more appealing to the user, and a POSITA would have had a reasonable
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`expectation of success in implementing user preferences that cause certain
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`promotions to be presented on the mobile gaming device display.” EX1003 ¶ 97,
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`citing Lutnick [224]. However, Lutnick merely describes obtaining user preferences
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`in advance of receiving a promotion. Lutnick does not suggest including instructions
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`for triggering when to present information based on “a condition for detecting a
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`particular user action …”. Only through the use of inappropriate hindsight would a
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`POSITA modify Lutnick to include disclosure of instructions for triggering
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`presentation of information conditioned upon detecting a particular user action. See
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`In re McLaughlin, 443 F.2d at 1395.
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`SECTION 5. THE PETITION SHOULD BE DENIED UNDER § 314(A)
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`Patent Owner contends that, in view of the pending litigation in the Western
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`District of Texas (“WDTX”) -- BillJCo v. Apple Inc., Case No. 6:21-cv-00528-ADA
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`(“Litigation”), the Fintiv factors enumerated below weigh in favor of discretionary
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`denial. Apple Inc. v. Fintiv, IPR2020-00019, Paper 11, 5-6 (PTAB Mar. 20, 2020)
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`(precedential).
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`Preliminarily, Petitioner stated that it was challenging venue in the Litigation
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`and had moved to transfer the Litigation to the Northern District of California. Pet.
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`at 62. Petitioner’s motion to transfer, however, was denied on February 17, 2022
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`(corrected March 1, 2022). EX2001. [Public Version].
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`A.
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`Fintiv Factor 1–Likelihood of Stay
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`Petitioner advised that it will move to stay the Litigation if the IPR is
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`instituted. Pet. at 62. Petitioner contended that institution of an IPR would provide
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`an opportunity to simplify the Litigation, which would increase the likelihood that
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`IPR2022-00129
`Patent No. 8,566,839
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`a stay would be granted. Pet. at 62. Petitioner also contended that a finding of
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`invalidity in the IPR would “relieve the Western District of Texas of the need to
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`continue with the companion litigation for the ‘867 patent.” Pet. at 62. Neither
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`contention is correct.
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`First, unless all claims asserted in the Litigation are found invalid in the IPR,
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`the district court will not be relieved of the need to continue with the Litigation.
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`Second, a stay is not likely to be granted on a contested motion in the WDTX.
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`As the “LegalMetric District Report Texas Western District Court in Patent Cases,
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`January, 2017–September, 2021” (EX2002) reveals, stays pending an IPR were
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`granted in the WDTX only 36.4% of the time during the five-year reporting period.
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`Id., p.3. The percentage is even lower for the judge assigned to the Litigation, Judge
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`Albright. His stay grant rate is only 28.6%. Id., pp. 70-71. It is more than 70% likely
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`that a stay will not be granted if an IPR is instituted.
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`Fintiv Factor 1 weighs strongly in favor of discretionary denial.
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`B.
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`Fintiv Factor 2–Trial Date Versus FWD Due Date
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`Trial is scheduled for February 13, 2023, “or as soon as practicable.” EX1007.
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`Petitioner emphasizes the phrase in quotes to support its contention that the trial date
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`is not reliable. Pet. at 63. To further support its contention, Petitioner discusses the
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`reliability of trial dates in general rather than addressing the facts specific to the
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`IPR2022-00129
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`Litigation.
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`The facts specific to the Litigation suggest that this trial date is extremely
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`reliable. A review of the Agreed Scheduling Order confirms that the court and parties
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`have kept to the scheduling order fairly closely. EX1007. Indeed, although the
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`Markman Hearing was held on February 22, 2022 instead of February 10, 2022, the
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`Claim Construction Order was issued February 24, 2022. EX2003. Judge Albright’s
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`average time to a claim construction decision is 12.1 months from the date of filing
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`of a case, which is May 25, 2021 for the Litigation. EX2002; EX2004. Judge
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`Albright, thus, is about three months ahead of schedule with his claim construction
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`decision.
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`Fintiv Factor 2 weighs strongly in favor of discretionary denial.
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`C.
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`Fintiv Factor 3–Investment in the Proceeding
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`Petitioner was served in the Litigation on May 28, 2021. EX2005. Petitioner
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`filed its Petition on November 30, 2021, just over six months thereafter. Petitioner
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`stated that “almost no other court would be as far along in its trial calendar” within
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`six months. Pet. at 65. Petitioner’s statement is an express acknowledgement both
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`of the alacrity of proceedings in the WDTX and of the investment by the court and
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`parties in the Litigation.
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`Indeed, the parties have already disclosed extrinsic evidence and identified
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`IPR2022-00129
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`expert witnesses for claim construction and indefiniteness (November 16, 2021);
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`served initial disclosures (February 15, 2022); and submitted claim construction
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`briefs (completed January 27, 2022. EX1007. As noted above, a Claim Construction
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`Order was already issued. EX2003. And, three claim terms of the ‘839 patent were
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`construed. EX2003. It is not likely that an institution decision will issue before the
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`end of July, 2022, which means an FWD will not issue before July, 2023. The
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`parties’ and the court’s investment will most likely be substantial before an FWD
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`issues.
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`Fintiv Factor 3 weighs strongly in favor of discretionary denial.
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`D.
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`Fintiv Factor 4–Overlap of Issues
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`Petitioner stipulated that it would not assert invalidity of the challenged claims
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`in the Litigation using grounds asserted in the Petition. Pet. 65. The Petitioner’s
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`stipulation is quite limited in scope. The Board views stipulations like Petitioner’s
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`as only mitigating concerns of duplicate efforts and of potentially conflicting
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`decisions “to some degree.” See Apple Inc. v. Seven Networks, LLC, IPR2020-
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`00180, Paper 12, at 15 (PTAB Aug. 14, 2020). Such a stipulation, then, may slightly
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`favor institution.
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`Under the present facts, however, discretionary denial should be favored
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`instead. Petitioner asserted only four bases for challenging validity in its Petition,
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`and relied upon only four references; three bases were each a combination of two
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`IPR2022-00129
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`references. Pet. 4. In the Litigation, Petitioner cited eight references, and enumerated
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`four single reference, and numerous two- and three-reference combinations, for a
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`total of 52 bases for challenging validity, including one of the four bases relied upon
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`in the Petition. Defendant Apple Inc.’s Preliminary Invalidity Contentions, EX2006,
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`pp 32-34. If both actions proceed simultaneously, not only is efficiency decreased,
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`but also the possibility of conflicting decisions is increased, assuming that all bases
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`of invalidity asserted by Petitioner in the litigation are of equal merit. It is possible
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`that the claims challenged in the Petition could be determined to be valid over the
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`art relied upon in the Petition, but invalid over art relied upon in the Litigation.
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`Fintiv Factor 4 weighs in favor of discretionary denial.
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`E.
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`Fintiv Factor 5–Identity of Parties
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`The Litigation involves the same parties. Petitioner argued that this factor is,
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`at worst, neutral. Pet. at 66. In Apple, however, the Board found that, when the
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`parties are the same, Fintiv factor 5 weighed slightly in favor of the Patent Owner.
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`Apple, at 16.
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`Fintiv Factor 5 weighs in favor of discretionary denial.
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`F.
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`IPR2022-00129
`Patent No. 8,566,839
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`Fintiv Factor 6–Other Circumstances
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`Unlike the situation in Apple, the number of prior art challenges has not been
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`limited in the Litigation. Indeed, more art and bases for challenging the claims of the
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`‘839 patent were raised in the Litigation. Also unlike the situation in Apple, then, an
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`IPR will not provide the parties with an in-depth analysis of the ‘839 patent, nor a
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`full record that will enhance the integrity of the patent system.
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`Petitioner made a weak showing on the merits. Patent Owner has pointed out
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`weaknesses in the Petition, on two separate bases, regarding each of the challenged
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`independent claims. Therefore, the merits, taken as a whole, do not favor Petitioner
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`and instead also weigh in favor of discretionary denial.
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`Fintiv factor 6 weighs in favor of discretionary denial.
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`SECTION 6. CONCLUSION
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`IPR2022-00129
`Patent No. 8,566,839
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`For the above reasons, the Petition is deficient and institution of the IPR
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`should be denied.
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`Dated: March 9, 2022
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`Mailing address for all correspondence:
`Saul Ewing Arnstein & Lehr LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
`
`
`/s/ Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`brian.michalek@saul.com
`
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`joseph.kuo@saul.com
`
`Brian Landry (Reg. No. 52,074)
`Saul Ewing Anrstein & Lehr LLP
`131 Darmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
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`Counsel for Patent Owner, BillJCo,
`LLC
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the foregoing complies with the type-
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`volume limitation in 37 C.F.R. § 42.24(b)(1). According to the word-processing
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`system’s word count, the document contains 4,247 words, excluding the parts of
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`the brief exempted by 37 C.F.R § 42.24(b).
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`Date: March 9, 2022
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`/Brian R. Landry/
`Reg. No. 62,074
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`IPR2022-00129
`Patent No. 8,566,839
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the foregoing was served in its entirety
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`by filing through the Patent Trial and Appeal Board End to End (PTAB E2E), as
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`well as providing a courtesy copy via e-mail to the following attorneys of rec
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