throbber
DOCKET NO.: 337722-000231
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Jonathan Hicks, Reg. No. 75,195
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: larissa.bifano@us.dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`
`Petitioner
`
`v.
`
`BILLJCO LLC,
`
`Patent Owner
`
`IPR2022-00129
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,566,839
`CHALLENGING CLAIMS 1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, AND 48
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1
`I.
`II. MANDATORY NOTICES ............................................................................ 1
`A.
`Real Party-in-Interest ........................................................................... 1
`B.
`Related Matters ..................................................................................... 1
`C.
`Counsel ................................................................................................. 1
`D.
`Service Information, Email, Hand Delivery, and Postal ...................... 2
`III. CERTIFICATION OF GROUNDS FOR STANDING ................................. 2
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED ................... 2
`A.
`Prior Art Patents and Printed Publications ........................................... 2
`B.
`Grounds for Challenge ......................................................................... 4
`OVERVIEW OF THE ’839 PATENT ........................................................... 4
`A.
`Summary of the Alleged Invention ...................................................... 4
`B.
`Level of Ordinary Skill in the Art ........................................................ 5
`C.
`Priority Date ......................................................................................... 6
`D.
`Prosecution History .............................................................................. 8
`VI. CLAIM CONSTRUCTION ........................................................................... 8
`VII. SPECIFIC GROUNDS FOR PETITION ..................................................... 10
`A.
`Ground 1: Claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48 are
`obvious over Lutnick .......................................................................... 10
`1.
`Overview of Lutnick ................................................................ 10
`2.
`Claims 1 and 25 are obvious over Lutnick .............................. 13
`i
`
`V.
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`B.
`
`C.
`
`Claims 2 and 26 are obvious over Lutnick .............................. 38
`3.
`Claims 3 and 27 are obvious over Lutnick .............................. 39
`4.
`Claims 8 and 32 are obvious over Lutnick .............................. 41
`5.
`Claims 21 and 45 are obvious over Lutnick ............................ 44
`6.
`Claims 23 and 47 are obvious over Lutnick ............................ 45
`7.
`Claims 24 and 48 are obvious over Lutnick ............................ 47
`8.
`Ground 2: Claims 20 and 44 are obvious over Lutnick in view
`of Rankin ............................................................................................ 49
`1.
`Overview of Rankin ................................................................. 49
`2.
`Claims 20 and 44 are obvious over Lutnick and Rankin ......... 49
`Ground 3: Claims 23 and 47 are obvious over Lutnick in view
`of Evans .............................................................................................. 51
`1.
`Overview of Evans ................................................................... 51
`2.
`Claims 23 and 47 are obvious over Lutnick in View of
`Evans ........................................................................................ 52
`Ground 4: Claims 24 and 48 are obvious over Lutnick in view
`of Bluetooth Core ............................................................................... 56
`1.
`Overview of Bluetooth Core .................................................... 56
`2.
`Claims 24 and 48 are obvious over Lutnick in View of
`Bluetooth Core ......................................................................... 58
`VIII. DISCRETIONARY DENIAL IS NOT APPROPRIATE ............................ 61
`A.
`General Plastic Denial is Inappropriate ............................................. 61
`B.
`Fintiv Discretionary Denial is Inappropriate ...................................... 61
`1.
`Fintiv Factor 1: Institution Will Enable a Stay ........................ 62
`
`D.
`
`ii
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`2.
`3.
`4.
`5.
`
`Fintiv Factor 2: District Court Schedule .................................. 62
`Fintiv Factor 3: Parallel Proceeding Considerations ............... 64
`Fintiv Factor 4: The Petition Raises Unique Issues ................. 65
`Fintiv Factor 5: The Petition Will Enable Cancellation of
`Claims that Might Be Reasserted ............................................. 66
`Fintiv Factor 6: Other Considerations Support Institution ..... 66
`6.
`IX. CONCLUSION ............................................................................................. 67
`
`iii
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Apple” or “Petitioner”) hereby petitions for inter partes review
`
`of U.S. Patent No. 8,566,839 (“’839 patent”) (EX1001). The ’839 patent describes
`
`one or more mobile systems (“MS”) that are configured to receive an object for
`
`configuring the MS to determine a trigger event and, based on recognizing the trigger
`
`event, cause the MS to automatically present information. As shown below, the
`
`techniques described in the ’839 patent were known in the prior art.
`
`II. MANDATORY NOTICES
`
`Real Party-in-Interest
`A.
`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Apple is the real
`
`party-in-interest, and further certifies that no other party exercised control or could
`
`exercise control over the filing of this petition or Apple’s participation in any
`
`proceeding instituted on this petition.
`
`Related Matters
`B.
`According to assignment records at the United States Patent and Trademark
`
`Office, the ’839 patent is currently owned by BillJCo LLC (“BillJCo”). The ’839
`
`patent is asserted in the matter BillJCo v. Apple Inc., 6:21-cv-00528 (WDTX).
`
`Counsel
`C.
`Lead Counsel: Larissa S. Bifano (Reg. No. 59,051)
`
`Backup Counsel: Jonathan Hicks (Reg. No. 75,195)
`
`1
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`Backup Counsel: Zachary Conrad (Reg. No. 77,682)
`
`Service Information, Email, Hand Delivery, and Postal
`D.
`Apple
`consents
`to
`electronic
`service
`at
`DLA-Apple-
`
`BillJCoIPRs@dlapiper.com. Petitioner can be reached at DLA Piper LLP (US), 33
`
`Arch Street, 26th Floor, Boston, Massachusetts 02110, Phone: 617-406-6000, Fax:
`
`617-406-6100.
`
`III. CERTIFICATION OF GROUNDS FOR STANDING
`
`Petitioner certifies pursuant to Rule 42.104(a) that the patent for which review
`
`is sought is available for inter partes review, and that Petitioner is not barred or
`
`estopped from requesting an inter partes review challenging the patent claims on the
`
`grounds identified in this Petition.
`
`IV. OVERVIEW OF CHALLENGE AND RELIEF REQUESTED
`
`Pursuant to Rules 42.22(a)(1) and 42.104(1)-(2), Petitioner challenges claims
`
`1–3, 8, 20, 21, 23–27, 32, 44, 45, 47, and 48 of the ’839 patent.
`
`Prior Art Patents and Printed Publications
`A.
`The ’839 patent issued from U.S. Patent Application No. 12/800,394 (“’394
`
`application”), filed on May 14, 2010. The ’394 application is a continuation-in-part
`
`of Application No. 12/590,831 (“’831 application”), filed on November 13, 2009.
`
`The ’831 application is a continuation-in-part of Application No. 12/287,064 (“’064
`
`application”), filed on October 3, 2008. The ’064 application is a continuation-in-
`
`2
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`part of Application No. 12/077,041 (“’041 application”), filed on March 14, 2008.
`
`Petitioner contends the ’839 patent is not entitled to a priority date based on
`
`either the ’041 application or the ’064 application. See infra, Section V.C. For
`
`purposes of this petition, Petitioner applies prior art with a priority date earlier than
`
`the ’831 application’s filing date, November 13, 2009 (“Critical Date”), so the Board
`
`need not resolve whether the ’839 patent is entitled to a priority date based on the
`
`’831 application.
`
`The following references are pertinent to the grounds of unpatentability:1
`
`1.
`
`U.S. Patent Application Publication 2008/0167106 (“Lutnick”), filed as
`
`Application No. 11/621,369 on January 9, 2007, and published on July
`
`10, 2008, is prior art under at least 35 U.S.C. § 102 (a), (b), and (e);2
`
`2.
`
`U.S. Patent Application Publication 2002/0137462 (“Rankin”), filed as
`
`Application No. 10/096,610 on March 13, 2002 and published on
`
`September 26, 2002, is prior art under 35 U.S.C. § 102 (a), (b), and (e);
`
`1 Because the ’839 patent issued from an application filed prior to enactment of the
`America Invents Act (“AIA”), the pre-AIA statutory framework applies.
`2 Assuming, arguendo, the ’839 patent is entitled to a priority date based on the
`filing date of the ’041 application, Lutnick remains prior art under § 102(e).
`
`3
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`3.
`
`U.S. Patent No. 6,327,535 to Evans et al. (“Evans”), filed as
`
`Application No. 09/543,646 on April 5, 2000, and issued on December
`
`4, 2001, is prior art under at least 35 U.S.C. § 102 (a), (b), and (e);
`
`4.
`
`“Specification of the Bluetooth System: Wireless connections made
`
`easy,” Version 2.0 + EDR (“Bluetooth Core”) was published on
`
`November 4, 2004 and is prior art under 35 U.S.C. § 102(a) and (b).
`
`Grounds for Challenge
`B.
`This Petition, supported by the declaration of Dr. Tom La Porta (“Porta
`
`Decl.”) (EX1003), requests cancellation of claims 1–3, 8, 20, 21, 23–27, 32, 44, 45,
`
`47, and 48 as unpatentable under 35 U.S.C. § 103. See 35 U.S.C. § 314(a). The
`
`grounds for challenge include the following:
`
`Grounds References
`
`1. §103
`
`Lutnick
`
`Challenged Claims
`1-3, 8, 21, 23-27, 32, 45, 47,
`and 48
`
`2. §103
`
`3. §103
`
`4. §103
`
`Lutnick in view of Rankin
`
`Lutnick in view of Evans
`
`20 and 44
`
`23 and 47
`
`Lutnick in view of Bluetooth Core 24 and 48
`
`V.
`
`OVERVIEW OF THE ’839 PATENT
`
`Summary of the Alleged Invention
`A.
`The ’839 patent relates to “managing information for automatic presentation
`
`or distribution” and describes managing an “information” or “messaging” repository
`
`4
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`“containing heterogeneous formats for automatically being presented and/or
`
`distributed for certain application events associated with determined data processing
`
`system conditions.” EX1001, 1:31-37.
`
`The ’839 patent describes a “MADR” or “presentation” object that “contains
`
`data along with associated methods for processing.” EX1001, 3:47-50. A “mobile
`
`station data processing system” (“MS”) may be “prepackaged” with these objects,
`
`or objects “may be shared” between other MSs or “distributed to different types of
`
`MSs by services.” Id., 4:1-6. The patent also refers to “ADvertising messages
`
`(ADs)” that are associated with an application and can be used for “automated
`
`presentation” based on a “whereabouts conditions.” Id., Abstract, 50:19-22.
`
`Claim 1 of the ’839 patent is exemplary and describes “receiving” an “object”
`
`that contains “information and instructions for presenting said information,” and
`
`then “presenting” the “information, based at least in part” by a “whereabouts
`
`condition” upon “recognizing” a “trigger event.” EX1001, 64:59-65:26; EX1003, ¶
`
`48.
`
`Level of Ordinary Skill in the Art
`B.
`A person having ordinary skill in the art (“POSITA”) for the ’839 patent
`
`would have had at least a bachelor’s degree in computer science, computer
`
`engineering, or an equivalent, and two years of experience relating to wireless
`
`5
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`communications. Additional education in wireless systems can remedy a deficiency
`
`in experience, and vice versa. EX1003, ¶¶ 39-40.
`
`Priority Date
`C.
`The challenged claims of the ’839 patent are not entitled to an earlier priority
`
`date based on either the ’064 application or the ’041 application.3 Specifically,
`
`there is no written support in either of those two applications for at least the
`
`following limitations recited in challenged independent claims 1 and 25:
`
` “receiving … an object … containing information and [originator]
`
`instructions for presenting said information” (claims 1, 25).
`
` “said [originator] instructions including an event specification to be
`
`monitored by said receiving data processing system for triggering
`
`when to present said information, said event specification including a
`
`whereabouts condition and a condition for detecting a particular user
`
`action by a user of said receiving data processing system” (claims 1,
`
`25).
`
`3 Apple reserves the right to argue that the challenged claims of the ’839 patent are
`not entitled to the filing date of the ’831 application. For purposes of this Petition
`and based on the ’839 patent’s lack of priority claim to the ’064 application and the
`’041 application, the prior art references identified in the asserted grounds qualify
`as prior art under at least § 102(a) and (b).
`
`6
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`EX1003, ¶¶ 41-47.
`
`The ’839 patent is a continuation-in-part of several applications, including
`
`the ’064 application and the ’041 application. New subject matter supporting the
`
`challenged claims of the ’839 patent was added to the ’839 patent. See EX1013
`
`(showing redline of the ’839 patent and the ’064 application disclosures), EX1011
`
`(showing redline of the ’839 patent and the ’041 application disclosures).
`
`For example, the summary of the invention section of the ’839 patent
`
`including the description of the “MADR” and “presentation” “object” that
`
`“contains data along with associated methods for processing” is entirely new. See
`
`generally EX1011 and EX1013. Further, the descriptions of the ’064 application
`
`and the ’041 application do not contain any disclosure for the two limitations
`
`recited above, including the recited “object” and the “event specification”
`
`limitation. See generally EX1009 (issued patent to the ’041 application), EX1010
`
`(issued patent to the ’064 application). Neither application even recites the
`
`language “event specification,” “whereabouts condition,” and “presentation
`
`information” or “information for presentation.” Id.
`
`Accordingly, the challenged claims of the ’839 patent are not entitled to a
`
`priority date based on the filing dates of the ’064 application and the ’041
`
`application. EX1003, ¶¶ 41-47.
`
`7
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`Prosecution History
`D.
`The ’394 application was filed on March 14, 2010 and included claims 1-20.
`
`In an Office Action dated March 4, 2013, pending claims 1-20 were rejected under
`
`35 U.S.C. § 103, and in a response dated May 1, 2013, Applicant amended certain
`
`of the pending claims and added new claims 21-26.
`
`Further, in distinguishing prior art, Applicant stated that the “disclosed
`
`‘object’ is a self-contained object with both the information for presentation and the
`
`instructions describing under what conditions to present that information.” ’839
`
`Patent File History (EX1002), 11 (emphasis added). The Applicant further stated
`
`that the “Examiner’s interpretation of objects [in the prior art] are not like the present
`
`application objects which additionally contain the instructions.” Id. (emphasis
`
`added).
`
`The Examiner subsequently issued a Notice of Allowance (“NOA”) dated
`
`June 4, 2013. The NOA included an examiner amendment to amend claims 1 and 26
`
`and add new claims 27-49. See EX1002.
`
`VI. CLAIM CONSTRUCTION
`
`Claims subject to inter partes review are to be “construed using the same
`
`claim construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`8
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b).
`
`Petitioner identifies the term “object [ ] containing information and
`
`[originator] instructions for presenting said information” recited in claims 1 and 25
`
`for construction.
`
`During prosecution of the ’394 application, and in response to a non-final
`
`office action, Applicant stated, in response to examiner identified prior art, the
`
`“disclosed ‘object’ is a self-contained object with both the information for
`
`presentation and the instructions describing under what conditions to present that
`
`information.” ’839 Patent File History (EX1002) (Response Dated May 1, 2013), 11
`
`(emphasis added). The Applicant also stated that the “Examiner’s interpretation of
`
`objects [in the prior art] are not like the present application objects which
`
`additionally contain the instructions.” Id. (emphasis added). The Applicant further
`
`amended claim 1 (shown below) and included an identical limitation for new claim
`
`26:
`
`EX1002 (Response Dated May 1, 2013), 11.
`
`The Applicant, in unambiguous language, argued that the prior art did not
`
`disclose an “object” as recited in claims 1 and 25 because the prior art did not
`
`9
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`disclose a “self-contained object” that included “both” the information for
`
`presentation and the instructions. The Applicant further amended claim 1 in a
`
`manner consistent with its arguments.
`
`Accordingly, based on Applicant’s statements made during prosecution of
`
`the ’394 application, the “object” limitation recited in claims 1 and 25 should be
`
`construed as “a self-contained object with both the information for presentation
`
`and the instructions describing under what conditions to present that information.”
`
`EX1003, ¶¶ 49-55.
`
`VII. SPECIFIC GROUNDS FOR PETITION
`
`Pursuant to Rule 42.104(b)(4)-(5), the following sections, as supported by the
`
`Porta Declaration, detail the grounds of unpatentability, the limitations of the
`
`challenged claims of the ’839 patent, and how these claims are obvious in view of
`
`the prior art.
`
`A.
`
`Ground 1: Claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48 are obvious
`over Lutnick
`Lutnick was not considered during prosecution of the ’839 patent and is
`
`highly relevant to claims 1–3, 8, 21, 23–27, 32, 45, 47, and 48 of the ’839 patent.
`
`Overview of Lutnick
`1.
`Lutnick, entitled “System for Managing Promotions,” was filed January 9,
`
`2007, published on July 10, 2008, and issued as U.S. Patent No. 9,600,959 on
`
`10
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`March 21, 2017. Lutnick discloses an object containing information and
`
`instructions for presenting the information, as well as location-based triggering of
`
`presentation information. EX1003, ¶ 59.
`
`Lutnick is directed towards a system and method of featuring and displaying
`
`promotions on mobile gaming devices (“MGD”). See Lutnick (EX1005), Abstract,
`
`[0092], [0193]. Examples of MGDs include “Blackberry®, iPod®, personal digital
`
`assistant, mobile phone, …, or any other suitable device.” Id., [0184]; see also id.,
`
`[0185] (describing “gaming devices” as including a “personal computer” and a
`
`“mobile device” and may include a “personal digital assistant, a cell phone, a
`
`laptop computer, a Blackberry®, and so on.”). Non-limiting examples of
`
`promotions include advertisements, announcements, warnings, information
`
`statements, discount offers, coupons, and requests. Id., [0193]; EX1003, ¶ 60.
`
`Lutnick discloses that various triggers, including location triggers, can be
`
`used to cause the promotions to be displayed on the MGD. For example, “a
`
`promotion may be triggered as a MGD comes into proximity of a store” or when a
`
`“stationary gaming device is within a pre-determined distance of the [MGD].” Id.,
`
`[0256], [0392]. Referring to Lutnick’s Figure 1, system 100 “may function within
`
`the confines of a casino” or other associated areas, such as retail shops, restaurants,
`
`exhibits, and showrooms. Lutnick, [0183]. The system 100 includes a server 105
`
`that “may be in communication with one or more [MGDs],” such as MGD 110. Id.
`
`11
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`Within the system 100, casino server 105 “may transmit instructions” to MGD 110
`
`that “may tell the [MGD] 110 to present a promotion when, or only when the
`
`[MGD] 110 is in a particular area of a casino.” Id., [0119]. In addition, “the
`
`instructions may indicate where the [MGD] 110 should be before a promotion may
`
`be presented.” Id., [0128]. Lutnick further discloses the MGDs may pre-download
`
`promotions that are displayed in case of potential connection disruptions to a
`
`server. Id., [0289]; EX1003, ¶¶ 61-62.
`
`Once the instructions have been received and stored, the MGD can
`
`determine its location or position. For example, Lutnick discloses that a beacon
`
`device “generates a signal which may be used as a reference signal by another
`
`device or person, e.g., so that the other device may determine its own location or
`
`position.” Lutnick, [0141]. The beacon “may emit a continuous, periodic, sporadic,
`
`or other type of signal.” Id. When the MGD “comes into proximity of any retailer,
`
`such as a store, a restaurant, a roadside stand, a gas station, a car repair shop,” the
`
`display of the promotion on the MGD is triggered. Id., [0256]. “The promotion
`
`may show images or video depicting products in the store,” “may present text
`
`descriptions of store items,” or “may describe available discounts within the store.”
`
`Id. Another promotion that could be triggered is a “promotion that serves to
`
`encourage a player to play at a stationary gaming device.” Id., [0392]. An
`
`12
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`exemplary promotion that could be displayed on a MGD is shown below in Figure
`
`6 of Lutnick.
`
`EX1003, ¶¶ 63-64.
`
`Claims 1 and 25 are obvious over Lutnick
`2.
`Independent claim 1 is a method claim and independent claim 25 is a system
`
`claim. Independent claim 1 recites a method for information presentation that is
`
`performed by a receiving data processing system. Claim 1 recites receiving an
`
`object that contains information and instructions for presenting the information,
`
`storing the object, processing the instructions and configuring a trigger event,
`
`monitoring the trigger event, and, in response to recognizing that the trigger event
`
`13
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`has occurred, causing the information to be displayed on the receiving data
`
`processing system. EX1003, ¶ 65.
`
`Independent claim 25 is similar in scope to independent claim 1, though
`
`independent claim 25 recites a processor, a user interface, and one or more
`
`memory devices. The memory devices include executable instructions that, when
`
`executed by the processor, cause the system to perform steps similar in scope to the
`
`method of independent claim 1. Claim 25 also refers to “originator” instructions.
`
`As shown below, Lutnick discloses the limitations of claims 1 and 25. EX1003,
`
`¶¶ 66-67.
`
`Preamble Limitations
`a.
`[1.pre] “A method for information presentation by a receiving data
`processing system, said method comprising:”
`[25.pre] “A receiving data processing system for information presentation,
`said receiving data processing system comprising:”
`Claims 1 recites a method for information presentation, while claim 25
`
`recites a receiving data processing system for information presentation. To the
`
`extent the preambles are limiting, Lutnick discloses the preambles. EX1003, ¶ 68.
`
`Lutnick discloses a method of featuring and displaying promotions on
`
`MGDs (“receiving data processing system”). Lutnick, Abstract, [0092], [0193].
`
`Lutnick discloses that a server “may transmit instructions to a [MGD]” that “may
`
`tell the [MGD] to present a promotion when, or only when the [MGD] is in a
`
`14
`
`

`

`particular area of a casino.” Id., [0119]; EX1003, ¶ 69; see also Sections VII.A.2.b-
`
`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`VII.A.2.k below.
`
`Limitations reciting a processor
`b.
`[25.a] “a processor;”
`Lutnick discloses a processor. EX1003, ¶¶ 70-73.
`
`Lutnick describes a MGD that includes a processor. This is shown in Figure
`
`2, reproduced below with annotations:
`
`15
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`Lutnick, Figure 2; see also id., [0002]; EX1003, ¶ 71.
`
`Lutnick describes that a processor “will receive instructions … and execute
`
`those instructions, thereby performing one or more processes defined by those
`
`instructions.” Id., [0055]. Lutnick further describes a “processor” can include “one
`
`or more microprocessors, central processing units (CPUs), computing devices,
`
`microcontrollers, digital signal processors, or like devices or any combination
`
`thereof, regardless of the architecture.” Id., [0056]; EX1003, ¶ 72.
`
`Limitations reciting a user interface
`c.
`[25.b] “a user interface;”
`Lutnick discloses a user interface. EX1003, ¶¶ 74-76.
`
`Lutnick discloses a MGD that includes an “output device” including a user
`
`interface. Lutnick, Figure 2. Lutnick describes the MGD “may include various
`
`output devices,” such as “a display screen, such as a liquid crystal display” that
`
`may “display images, videos, cartoons, animations, text, or any other feasible
`
`output.” Id., [0184]; see also id., [0186] (describing “output device” generally,
`
`which includes displays, such as liquid crystal display monitors, … , or any other
`
`device that may communicate information.”), Fig. 6 (depicting a user interface of
`
`the MGD). Lutnick also describes that the MGD’s output device “may include a
`
`speaker” that may “generate audio outputs,” such as “voice outputs, the sound of
`
`16
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`bells, the sound of engines, or any other sound.” Id., [0184]; see also id., [0186],
`
`[0297]; EX1003, ¶¶ 75-76.
`
`d.
`
`Limitations reciting memory devices with executable
`instructions
`[25.c] “one or more memory devices coupled to said processor, wherein
`said one or more memory devices includes executable instructions, which
`when executed by said processor results in the system:”
`Lutnick discloses one or more memory devices coupled to said processor,
`
`wherein said one or more memory devices includes executable instructions, which
`
`when executed by said processor results in the system. EX1003, ¶¶ 77-78.
`
`Lutnick describes that “typically a processor … will receive instructions
`
`(e.g., from a memory or like device) and execute those instructions, thereby
`
`performing one or more processes defined by those instructions.” Lutnick, [0055]
`
`(emphasis added). Lutnick further describes that the “[MGD] may include memory
`
`for storing program data, for storing image data, for storing data about a player, for
`
`storing information about outcomes of games played on the [MGD], for storing
`
`account data, and so on.” Id., [0184]; see also id., [0059]. A POSITA would have
`
`understood that memory associated with a CPU of the MGD or the MGD’s
`
`“memory for storing program data” disclose this limitation. EX1003, ¶ 78.
`
`Limitations reciting receiving an object
`e.
`[1.a] “receiving, by said receiving data processing system, an object, said
`object containing information and instructions for presenting said
`information, said instructions including an event specification to be
`
`17
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`monitored by said receiving data processing system for triggering when to
`present said information, said event specification including a whereabouts
`condition and a condition for detecting a particular user action by a user
`of said receiving data processing system, said whereabouts condition
`determining if a location of said receiving data processing system is in a
`vicinity of another data processing system;”
`[25.d] “receiving, by said receiving data processing system, an object, said
`object containing information and originator instructions for presenting
`said information, said originator instructions including an event
`specification to be monitored by said receiving data processing system for
`triggering when to present said information, said event specification
`including a whereabouts condition and a condition for detecting a
`particular user action by a user of said receiving data processing system,
`said whereabouts condition determining if a location of said receiving data
`processing system is in a vicinity of another data processing system;”
`Claims 1 and 25 both generally recite “receiving” an “object”. The only
`
`difference between limitations [1.a] and [25.d] is that claim 25 recites originator
`
`instructions, whereas claim 1 recites instructions. Lutnick discloses both. EX1003,
`
`¶¶ 79-97.
`
`Lutnick first discloses that its MGD (receiving data processing system) is
`
`capable of receiving data using various techniques, including wireless
`
`transmissions. For example, Lutnick describes that “various forms of computer
`
`readable media may be involved in carrying data (e.g. sequences of instructions) to
`
`a processor,” such as the processor residing on the MGD. Lutnick, [0060]; see also
`
`id., [0059] (describing “computer readable media” as “any medium, a plurality of
`
`the same, or a combination of different media, that participate in providing data
`
`18
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`(e.g., instructions, data structures) which may be read by a computer, a processor
`
`or a like device” and may include “non-volatile media, volatile media, and
`
`transmission media.”). Techniques for transmitting data include data that is “(i)
`
`delivered from RAM to a processor; (ii) carried over a wireless transmission
`
`medium; (iii) formatted and/or transmitted according to numerous formats,
`
`standards or protocols, such as Ethernet (or IEEE 802.3), SAP ATP, Bluetooth, and
`
`TCP/IP, TDMA, CDMA, and 3G.” Id. (emphasis added); EX1003, ¶ 80.
`
`This functionality of receiving data is shown in Figure 2, reproduced below.
`
`In Figure 2, MGD 110 includes an antenna 205 (annotated in red) “for
`
`broadcasting and/or receiving electromagnetic signals, such as wireless signals.”
`
`Lutnick, [0184] (emphasis added).
`
`19
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`The MGD of Lutnick is configured to communicate using short-range
`
`communication protocols such as Bluetooth, although the device is not limited to
`
`any communication medium and may communicate with other devices and
`
`computers “via any wired or wireless medium.” Id., [0060], [0065]; EX1003, ¶¶
`
`81-82.
`
`Lutnick further discloses an object containing information and instructions
`
`for presenting said information, including an object as construed in Section VI.
`
`20
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`Lutnick discloses promotions (information) are received by the MGD and then
`
`presented to the user. For example, Lutnick describes that “presenting a promotion
`
`may first require downloading the promotion from a casino server” and that “the
`
`casino server may transmit to the [MGD] image and audio files to be played as
`
`part of the promotion.” Lutnick, [0290] (emphasis added). Because the MGD
`
`“download[s]” from the server image and audio files to be played as part of a
`
`promotion, and because the MGD plays one or more of those promotions, the
`
`MGD necessarily receives said image and audio files to be presented. EX1003,
`
`¶ 83.
`
`Lutnick also discloses that the MGDs receive instructions and other software
`
`that tell the MGD when to present a promotion (instructions for presenting said
`
`information, said instructions including an event specification to be monitored by
`
`said receiving data processing system for triggering when to present said
`
`information). For example, Lutnick discloses “[a MGD] may include a more
`
`general-purpose device which is configured to allow gaming activity, e.g., through
`
`downloads of gaming related software to the device.” Lutnick, [0184]. A POSITA
`
`would have appreciated that such downloads could easily be achieved by receiving
`
`wireless transmissions via a known communication protocol, such as Bluetooth.
`
`EX1003, ¶ 84.
`
`21
`
`

`

`IPR2022-00129
`U.S. Pat. No. 8,566,839
`
`Additionally, “the casino server may transmit instructions to a [MGD]” that
`
`“tell the [MGD] to present a promotion when, or only when the [MGD] is in a
`
`particular area of a casino.” Lutnick, [0119] (em

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket