Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`Paper 30
`Date: November 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`PROXICOM WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00931
`Patent 8,090,359 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`Google Exhibit 1019
`Google v. SecCommTech
`
`
`571-272-7822
`
`
`
`
`
`
`Paper 30
`Date: November 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TARGET CORPORATION,
`Petitioner,
`
`v.
`
`PROXICOM WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2020-00931
`Patent 8,090,359 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`Google Exhibit 1019
`Google v. SecCommTech
`
`
`
`IPR2020-00931
`Patent 8,090,359 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`Target Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1–5, 14–18, 27, 31, 36, 37, 42, 43, 48, 49, and 52–55 (“the
`challenged claims”) of U.S. Patent No. 8,090,359 B2 (Ex. 1001, “the
`’359 patent”). Paper 2 (“Pet.”), 1. Proxicom Wireless, LLC (“Patent
`Owner”) filed a Preliminary Response. Paper 9. On November 10, 2020,
`we instituted an inter partes review of the challenged claims on all grounds
`raised in the Petition. Paper 10 (“Institution Decision” or “Inst. Dec.”), 31.
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 18, “PO Resp.”), Petitioner filed a Reply to the Patent
`Owner Response (Paper 21, “Pet. Reply”), and Patent Owner filed a
`Sur-reply to Petitioner’s Reply (Paper 22, “PO Sur-reply”). An oral hearing
`was held on August 19, 2021. A transcript of the hearing has been entered
`into the record. Paper 28 (“Tr.”).
`
`In our Scheduling Order, we notified the parties that “any arguments
`for patentability not raised in the [Patent Owner] response may be deemed
`waived.” See Paper 11, 10; see also Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 66 (Nov. 2019) (“The patent owner
`response . . . should identify all the involved claims that are believed to be
`patentable and state the basis for that belief.”).1
`
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that claims 1–5, 14–18, 27, 31, 36, 42, 48,
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
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`IPR2020-00931
`Patent 8,090,359 B2
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`49, and 52–55 of the ’359 patent are unpatentable. It, however, has failed to
`meet its burden of proof regarding the unpatentability of claims 37 and 43.
`
`B. Real Parties in Interest
`
`Petitioner identifies itself as the sole real party in interest. Pet. 5.
`
`Patent Owner identifies itself as the sole real party in interest.
`Paper 4, 2.
`
`C. Related Matters
`
`The parties indicate that the ’359 patent is the subject of the following
`district court proceedings:
`Proxicom Wireless, LLC v. Target Corporation, No. 6:19-cv-
`1886 (M.D. Fla. filed Oct. 2, 2019)2 and
`Proxicom Wireless, LLC v. Macy’s, Inc., No. 6:18-cv-00064
`(M.D. Fla. filed Jan. 12, 2018).
`Pet. 6; Paper 4, 2. The parties further note that the ’359 patent is the subject
`of a petition for inter partes review filed by Petitioner and challenging
`different claims in IPR2020-00932. Pet. 6; Paper 4, 2.
`
`D. The Challenged Patent
`
`The ’359 patent disclosure “is generally concerned with facilitating
`the exchange of information and transactions between two entities associated
`with two wireless devices when the devices are in close proximity to each
`other utilizing both a short range and a long range wireless capability.”
`Ex. 1001, 2:53–57. The devices use a short range communication protocol,
`
`2 Stayed on June 17, 2020, pending resolution of ten petitions for inter
`partes review filed by Petitioner. See Paper 6.
`
`3
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`IPR2020-00931
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`such as Bluetooth, only to detect the presence of other devices and use a
`long range communication protocol, such as Wi-Max, to communicate with
`a central server and to perform the actual substantive communications with
`other devices. Id. at 6:33–46. Each device transmits identifier information
`via short range communication as a proximity detection process. Id.
`at 6:49–53. This use of peer-to-peer short range communication beneficially
`allows proximity between devices to be determined without the need of a
`global positioning system (GPS), which may not always be present or
`available for use. Id. at 3:55–62. Use of a central server to mediate
`communications between the devices beneficially provides security to the
`transaction, allows for anonymity between the parties, and implements
`policy enforcement. Id. at 4:12–60.
`
`In one application, only a user’s device is capable of long range
`communication and the second device is only capable of broadcasting its
`identifier information. Ex. 1001, 7:20–29. This application is illustrated in
`Figure 2, which is reproduced below:
`
`4
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`
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`Figure 2 shows a block diagram of fixed broadcast device 204 and mobile
`device 202. Id. at 5:6–7. The user’s mobile device detects the broadcast
`device and transmits the broadcast device’s identifier information, along
`with a request for information regarding the broadcast device, to central
`server 100. Id. at 14:48–60. The server determines what information
`regarding the broadcast device is available and transmits a description of the
`information to the user’s device. Id. at 14:61–63. The user then has the
`option to download the information. Id. at 14:63–15:3. The server may also
`coordinate the several steps of an electronic commerce transaction between
`the user’s device and the broadcast device. Id. at 17:36–18:64.
`
`E. The Challenged Claims
`
`Petitioner challenges claims 1–5, 14–18, 27, 31, 36, 37, 42, 43, 48, 49,
`and 52–55 of the ’359 patent. Pet. 1, 10. Claims 1 and 14 are independent.
`Claim 1 is illustrative of the challenged claims and is reproduced below:
`
`5
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`IPR2020-00931
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`
`A method for a central server to exchange information
`1.
`between one or more wireless devices comprising the steps of:
`
`the central server receiving second device identifier
`information from a first wireless device, the second device
`identifier information having been collected by the first wireless
`device from a second device and wherein said second device
`provides the second device identifier information to the first
`wireless device using short range communication without the
`use of wires from the second device to the first wireless device;
`
`said central server using the second device identifier
`information to determine one or more of an identity or related
`information concerning an entity or object located in proximity
`to the second device; and
`
`subsequent to the step of the central server receiving the
`second device identifier information from the first wireless
`device, the central server taking further action to deliver
`information or a service to the first wireless device based at
`least in part upon (a) the second device identifier and (b) at least
`one of the following:
`
`(i) feedback ratings relevant to an entity associated with
`either the first wireless device or the second device identifier
`information;
`
`(ii) information representing a reward for an entity
`associated with the first device’s participation in a loyalty
`program; or
`
`(iii) a current step in a multiple step process for an
`ongoing electronic commerce transaction.
`Ex. 1001, 23:35–63.
`
`F. Instituted Grounds of Unpatentability
`
`The Petition relies on the following prior art references:
`Name
`Reference
`Perttila
`US 2004/0243519 A1, published Dec. 2, 2004
`Insolia
`US 8,121,917 B2, issued Feb. 21, 2012
`
`Exhibit
`1006
`1008
`
`6
`
`
`
`35 U.S.C. §
`102(b)3
`
`Reference(s)
`Perttila
`
`103(a)
`
`Perttila
`
`IPR2020-00931
`Patent 8,090,359 B2
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`We instituted trial based on all asserted claims and grounds of
`
`unpatentability as follows:
`Claims Challenged
`1–5, 14–18, 27, 31, 36, 37, 42, 43,
`48, 52, 55
`1–5, 14–18, 27, 31, 36, 37, 42, 43,
`48, 49, 52, 55
`27, 31, 53, 54
`
`103(a)
`
`Perttila, Insolia
`
`Pet. 10. Petitioner submits a declaration of Mr. David Hilliard Williams
`(Ex. 1003, “Williams Declaration”) in support of its contentions. Patent
`Owner submits a declaration of Michael Foley, Ph.D. (Ex. 2010, “Foley
`Declaration”) in support of its contentions.
`
`II. ANALYSIS
`
`A. Principles of Law
`
`To prevail in its challenge to Patent Owner’s claims, Petitioner must
`demonstrate by a preponderance of the evidence that the claims challenged
`in the Petition are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R.
`§ 42.1(d) (2019). This burden of persuasion never shifts to Patent Owner.
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015).
`
`
`3 The application resulting in the ’359 patent was filed prior to the date when
`the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
`Stat. 284 (2011), took effect. Thus, we refer to the pre-AIA version of
`sections 102 and 103.
`
`7
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`IPR2020-00931
`Patent 8,090,359 B2
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`“Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every
`
`limitation is found either expressly or inherently in a single prior art
`reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.
`Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d
`1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single
`prior art disclosure of all elements of a claimed invention arranged as in the
`claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
`(Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
`1548 (Fed. Cir. 1983)).
`
`A claim is unpatentable under 35 U.S.C. § 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 of the invention to a
`person having ordinary skill in the art. 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, and (4) when in evidence, any
`objective evidence of nonobviousness.4 Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner contends that a person having ordinary skill in the art at the
`time of the invention (“POSITA”) would have had “a Bachelor’s degree in
`Electrical Engineering, or a related field, and approximately 3-5 years of
`
`
`4 The parties have not directed us to any such objective evidence.
`
`8
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`IPR2020-00931
`Patent 8,090,359 B2
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`professional experience in the field of wireless communications.”
`Pet. 13–14. Petitioner acknowledges that “graduate education could
`substitute for professional experience” and “significant experience in the
`field could substitute for formal education.” Id. at 14 (citing Ex. 1003
`¶¶ 36–38).
`
`Patent Owner concedes that the level of skill as defined by Petitioner
`“is generally sufficient for the Board to evaluate the Petition Grounds.” PO
`Resp. 9. However, Patent Owner also notes that “Petitioner’s proposed level
`of skill in the art does not include any reference to electronic commerce” and
`contends that “a POSITA should also have 1-2 years of experience designing
`or implementing systems for electronic commerce including the use of
`wireless communications.”5 Id. at 10 (citing Ex. 2010 ¶¶ 6–9, 22–24).
`
`The level of ordinary skill in the art may be evidenced by the
`references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
`(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
`re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill
`proposed by Petitioner appears to be consistent with that of the references,
`and we apply Petitioner’s proposed level of ordinary skill for purposes of
`this Decision. We note that we would reach the same conclusions herein
`using Patent Owner’s alternate definition.
`
`C. Claim Construction
`
`In an inter partes review, claims are construed using the same claim
`construction standard that would be used to construe the claims in a civil
`
`
`5 We note that Patent Owner does not assert that this additional proposed
`requirement has any bearing on any disputed issue in this case.
`
`9
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`IPR2020-00931
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`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`understood by one of ordinary skill in the art and the prosecution history
`pertaining to the patent. 37 C.F.R. § 42.100(b). Thus, we apply the claim
`construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).
`
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`dispositive, and it is the single best guide to the meaning of a disputed term.
`Id. at 1315.
`
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`
`Petitioner contends that it “interprets the claim terms according to
`their plain and ordinary meaning consistent with the specification.” Pet. 14.
`Petitioner asserts that the challenged claims use “terms of degree (e.g., ‘short
`range’ communication/link, ‘wide area’ link/network/technology, ‘local
`[area/wireless] link’),” but does not explain how this assertion affects claim
`construction. Id. at 14–15 (alteration in original). Petitioner acknowledges
`that “[a] district court in another proceeding has construed terms of this
`
`10
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`IPR2020-00931
`Patent 8,090,359 B2
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`patent,” but argues that those “constructions do not impact the outcome of
`this IPR as the prior art . . . meets the limitations under these constructions.”
`Id. at 15 (citing Ex. 1003 ¶ 71; Ex. 1021).
`
`Patent Owner argues that we should interpret two claim terms: “an
`entity or object located in proximity to the second device” and “wireless
`device.” PO Resp. 12–19. We address each of these terms below.
`
`1. “an entity or object located in proximity to the second device”
`Patent Owner argues that “an entity or object located in proximity to
`
`the second device,” as used in independent claims 1 and 14, should be
`construed “to require that the claimed ‘entity or object’ must have a physical
`presence.” PO Resp. 12. According to Patent Owner, “the reference to the
`object being ‘located in proximity to the second device’ makes clear that the
`claimed ‘object’ of that phrase must be physically present.” Id. at 13. Patent
`Owner argues similarly that “located in proximity to the second device” also
`applies to the recited “entity,” thus requiring “that the ‘entity’ referred to in
`this claim element must be physically present.” Id. Patent Owner argues
`that “proximity” is used in accordance with its ordinary and customary
`meaning and refers to physical placement. Id. at 15–17.
`
`Petitioner argues that we need not construe “entity or object” to
`require a physical presence as proposed by Patent Owner because “a device
`can be ‘in proximity’ to intangible objects.” Pet. Reply 2. Petitioner argues
`that Patent Owner’s citations to the ’359 patent’s use of “proximity” are not
`relevant to how the term is used in the claims. Id. at 3–4 (citing PO
`Resp. 15–17). Petitioner argues that Patent Owner’s declarant did not base
`his interpretation of “proximity” on how the term is used in the specification
`of the ’359 patent. Id. at 4–5.
`
`11
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`IPR2020-00931
`Patent 8,090,359 B2
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`Patent Owner replies that “object” must be construed to have a
`
`physical presence because “the claimed ‘object’ is limited by the
`requirement that it be ‘located in proximity to the second device.’” PO Sur-
`reply 1; see also id. at 2–4 (presenting similar arguments). Patent Owner
`contends that Petitioner’s assertions regarding Patent Owner’s declarant take
`the testimony out of context. Id. at 5–9. According to Patent Owner, “[t]he
`crucial question about ‘an entity or object located in proximity to the second
`device’ is whether the claimed ‘entity or object’ can be ‘located in proximity
`to the second device’ if the ‘entity or object’ is not physically present.” Id.
`at 5.
`Notwithstanding the arguments in its briefing, Petitioner’s counsel
`
`acknowledged during the hearing that the claims require the entity or object
`to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . .
`that physical presence is connoted by the word ‘proximity’ and by
`‘located.’”). There is, accordingly, no controversy regarding whether “an
`entity or object located in proximity to the second device” requires the entity
`or object to have a physical presence. Moreover, as explained below our
`decision does not depend on an express construction of this term. We
`conclude, therefore, that there is no need for us to construe this term.
`
`2. “wireless device”
`Patent Owner argues that, as recited in the challenged claims,
`
`“wireless device” “refer[s] to wireless communication capabilities, not that a
`wireless device would be precluded from having any external wires
`whatsoever.” PO Resp. 19. However, Patent Owner concedes that
`construction of “wireless device” is “not necessary to resolve the dispute
`here.” Id.
`
`12
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`IPR2020-00931
`Patent 8,090,359 B2
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`Petitioner argues that “‘wireless device’ should be construed to
`
`require a device without external wires,” noting that the claims of the
`’359 patent recite a “wireless device” rather than a “wireless communication
`device.” Pet. Reply 5–6. However, Petitioner also concedes that “no
`construction of this term is necessary.” Id. at 5.
`
`No construction of this term is necessary. The parties both agree that
`no construction is needed, and as explained below our decision does not
`depend on a construction of this term.
`
`D. Overview of the Asserted Prior Art
`
`1. Perttila
`Perttila discloses “a system, apparatus, and method for sending
`
`service data in response to electronic communications between a user
`communications device and a merchant-media arrangement.” Ex. 1006 ¶ 8.
`Figure 1a shows such a system and is reproduced below:
`
`
`
`13
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`Figure 1a shows coupon-retrieval system 20 for the communication of an
`electronic coupon to user 28 via link 42 established with source server 24 by
`mobile communications device 28a. Id. ¶¶ 19, 36. When the user’s mobile
`device is within proximity of merchant-media arrangement 36, which may
`be a poster or the like, the arrangement transmits to the mobile device a
`merchant ID code and, optionally, link information for connecting to the
`server. Id. ¶ 37. This transmission may be via radio frequency identification
`(RFID) or Bluetooth. Id. The mobile device establishes a communication
`link with the server through a mobile network or the Internet and transmits a
`merchant-information-request signal to the server. Id. ¶ 38. The server first
`extracts the mobile device ID and the merchant ID code from the request.
`Id. The server then generates an electronic coupon based on the merchant
`ID code and provides the user with an option to download the coupon. Id.
`¶¶ 28, 37–39.
`
`2. Insolia
`Insolia discloses “systems and methods for implementing a loyalty
`
`program.” Ex. 1008, 1:7–8. Insolia recognizes that, regarding the
`immediate consumption channel, which provides food and beverages that
`are immediately available and ready to consume from vending machines and
`the like, the diverse nature of the equipment used and of the consumer’s
`interaction with the equipment can complicate the implementation of broad
`marketing opportunities. Id. at 1:12–55. Insolia purports to provide a
`system that overcomes these drawbacks. Id. at 2:7–11. Figure 1 illustrates
`Insolia’s system and is reproduced below:
`
`14
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`
`
`Figure 1 shows a block diagram illustrating a system for implementing a
`loyalty network. Id. at 3:49–50. Loyalty program management system 10
`includes personal terminal 12, interaction terminal 14, and loyalty server 24.
`Id. at 5:47–64. The personal terminal is transported by user 16. Id.
`at 5:65–66. The interaction terminal can be associated with product 18, such
`as a beverage, equipment 20, such as a vending machine, or promotional
`object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal
`and the interaction terminal communicate when the personal terminal is
`brought within proximity of the interaction terminal. Id. at 9:12–18. A
`benefit, such as a loyalty point, can be awarded to the user for interacting
`with the interaction terminal. Id. at 9:58–64. The benefit can be stored on
`one or both of the personal terminal and the loyalty server. Id. at 13:35–38.
`When used, the benefit is communicated to the equipment to provide the
`user with a product for free or at a reduced price. Id. at 14:31–35. In some
`embodiments, the rate at which the loyalty points are awarded can be filtered
`to limit the accrual of rewards to a predefined rate. Id. at 36:19–20.
`
`15
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`E. Asserted Anticipation by or Obviousness in View of Perttila
`
`Petitioner argues that claims 1–5, 14–18, 27, 31, 36, 37, 42, 43, 48,
`49, 52, and 55 would have been unpatentable as being anticipated by or
`obvious in view of Perttila. Pet. 17–57. In support of its showing, Petitioner
`relies upon the Williams Declaration. Id. (citing Ex. 1003). We have
`reviewed the Petition, Patent Owner Response, Petitioner Reply, Patent
`Owner Sur-reply, and evidence of record and determine that, for the reasons
`explained below, Petitioner has shown, by a preponderance of the evidence,
`that claims 1–5, 14–18, 27, 31, 36, 42, 48, 49, 52, and 55 would have been
`unpatentable in view of Perttila. Petitioner, however, has failed to show, by
`a preponderance of the evidence, that claims 37 and 43 would have been
`unpatentable.
`
`1. Independent Claim 1
`Petitioner relies on Perttila to disclose or suggest a method for a
`
`central server to exchange information as recited in claim 1. Pet. 25–33.
`
`a. Preamble
`Claim 1 recites “[a] method for a central server to exchange
`
`information between one or more wireless devices.” Ex. 1001, 23:35–36.
`Petitioner maps Perttila’s source server 24 to the recited central server, and
`user-communication device 28 and merchant-media arrangement 36 to the
`recited wireless devices. Pet. 25 (citing Ex. 1006 ¶¶ 8–9); see also id. at
`25–27 (citing Ex. 1003 ¶ 113; Ex. 1006 ¶¶ 8–9, 12, 19, 25, 60, Fig. 1a).
`Petitioner argues that “a POSITA would have understood that Perttila
`discloses the portable merchant-media arrangement is wireless, and at
`minimum it would have been obvious to use a wireless merchant-media
`
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`arrangement . . . to advantageously enable easy location in a store.” Id. at 25
`(emphasis omitted) (citing Ex. 1006 ¶ 60).
`
`Patent Owner does not contest this aspect of the Petition. See
`generally PO Resp.
`
`Perttila discloses that, when a user’s mobile communications
`device 28 is within proximity of merchant-media arrangement 36, the
`arrangement transmits a merchant ID code to the mobile device. Ex. 1006
`¶ 37. The mobile device then establishes a communication link with source
`server 24 and transmits a request containing the ID code to the server, and
`the server generates an electronic coupon based on the merchant ID code
`and provides the user with an option to download the coupon. Id. ¶¶ 36–39.
`Perttila discloses that the user’s mobile communications device and the
`merchant-media arrangement communicate wirelessly. See id. ¶ 37
`(disclosing that the merchant-media arrangement can transmit the merchant
`ID code to the mobile device via radio frequency identification (RFID) or
`Bluetooth).
`
`Accordingly, for the foregoing reasons, to the extent the preamble is
`limiting, Perttila supports Petitioner’s contentions.
`
`
`
`b. The Receiving Recitation
`Claim 1 recites,
`the central server receiving second device identifier information
`from a first wireless device, the second device identifier
`information having been collected by the first wireless device
`from a second device and wherein said second device provides
`the second device identifier information to the first wireless
`device using short range communication without the use of
`wires from the second device to the first wireless device.
`
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`Patent 8,090,359 B2
`
`Ex. 1001, 23:38–45. Petitioner maps Perttila’s user-communication
`device 28 to the recited first wireless device, merchant-media
`arrangement 36 to the recited second device, and the “merchant ID code” to
`the recited second device identifier information. Pet. 27–29 (citing Ex. 1006
`¶¶ 9, 12–15, 37–38). Petitioner notes that the merchant-media device
`includes RFID tag 38 or, alternatively, a local short-range wireless access
`point or beacon device. Id. at 28–29 (quoting Ex. 1006 ¶¶ 37–38).
`Petitioner clarifies that it is this short-range wireless device component of
`the merchant media arrangement that it maps to the recited second device.
`Pet. Reply 7; see also Inst. Dec. 19 (“Petitioner notes that the merchant-
`media device includes RFID tag 38 or, alternatively, a local short-range
`wireless access point or beacon device.” (citations omitted)).
`
`Patent Owner argues that Petitioner’s mapping of Perttila’s short-
`range wireless device to the recited second device is incompatible with its
`mapping of Perttila’s merchant ID code to the recited second device
`identifier information. PO Sur-reply 16–17. Specifically, Patent Owner
`argues that Petitioner has not explained adequately how Perttila’s merchant
`ID code, which Petitioner maps to the recited second device identifier (see
`Pet. Reply 7–8), identifies the RFID tag.
`
`When questioned about this argument during the hearing, Petitioner’s
`counsel argued that Perttila’s merchant-media ID code identifies both the
`transmitter and the billboard. Tr. 18:19–22:17 (citing Ex. 1006 ¶¶ 27–28,
`37–38, 62–63, Fig. 1a).
`
`Perttila discloses that the server uses the merchant-media ID code “to
`associate the promotional information with an e-coupon to be provided to
`the user visiting th[e] billboard location.” Ex. 1006 ¶ 28 (emphasis added);
`
`18
`
`
`
`IPR2020-00931
`Patent 8,090,359 B2
`
`see also id. ¶ 29 (characterizing the ID code as “the merchant/billboard ID
`code”). Thus, the merchant-media ID code identifies the billboard. Perttila
`also discloses that “the source server 24 extracts the user/terminal ID along
`with the tag (merchant-media) ID from the request. . . . The extracted
`user/terminal ID and the tag ID are stored by the source server . . . .” Id.
`¶ 38 (emphases added); see also id. ¶ 42 (“This validity check can be
`performed by searching the database for a file with user ID and tag ID of the
`void request.”). Thus, the merchant-media ID code identifies the
`transmitter.
`
`Additionally, and as noted above, Perttila discloses that merchant-
`media arrangement 36 transmits the merchant-media ID code to mobile
`communications device 28 over a short-range wireless communication link,
`and the mobile device sends the ID code to source server 24. Ex. 1006
`¶¶ 36–39.
`
`Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
`contentions.
`
`c. The Determining Recitation
`Claim 1 recites “said central server using the second device identifier
`
`information to determine one or more of an identity or related information
`concerning an entity or object located in proximity to the second device.”
`Ex. 1001, 23:46–49. Petitioner maps Perttila’s electronic coupon to the
`recited identity or related information and “the content promoted by
`[Perttila’s] billboard” to the recited entity or object and argues that the
`“‘remote source server’ generates ‘an electronic coupon’ ‘in the form of an
`electronic data set corresponding to the merchant-media’s ID code,’ [an]
`‘electronic coupon that corresponds to the content promoted by the
`
`19
`
`
`
`IPR2020-00931
`Patent 8,090,359 B2
`
`billboard.’” Pet. 29; see also id. at 29–31 (citing Ex. 1006 ¶¶ 15, 27–29,
`37, 39).
`
`Patent Owner makes several arguments regarding this recitation.
`First, Patent Owner interprets the Petition to map Perttila’s billboard to the
`recited second device and argues that Perttila does not disclose using its
`merchant-media arrangement’s ID code “to determine information about ‘an
`entity or object located in proximity to’ [the] billboard.” PO Resp. 30; see
`also id. at 34–35 (“Petitioner has identified the merchant media
`arrangement/billboard itself as the ‘second device’ of the challenged
`claims.”). Rather, Patent Owner argues, Perttila’s electronic coupon is
`associated with the billboard itself. Id. at 35–36 (“The Perttila server merely
`uses the merchant media ID to determine the billboard to which the ID
`relates . . . . [T]he Perttila server simply provides the coupon that it has been
`told to provide based on the merchant media ID.”). “Perttila does not teach
`that the entity or object being promoted by the billboard of the ‘merchant-
`media arrangement’ is located in proximity to the disclosed ‘merchant-media
`arrangement’ . . . .” Id. at 33–34.
`
`Petitioner replies that Perttila’s electronic coupon is related
`information concerning an object in proximity to the “short-range
`communicator” (that is, the RFID tag or Bluetooth link). Pet. Reply 7.
`Petitioner argues that such objects include the billboard and content
`promoted by the billboard. Id.; see also id. at 12 (“Because the billboard
`(and thus the content it is promoting) is, in fact, in proximity to (‘co-located’
`with) the merchant-media arrangement’s tag/beacon, the billboard and
`separately its promotional content each meet the requirement of the claimed
`object.” (citing Pet. 29–31; Ex. 1003 ¶¶ 83, 117–118)).
`
`20
`
`
`
`IPR2020-00931
`Patent 8,090,359 B2
`
`Patent Owner replies that Petitioner’s mapping of the short-range
`
`transmitter to the recited second device is inconsistent with Petitioner’s
`mapping of Perttila’s merchant ID code to the recited second device
`identifier information because the merchant ID code identifies the billboard
`(or its content), but does not identify the RFID tag or Bluetooth link. PO
`Sur-reply 16–17. Patent Owner argues that mapping the content promoted
`by Perttila’s billboard to the recited object does not satisfy the claim
`requirements because this mapping “results in reading the claim language to
`mean ‘[second device] in proximity to the second device.’” Id. at 18–22
`(alteration in original).
`
`As we noted in the Institution Decision, Perttila’s merchant-media
`arrangement includes RFID tag 38 (or, alternatively, a Bluetooth link). See
`Inst. Dec. 19, 21. Petitioner maps the short-range transmitter to the recited
`second device (see Pet. 28–29; Inst. Dec. 19, 21) and maps the electronic
`coupon to the recited identity or related information (see Pet. 29; Inst.
`Dec. 20). Petitioner maps the billboard and, separately, its contents to the
`recited entity or object, which is in proximity to the short-range transmitter.
`See Pet. 29; Pet. Reply 7–8; Inst. Dec. 21. Perttila’s server uses the
`merchant ID code to generate an “electronic coupon that corresponds to the
`content promoted by the billboard.” E.g., Ex. 1006 ¶¶ 27, 33. Thus, Perttila
`supports Petitioner’s contentions.
`
`Patent Owner equates “merchant-media arrangement” as a billboard;
`that is, a single entity. In
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