Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Date: November 30, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION,
`Petitioner,
`v.
`PROXICOM WIRELESS LLC,
`Patent Owner.
`
`IPR2020-00980
`Patent 8,385,913 B2
`
`
`
`
`
`
`
`
`
`Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`McNAMARA, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`Google Exhibit 1033
`Google v. SecCommTech
`
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`IPR2020-00980
`Patent 8,385,913 B2
`
`I. BACKGROUND
`On December 4, 2021, we instituted an inter partes review of claims
`1–4, 6–10, 12, 15, 17, 19, 21, 32–34, and 39 of U. S. Patent No.
`8,385,913 B2 (“the ’913 Patent”). Paper 11 (“Dec. to Inst.”). Patent Owner
`filed a Patent Owner Response (Paper 20, “PO Resp.”), Petitioner filed a
`Petitioner Reply (Paper 23, “Pet. Reply”) and Patent Owner filed a Sur-reply
`(Paper 24, “PO Sur-reply”). A transcript of an oral hearing held on
`September 1, 2021 (Paper 30) has been entered into the record.
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. §318(a). We base our decision on
`the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
`Having reviewed the arguments of the parties and the supporting
`evidence, we conclude that Petitioner has demonstrated by a preponderance
`of the evidence that all of the challenged claims are unpatentable.
`II. THE ’913 PATENT
`The ’913 patent 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.”
`Ex. 1001, 2:57–61. According to the ’913 patent, disadvantages of direct
`communication between short range devices using WiFi or Bluetooth
`techniques include the risk that two such devices will lose their ability to
`communicate when they are no longer in close proximity and the risk of
`exposure of locally stored sensitive information or fraud by unauthorized
`spoofing devices. See id. at 2:34–48. The ’913 patent addresses these and
`other issues with a system “utilizing both a short range and a long range
`wireless capability.” Id. at 2:55–56.
`Figure 1 of the ’913 patent is reproduced below.
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`IPR2020-00980
`Patent 8,385,913 B2
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`
`
`Figure 1 of the ’913 patent
`Figure 1 of the ’913 patent is a block diagram of two mobile devices
`utilizing a preferred embodiment. Ex. 1001, 5:3–4. Devices 106, 108
`communicate over short range wireless link 107 (such as a Bluetooth
`IEEE802.15.1 link or a WiFi IEEE802.11 link) to allow a device, e.g.,
`device 106, to detect the presence of other devices, such as device 108. Id.
`at 6:31–35. Devices 106, 108 use wide area wireless network connections
`103, 104 (such as IS-2000, WCDMA, GPRS, EDGE, LTE, Wi-Max
`(IEEE802.16), to communicate to central server 100 and perform actual
`substantive communications, e.g., for device 106 to communicate with
`device 108. Id. at 6:35–39. Device 108 uses short range wireless link 107
`and wide area wireless link 103 in a similar manner to communicate with
`device 106. Id. at 6:39–42. Wireless link 107 is used only for the detection
`process or to advertise a device’s presence to pass a “wireless identifier” (or
`“identifier”) between devices 106 and 108 during the proximity detection
`process. Id. at 6:43–51. Facilitating communication between the devices
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`IPR2020-00980
`Patent 8,385,913 B2
`using identifiers and standard Wireless Wide Area Network (WWAN) or 3G
`communications requires less resources than peer to peer communications
`and allows the devices to continue to communicate when no longer in close
`proximity. Id. at 6:52–67. This approach also allows a central server to
`control content based on the identity of the device.
`Figure 2 of the ’913 patent is shown below.
`
`
`
`Figure 2 of the ’913 patent
`Figure 2 is a block diagram of a fixed broadcast device and a mobile device.
`Ex. 1001, 5:5–6. In a museum application, exhibit associated device 204
`does not have a WWAN connection, but advertises its presence by
`broadcasting a local identifier. Id. at 7:28–31. A museum patron’s device
`202 passes the identifier to central server 100. Id. at 7:35–36. Central server
`100 recognizes the identifier as being associated with that particular exhibit
`and passes relevant information content (pictures, text, web pages, games,
`coupon offers, etc.) to the patron’s device 202, even after the patron has left
`the proximity of exhibit associated device 204. Id. at 7:37–49, 8:41–50.
`The ’913 patent also states that, in a similar way, broadcast device 204
`may be associated with an account of an individual or entity that contains
`personal information and information regarding allowed communication.
`Ex. 1001, 8:32–41. Policy based permissions associated with each account
`
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`IPR2020-00980
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`and applied to information associated with that account can be used to
`determine what information and under what circumstances information may
`be disclosed to another device or user associated with another account. Id. at
`8:51–59.
`Figure 9 of the ’913 patent is shown below.
`
`
`
`Figure 9 of the ’913 Patent
`Figure 9 illustrates an example of a grocery store application in which
`customer device 902 (Device 1) scans for identifiers (step 904) and detects
`identifier DI2 transmitted from device 903. Id. at 14:36–43. Customer
`device 902 (Device 1) sends a message to server 901 inquiring if device
`identifier DI2 is relevant to the entity (customer) associated with the
`customer device (Device 1) and if information associated with device
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`identifier DI2 is available for return. Id. at 14:43–47. At step 906 server
`901 retrieves the accounts associated with identifier DI2 and the customer
`device (Device 1). Server 901 detects that there is a coupon and other
`multimedia content available for download to customer Device 1 and that
`the settings in the customer account allow for notification of broadcast
`devices in proximity. Id. at 14:49–55. Server 901 retrieves response
`message 907 indicating the presence of the detected device and the content
`available. Id. at 14:56–58. Customer device 902 requests input from the
`entity associated with server 901 for permission to download the coupon and
`other available content. Id. at 14:58–65. Message 909 from customer
`Device 1 accepting the content is sent to server 901 and response message
`910 begins content delivery. Id.
`III.
`ILLUSTRATIVE CLAIM
`Illustrative claim 1 is reproduced below using the paragraph
`designations employed in the Petition.
`1 [pre]. A method for operating a first wireless communication
`device comprising:
`[a] a first receiving step of receiving a first unique identifier
`from a second wireless device using a peer-to-peer
`protocol over a short range wireless communication link;
`[b] connecting to a server over a second communication link
`using a protocol different from the peer-to-peer protocol
`used on the short range wireless communication link;
`[c] sending the first unique identifier to the server over the
`second communication link;
`[d] receiving further information from the server over the
`second communication link;
`[e] the further information related to an entity or object
`associated with the second wireless device, the further
`information depending upon information parameters for a
`service account associated with the first unique identifier;
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`[f] a second receiving step of receiving a second unique
`identifier from one of the second wireless device and a
`third wireless device using the peer-to-peer protocol over
`the short range wireless communication link, wherein the
`first unique identifier received in the first receiving step
`and the second unique identifier received in the second
`receiving step are not the same; and
`[g] comparing the first unique identifier received in the first
`receiving step and (b) said further information with (c) the
`second unique identifier received in the second receiving
`step, and as a result of such comparing, suppressing, in
`response to the second receiving step, a subsequent
`sending of the second unique identifier received in the
`second receiving step to the server over the second
`communication link.
`
`103
`
`103
`
`Mgrdechian
`
`Mgrdechian, Kaplan3
`
`
`Ex. 1001, 23:20–46.
`IV. GROUNDS OF INSTITUTION
`We instituted trial on the following grounds asserted in the Petition:
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)/Basis
`1–4, 6–10, 12, 15, 17,
`1021
`Mgrdechian2
`19, 21, 32–34, 39
`1–4, 6–10, 12, 15, 17,
`19, 21, 32–34, 39
`1–4, 6–10, 12, 15, 17,
`19, 21, 32–34, 39
`1–4, 6–10, 12, 15, 17,
`19, 21, 32–34, 39
`
`103
`
`Mgrdechian, Gujar4
`
`
`1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
`Stat. 284, 285–88 (2011), amended 35 U.S.C. §§ 102 and 103, effective
`March 16, 2013. Given that the application from which the ’913 patent
`issued was filed before this date, the pre-AIA versions of §§ 102 and 103
`apply.
`2 U.S. Patent No. 7,545,784, issued Jun. 9, 2009 (Ex. 1005).
`3 U.S. Patent No. 8,295,819, issued Oct. 23, 2012 (Ex. 1024).
`4 U.S. Patent No. 6,446,208, issued Sep. 3, 2002 (Ex. 1014).
`
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`IPR2020-00980
`Patent 8,385,913 B2
`Claim(s) Challenged
`1–4, 6–10, 12, 15, 17,
`19, 21, 32–34, 39
`2, 8
`2, 8
`2, 8
`2, 8
`
`
`
`35 U.S.C. §
`103
`103
`103
`103
`103
`
`Reference(s)/Basis
`Mgrdechian, Kaplan, Gujar
`Mgrdechian, Kulakowski5
`Mgrdechian, Kaplan,
`Kulakowski
`Mgrdechian, Gujar, Kulakowski
`Mgrdechian, Kaplan, Gujar,
`Kulakowski
`
`V. ANALYSIS OF PRIOR ART CHALLENGES
`Introduction
`A.
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`Anticipation is a question of fact, as is the question of what a prior art
`reference teaches. In re NTP, Inc., 654 F.3d 1279, 1297 (Fed. Cir. 2011).
`“A claim is anticipated only if each and every element as set forth in the
`claim is found, either expressly or inherently described, in a single prior art
`reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631 (Fed.
`Cir. 1987); see also Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323,
`
`
`5 International App. No. WO 2007/084973, published Jul. 26, 2007
`(Ex. 1013).
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`1334 (Fed. Cir. 2008) (to anticipate a patent claim under 35 U.S.C. § 102, “a
`single prior art reference must expressly or inherently disclose each claim
`limitation”). Moreover, “[b]ecause the hallmark of anticipation is prior
`invention, the prior art reference—in order to anticipate under 35 U.S.C.
`§ 102—must not only disclose all elements of the claim within the four
`corners of the document, but must also disclose those elements ‘arranged as
`in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369
`(Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
`1548 (Fed. Cir. 1983)).
`Whether a reference anticipates is assessed from the perspective of an
`ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc.,
`329 F.3d 1358, 1368 (Fed. Cir. 2003) (“‘[T]he dispositive question
`regarding anticipation [i]s whether one skilled in the art would reasonably
`understand or infer from the [prior art reference’s] teaching’ that every claim
`element was disclosed in that single reference.” (quoting In re Baxter
`Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)) (emphasis omitted)
`(second and third alteration in original)).
`Additionally, under the principles of inherency, if the prior art
`necessarily functions in accordance with, or includes, the claimed
`limitations, it anticipates. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d
`1362, 1365 (Fed. Cir. 1999); In re Cruciferous Sprout Litig., 301 F.3d 1343,
`1349–50 (Fed. Cir. 2002).
`As set forth in 35 U.S.C. § 103(a),
`[a] patent may not be obtained . . . if the differences between the
`subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in
`the art to which said subject matter pertains.
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`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 ordinary skill in the art; and (4) objective evidence of nonobviousness.
`Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the
`obviousness inquiry typically requires an analysis of “whether there was an
`apparent reason to combine the known elements in the fashion claimed by
`the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
`(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
`reasoning with some rational underpinning to support the legal conclusion of
`obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
`(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
`v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`An obviousness analysis “need not seek out precise teachings directed
`to the specific subject matter of the challenged claim, for a court can take
`account of the inferences and creative steps that a person of ordinary skill in
`the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic
`Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016). Instead, Petitioner must articulate a reason why a person of
`ordinary skill in the art would have combined the prior art references. In re
`NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`A reason to combine or modify the prior art may be found explicitly
`or implicitly in market forces; design incentives; the “interrelated teachings
`of multiple patents”; “any need or problem known in the field of endeavor at
`the time of invention and addressed by the patent”; and the background
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`knowledge, creativity, and common sense of the person of ordinary skill.
`Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir.
`2009) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–21 (2007)).
`Before determining whether a claim is obvious in light of the prior art,
`we consider any relevant evidence of secondary considerations of non-
`obviousness. See Graham, 383 U.S. at 17. Notwithstanding what the
`teachings of the prior art would have suggested to one of ordinary skill in the
`art at the time of the invention, the totality of the evidence submitted,
`including objective evidence of non-obviousness, may lead to a conclusion
`that the challenged claims would not have been obvious to one of ordinary
`skill. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed. Cir. 1984). No evidence
`of secondary consideration of obviousness has been presented in this
`proceeding.
`We analyze the asserted grounds of unpatentability in accordance with
`these principles to determine whether Petitioner has met its burden to
`establish unpatentability of the challenged claims by a preponderance of the
`evidence.
`Claims 1–4, 6–10, 12, 15, 17, 19, 21, 32–34, 39 as Anticipated
`B.
`by or Obvious Over Mgrdechian (Grounds 1 and 2)
`As Petitioner challenges claims 1–4, 6–10, 12, 15, 17, 19, 21, 32–34,
`and 39 as anticipated by or obvious over the same reference, we address
`both challenges together.
`1. Mgrdechian
`Mgrdechian discloses a communications system in which a first
`wireless device with a unique identification, e.g., a Bluetooth ID or an RFID,
`receives over a local wireless protocol unique identifications of one or more
`other wireless devices. See Ex. 1005, 3:13–42, 3:59–67. A first wireless
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`device can receive identifications (and, in some cases, available locally
`stored profile information) from other devices in its vicinity in response to a
`query from the first device or from a broadcast by the other devices. Id. at
`4:1–3, 6:44–61, 16:10–15. The first wireless device transmits the unique
`wireless identifications to a remote computer or server over a second
`wireless network or the Internet and receives from the remote server
`information associated with the wireless device identifications. Id. at 3:59–
`67, 10:49–53, 16:36–42. For example, in response to a request from a user
`of the first device (User A), the server generates a reply that includes profile
`information associated with the device IDs in the request, to the extent the
`users of the other devices, e.g., User B, has authorized the disclosure of such
`information. Id. at 5:51–65, 10:56–11:4, 16:62–17:12. Authorized profile
`information associated with each device ID may be viewed and stored on the
`initiating user’s wireless device (the user of Device A) for use in contacting
`the users of target devices, e.g., Users B and C, at a later time. Id. at
`12:18–30.
`Mgrdechian also discloses that the remote computer can compare the
`profiles associated with IDs to predefined preferences of the initiating user
`(User A), to alert the initiating user to the presence of persons-of-interest.
`Ex. 1005, 14:55–65. The server may also provide a user with information
`regarding “friends of friends,” forming a mobile social networking service.
`Id. at 5:36–38.
`Mgrdechian also teaches an extended range operation embodiment in
`which a target device returns to the initiating device its device ID and the
`device IDs of other devices in its range that may not be within the range of
`the initiating device. Ex. 1005, 19:43–57. With this information the
`detection range of the initiating device is extended a distance d1 (one hop
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`from the target to an out of range device) or by taking the devices in series a
`further distance, e.g., d2 (an additional hop from the out of range device to
`another out of range device). Id. at 19:29–67.
`Another embodiment in Mgrdechian extends the communication
`range using a positional database. See Ex. 1005, 20:1–47. In this
`embodiment, the IDs of devices are uploaded to a central server to create a
`positional database. Id. at 20:3–7. For example, if Device A issues an ID
`request and receives responses from Devices B and E, Device A sends the
`IDs of Devices B and E to the remote server, causing the remote server to
`return profile information for Devices B and E to Device A. Id. 20:9–25. If
`the positional database of the remote server indicates Device C is within the
`range of Device B and if the system is programmed to return information for
`all users within one hop, the system also will return to Device A information
`associated with Device C’s ID. Id. at 20:14–30, Fig. 10. Similarly, if the
`positional database indicates Device D is within range of Device C and the
`system is programmed to return information for all users within two hops,
`the server also returns to Device A information associated with Device D’s
`ID. Id. at 20:31–35.
`2.
`Claim 1
`The Petition identifies as the preamble of claim 1 the recitation “[a]
`method for operating a first wireless communication device.” Ex. 1001,
`23:20–21. Patent Owner does not dispute Petitioner’s contention that
`Mgrdechian discloses a wireless communication system for exchanging
`information between wireless devices. Pet. 26–29 (citing Ex. 1005, 1:32–35,
`9:40–55, 9:65–10:5, Fig. 3A; Ex. 1003, Williams Decl. ¶¶ 96–97). As
`discussed below, as to claim 1, the Patent Owner Response explicitly
`disputes only whether Mgrdechian discloses claim limitation [1.g]. See PO
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`Resp. 22–28. Based on the evidence and arguments of record, we are
`persuaded Petitioner has demonstrated that Mgrdechian discloses a method
`of operating a first wireless communication device, as recited in the
`preamble of claim 1.
`Claim Limitation [1.a]
`a)
`The Petition identifies as claim limitation [1.a] the recitation “a first
`receiving step of receiving a first unique identifier from a second wireless
`device using a peer-to-peer protocol over a short range wireless
`communication link.” Pet. 29. In support of its contention that Mgrdechian
`discloses this limitation, Petitioner cites Mgrdechian’s disclosure that each
`wireless device intermittently or continuously broadcasts its unique ID over
`a local protocol, e.g., broadcasting a Bluetooth ID using a Bluetooth
`protocol, that can be detected by other devices within range. Id. at 19–20,
`29–30 (citing Ex. 1005, 6:59–61, 10:10–15, 13:3–18, 19:34–39, 16:16–19,
`20:1–47, Figs. 3A, 10; Ex. 1003, Williams Decl. ¶¶ 98–100). The Patent
`Owner Response does not address Petitioner’s contentions concerning claim
`limitation [1.a] specifically.
`Based on the evidence and arguments of record, we find that
`Petitioner has demonstrated Mgrdechian discloses claim limitation [1.a].
`b)
`Claim Limitation [1.b]
`The Petition identifies as claim limitation [1.b] the recitation
`“connecting to a server over a second communication link using a protocol
`different from the peer-to-peer protocol used on the short range wireless
`communication link.” Pet. 32. In support of its contention that Mgrdechian
`discloses this limitation, Petitioner cites Mgrdechian’s disclosure that a
`wireless device, e.g. the initiating device or Device A, communicates with a
`remote computer or server over a communication link using a second
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`protocol, such as a wireless phone network and the Internet, that is different
`from the peer-to-peer protocol used on the short range wireless
`communication link. Id. at 19–20, 32–33 (citing Ex. 1005, 10:48–56,
`13:18–23, 23:3–12, Fig. 3A; Ex. 1003, Williams Decl. ¶¶ 101–103). The
`Patent Owner Response does not address Petitioner’s contentions concerning
`claim limitation [1.b] specifically
`Based on the evidence and arguments of record, we find that
`Petitioner has demonstrated Mgrdechian discloses claim limitation [1.b].
`c)
`Claim Limitation [1.c]
`The Petition identifies as claim limitation [1.c] the recitation “sending
`the first unique identifier to the server over the second communication link.”
`Pet. 33. In support of its contention that Mgrdechian discloses this
`limitation, Petitioner cites Mgrdechian’s disclosure that Device A (the
`initiating device) receiving Device B’s ID on the short range peer-to peer
`network sends Device B’s ID to the remote computer or server over the
`wireless phone network and Internet. Id. (citing Ex. 1005, 10:48–56,
`20:1–47; Ex. 1003, Williams Decl. ¶¶ 104–105). The Patent Owner
`Response does not address Petitioner’s contentions concerning claim
`limitation [1.c] specifically.
`Based on the evidence and arguments of record, we find that
`Petitioner has demonstrated that Mgrdechian discloses claim limitation [1.c].
`d)
`Claim Limitation [1.d]
`The Petition identifies as claim limitation [1.d] the recitation
`“receiving further information from the server over the second
`communication link.” Pet. 34. In support of its contention that Mgrdechian
`discloses this limitation, Petitioner cites Mgrdechian’s disclosure that the
`computer system or server sends all or some profile information associated
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`with each device back to the initiating wireless device, e.g., Device A. Id.
`(citing Ex. 1005, 12:18–26). Petitioner notes that the profile may contain a
`list of friends using their identifiers. Id. at 21 (citing Ex. 1005, 5:31–35,
`8:5–14, 11:34–52; Ex. 1003, Williams Decl. ¶¶ 81–82). Petitioner further
`notes that Mgrdechian’s remote server can maintain a positional database,
`can use the IDs of the devices it receives from the initiating device to
`determine that other devices are in range of the devices corresponding to the
`received IDs, and return profile information concerning those other devices
`to the initiating device. Id. at 34–35 (citing Ex. 1005, 20:1–47, Fig. 10; Ex.
`1003, Williams Decl. ¶¶ 106–108). Other than its reference to returning all
`or some of the profile information associated with each device ID back to
`the initiating device (Ex. 1005, 12:18–31), Petitioner does not cite disclosure
`in Mgrdechian that explicitly describes the remote server returning device
`IDs to the initiating device. See Pet. 34–35. Petitioner notes, however, that
`for profile information concerning friends or devices that are out of range of
`the initiating device, but are within the range of target devices, it would have
`been obvious to include the identifier of the friend or out of range device to
`facilitate communication. Id. at 21. The Patent Owner Response does not
`address Petitioner’s contentions concerning claim limitation [1.d]
`specifically.
`Based on the evidence and arguments of record, we find that, although
`Mgrdechian does not disclose claim limitation [1.d] explicitly for purposes
`of anticipation, Petitioner has demonstrated that Mgrdechian would have at
`least suggested claim limitation [1.d] to a person of ordinary skill in the art.6
`
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`6 See Dec. to Inst. 10 (describing a person of ordinary skill in the art).
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`Claim Limitation [1.e]
`e)
`The Petition identifies as claim limitation [1.e] the recitation “the
`further information related to an entity or object associated with the second
`wireless device, the further information depending upon information
`parameters for a service account associated with the first unique identifier.”
`Pet. 35. In support of its contention that Mgrdechian discloses this
`limitation, Petitioner cites Mgrdechian’s disclosure that the profile
`information the server returns for any device is filtered based on parameters
`associated with the ID of each target and the initiating device. Id. at 35–37
`(citing Ex. 1005, 6:54–56, 14:61–65, 13:50–14:8, 16:60–17:10, Fig. 7A;
`Ex. 1003, Williams Decl. ¶¶ 109–112). The Patent Owner Response does
`not address Petitioner’s contentions concerning claim limitation [1.e]
`specifically.
`Based on the evidence and arguments of record, we find that
`Petitioner has demonstrated that Mgrdechian discloses claim limitation [1.e].
`f)
`Claim Limitation [1.f]
`The Petition identifies as claim limitation [1.f] the recitation “a second
`receiving step of receiving a second unique identifier from one of the second
`wireless device and a third wireless device using the peer-to-peer protocol
`over the short range wireless communication link, wherein the first unique
`identifier received in the first receiving step and the second unique identifier
`received in the second receiving step are not the same.” Pet. 37. In support
`of its contention that Mgrdechian discloses this limitation, Petitioner cites
`Mgrdechian’s disclosure that, using a local peer-to-peer wireless protocol, a
`wireless device detects other devices that come within its range and devices
`that move out of its range become undetectable. Id. at 23, 37 (citing Ex.
`1005, 9:65–10:5). For example, where in the first receiving step Device A
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`detects a Device B (having a first unique identifier), and a third device, i.e.,
`Device C with its own unique ID (a second unique identifier different from
`the first unique identifier), comes within range of Device A, in a second
`receiving step Device A detects Device C and receives a unique identifier
`transmitted from Device C over the peer-to-peer short range
`communications link. Id. at 37–39 (citing Ex. 1005, 10:38–47, 16:16–19,
`19:34–39, 20:1–47, Figs. 3A, 3B, 10; Ex. 1003, Williams Decl. ¶¶ 113–116).
`The Patent Owner Response does not address Petitioner’s contentions
`concerning claim limitation [1.f] specifically.
`Based on the evidence and arguments of record, we find Petitioner has
`demonstrated Mgrdechian discloses claim limitation [1.f].
`g)
`Claim Limitation [1.g]
`The Petition identifies as claim limitation [1.g] the recitation
`“comparing the first unique identifier received in the first receiving step and
`(b) said further information with (c) the second unique identifier received in
`the second receiving step, and as a result of such comparing, suppressing, in
`response to the second receiving step, a subsequent sending of the second
`unique identifier received in the second receiving step to the server over the
`second communication link.” Pet. 39. In support of its contention that
`Mgrdechian discloses this limitation, Petitioner notes that Device A may
`contain profile information for multiple devices, e.g. Devices B and C; when
`one of the devices, e.g. Device C, goes out of range and subsequently comes
`within range, Device A receives the ID from Device C and because Device
`C’s profile is already stored in Device A, Device A does not transmit a
`second request for profile information to the server. Id. at 23–24, 39–40
`(citing Ex. 1005, 8:5–14, 12:18–26, 15:44–16:2, 20:1–47, 20:56–21:8, Fig.
`11; Ex. 1003, Williams Decl. ¶¶ 117–120).
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`Patent Owner argues that “[t]he challenged claims require, inter alia,
`that the first wireless device compare specific pieces of information that it
`has received during other steps of the claim, and as a result of that
`comparison, suppressing a transmission to the server. Mgrdechian does not
`teach or suggest this claimed comparison and suppression.” PO Resp. 1.
`Patent Owner cites the Decision to Institute as noting that Mgrdechian does
`not explicitly state the initiating device suppresses transmission of a profile
`request to the remote server based on a comparison of device IDs, but states
`that Mgrdechian discloses the initiating device can search its saved profiles
`and use the profile information to decide whether to communicate messages
`directly to another device on a peer-to-peer basis. PO Resp. 23 (citing Dec.
`to Inst. 32). Patent Owner argues that claim limitation [1.g] “is about
`suppressing a subsequent sending of the second unique identifier to the
`server, not to ‘other devices on a peer-to-peer basis.’” Id. at 23. According
`to Patent Owner,
`the inquiry should focus on what Mgrdechian would have taught
`a POSITA about suppressing the sending of device IDs
`discovered via a short range wireless communications to the
`remote computing system. That is, the correct inquiry should not
`focus on whether the user of a device simply chooses to later send
`peer-to-peer messages to users based upon profile information it
`stores in memory.
`Id. at 24. According to Patent Owner, the cited passage of Mgrdechian
`teaches that the remote computing system sends “some or all” of
`the requested profile information from the remote computing
`system back to an initiating wireless device, but nothing about
`the initiating wireless device’s ability to “compar[e] the first
`unique identifier . . . and . . . further information with . . [a]
`second unique identifier . . . , and as a result of such comparing,
`suppressing, . . . a subsequent sending of the second unique
`identifier . . . to the server over the second communication link.”
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`Id. (second and third alterations in original).
`Patent Owner further contends that Mgrdechian does not teach any
`comparison of identifiers or profiles to determine which identifiers should be
`suppressed, but rath