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.
`____________
`
`IPR2020-00932
`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 All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`Google Exhibit 1021
`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.
`____________
`
`IPR2020-00932
`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 All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`
`Google Exhibit 1021
`Google v. SecCommTech
`
`
`
`IPR2020-00932
`Patent 8,090,359 B2
`
`
`I. INTRODUCTION
`
`A. Background
`
`Target Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 9, 22, 28, 35, 38–41, and 51 (“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.”), 30.
`
`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 9, 22, 28, 35, 38–41, and 51 of
`the ’359 patent are unpatentable.
`
`
`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`2
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`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 IPR2020-00931 (“the ’931 IPR”). 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,
`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
`
`
`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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`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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`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 9, 22, 28, 35, 38–41, and 51 of the
`’359 patent. Pet. 1, 10. All of these claims are dependent claims, with each
`of claims 9, 28, 35, 38–41, and 51 depending directly from independent
`claim 1 and claim 22 depending directly from independent claim 14.
`Claims 1 and 9 are reproduced below:
`1.
`A method for a central server to exchange information
`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
`
`5
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`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.
`9.
`The method of claim 1 wherein the steps performed by
`the central server further comprise:
`
`facilitating a purchase of the goods or services from a
`merchant account associated with the second wireless device
`and a customer account associated with the first wireless
`device;
`
`providing confirmation to each account; and/or
`
`receiving customer confirmation of receipt of a good or
`service via the first wireless device, thereby completing a
`transaction.3
`Ex. 1001, 23:35–63, 24:47–56.
`
`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
`Swartz
`US 6,837,436 B2, issued Jan. 4, 2005
`
`Exhibit
`1006
`1007
`
`
`3 We note that claim 9 has been modified by a Certificate of Correction.
`Ex. 1001, 32.
`
`6
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`We instituted trial based on all asserted claims and grounds of
`
`unpatentability as follows:
`Claims Challenged
`35 U.S.C. §
`9, 22, 51
`102(b)4
`9, 22, 51
`103(a)
`9, 22, 28, 35, 38–41
`103(a)
`
`Perttila
`Perttila
`Perttila, Swartz
`
`Reference(s)
`
`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).
`
`“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.
`
`
`4 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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`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.5 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
`professional experience in the field of wireless communications.” Pet. 14.
`Petitioner acknowledges that “graduate education could substitute for
`
`
`5 The parties have not directed us to any such objective evidence.
`
`8
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`professional experience” and “significant experience in the field could
`substitute for formal education.” Id. (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. 15–16. 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.”6 Id. at 16 (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
`action under 35 U.S.C. § 282(b), including construing the claims in
`accordance with the ordinary and customary meaning of such claims as
`
`
`6 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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`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. 15.
`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. (alteration in original). Petitioner acknowledges that “[a]
`district court in another proceeding has construed terms of this patent,” but
`argues that those “constructions do not impact the outcome of this IPR as the
`
`10
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`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. 18–26. 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. 18. 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 19. 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. at 19–20. Patent Owner
`argues that “proximity” is used in accordance with its ordinary and
`customary meaning and refers to physical placement. Id. at 21–24.
`
`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. 21–23). 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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`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. 25–26. However, Patent Owner concedes that
`construction of “wireless device” is “not necessary to resolve the dispute
`here.” Id. at 25.
`
`12
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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. Swartz
`Swartz discloses a marketing and shopping system. Ex. 1007,
`
`1:20–25. Figure 1 shows the system and is reproduced below:
`
`14
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`Figure 1 shows a block diagram of a preferred embodiment of the system,
`which includes portable terminals 12A–12F and central host 14. Id.
`at 3:62–63, 4:58–5:23, 9:8–11. In use, customers identify themselves to the
`system, such as by inserting a loyalty card into a card reader. Id.
`at 18:29–33. The system then assigns a portable terminal to the user. Id.
`at 18:58–62. Alternatively, customers can use their own portable terminals.
`Id. at 19:48–49. The customer then proceeds through the store and uses the
`portable terminal to record items the customer wishes to purchase. Id.
`at 20:18–19. This can be done by, for example, using the portable terminal
`to scan a bar code on each item. Id. at 20:19–27. After the customer has
`selected all of the items to be purchased, the customer returns the portable
`terminal to the dispenser unit, and information collected with the portable
`terminal regarding the purchased items is processed by a central processing
`unit. Id. at 22:1–8. The customer then pays for the selected products, with
`the system accounting for any discounts or coupons to be applied. Id.
`
`15
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`at 23:8–11, 23:37–45. By allowing the customers, rather than store
`employees, to scan and bag their selected items as they shop, the store saves
`money and the customer saves time. Id. at 22:48–60.
`
`E. Asserted Anticipation by or Obviousness in View of Perttila
`
`Petitioner argues that claims 9, 22, and 51 would have been
`unpatentable as being anticipated by or obvious in view of Perttila.
`Pet. 18–45. 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 9, 22, and 51 would
`have been unpatentable in view of Perttila.
`
`Claims 9 and 51 depend directly from independent claim 1, and
`claim 22 depends directly from independent claim 14. Ex. 1001, 24:47–56,
`26:38–47, 28:63–65. Although Petitioner does not challenge the
`independent claims, the recitations of the independent claims are
`incorporated into the challenged claims, all of which are dependent claims.
`Thus, the Petition addresses the recitations of the independent claims.
`Pet. 25–34, 38–43. Accordingly, we analyze these claims, as well as the
`challenged claims, below.
`
`1. Independent Claim 1
`Claim 1 recites a method for a central server to exchange information
`
`between one or more wireless devices and includes steps performed by a
`central server, a first wireless device, and a second device. Ex. 1001,
`23:35–63. Of particular relevance, claim 1 recites “said central server using
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`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.” Id. at 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 billboard.’” Pet. 30; see also id. at 30–32 (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. 36; see
`also id. at 41 (“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 42 (“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 40.
`
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`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. 30–32; Ex. 1003 ¶¶ 83, 117–118)).
`
`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 16–18. 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. Petitioner maps the short-range transmitter to the recited
`second device (see Pet. 28; Inst. Dec. 19) and maps the electronic coupon to
`the recited identity or related information (see Pet. 30; Inst. Dec. 19).
`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. 30;
`
`18
`
`
`
`IPR2020-00932
`Patent 8,090,359 B2
`
`Pet. Reply 7–8; Inst. Dec. 19. 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 the Institution Decision, we noted that the
`merchant-media arrangement includes a billboard and the RFID tag or
`Bluetooth link is “co-located” at the merchant-media arrangement. Inst.
`Dec. 19–20. Petitioner maps the “short-range communicator,” which it
`defines as the RFID tag or Bluetooth link, to the recited second device. Pet.
`Reply 7; see also Pet. 30–31. Thus, we disagree with Patent Owner’s
`assertion that the Petition maps the merchant media arrangement, as a
`singular entity, to both the recited second device and the recited entity or
`object.
`
`We further disagree with Patent Owner’s assertion that the electronic
`coupon does not correspond to the content promoted by the billboard. See
`PO Resp. 40–41. Perttila discloses that the “downloadable electronic
`coupon . . . corresponds to the content promoted by the billboard.” Ex. 1006
`¶ 27 (emphasis added). Perttila’s remote server uses the merchant-media ID
`code “to associate the promotional information with an e-coupon to be
`provided to the user visiting this billboard location.” Id. ¶ 28.
`
`In its Reply, Petitioner further maps the “store in which the merchant-
`media arrangement is located” and “product offerings in the store” to the
`recited entity or object. Pet. Reply 7–8 (citations omitted). We disagree
`with these mappings. As noted above, Perttila’s e-coupon corresponds to the
`
`19
`
`
`
`IPR2020-00932
`Patent 8,090,359 B2
`
`content of the billboard. Petitioner has cited no disclosure that Perttila’s
`e-coupon corresponds to the store or an item in the store.
`
`Regarding Petitioner’s “store in which the merchant-media
`arrangement is located” mapping, Petitioner does not explain adequately
`how Perttila’s e-coupon, which Petitioner maps to the recited identity or
`related information, concerns the store itself. Rather, Petitioner relies only
`on products offered for sale within the store. See Pet. Reply 13;
`Tr. 22:25–23:24.
`
`Regarding Petitioner’s “product offerings in the store” mapping, at
`best, Petitioner appears to present an inherency argument that if the billboard
`is placed in a store, the advertised products must be in the store. See Pet.
`Reply 13 (“Perttila expressly discloses the merchant-media arrangement
`may be placed ‘at the store itself’ such that the location where product
`offerings corresponding to the e-coupons are redeemed is the ‘same
`location’ as that where the e-coupons are provided.” (citing Ex. 1006 ¶¶ 28,
`39; Pet. 22, 30–32; Ex. 1003 ¶¶ 87, 117–118)). However, while it may be
`likely that the advertised products are in the store, this is not necessarily the
`case. For example, the products may be out of stock, in which case
`Petitioner acknowledges that the claim language is not satisfied. Tr. 24:7–12
`(“[T]he limitations are met when the e-coupon is distributed for a product,
`and that product is in the store with the merchant media arrangement. If
`there are times, for example, when the store is sold out of that particular
`product, that wouldn’t be met during those times.”). Petitioner’s assertions
`regarding the recited entity or object corresponding to product offerings
`within the store are based on speculation, which is insufficient to satisfy the
`requirements for an inherency argument. In re Robertson, 169 F.3d 743,
`
`20
`
`
`
`IPR2020-00932
`Patent 8,090,359 B2
`
`745 (Fed. Cir. 1999) (“Inherency, however, may not be established by
`probabilities or possibilities. The mere fact that a certain thing may result
`from a given set of circumstances is not sufficient.” (citations omitted)).
`
`Additionally, Patent Owner argues that Perttila’s server does not make
`a determination that any object is in proximity to the second wireless device.
`PO Resp. 38–39; see also PO Sur-reply 12–13.
`
`Petitioner argues that claim 1 does not require the central server to
`make a determination that an object is in proximity to the second device.
`Pet. Reply 8–9.
`
`Claim 1 requires the central server to make a single determination—
`the “identity or related information concerning an entity or object located in
`proximity to the second device”—but does not require the server to also
`determine that the object (or entity) is in proximity to the second device.
`Moreover, Patent Owner’s arguments are inconsistent with the ’359 patent,
`which indicates that the first device is positioned in proximity to an object
`about which information is delivered rather than the server making a
`determination that an object is in proximity to the second device. See, e.g.,
`Ex. 1001, 8:43–52 (discussing the first device being “tied to a location or
`product”). Even if we were to interpret the claims as containing such a
`requirement, as noted above Pert
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