Trials@uspto.gov
`571-272-7822
`Paper 3
`Date: November 8, 2021
`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`TARGET CORPORATION,
`Petitioner,
`v.
`PROXICOMM WIRELESS, LLC,
`Patent Owner.
`IPR2020-00903
`Patent 9,038,129 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 1015
`Google v. SecCommTech
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`2
`I. BACKGROUND
`On November 10, 2020, we instituted an inter partes review of claims
`1–5, 7, 10, 11, 16–20, 25, and 26 (“the challenged claims”) of U.S. Patent
`No. 9,038,129 B2 ("the ’129 patent"). Paper 11 (“Dec. to Inst.”). Patent
`Owner filed a Patent Owner Response (Paper 19, “PO Resp.”), Petitioner
`filed a Petitioner Reply (Paper 21, “Pet. Reply”) and Patent Owner filed a
`Patent Owner Sur-reply (Paper 22, “PO Sur-reply”). A transcript of an oral
`hearing held on August 18, 2021 (Paper 28, “Hr’g Tr.”) 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 the challenged claims are unpatentable.
`II. THE ’129 PATENT
`The ’129 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, 2:53–56. According to the ’129 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 no longer are in close proximity and the risk of
`fraud or exposure of locally stored sensitive information to unauthorized
`spoofing devices. See id. at 2:36–49. The ’129 patent addresses these and
`other issues with a system “utilizing both a short range and a long range
`wireless capability.” Id. at 2:56–57.
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`3
`Figure 1 of the ’129 patent is reproduced below.
`
`Figure 1 of the ’129 Patent
`Figure 1 of the ’129 patent is a “block diagram of two mobile devices
`utilizing a preferred embodiment.” Ex. 1001, 5:4–5. A device, e.g., device
`106, communicates over short range wireless link 107 (such as a Bluetooth
`IEEE802.15.1 link or a WiFi IEEE802.11 link) to detect the presence of
`other devices, e.g., device 108. Id. at 6:33–36. Device 106 uses 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 with device 108. Id. at
`6:36–41. 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 6:41–44. 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
`6:45–49. Facilitating communication between the devices using identifiers
`
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`4
`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 6:58–7:9. This approach also allows a central server to control content
`based on the identity of the device.
`Figure 2 of the ’129 patent is shown below.
`
`Figure 2 of the ’129 Patent
`Figure 2 is a “block diagram of a fixed broadcast device and a mobile
`device.” Ex. 1001, 5:6–7. In an example where the process is used in a
`museum, an exhibit associated device 204 that does not have a WWAN
`connection, advertises its presence to facilitate the receipt of local
`information by broadcasting a local identifier. Id. at 7:30–33. A museum
`patron’s device 202 detects device 204’s identifier, and passes the identifier
`to central server 100. Id. at 7:37–38. Central server 100 recognizes the
`identifier as being associated with that exhibit and passes relevant
`information content (pictures, text, web pages, games, coupon offers, etc.) to
`
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`5
`the patron’s device 202, even after the patron has left the proximity of
`exhibit associated device 204. Id. at 7:38–49; see id. at 8:41–52.
`The ’129 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, 8:36–40. “[P]olicy based permission associated with each account
`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 8:53–58.
`Figure 9 of the ’129 patent is shown below.
`
`Figure 9 of the ’129 patent
`
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`6
`Figure 9 concerns a grocery store example in which customer device
`902 (Device 1) scans for identifiers (step 904) and detects identifier DI2
`transmitted from device 903 (broadcast only Device 2). Ex. 1001, 14:45–49.
`At Step 905 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 identifier DI2 is available for return. Id. at 14:49–52; Fig. 9. At
`step 906 server 901 retrieves the accounts of entity EI2 associated with
`identifier DI2 of broadcast only device 903 and customer device 902
`(Device 1). Id. at 14:52–53. Server 901 detects that there is a coupon and
`other multimedia content, e.g., a recipe video, available for download to
`customer device 1 and that the settings in the customer account (EI1) allow
`for the notification of broadcast devices in proximity. Id. at 14:53–60.
`Server 901 transmits response message 907 to device 902 (customer device
`1), indicating the presence of the detected device 903 (broadcast Device 2)
`and requesting permission to send the content available to customer device
`1. Id. at 14:61–63. Customer device 902 requests input from the entity
`associated with server 901 for permission to download the coupon and other
`available content. Id. at 14:63–66. Message 909 from customer Device 1
`accepting the content is sent to server 901, and response message 910 begins
`content delivery from the server to customer device 1. Id. at 14:66–15:3.
`
`III. ILLUSTRATIVE CLAIM
`Claim 1, reproduced below with paragraph designations used in the
`Petition, is illustrative of the subject matter of the ’129 patent.
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`7
`[1pre]. A method for facilitating an exchange of information
`between first and second wireless devices or entities, the method
`utilizing a server performing the steps of:
`[1.a] receiving a first unique id entifier communicated over a
`wide area link from the first wireless device,
`[1.b] receiving a second unique identifier associated with the
`second wireless device, the second unique identifier
`associated with the second wireless device being
`communicated to the first wireless device over a local
`wireless link, and then from the first wireless device to the
`server over the wide area link,
`[1.c] comparing a disclosure policy associated with the
`second unique identifier with the first unique identifier
`from the first wireless device or with an identifier or other
`data derived from the first unique identifier, wherein the
`disclosure policy specifies data representing one or more
`rules for privacy of information concerning the second
`wireless device or privacy of information concerning an
`entity associated with the second wireless device; and
`[1.d] communicating further information to the first wireless
`device as permitted by a result of comparing the disclosure
`policy, and wherein said further information is based, at
`least in part, upon a stored state resulting from previous
`interactions utilizing said server between the entities
`associated with the first and second unique identifiers, and
`[1.e] wherein said further information additionally comprises
`content relating to one or more of the following:
`a current step of a multiple step electronic commerce
`transaction, wherein said current step is related to said
`stored state and related to feedback ratings by other
`entities related to an entity associated with the second
`wireless device,
`a reward for participation in a loyalty program, wherein
`said reward is dependent upon said stored state and
`related to past purchasing behavior of an entity
`associated with the first wireless device, or
`social network content wherein said social network
`content is dependent upon said stored state, wherein
`said stored state comprises a friends list associated with
`the entity associated with the second wireless device,
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`8
`and wherein said disclosure policy utilized in said step
`of comparing comprises the inclusion of an entity
`associated with the first wireless device being included
`in said friends list and resulting in access to the
`otherwise private social network content of the entity
`associated with the second wireless device.
`.
`IV. GROUNDS OF INSTITUTION
`Inter partes review was instituted on the following grounds:
`Claim(s) Challenged 35 U.S.C. § Basis
`1–5, 7, 10, 11, 16–20,
`25, 26 1021 Eagle 2
`1–5, 7, 10, 11, 16–20,
`25, 26 103 Eagle
`
`V. CLAIM CONSTRUCTION
`Claim terms “are generally given their ordinary and customary
`meaning” as understood by a person of ordinary skill in the art in question at
`the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`(Fed. Cir. 2005) (citations omitted) (en banc). “In determining the meaning
`of the disputed claim limitation, we look principally to the intrinsic evidence
`of record, examining the claim language itself, the written description, and
`the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). Any special definition for a claim term must be set
`
`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 ’736 patent
`issued was filed before this date, the pre-AIA versions of §§ 102 and 103
`apply.
`2 U.S. Patent App. Publ. No. US2005/0250552 A1, published Nov. 10, 2005
`(Ex. 1004).
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`9
`forth in the specification with “reasonable clarity, deliberateness, and
`precision.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`In the Decision to Institute we declined to adopt Patent Owner’s
`proposal that we construe claim limitation 1.d, i.e., “a stored state resulting
`from previous interactions [utilizing said server] between the entities
`associated with the first and second unique identifiers,” to mean “a stored
`state resulting from previous interactions [utilizing said server] specifically
`between the entities associated with . . . first and second unique identifiers.”
`Dec. to Inst. 10–12. We declined to import the word “specifically” into the
`claim as a matter of claim construction because it does not change the
`meaning of the claim. Id. at 12. Moreover, importing this new term into the
`claim improperly suggests an additional, undefined limitation that is not
`present in the claims at issue. For example, in the Decision to Institute, we
`noted that the ’129 patent explicitly distinguishes between a device and an
`entity, which could be a person or a business, and includes an example in
`which one entity, a museum, is associated with multiple device identifiers.
`Id.
`Petitioner and Patent Owner agree this claim language should be
`given its plain and ordinary meaning. See Pet. 14; Pet. Reply 1–4; PO Resp.
`14 (as to claim limitations 1.d and 16.c, arguing “this ‘stored state’ term
`should be given understood based on its plain and ordinary meaning”); PO
`Sur-reply 1–4. Patent Owner also acknowledges that “(1) an ‘entity’ can
`include a legal entity, and (2) the ’129 Patent contemplates a single entity
`may be associated with multiple identifiers through an account,” but
`contends “neither changes the meaning or scope of the claimed ‘stored
`state,’ and neither changes whether Eagle would anticipate or render obvious
`the challenged claims.” PO Sur-reply 4.
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`10
`Although Patent Owner argues, we should insert the word
`“specifically” into this limitation (PO Resp. 22), that does not change the
`meaning of the claim. An element of Patent Owner’s claim construction
`argument is its assertion “the way that Petitioner mapped Eagle to the claims
`does not satisfy this [claim] language under its plain meaning.” PO Sur-
`reply 2–4. We address that contention separate and apart from the issue of
`claim construction.
`The language of claim limitation 1.d is not limited to the devices
`interacting with each other, but to previous interactions between the entities
`associated with the devices. To the extent Patent Owner’s claim
`construction arguments address the meaning of the claim language, Patent
`Owner’s arguments appear aimed at limiting the claim to a “stored state”
`derived from previous interactions between the entities where those
`interactions occurred using only those devices having the first unique ID and
`the second unique ID. PO Resp. 19–20. That is not the language of the
`claims—the claims recite only “a stored state resulting from previous
`interactions utilizing said server between the entities associated with the first
`and second unique identifiers” (emphasis added).
`In construing claim limitations 1.d and 16.c, we focus on the language
`in the claim and apply the plain and ordinary meaning. Patent Owner asserts
`that during prosecution of the ’129 patent, the applicant asserted that “the
`claimed ‘stored state’ must result from ‘previous interactions specifically
`between the two entities (or devices) associated with the first and second
`unique identifiers.’” PO Resp. 22 (citing Ex. 1002, 209). In this context,
`applicant sought to distinguish a reference by arguing that, for example,
`declining a credit card for overdrawing its limit was not a previous action
`between the entities associated with the first and second unique IDs. Ex.
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`11
`1002, 209–210. As the applicant did not incorporate the terms “specifically”
`and “or devices” into the claim, we understand Applicant’s argument to
`indicate devices are an alternative to entities and not a further limitation on
`the term “entities.”
`In sum, applying the plain and ordinary meaning, the “stored state”
`language of claim limitation 1.d recites that the interactions (i) must have
`occurred previously, (ii) must have used the server and (iii) must have been
`between entities associated with the unique IDs of the first and second
`devices. The language of limitation 1.d does not recite (i) that there is any
`specific relationship between the entities associated with the first and second
`unique IDs, (ii) that the entities associated with the first and second unique
`IDs must be different, (iii) that the previous interactions between the entities
`associated with the first and second devices must have occurred using the
`first and second devices themselves (i.e., an entity can be associated with
`multiple devices), and (iv) that the interactions utilizing the server occurred
`at any particular time, except to the extent that the interactions occurred
`“previously.”
`VI. ANALYSIS OF PRIOR ART CHALLENGES
`A. Introduction
`“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
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`12
`inter partes review). 35 U.S.C. §316(e) provides that Petitioner has the
`burden to demonstrate unpatentability by a preponderance of the evidence.
`1. Anticipation
`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,
`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).
`Additionally, “[u]nder the principles of inherency, if the prior art
`necessarily functions in accordance with, or includes, the claimed
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`13
`limitations, it anticipates.” MEHL/Biophile Int’l Corp. v. Milgraum, 192
`F.3d 1362, 1365 (Fed. Cir. 1999) (citation omitted); In re Cruciferous
`Sprout Litig., 301 F.3d 1343, 1349–50 (Fed. Cir. 2002).
`2. Obviousness
`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.
`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) when in evidence, 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
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`14
`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 “include 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 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, 550 U.S. at 418–21).
`Before determining whether a claim would have been 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 considerations of non-obviousness ha
`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 by a preponderance of the evidence.
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`15
`B. Claims 1–5, 7, 10, 11, 16–20, 25, and 26 as Anticipated By or
`Obvious Over Eagle
`As Petitioner challenges claims 1–5, 7, 10, 11, 16–20, 25, and 26 as
`anticipated by or obvious over the same reference (Eagle), we address these
`grounds together.
`1. Eagle
`Eagle discloses communication devices that identify nearby like
`devices and send a notification to a remote server. Ex. 1004, code (57).
`“When a notification message is received at the server identifying two
`devices that have come within range of one another, the server compares the
`profile data associated with each of the two identified devices and facilitates
`communications between the devices when appropriate.” Id. Eagle “uses
`personal area wireless network devices[,] such as Bluetooth transceivers to
`identify social proximity and a large area wireless network[,] such as a
`cellular phone network [or] the Internet, to permit interest matching
`functions to be performed at a remote central server and to instigate person-
`to-person interactions between selected devices . . . near each other.” Id.
`¶ 10.
`“Each cellular phone keeps a log of other devices that have been
`previously detected and, whenever a new device comes within range, a
`notification message is transmitted to a remote server via the long-range
`cellular phone network.” Ex. 1004 ¶ 4. The notification message contains
`identification information for the requesting device and the nearby device
`whose presence has been detected and, preferably, a value indicating the
`user’s willingness to receive alert messages from the server when new
`devices come within range. Id. When a server receives a notification
`message identifying two devices in range of each other, the server fetches
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`16
`profile data associated with each of the identified devices and calculates a
`value indicating the extent to which the two profiles match. Id. ¶ 5. Users
`associate weighting values with information about themselves and use these
`weighting values to specify information’s importance to be assigned to
`different data when calculating a similarity metric or score by extracting
`commonalities between two user’s profiles and summing the user defined
`weighting values. Id. ¶ 12. If the calculated value exceeds a threshold
`associated with a device, the server sends to each device an alert message
`containing information that describes the nearby device to the extent the
`owner has consented to the information (e.g., name address, contact
`information, photograph, interests) being revealed. Id. ¶¶ 6–7. A device
`user can supply profile information indicating the extent to which the profile
`of the detected nearby devices must match the requestor’s interests before an
`alert message is sent. Id.
`Figure 2 of Eagle is reproduced below:
`
`
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`17
`Figure 2 is a block diagram illustrating the principal components of Eagle’s
`system. Ex. 1004 ¶ 16. Figure 2 of Eagle shows BlueAware application
`program 210 (“BlueAware”) installed to execute on each cellular phone,
`e.g., a device operated by first user 203, allowing user 203’s device to
`register itself and create a profile data template that can be populated by the
`device owner using the cellular phone or PC 290 connected to server via
`Internet 295. Id. ¶¶ 22, 29. The BlueAware application maintains on each
`device a Devices Log 214 and a Logtime Log 240. Id. ¶¶ 22, 23, Fig. 2.
`When a nearby second device, e.g., user 205’s device, is detected (step 211)
`by user 203’s device, the BlueAware application in user 203’s device
`compares the Bluetooth ID of the nearby user 205’s device with the content
`of Devices Log 214 in user 203’s device. Id. ¶ 22. If the Bluetooth ID of
`nearby user 205’s device has not been previously detected by user 203’s
`device, the Bluetooth ID of user 205’s device is posted in Devices Log 214
`and Logtime Log 240 of first user 203’s device, and user 203’s device sends
`a request message to remote server 220 via cellular network 222. Id. ¶ 23.
`If the detected second device of user 205 is already recorded in Devices Log
`214 of user 203’s device, an entry is made in Logtime Log 240. Id. The
`BlueAware application uses the timestamp data in Logtime Log 240 of each
`device to determine whether to transmit a notification message to the server.
`Id. ¶ 24. For example, in order to conserve memory, “the BlueAware
`application may periodically remove the identification and time stamp data
`for devices [that] have been out of range for an extended time” period,
`requiring transmission of a new notification upon detection of a device that
`has been removed from the log. Id.
`A notification message from a Bluetooth device, e.g., from user 203’s
`device, to server 220 may consist of the Bluetooth ID (BTID) of the
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`18
`requesting device (user 203’s device), the BTID of another device whose
`current proximity was detected (user 205’s device), and a current threshold
`value indicating the willingness of the current requester (user 203) to receive
`alert messages from the server when new devices (e.g., user 205’s device)
`come within range. Id. ¶¶ 4, 51. The two BTIDs are used by the server to
`retrieve profile data from database 260 and compare the profiles as indicated
`at step 280 to calculate a similarity score value indicating the degree to
`which the profiles match; if the similarity score exceeds the thresholds for
`one or both devices (step 290) the servers sends an alert message to the
`corresponding device (step 295). Id. The server calculates the similarity
`score by comparing the sum of weighted values the requestor has assigned to
`“interest” categories in the two profiles. Id. ¶¶ 52–53. Each user’s profile
`data may include data specifying a set of device IDs of friends, friends of
`friends, or friends of friends of friends, allowing the user to request alert
`messages be sent from the server only when a new device corresponding to a
`“trusted” person having common interests at a specified level is nearby. Id.
`¶¶ 4, 56, 66. Eagle also discloses that interaction behavior and proximity
`can be used to learn patterns, so that a user’s profile also may be populated
`with inferred data, e.g., automatically created lists of friends and likely
`friends that can be used to create a trust network. Id. ¶ 67.
`2. Claim 1
`Petitioner contends that claim 1 is anticipated by Eagle under 35
`U.S.C. § 102 or obvious over Eagle under 35 U.S.C. § 103.
`a) Claim 1 – Preamble
`Petitioner identifies the preamble of claim 1 as reciting: “A method
`for facilitating an exchange of information between first and second wireless
`devices or entities, the method utilizing a server performing the steps.” Pet.
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`19
`25. Petitioner cites Eagle’s requester device as the claimed first wireless
`device, Eagle’s identified device as the claimed second wireless device, and
`notes that these devices identify themselves by exchanging unique
`identification codes that are transmitted to a remote server. Id. at 25–26
`(citing Ex. 1004, code (57), ¶¶ 3, 9–10, 48; Ex. 1003, Williams Decl.
`¶¶ 105–107). Patent Owner does not respond explicitly to Petitioner’s
`contentions concerning the preamble of claim 1. Based on the evidence of
`record, we find that Petitioner has demonstrated Eagle discloses the
`recitations in the preamble of claim 1.
`3
`b) Claim Limitation 1.a
`Petitioner identifies as claim limitation 1.a the recitation “receiving a
`first unique identifier communicated over a wide area link from the first
`wireless device,” Pet. 26–27. Petitioner notes Eagle discloses that each time
`a requester device using, e.g., Bluetooth communication techniques, detects
`another device in its proximity, the requester compares the ID of the
`proximate device to a log of previously detected device IDs. Id. at 27 (citing
`Ex. 1004 ¶¶ 4, 10). If the requester device determines the proximate device
`is “new,” i.e., its device ID is not in the previously detected log, the
`requester transmits a notification message including the requester’s identifier
`and the identified device’s identifier to the server, e.g., over a long range
`cellular network. Id. at 27–28 (citing Ex. 1004 ¶¶ 3–4, 10, 20, 31, 48, Fig. 2;
`Ex. 1003, Williams Decl. ¶¶ 108–109). Patent Owner does not respond
`explicitly to Petitioner’s contentions concerning the claim limitation 1.a.
`
`3 We need not decide whether the preamble is limiting because Petitioner
`has shown that Eagle discloses the recitation in the preamble. See Allen
`Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002)
`(“Generally, the preamble does not limit the claims.”)
`
`
`
`
`
`
`
`IPR2020-00903
`Patent 9,038,129 B2
`20
`Based on the evidence of record, we find that Petitioner has demonstrated
`Eagle discloses the recitations in claim limitation 1.a.
`c) Claim Limitation 1.b
`Petitioner identifies as claim limitation 1.b the recitation “receiving a
`second unique identifier associated with the second wireless device, the
`second unique identifier associated with the second wireless device being
`communicated to the first wireless device over a local wireless link, and then
`from the first wireless device to the server over the wide area link.” Pet. 28.
`Petitioner cites Eagle as disclosing that when a device is within range of
`another such device it identifies itself with a unique identification value,
`such as a Bluetooth address value, and the devices exchange such
`identification information over a short range wireless link (Bluetooth), so
`that each device recei