Trials@uspto.gov Paper 30
`571-272-7822 Date: November 8, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION,
`Petitioner,
`v.
`PROXICOM WIRELESS, INC.,
`Patent Owner.
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`IPR2020-00904
`Patent 7,936,736 B2
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`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)
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`Google Exhibit 1017
`Google v. SecCommTech
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`I. BACKGROUND
`On November 10, 2020, we instituted an inter partes review of claims
`1, 5–8, 10, 12, 14, 15, 18, and 20–22 (the “challenged claims”) of U.S.
`Patent No. 7,936,736 B2 (“the ’736 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”), Patent Owner
`filed a Sur-reply (Paper 22, PO Sur-reply), and a transcript of an oral hearing
`held on August 18, 2021 (Paper 28) 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 ’736 PATENT
`The ’736 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, 2:56–60. According to the ’736 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
`exposure of locally stored sensitive information or fraud by unauthorized
`spoofing devices. See id. at 2:22–47. The ’736 patent addresses these and
`other issues with a system “utilizing both a short range and a long range
`wireless capability.” Id. at 2:54–55.
`Figure 1 of the ’736 patent is reproduced below.
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`Figure 1 of the ’736 patent
`Figure 1 of the ’736 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, e.g., 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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`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 ’736 patent is shown below.
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`Figure 2 of the ’736 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 ’736 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.
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`Ex. 1001, 8:32–41. “[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 8:51–59.
`Figure 9 of the ’736 patent is shown below.
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`Figure 9 of the ’736 patent
`Figure 9 illustrates a grocery store example 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. At step 905, customer device
`902 (Device 1) sends a message to server 901 inquiring if device identifier
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`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 14:43–47. At step 906, server 901 retrieves the
`accounts associated with identifier DI2 and customer device 902 (Device 1).
`Id. at Fig. 9. 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 and sends a response
`message (step 907) indicating the presence of the detected device and the
`content available. Id. at 14:56–58. At step 908, permission is requested
`from the entity associated with customer device 1 (the customer) to play
`content from the entity associated with Device 2, e.g., to download a coupon
`and other available content. 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 Device 1. Id. at 14:58–65.
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`III. ILLUSTRATIVE CLAIM
`Claim 1, reproduced below with the paragraph designations used in
`the Petition, is illustrative of the subject matter of the ’736 patent.
`1[pre]. A method for a central server utilizing one or more
`wireless Wide Area Networ k connections to exchange
`information between one or more applications executing on first
`and second wireless devices, th e central server performing the
`steps of:
`[1.a] receiving first identification information from the first
`wireless device, the first identification information
`communicated from the first wireless device to the server
`via the wireless Wide Area Network,
`[1.b] wherein the first identification information is associated
`with one or more of an identifier of the first wireless
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`device or an entity associated with the first wireless
`device,
`[1.c] receiving second identification information, as collected
`by the first wireless device from the second wireless
`device via a separate local wireless link between the first
`and second wireless devices, and wherein the second
`identification information is communicated from the first
`wireless device to the server via the wireless Wide Area
`Network connection,
`[1.d] wherein the second identification information is
`associated with one or more of an identifier of the second
`wireless device or an identifier of an entity associated with
`the second wireless device;
`[1.e] retrieving disclosure policy data associated with the
`second identification information, the disclosure policy
`data representing rules for privacy of information
`concerning the second wireless device or privacy of
`information concerning an entity associated with the
`second wireless device;
`[1.f] comparing the information disclosure policy data and the
`first identification information; and
`[1.g] providing further information to the first wireless device
`concerning the entity associated with second wireless
`device, but only to the extent that it is consistent with the
`step of comparing the information disclosure policy data.
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`IV. GROUNDS OF INSTITUTION
`We instituted inter partes review of the ’736 patent on all grounds
`asserted in the Petition. Petitioner asserts that the challenged claims would
`have been unpatentable on the following grounds:
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`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1, 5–7, 10, 12, 15, 18,
`20, 21 1021 Eagle 2
`1, 5–8, 10, 12, 14, 15,
`18, 20–22 103 Eagle
`8, 14, 22 103 Eagle, Mgrdechian 3
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`V. CLAIM CONSTRUCTION
`Throughout the proceedings, neither party proposed a special
`definition or explicit construction of any claim term. See Dec. to Inst. 11;
`PO Resp. 9–10. For purposes of this Decision, we apply the plain and
`ordinary meaning to the claim language.
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`VI. ANALYSIS OF PRIOR ART CHALLENGES
`A. Introduction
`Petitioner challenges claims as anticipated under 35 U.S.C. § 102 and
`obvious under 35 U.S.C. § 103. Pet. 9. “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
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`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 Appl. Publ. No. US2005/0250552 A1, published Nov. 10, 2005
`(Ex. 1004)
`3 U.S. Patent No. 7,545,784 B2, issued June 9, 2009 (Ex. 1005)
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`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
`burdens of proof in 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
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`was disclosed in that single reference.” (emphasis omitted) (quoting In re
`Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))).
`Additionally, “[u]nder 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) (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
`non-obviousness. 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)).
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`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
`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 has
`been made of record in this proceeding.
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`We analyze the asserted grounds of unpatentability in accordance with
`these principles to determine whether Petitioner has met its burden to
`establish the unpatentability of the challenged claims by a preponderance of
`the evidence.
`B. Claims 1, 5–7, 10, 12, 15, 18, 20, and 21 As Anticipated By or
`Obvious Over Eagle
`1. Eagle (Ex. 1004)
`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.
`In Eagle, “[e]ach 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 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 profile data
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`associated with each of the identified devices and calculates a value
`indicating the extent to which the two profiles match. Id. ¶ 5. Users can
`“associate weighting values with information about themselves and others,
`and use these weighting values to specify the 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. at ¶ 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 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:
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`Figure 2 of Eagle
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`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 with remote server 220 and create a profile data template that
`can be populated by the device owner using the cellular phone or using PC
`290 connected to server 220 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
`detected previously 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; this requires that a device transmit
`a new notification when it detects a device that has been removed from its
`log. Id.
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`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
`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), an alert message is sent 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 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
`a) Preamble
`Petitioner identifies the following as the preamble of claim 1: “[a]
`method for a central server utilizing one or more wireless Wide Area
`Network connections to exchange information between one or more
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`applications executing on first and second wireless devices, the central
`server performing the steps of.” Pet. 24–25. Petitioner cites Eagle as
`disclosing a server utilizing a large area wireless network, such as a cellular
`phone network or the Internet, to exchange information between the server
`and the BlueAware application running on the Bluetooth enabled phones,
`e.g., a Requester device (a first wireless device) and an identified device (a
`second wireless device) that identify themselves with unique identification
`codes. Id. (citing Ex. 1004, code (57), ¶¶ 4, 9–10, 19–20, 22, 48–49, 51; Ex.
`1003, Williams Decl. ¶¶ 104–106). Patent Owner does not respond
`explicitly to Petitioner’s contentions concerning the preamble of claim 1.
`Based on the evidence of record, we are persuaded that Petitioner has
`demonstrated Eagle discloses the preamble of claim 1.
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`b) Claim Limitation 1.a
`Petitioner identifies claim limitation 1.a as reciting “receiving first
`identification information from the first wireless device, the first
`identification information communicated from the first wireless device to the
`server via the wireless Wide Area Network.” See Pet. 26–27. Petitioner
`cites Eagle as disclosing that each time a Requester device (the claimed first
`device) detects a new device, it communicates to a central server (the
`claimed server), using a long-range cellular network (the claimed wireless
`Wide Area Network), a notification message (notification message sent from
`the device to be received by the server), containing its own identifier, such
`that the server receives the Requester ID (the claimed first identification
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`4 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.”).
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`information). Id. (citing Ex. 1004 ¶¶ 3, 4, 20, 31, 48, claim 2, Fig. 2; Ex.
`1003, Williams Decl. ¶¶ 107–108). Patent Owner does not respond
`explicitly to Petitioner’s contentions concerning claim limitation 1.a. Based
`on the evidence of record, we are persuaded that Petitioner has demonstrated
`Eagle discloses claim limitation 1.a.
`c) Claim Limitation 1.b
`Petitioner identifies claim limitation 1.b as reciting “wherein the first
`identification information is associated with one or more of an identifier of
`the first wireless device or an entity associated with the first wireless
`device.” See Pet. 27–28. Petitioner contends that Eagle discloses each
`device’s identification information, e.g., Requester ID, which may be in the
`form of a BTID value, is part of the device’s “profile data” that includes a
`“name” for the device or its user, thereby associating the Requester ID with
`the name of the Requester device or its user. Id. (citing Ex. 1004 ¶¶ 5, 20,
`29, 31, 45, 50; Ex. 1003, Williams Decl. ¶¶ 109–110). Patent Owner does
`not respond explicitly to Petitioner’s contentions concerning claim limitation
`1.b. Based on the evidence of record, we are persuaded that Petitioner has
`demonstrated Eagle discloses claim limitation 1.b.
`d) Claim Limitation 1.c
`Petitioner identifies claim limitation 1.c as reciting “receiving second
`identification information, as collected by the first wireless device from the
`second wireless device via a separate local wireless link between the first
`and second wireless devices, and wherein the second identification
`information is communicated from the first wireless device to the server via
`the wireless Wide Area Network connection.” Pet. 28–29. Petitioner cites
`Eagle as disclosing that when devices in close proximity identify
`themselves, e.g., using a BTID , they exchange ID codes using a short-range
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`wireless link, so that each device receives the ID code (Identified ID) and
`includes the ID code in the notification the device sends to a server using a
`long-range cellular network. Id. at 28–30 (citing Ex. 1004 ¶¶ 3–4, 18, 20,
`31, 48, claims 2–3, Fig. 2; Ex. 1003, Williams Decl. ¶¶ 111–113). Patent
`Owner does not respond explicitly to Petitioner’s contentions concerning
`claim limitation 1.c. Based on the evidence of record, we are persuaded that
`Petitioner has demonstrated Eagle discloses claim limitation 1.c.
`e) Claim Limitation 1.d
`Petitioner identifies claim limitation 1.d as reciting “wherein the
`second identification information is associated with one or more of an
`identifier of the second wireless device or an identifier of an entity
`associated with the second wireless device.” Pet. 30. Petitioner cites Eagle
`as disclosing a profile database that includes a Bluetooth identification value
`BTID for that device and a short name for the device or its user. Id. at 30
`(citing Ex. 1004 ¶¶ 48, 50; Ex. 1003, Williams Decl. ¶¶ 114–115). Patent
`Owner does not respond explicitly to Petitioner’s contentions concerning
`claim limitation 1.d. Based on the evidence of record, we are persuaded that
`Petitioner has demonstrated Eagle discloses claim limitation 1.d.
`f) Claim Limitation 1.e
`Petitioner identifies claim limitation 1.e as reciting “retrieving
`disclosure policy data associated with the second identification information,
`the disclosure policy data representing rules for privacy of information
`concerning the second wireless device or privacy of information concerning
`an entity associated with the second wireless device.” Pet. 30–31. Petitioner
`cites Eagle as disclosing “profile data” associated with each device includes
`the Bluetooth identification value BTID for that device, demographic
`information, a friends list, and user preferences dictating what information
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`may be shared with other devices and when it may be shared. Id. at 31
`(citing Ex. 1004 ¶¶ 5, 50, 56, 57). Petitioner also notes that Eagle discloses
`each device can be set to establish potential links only to others within a
`“trust network.” Id. (citing Ex. 1004 ¶ 66). Patent Owner does not respond
`explicitly to Petitioner’s contentions concerning claim limitation 1.e. Based
`on the evidence of record, we are persuaded that Petitioner has demonstrated
`Eagle discloses claim limitation 1e.
`g) Claim Limitation 1.f
`Petitioner identifies claim limitation 1.f as reciting “comparing the
`information disclosure policy data and the first identification information.”
`Pet. 32–33. Petitioner cites Eagle as disclosing that when determining what
`information in the identified device’s profile can be shared and under what
`circumstances, the server compares the Requester device’s ID (the Requester
`ID) to the “trust network” (a set of device IDs) of the identified device to
`determine whether the Requester device’s ID is within the identified
`device’s “trust network.” Id. at 33 (citing Ex. 1004 ¶¶ 51, 56, 66). Eagle
`discloses “one or more automatically created lists of likely friends and
`acquaintances that can be used to create a trust network” (Ex. 1004 ¶ 67) and
`that a device can be “set to only establish potential links to others within a
`‘trust network’” (id. ¶ 66). Eagle does not explicitly state the lists of friends
`and acquaintances are lists of device IDs. However, Eagle does state that
`“profile data for each user may advantageously include data specifying a set
`of device IDs for devices owned by ‘friends.’” Id. ¶ 56. According to
`Petitioner, a person of ordinary skill would have understood that for the
`server to determine whether the Requester ID is within the identified
`device’s “trust network,” the server would compare the Requestor ID to the
`set of IDs of the friends in the trust network listed in the profile of the
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`identified device. Pet. 33–34 (citing Ex. 1004 ¶¶ 5, 50, 56, 66, 67; Ex. 1003,
`Williams Decl. ¶¶ 119–123). Thus, according to Petitioner, claim limitation
`1.f is anticipated by, or at least obvious over, Eagle. Id.
`Patent Owner contends that Eagle does not teach or suggest
`“comparing the information disclosure policy data and the first identification
`information” (the comparing step), as recited in claim limitation 1.f. See PO
`Resp. 15–32. As a threshold matter, Patent Owner contends that by
`recognizing Eagle does not explicitly disclose the claimed comparison and
`by relying on what a person of ordinary skill would have understood, the
`Petition effectively acknowledges that Eagle does not support Petitioner’s
`anticipation claim 1. Id. at 16–17. To the extent Patent Owner argues that
`Petitioner’s reliance on a person of ordinary skill’s understanding of the
`reference precludes anticipation, Patent Owner’s argument is unavailing. As
`discussed above, whether a reference anticipates is assessed from the
`perspective of an ordinarily skilled artisan, Dayco Prods., 329 F.3d at 1368,
`and “the 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
`referenc