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
`____________
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`TARGET CORPORATION,
`Petitioner,
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`v.
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`PROXICOM WIRELESS, LLC,
`Patent Owner.
`____________
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`IPR2020-00933
`Patent 8,374,592 B2
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`Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
`SEAN P. O’HANLON, Administrative Patent Judges.
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`O’HANLON, Administrative Patent Judge.
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`
`
`JUDGMENT
`Final Written Decision
`Determining Some Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Google Exhibit 1023
`Google v. SecCommTech
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`I. INTRODUCTION
`A. Background
` Target Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 19–23, 25, 26, 28, and 29 (“the challenged claims”) of U.S.
`Patent No. 8,374,592 B2 (Ex. 1001, “the ’592 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.”), 32.
` 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 19–23 of the ’592 patent are
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`1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`unpatentable. Petitioner, however, has failed to meet its burden of proof
`regarding the unpatentability of claims 25, 26, 28, and 29.
`B. Real Parties in Interest
` Petitioner identifies itself as the sole real party in interest. Pet. 6.
` Patent Owner identifies itself as the sole real party in interest.
`Paper 4, 2.
`C. Related Matters
` The parties indicate that the ’592 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 (“the District Court
`litigation”) 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.
`D. The Challenged Patent
` The ’592 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, 2:55–59. The devices use a short range communication protocol,
`such as Bluetooth, only to detect the presence of other devices and use a
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`2 Stayed on June 17, 2020 pending resolution of ten petitions for inter partes
`review filed by Petitioner. See Paper 6.
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`long range communication protocol, such as Wi-Max, to communicate with
`a central server and to perform the actual substantive communications with
`other devices. Id. at 6:35–48. Each device transmits identifier information
`via short range communication as a proximity detection process. Id.
`at 6:51–55. 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 3:57–64. 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 4:14–62.
` 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, 7:22–31. This application is illustrated in
`Figure 2, which is reproduced below:
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`Figure 2 shows a block diagram of fixed broadcast device 204 and mobile
`device 202. Id. at 5:9–10. 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.
`E. The Challenged Claims
` Petitioner challenges claims 19–23, 25, 26, 28, and 29 of the
`’592 patent. Pet. 1, 10. Claims 19 and 25 are independent. Claim 19 is
`illustrative of the challenged claims and is reproduced below:
`19. A method for a server to exchange information with one
`or more wireless devices comprising the steps of:
` the server receiving identifier information from a first
`wireless device using a wide area wireless network, the
`identifier information provided to the first wireless device from
`a second wireless device using short range wireless
`communication;
` said server using identifier information to determine
`information concerning an entity or object located in proximity
`to the second wireless device; and
` the server delivering information to the first wireless
`device based at least in part upon the identifier information and
`information representing a reward for an entity associated with
`the first wireless device’s participation in a loyalty program,
`wherein said information includes a name associated with said
`entity or object located in proximity to the second wireless
`device or a name associated with said loyalty program as
`determined by the server utilizing said identifier information.
`Ex. 1001, 24:56–25:7.
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`F. Instituted Grounds of Unpatentability
` The Petition relies on the following prior art references:
`Name Reference Exhibit
`Perttila US 2004/0243519 A1, published Dec. 2, 2004 1006
`Insolia US 8,121,917 B2, issued Feb. 21, 2012 1008
`Davis US 2010/0030638 A1, published Feb. 4, 2010 1009
` We instituted trial based on all asserted claims and grounds of
`unpatentability as follows:
`Claims Challenged 35 U.S.C. § References
`19–23 103(a) 3 Perttila, Insolia
`25, 26, 28, 29 103(a) Perttila, Davis
`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.
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`3 The application resulting in the ’592 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
`section 103.
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`§ 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).
` A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
`between the claimed subject matter and the prior art are such that the subject
`matter, as a whole, would have been obvious at the time of the invention to a
`person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
`U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
`of underlying factual determinations including (1) the scope and content of
`the prior art, (2) any differences between the claimed subject matter and the
`prior art, (3) the level of skill in the art, and (4) when in evidence, any
`objective evidence of nonobviousness.4 Graham v. John Deere Co., 383
`U.S. 1, 17–18 (1966).
`B. Level of Ordinary Skill in the Art
` Petitioner contends that a person having ordinary skill in the art at the
`time of the invention (“POSITA”) would have had “a Bachelor’s degree in
`Electrical Engineering, or a related field, and approximately 3-5 years of
`professional experience in the field of wireless communications.” Pet. 14.
`Petitioner acknowledges that “graduate education could substitute for
`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 sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9.
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`4 The parties have not directed us to any such objective evidence.
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` 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.
`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
`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.
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` 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),” but does
`not explain how this assertion affects claim construction. Id. 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 prior art . . . meets the limitations under these
`constructions.” Id. (citing Ex. 1003 ¶ 71; Ex. 1021).
` Patent Owner argues that we should interpret two claim terms: “an
`entity or object located in proximity to the second device” and “wireless
`device.” PO Resp. 12–19. We address each of these terms below.
`1. “an entity or object located in proximity to the second device”
` Patent Owner argues that “an entity or object located in proximity to
`the second wireless device,” as used in independent claims 19 and 25,
`should be construed “to require that the claimed ‘entity or object’ must have
`a physical presence.” PO Resp. 11. 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 12. Patent Owner argues similarly that “located in proximity
`to the second device” also applies to the recited “entity,” thus requiring “that
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`the ‘entity’ referred to in this claim element must be physically present.” Id.
`at 13. Patent Owner argues that “proximity” is used in accordance with its
`ordinary and customary meaning and refers to physical placement. Id.
`at 14–17.
` Petitioner argues that we need not construe “entity or object” to
`require a physical presence as proposed by Patent Owner because a device
`can be in proximity to intangible objects. Pet. Reply 2–3. Petitioner argues
`that Patent Owner’s citations to the ’592 patent’s use of “proximity” are not
`relevant to how the term is used in the claims. Id. at 3–4 (citing PO
`Resp. 15–17). Petitioner argues that Patent Owner’s declarant did not base
`his interpretation of “proximity” on how the term is used in the specification
`of the ’592 patent. Id. at 4–5.
` 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, “the issue here [is] whether the claimed ‘entity or object’ can be
`‘located in proximity to the second wireless 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
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`entity or object located in proximity to the second device” requires the entity
`or object to have a physical presence. Moreover, as explained below our
`decision does not depend on an express construction of this term. We
`conclude, therefore, that there is no need for us to construe this term.
`2. “wireless device”
` Patent Owner argues that, as recited in the challenged claims,
`“wireless device” “refer[s] to wireless communication capabilities, not that a
`wireless device would be precluded from having any external wires
`whatsoever.” PO Resp. 19. However, Patent Owner concedes that
`construction of “wireless device” is “not necessary to resolve the dispute
`here.” Id.
` Petitioner argues that “‘wireless device’ should be construed as a
`device without external wires,” noting that the claims of the ’592 patent
`recite a “wireless device” rather than a “wireless communication device.”
`Pet. Reply 5. However, Petitioner also concedes that construction of this
`term is unnecessary. Id.
` 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:
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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.
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`2. Insolia
` Insolia discloses “systems and methods for implementing a loyalty
`program.” Ex. 1008, 1:7–8. Insolia recognizes that, regarding the
`immediate consumption channel, which provides food and beverages that
`are immediately available and ready to consume from vending machines and
`the like, the diverse nature of the equipment used and of the consumer’s
`interaction with the equipment can complicate the implementation of broad
`marketing opportunities. Id. at 1:12–55. Insolia purports to provide a
`system that overcomes these drawbacks. Id. at 2:7–11. Figure 1 illustrates
`Insolia’s system and is reproduced below:
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`Figure 1 shows a block diagram illustrating a system for implementing a
`loyalty network. Id. at 3:49–50. Loyalty program management system 10
`includes personal terminal 12, interaction terminal 14, and loyalty server 24.
`Id. at 5:47–64. The personal terminal is transported by user 16. Id.
`at 5:65–66. The interaction terminal can be associated with product 18, such
`as a beverage, equipment 20, such as a vending machine, or promotional
`object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal
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`and the interaction terminal communicate when the personal terminal is
`brought within proximity of the interaction terminal. Id. at 9:12–18. A
`benefit, such as a loyalty point, can be awarded to the user for interacting
`with the interaction terminal. Id. at 9:58–64. The benefit can be stored on
`one or both of the personal terminal and the loyalty server. Id. at 13:35–38.
`When used, the benefit is communicated to the equipment to provide the
`user with a product for free or at a reduced price. Id. at 14:31–35. In some
`embodiments, the rate at which the loyalty points are awarded can be filtered
`to limit the accrual of rewards to a predefined rate. Id. at 36:19–20.
`3. Davis
` Davis discloses an advertising system that uses an online trust
`network to target advertisements based upon the ratings of the
`advertisements’ content or source. Ex. 1009 ¶ 4. A first user assigns trust
`levels for ratings provided by other specific users of the system. Id. ¶ 35.
`Ratings provided by other users are traced to the first user along trust paths.
`Id. ¶ 37. An effective trust level is calculated along each trust path and an
`effective rating of an entity, such as a restaurant, is calculated based on the
`ratings along the trust paths. Id. Figure 4 illustrates the calculation of an
`effective trust level and is reproduced below:
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`Figure 4 is a diagram of a mechanism for calculating an effective trust level
`for various users U2–U7 within first user’s U1 trust network. Id. ¶ 38. By
`way of example, there are two trust paths from first user U1 to user U6: a
`first path from U1 to U2 to U6 and a second path from U1 to U3 to U6. Id.
`The first path has an effective trust level of 30%, the product of the trust
`level for U1 to U2 (100%) and the trust level for U2 to U6 (30%). Id. The
`second path has a trust level of 49%, the product of the trust level for U1 to
`U3 (70%) and the trust level for U3 to U6 (70%). Id. Averaging these
`values, first user U1 has a 39.5% effective trust level for with user U6. Id.
`In a similar manner, first user U1 has a 100% effective trust level with
`user U5 and a 21% effective trust level with user U7. Id. at Fig. 4. An
`effective rating for seller S1 of 5.03 is calculated by summing the products
`of the effective trust level and rating for each user U5, U6, and U7, and
`dividing by the sum of the effective trust levels. Id. ¶ 37 (Formula 1), Fig. 4.
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`The advertising system will only send advertisements to a user if the
`effective rating for the seller is above a threshold level. Id. ¶¶ 39–40, 44.
`E. Asserted Obviousness in View of Perttila and Insolia
` Petitioner argues that claims 19–23 would have been obvious over the
`combination of Perttila and Insolia. Pet. 17–45. 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 19–23
`would have been obvious in view of Perttila and Insolia and that Petitioner
`has set forth reasoning with rational underpinnings why it would have been
`obvious to combine the teachings of Perttila and Insolia.
`1. Independent Claim 19
` Petitioner relies on Perttila to disclose a method substantially as
`recited in claim 19 and relies on Insolia to teach use of a loyalty program.
`Pet. 26–39.
`a. Preamble
` Claim 19 recites “[a] method for a server to exchange information
`with one or more wireless devices.” Ex. 1001, 24:56–57. Petitioner maps
`Perttila’s source server 24 to the recited server, and user-communication
`device 28 and merchant-media arrangement 36 to the recited wireless
`devices. Pet. 26 (citing Ex. 1006 ¶¶ 8–9); see also id. at 26–28 (citing
`Ex. 1003 ¶ 109; Ex. 1006 ¶¶ 8–9, 12, 19, 25, 60, Fig. 1a). Petitioner argues
`that “a POSITA would have understood that Perttila discloses a wireless
`merchant-media arrangement and at minimum it would have been obvious to
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`use a wireless merchant-media arrangement . . . to advantageously enable
`easy location in a store.” Id. at 26–27 (emphasis omitted) (citing Ex. 1006
`¶ 60).
` Patent Owner does not contest this aspect of the Petition. See
`generally PO Resp.
` Perttila discloses that, when a user’s mobile communications
`device 28 is within proximity of merchant-media arrangement 36, the
`arrangement transmits a merchant ID code to the mobile device. Ex. 1006
`¶ 37. The mobile device then establishes a communication link with source
`server 24 and transmits a request containing the ID code to the server, and
`the server generates an electronic coupon based on the merchant ID code
`and provides the user with an option to download the coupon. Id. ¶¶ 36–39.
`Perttila at least suggests that the user’s mobile communications device and
`the merchant-media arrangement communicate wirelessly. See id. ¶ 37
`(disclosing that the merchant-media arrangement can transmit the merchant
`ID code to the mobile device via radio frequency identification (RFID) or
`Bluetooth).
` Accordingly, for the foregoing reasons, to the extent the preamble is
`limiting, Perttila supports Petitioner’s contentions.
`b. The Receiving Recitation
` Claim 19 recites “the server receiving identifier information from a
`first wireless device using a wide area wireless network, the identifier
`information provided to the first wireless device from a second wireless
`device using short range wireless communication.” Ex. 1001, 24:58–62.
`Petitioner maps Perttila’s user-communication device 28 to the recited first
`wireless device, merchant-media arrangement 36 to the recited second
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`wireless device, and the “merchant ID code” to the recited identifier
`information. Pet. 28–29; see also id. at 29–30 (citing Ex. 1006 ¶¶ 9, 12–15,
`37–38). Petitioner notes that the merchant-media device includes RFID
`tag 38 or, alternatively, a local short-range wireless access point or beacon
`device. Id. at 29–30 (quoting Ex. 1006 ¶¶ 37–38).
` Patent Owner does not contest this aspect of the Petition. See
`generally PO Resp.
` As noted above, Perttila discloses that merchant-media
`arrangement 36 transmits the merchant ID code to mobile communications
`device 28 over a short-range wireless communication link, and the mobile
`device sends the ID code to source server 24. Ex. 1006 ¶¶ 36–39.
` Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
`contentions.
`c. The Determining Recitation
` Claim 19 recites “said server using identifier information to determine
`information concerning an entity or object located in proximity to the second
`wireless device.” Ex. 1001, 24:63–65. Petitioner maps Perttila’s electronic
`coupon to the recited 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
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`merchant-media arrangement’s ID code “to determine information about ‘an
`entity or object located in proximity to’ [the] billboard.” PO Resp. 30–31;
`see also id. at 35 (“Petitioner has identified the merchant media
`arrangement/billboard itself as the ‘second device’ of the challenged
`claims.”). Rather, Patent Owner argues, Perttila’s electronic coupon is
`associated with the billboard itself. Id. at 36 (“The Perttila server merely
`uses the merchant media ID to determine the billboard to which the ID
`relates . . . . [T]he Perttila server simply provides the coupon that it has been
`told to provide based on the merchant media ID.”). “Perttila does not teach
`that the entity or object being promoted by the billboard of the ‘merchant-
`media arrangement’ is located in proximity to the disclosed ‘merchant-media
`arrangement’ . . . .” Id. at 34.
` Petitioner replies that Perttila’s electronic coupon is 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 11 (“Because the billboard (and thus the promotional content) is
`in proximity to 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 ¶¶ 82, 113–114)).
` 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 wireless device] in proximity to the second wireless device.’” PO
`Sur-reply 18–22 (alteration in original).
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` 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, 20–21. Petitioner maps the short-range transmitter to the
`recited second device (see Pet. 28–30; Inst. Dec. 19, 20–21) and maps the
`electronic coupon to the recited 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;
`Pet. Reply 7; Inst. Dec. 20–21.
` 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. 18–21. 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 wireless 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. 34–35. 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.
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` 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 (citations omitted). We disagree with
`these mappings. As noted above, Perttila’s e-coupon corresponds to the
`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 information,
`concerns the store itself. Rather, Petitioner relies only on products offered
`for sale within the store. See Pet. Reply 11–12; 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 11 (“Perttila expressly discloses placing the merchant-media
`arrangement ‘at the store itself,’ such that the location where product
`offerings corresponding to the e-coupons are redeemed is the ‘same
`location’ as where the e-coupons are provided.” (citing Ex. 1006 ¶¶ 28, 39;
`Pet. 20–21, 30–32; Ex. 1003 ¶¶ 86, 113–114)). 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
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`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,
`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.” (cita