Trials@uspto.gov Paper 31
`571-272-7822 Entered: November 30, 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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`IPR2020-00934
`Patent 8,385,896 B2
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`Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
`SEAN P. O’HANLON, Administrative Patent Judges.
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`BOUDREAU, Administrative Patent Judge.
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`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`Google Exhibit 1025
`Google v. SecCommTech
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`I. INTRODUCTION
`A. Background
`Target Corporation (“Petitioner”) filed a Petition for inter partes
`review of claims 1–3, 5, 6, 8, 9, 17, 18, 40, 41, 44, 48–53, and 56 (“the
`challenged claims”) of U.S. Patent No. 8,385,896 B2 (Ex. 1001, “the
`’896 patent”). Paper 2 (“Pet.”). Proxicom Wireless, LLC (“Patent Owner”)
`filed a Preliminary Response. Paper 9. On December 4, 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.”).
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response (Paper 19, “PO Resp.”), Petitioner filed a Reply to the Patent
`Owner Response (Paper 22, “Pet. Reply”), and Patent Owner filed a
`Sur-reply (Paper 23, “PO Sur-reply”). An oral hearing was held on
`September 1, 2021. A transcript of the hearing has been entered into the
`record. Paper 29 (“Tr.”).
`For the reasons that follow, we conclude that Petitioner has proven by
`a preponderance of the evidence that all of the challenged claims are
`unpatentable.
`B. Real Parties in Interest
`Petitioner identifies itself as the sole real party in interest. Pet. 5–6.
`Patent Owner identifies itself as the sole real party in interest. Paper 4, 2
`(Patent Owner’s Mandatory Notice).
`C. Related Matter
`The parties indicate that the ’896 patent is involved in Proxicom
`Wireless, LLC v. Target Corporation, No. 6:19-cv-1886 (M.D. Fla. filed
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`Oct. 2, 2019). Pet. 6; Paper 4, 2. We understand that litigation to have been
`stayed on June 18, 2020, pending resolution of this proceeding and other
`inter partes review proceedings involving other patents asserted in the same
`litigation. Paper 6 (Notice of District Court Decision Granting Petitioner’s
`Motion to Stay the Related District Court Litigation.
`D. The Challenged Patent
`The ’896 patent is titled “Exchanged Identifiers Between Wireless
`Communication to Determine Further Information to be Exchanged or
`Further Services to be Provided.” Ex. 1001, code (54). The ’896 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.” Id.
`at 2:55–59. One wireless device detects the presence of another wireless
`device located within a certain proximity by using a short range
`communications protocol, such as Bluetooth or Wi-Fi, to receive transmitted
`identifying information. Id. at 2:64–3:4. The devices may then employ the
`use of a wide area wireless connection to communicate and establish data
`flow with a server to facilitate and perform the substantive communications
`between the devices. Id. at 6:35–55. 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 4:6–50.
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`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 5:8–9. 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 14:47–60. 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
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`option to download the information. Id. at 14:63–15:3. The server may also
`coordinate the several steps of an electronic commerce transaction between
`the user’s device and the broadcast device. Id. at 17:36–18:64.
`E. Illustrative Claim
`Of the challenged claims, claims 1 and 40 are independent. Claim 1 is
`illustrative and is reproduced below.
`1. A method for a server to exchange information with one or more
`wireless devices comprising the steps of:
`receiving identifier information from a first wireless device
`related to a second wireless device or an entity associated with said
`second wireless device, said identifier information having been
`received by the first wireless device using short range wireless
`communication;
`said server using the identifier information to determine
`information concerning an entity or object located in proximity to the
`second wireless device;
`the server delivering first information to the first wireless
`device based at least in part upon the identifier information related to
`the second wireless device;
`the server receiving second information from either said first
`wireless device or said second wireless device indicating selection of
`one or more goods for purchase;
`the server transmitting a request to either said first or said
`second wireless device for confirmation of said purchase;
`the server receiving confirmation that a user wishes to complete
`said purchase; and
`the server transmitting a receipt to either said second wireless
`device or to an entity associated with said second wireless device.
`Ex. 1001, 23:35–58.
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`F. Instituted Grounds of Unpatentability
`We instituted trial based on the grounds of unpatentability asserted in
`the Petition:
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–3, 5, 6, 8, 17, 18,
`40, 41, 44, 48–53, 56 1031 Perttila, 2 Emmons3
`9 103 Perttila, Emmons, Insolia 4
`Petitioner also relies on a declaration of Mr. David Hilliard Williams
`(Ex. 1003, “Williams Declaration”) in support of its contentions. Patent
`Owner relies on a declaration of Michael Foley, Ph.D. (Ex. 2020, “Foley
`Declaration”) in support of its contentions.
`II. ANALYSIS
`A. Principles of Law
`To prevail in its challenges to the patentability of the challenged
`claims of the ’896 patent, Petitioner must demonstrate by a preponderance of
`the evidence that the claims are unpatentable. 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d) (2019). “In an [inter partes review], the petitioner has the burden
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`1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011), amended 35 U.S.C. §§ 102 and 103 effective March 16, 2013.
`Because the ’896 patent has an effective filing date prior to the effective date
`of the applicable AIA amendments, we refer to the pre-AIA versions of
`§§ 102 and 103.
`2 Perttila et al., US 2004/0243519 A1, published Dec. 2, 2004 (Ex. 1006).
`3 Emmons et al., US 7,963,441 B2, issued June 21, 2011 (Ex. 1010).
`Petitioner further relies upon Emmons as incorporating by reference Attia et
`al., US 7,156,311 B2, issued Jan. 2, 2007 (Ex. 1011) and Recktenwald et al.,
`US 6,439,345 B1, issued Aug. 27, 2002 (Ex. 1012). Pet. 8–10.
`4 Insolia et al., US 8,121,917 B2, issued Feb. 21, 2012 (Ex. 1008).
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`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) (2012) (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); see also In re
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–78 (Fed. Cir. 2016)
`(discussing the burden of proof in inter partes review).
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “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.” 35 U.S.C. § 103(a)
`(2006); see also 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 ordinary skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness.
`5 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, 550 U.S. at 418 (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
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`5 The parties do not direct our attention to any evidence of objective indicia
`of nonobviousness.
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`obviousness”)); see also In re Warsaw Orthopedic, Inc., 832 F.3d 1327,
`1333 (Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland
`KG v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
`An obviousness analysis “need not seek out precise teachings directed
`to the specific subject matter of the challenged claim, for a court can take
`account of the inferences and creative steps that a person of ordinary skill in
`the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic
`Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). Petitioner cannot satisfy
`its burden of proving obviousness by employing “mere conclusory
`statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.
`Cir. 2016). Instead, Petitioner must articulate a reason why a person of
`ordinary skill in the art would have combined the prior art references. In re
`NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016).
`A reason to combine or modify the prior art may be found explicitly
`or implicitly in market forces; design incentives; the “interrelated teachings
`of multiple patents”; “any need or problem known in the field of endeavor at
`the time of invention and addressed by the patent”; and the background
`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).
`We analyze the asserted grounds of unpatentability in accordance with
`the above-stated principles.
`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 “would have had a minimum of a Bachelor’s degree in
`Electrical Engineering, or a related field, and approximately 3–5 years of
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`professional experience in the field of wireless communications.” Pet. 14
`(citing Ex. 1003 ¶¶ 36–38). Petitioner also asserts that “graduate education
`could substitute for professional experience” or that “significant experience
`in the field could substitute for formal education.” Id. (citing Ex. 1003
`¶¶ 36–38).
`While contending that a person of ordinary skill in the art with respect
`to the challenged claims “should also have 1–2 years of experience
`designing or implementing systems for electronic commerce including the
`use of wireless communications,” Patent Owner concedes that the level of
`skill as defined by Petitioner “is generally sufficient for the Board to
`evaluate the Petition Grounds.” PO Resp. 10–11.
`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
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`construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).
`Claim terms are generally given their ordinary and customary
`meaning as would be understood by one with ordinary skill in the art in the
`context of the specification, the prosecution history, other claims, and even
`extrinsic evidence including expert and inventor testimony, dictionaries, and
`learned treatises, although extrinsic evidence is less significant than the
`intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
`dispositive, and it is the single best guide to the meaning of a disputed term.
`Id. at 1315.
`Only those terms that are in controversy need be construed, and only
`to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
`(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
`Cir. 1999)).
`Petitioner did not assert construction of any specific terms in its
`Petition, instead contending simply that it “interprets the claim terms
`according to their plain and ordinary meaning consistent with the
`specification.” Pet. 15. Petitioner acknowledges that “[a] district court in
`another proceeding has construed terms of a related 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 raised arguments with respect to two phrases
`in the Patent Owner Response, “an entity or object located in proximity to
`the second wireless device” and “wireless device.” PO Resp. 13–21. We
`address these phrases in turn below.
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`1. “an entity or object located in proximity to the second wireless
`device”
`Patent Owner contends that the phrase “an entity or object located in
`proximity to the second wireless device,” recited in independent claims 1
`and 40 of the ’896 patent, should be construed “to require that the claimed
`‘entity or object’ must have a physical presence.” PO Resp. 13. According
`to Patent Owner, “the reference to the object being ‘located in proximity to
`the second wireless device’ makes clear that the claimed ‘object’ of that
`phrase must be physically present.” Id. at 14. Patent Owner argues
`similarly that “located in proximity to the second wireless device” also
`applies to the recited “entity,” thus requiring “that the ‘entity’ referred to in
`this claim element must be physically present, so that it may be ‘located
`in . . . proximity to the second wireless device’ as claimed.” Id. at 14–15.
`Patent Owner argues that “proximity” is used in accordance with its plain
`and ordinary meaning and “unquestionably refers to physical placement.”
`Id. at 16–18.
`In its Reply, Petitioner responds 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 an intangible object, such as music being
`played or a video or image displayed on a billboard. Pet. Reply 2–3.
`Further, Petitioner argues, each of Patent Owner’s citations to instances of
`the term “proximity” in the specification of the ’896 patent refers only to the
`proximity of either two individuals or two wireless devices to each other, not
`to the proximity of an object to the second wireless device, as recited in
`claims 1 and 40. Id. at 3–4 (citing PO Resp. 16–18). Still further, Petitioner
`argues that Patent Owner’s declarant conceded in a deposition concerning a
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`related patent having substantially the same specification of the ’896 patent
`that he did not base his interpretation of “proximity” on how the term is used
`in the specification, testifying that the usage of proximity in the specification
`“is not” relevant to his understanding of the usage of proximity in the
`claims. Id. at 4–5 (quoting Ex. 1040, 75:18–21) (citing Ex. 1040, 69:17–25,
`70:11–71:9, 72:16–73:9).
`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 wireless device.’”
`PO Sur-reply 1; see also id. at 1–4 (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 5–6.
`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. 7:25–8:11 (“Patent Owner says on
`the one hand, ‘Located in proximity to requires some physical
`manifestation.’ No argument about that. Of course, it does. But . . . Patent
`Owner ignores that an intangible can have a physical presence and
`location.”).
`6 There is, accordingly, no controversy regarding whether “an
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`6 In related IPR2020-00931, referenced by Petition in the hearing of this
`proceeding (see, e.g., Tr. 8:7–9), Petitioner’s counsel similarly represented
`that “there’s no debate . . . that physical presence is connoted by the word
`‘proximity’ and by ‘located.’” IPR2020-00931, Paper 28 at 8:17–19 (oral
`hearing transcript).
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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, our decision does not
`depend on an express construction of this term or on whether the recited
`“entity” or “object” may be intangible. 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. 21. However, Patent Owner concedes that
`construction of “wireless device” is “not necessary to resolve the dispute
`here.” Id. at 20–21.
`Petitioner argues that “‘wireless device’ should be construed as a
`device without external wires,” noting that the claims of the ’896 patent
`recite a “wireless device” rather than a “wireless communication device.”
`Pet. Reply 6. However, Petitioner also concedes that construction of this
`term is unnecessary. Id. at 5–6.
`No construction of this term is necessary. The parties both agree that
`no construction is needed, and our decision does not depend on a
`construction of this term.
`D. Overview of the Asserted Prior Art
`1. Perttila
`Perttila describes “a system, apparatus, and method for sending
`service data in response to electronic communications between a user
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`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
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`ID code and provides the user with an option to download the coupon. Id.
`¶¶ 28, 37–39.
`2. Emmons
`Emmons describes “a system and method for providing self service
`checkout and product delivery using a mobile device.” Ex. 1010, 2:45–63.
`Figures 1 and 2 of Emmons are reproduced below.
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`FIG. 2
`Figure 1 shows an exemplary system as utilized by Emmons’s method
`depicted in Figure 2. Ex. 1010, 3:10–14. Specifically, Figure 2 shows how
`a mobile device 10 is used to extract information from product display
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`indicia 11, then send appropriate extracted information to server 14 via
`network 12 where associated data repositories 16 allow the mobile device to
`be redirected to a desired information page 30, 32. Id. at 3:47–60, 4:26–31.
`From there, a customer can add a product to virtual cart 34, see the contents
`of their cart before purchase, pay for selected products 38, and receive a
`receipt 40. Id. at 4:45–5:3.
`Emmons incorporates by reference Recktenwald and Attia. Ex. 1010,
`4:26–31, 5:4–13; see also Ex. 1011, 1012. Recktenwald describes a
`kiosk-driven product pickup procedure that allows customers to pick up
`purchased items. Ex. 1012, 3:48–60. Attia describes a cellular telephone
`application that is able to analyze an image of a barcode or information
`carrying indicia in order to access a Web/WAP page with content associated
`with the information carrying indicia. Ex. 1011, 3:35–4:29.
`3. 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 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.
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`E. Asserted Obviousness of Claims 1–3, 5, 6, 8, 17, 18, 40, 41, 44, 48–53,
`and 56 over Perttila and Emmons
`Petitioner contends claims 1–3, 5, 6, 8, 17, 18, 40, 41, 44, 48–53,
`and 56 are unpatentable as obvious over Perttila and Emmons (incorporating
`by reference Recktenwald and Attia). Pet. 17–66. In support of its showing,
`Petitioner relies upon the Williams Declaration. Id. (citing Ex. 1003). We
`have reviewed the Petition, Patent Owner Response, Petitioner Reply, Patent
`Owner Sur-reply, and evidence of record and determine that, for the reasons
`explained below, Petitioner has shown, by a preponderance of the evidence,
`that claims 1–3, 5, 6, 8, 17, 18, 40, 41, 44, 48–53, and 56 would have been
`obvious in view of Perttila and Emmons and that Petitioner has set forth
`reasoning with rational underpinnings why it would have been obvious to
`combine the teachings of Perttila and Emmons.
`1. Motivation to Combine Perttila and Emmons
`Citing Mr. Williams’s supporting testimony, Petitioner contends that a
`person of ordinary skill in the art “would have been motivated to apply
`Emmons’s implementation detail teachings for purchasing goods on a
`mobile device while ‘travers[ing a] store’ in implementing Perttila’s
`e-commerce arrangement, which uses ‘tag or beacons located at the store
`itself’ to enable a mobile device to purchase particular products after
`receiving e-coupon offerings.” Pet. 28 (alteration in original) (emphases
`omitted) (citing Ex. 1003 ¶ 102; Ex. 1006 ¶¶ 9, 25, 39; Ex. 1010, Fig. 2).
`For example, Petitioner contends, “Perttila teaches that the in-store
`arrangement provides ‘coupon offerings’ to [a] user’s mobile device,” and a
`person of ordinary skill in the art “would have understood that it would have
`advantageously benefitted Perttila’s system to allow a user to easily and
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`quickly use his/her mobile device to purchase the products for which
`information was received, as taught by Emmons.” Id. (emphases omitted)
`(citing Ex. 1003 ¶¶ 103–104; Ex. 1006 ¶¶ 25, 39).
`Petitioner further contends that Emmons provides additional
`implementation details for purchasing goods on-line from the merchant and
`that “[i]mplementing Perttila’s ‘electronic commerce arrangement’ by
`allowing the purchase of goods directly from a user’s mobile device as
`taught by Emmons would have further enhanced Perttila’s e-commerce
`system.” Pet. 28–29 (emphases omitted) (citing Ex. 1003 ¶¶ 104–105;
`Ex. 1006 ¶¶ 28, 70; Ex. 1010, 4:16–5:3). In light of such teachings,
`Petitioner alleges, a person of ordinary skill in the art “would have found it
`obvious and straightforward” to apply Emmons’s teachings of a mobile self-
`service checkout and delivery system in implementing Perttila’s system for
`processing e-commerce transactions and “would have known that such a
`combination (yielding the claimed limitations) would predictably work and
`provide the expected functionality.” Id. at 29–30 (citing Ex. 1003 ¶ 108).
`In the Institution Decision, we noted that Patent Owner had raised
`certain arguments in its Preliminary Response with respect to
`implementation of Emmons’s teachings (including those of Recktenwald
`and Attia, incorporated by reference in Emmons) with Perttila’s commerce
`arrangement, but we found, notwithstanding those arguments, that Petitioner
`sufficiently supported its proposed rationale for the combination for
`purposes of institution of trial and that Patent Owner’s arguments were not
`sufficiently persuasive to undermine Petitioner’s showing. Inst. Dec. 20–21.
`We found, for example, that Emmons describes a system for “self service
`checkout and product delivery,” allowing a user to complete the purchase
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`and delivery of products utilizing a mobile telephone to scan product
`information from information carrying indicia, attain information, and allow
`for mobile purchase; that Perttila suggests that electronic coupons and
`merchant-media arrangements may be located at or near the same location
`where such a coupon would be redeemed and validated to facilitate merchant
`transactions; and that Petitioner’s reliance on Emmons’s system and method
`to allow for full purchase of goods at a redemption site where an e-coupon
`can be used, as in Perttila, is supported by the testimony of Mr. Williams and
`the cited references. Id. (citing Ex. 1003 ¶¶ 102–104; Ex. 1006 ¶¶ 28, 39,
`40; Ex. 1010, 2:45–63).
`In its post-institution briefing, Patent Owner repeats substantively the
`same arguments that we found unpersuasive in the Institution Decision (see
`PO Resp. 45–58; PO Sur-reply 25–28), and we remain persuaded by
`Petitioner’s evidence in support of the combination, including the testimony
`of Mr. Williams and the disclosures of the cited references (see, e.g.,
`Ex. 1003 ¶¶ 102–108, 147; Ex. 1006 ¶¶ 9, 25, 28, 39, 42, 70; Ex. 1010,
`2:47–55, 3:18–25, 3:56–60, 4:16–5:13, Fig. 2; Pet. 28–30; see also Pet.
`Reply 17–23).
`2. Independent Claim 1
`a. Preamble
`Claim 1 recites “[a] method for a server to exchange information with
`one or more wireless devices.” Ex. 1001, 23:35–36. Petitioner contends
`Perttila teaches this preamble recitation, mapping 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. 30 (citing Ex. 1006
`¶¶ 8–9); see also id. at 30–31 (citing Ex. 1003 ¶¶ 119–121; Ex. 1006 ¶¶ 8–9,
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`11–15, 19, 25–27, 37, 41, 60, Fig. 1a). Petitioner argues that a person of
`ordinary skill in the art “would have understood that Perttila discloses a
`wireless merchant-media arrangement and at minimum it would have been
`obvious to use a wireless merchant-media arrangement, such as a mobile
`battery-powered device that communicates wirelessly, to advantageously
`enable ‘portab[ility].’” Id. at 30 (emphasis omitted) (alteration in original)
`(citing Ex. 1003 ¶ 121; Ex. 1006 ¶ 60).
`Patent Owner does not contest Petitioner’s contentions with respect to
`the preamble of claim 1. See generally PO Resp.; PO Sur-reply.
`We are persuaded by Petitioner’s arguments and cited evidence that
`Perttila teaches or at least suggests a method for a central server to exchange
`information with one or more wireless devices. As cited by Petitioner,
`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 vi