Trials@uspto.gov Paper 33
`571-272-7822 Date: November 30, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TARGET CORPORATION,
`Petitioner,
`v.
`PROXICOM WIRELESS, INC.,
`Patent Owner.
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`IPR2020-00979
`Patent 9,161,142 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 1031
`Google v. SecCommTech
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`IPR2020-00979
`Patent 9,161,164 B2
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`I. BACKGROUND
`On December 4, 2020, we instituted an inter partes review of claims
`1–8 (the “challenged claims”) of U.S. Patent No. 9,161,164 B2 (“the ’164
`Patent”). Paper 11 (“Dec. to Inst.”). Patent Owner filed a Patent Owner
`Response (Paper 20, “PO Resp.”), Petitioner filed a Petitioner Reply (Paper
`24, “Pet. Reply”), and Patent Owner filed a Sur-reply (Paper 25 “PO Sur-
`reply”). A transcript of an oral hearing held on September 1, 2021 (Paper
`31) 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.
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`II. THE ’164 PATENT
`The ’164 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, 2:60–64 According to the ’164 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 are no longer in close proximity and the risk of
`exposure of locally stored sensitive information or fraud by unauthorized
`spoofing devices. See id. at 2:42–56. The ’164 patent addresses these and
`other issues with a system “utilizing both a short range and a long range
`wireless capability.” Id. at 2:63–64.
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`Figure 1 of the ’164 patent is reproduced below.
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`Figure 1 of the ’164 patent
`Figure 1 of the ’164 patent is a block diagram of two mobile devices
`utilizing a preferred embodiment. Ex. 1001, 5:14–15. 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, such as device 108. Id.
`at 6:42–45. 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 6:45–50. 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 6:50–53. 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
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`process. Id. at 6:53–62. Facilitating communication between the devices
`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 6:66–7:18. This approach also allows a central server to
`control content based on the identity of the device.
`Figure 2 of the ’164 patent is shown below.
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`Figure 2 of the ’164 patent
`Figure 2 is a block diagram of a fixed broadcast Device and a mobile device.
`Ex. 1001, 5:16–17. 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 7:39–46. A museum patron’s device
`202 passes the identifier to central server 100. Id. at 7:46–47. 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 7:47–54, 8:49–61.
`The ’164 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, 8:44–52. Policy 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
`8:62–9:7.
`Figure 9 of the ’164 patent is shown below.
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`Figure 9 of the ’164 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 14:46–53. Customer device 902 (Device
`1) sends a message to server 901 inquiring if device identifier DI2 is relevant
`to the entity (customer) associated with the customer device (Device 1) and
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`if information associated with device identifier DI2 is available for return.
`Id. at 14:53–57. At step 906 server 901 retrieves the accounts associated
`with identifier DI2 and the customer device (Device 1). Id. at 14:57–58.
`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 14:59–65. Server 901 retrieves response message 907 indicating the
`presence of the detected Device and the content available. Id. at 14:66–15:1.
`Customer device 902 requests input from the entity associated with server
`901 for permission to download the coupon and other available content. Id.
`at 15:1–7. Message 909 from customer Device 1 accepting the content is
`sent to server 901 and response message 910 begins content delivery. Id. at
`15:6–8.
`III. ILLUSTRATIVE CLAIM
`Independent claim 1, reproduced below with paragraph designations
`used in the Petition, is illustrative of the subject matter of the ’164 patent.
`1[pre]. A system for facilitating use of proximity beacons
`for the exchange of information between a first wireless device
`or a first entity associated with the first wireless device and a
`second wireless device or a second entity associated with the
`second wireless device, the system comprising:
`[a] at least one server for providing a second unique
`identifier associated with an account associated with the
`second entity comprising:
`[b] a server data processor, for locating a disclosure policy
`associated with the second unique identifier or
`associated with the account associated with the second
`entity, and for comparing the disclosure policy to a first
`unique identifier associated with the first wireless
`device or other data associated with an account
`associated with the first entity associated with the first
`wireless device, wherein the disclosure policy specifies
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`data representing one or more rules for privacy of
`information concerning the first wireless device or the
`entity associated with the first wireless device and the
`second wireless device or the entity associated with the
`second wireless device; and
`[c] a network interface, for communicating first
`information to the first wireless device as permitted by
`the disclosure policy, wherein at least a portion of the
`first information includes the second unique identifier;
`[d] a mobile device for operatin g as the first wireless device
`and for receiving information related to the second
`wireless device or the entity associated with the second
`wireless device further comprising:
`[e] a first radio for communicating with the server and
`receiving the first information including the second
`unique identifier;
`[f] a second radio for receiving proximity beacon
`transmissions utilizing a local or personal area wireless
`protocol, and for providing received proximity beacon
`information derived from the proximity beacon
`transmissions; and
`[g] a mobile device data processor for receiving the
`proximity beacon information from the second radio
`and performing an action function to detect the
`proximity of a device associated with the second
`unique identifier, wherein the action function compares
`the proximity beacon information with the second
`unique identifier to determine if the proximity beacon
`information corresponds to the second unique identifier
`to determine said proximity of the device associated
`with the second unique identifier.
`IV. GROUNDS OF INSTITUTION
`We instituted inter partes review of all challenged claims on all
`asserted grounds identified below:
`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–7 102 Mgrdechian 1
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`1 U.S. Patent No. 7,545,784 B2, issued Jun 9, 2009 (Ex. 1005).
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`Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
`1–8 103 Mgrdechian
`1–8 103 Mgrdechian, Kaplan 2
`3, 4 103 Mgrdechian, Kulakowski 3
`3, 4 103 Mgrdechian, Kaplan,
`Kulakowski
`7 103 Mgrdechian, Eagle 4
`7 103 Mgrdechian, Kaplan, Eagle
`8 103 Mgrdechian, Behrens 5
`8 103 Mgrdechian, Kaplan, Behrens
`See generally Dec. to Inst.
`V. ANALYSIS OF PRIOR ART CHALLENGES
`A. Introduction
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
`petitions to identify “with particularity . . . the evidence that supports the
`grounds for the challenge to each claim”)). This burden of persuasion never
`shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
`inter partes review).
`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).
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`2 U.S. Patent No. 8,295,819 B1, issued Oct. 23, 2021 (Ex. 1024).
`3 International App. No. WO 2007/084973 A2, published Jul. 26, 2007
`(Ex. 1013).
`4 U.S. Patent Application Publ. US 2005/0250552 A1, published Nov. 10,
`2005 (Ex. 1004).
`5 U.S. Patent Application Publ. US 2010/0138481 A1, published Jun. 3,
`2010 (Ex. 1015).
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`“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) (explaining that to anticipate a patent claim under
`35 U.S.C. § 102, “a single prior art reference must expressly or inherently
`disclose each claim limitation”). Moreover, “[b]ecause the hallmark of
`anticipation is prior invention, the prior art reference—in order to anticipate
`under 35 U.S.C. § 102—must not only disclose all elements of the claim
`within the four corners of the document, but must also disclose those
`elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc.,
`545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck &
`Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
`Whether a reference anticipates is assessed from the perspective of an
`ordinarily skilled artisan. See Dayco Prods., Inc. v. Total Containment, Inc.,
`329 F.3d 1358, 1368 (Fed. Cir. 2003) (“[T]he dispositive question regarding
`anticipation [i]s whether one skilled in the art would reasonably understand
`or infer from the [prior art reference’s] teaching that every claim element
`was disclosed in that single reference.” (quoting In re Baxter Travenol
`Labs., 952 F.2d 388, 390 (Fed. Cir. 1991))).
`Additionally, under 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).
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`As set forth in 35 U.S.C. § 103(a),
`[a] patent may not be obtained . . . if the differences between the
`subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in
`the art to which said subject matter pertains.
`The question of obviousness is resolved on the basis of underlying factual
`determinations including: (1) the scope and content of the prior art; (2) any
`differences between the claimed subject matter and the prior art; (3) the level
`of ordinary skill in the art; and (4) when in evidence, objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`Additionally, the obviousness inquiry typically requires an analysis of
`“whether there was an apparent reason to combine the known elements in
`the fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
`2006) (requiring “articulated reasoning with some rational underpinning to
`support the legal conclusion of obviousness”)); see 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
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`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 is 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 such secondary considerations of non-obviousness has been presented in
`this proceeding.
`We analyze the asserted grounds of unpatentability in accordance with
`these principles to determine whether Petitioner has established
`unpatentability of the challenged claims by a preponderance of the evidence.
`B. Claims 1–8 as Anticipated by or Obvious Over Mgrdechian
`(Grounds 1 and 2)
`Petitioner asserts that Mgrdechian anticipates claims 1–7 and that
`claims 1–8 are obvious over Mgrdechian. In view of their overlap, we
`address these grounds together.
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`1. Mgrdechian
`Mgrdechian discloses a communications system in which a first
`wireless device with a unique identification, e.g., a Bluetooth ID or an RFID,
`receives over a local wireless protocol unique identifications of one or more
`other wireless devices. See Ex. 1005, 3:13–42, 3:59–67. A first wireless
`device can receive identifications (and, in some cases, available locally
`stored profile information) from other devices in its vicinity in response to a
`query from the first device or from a broadcast by the other devices. Id. at
`4:1–3, 6:44–61, 16:10–15. The first wireless device transmits the unique
`wireless identifications to a remote computer or server over a second
`wireless network or the Internet and receives from the remote server
`information associated with the wireless device identifications. Id. at
`3:59–67, 10:49–53, 16:36–42. For example, in response to a request from a
`user of the first device (User A), the server generates a reply that includes
`profile information associated with the device IDs in the request, to the
`extent the user of the other devices, e.g., User B, has authorized the
`disclosure of such information. Id. at 5:51–65, 10:56–11:4, 16:62–17:12.
`Authorized profile information associated with each device ID may be
`viewed and stored on the initiating user’s wireless device (Device A) for use
`in contacting the users of target devices, e.g., Users B and C, at a later time.
`Id. at 12:18–30.
`Mgrdechian also discloses that the remote computer can compare the
`profiles associated with IDs to predefined preferences of the initiating user
`(User A), to alert the initiating user to the presence of persons-of-interest.
`Ex. 1005, 14:55–65. The server may also provide a user with information
`regarding “friends of friends,” forming a mobile social networking service.
`Id. at 5:36–38.
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`Mgrdechian also teaches an extended range operation embodiment in
`which a target device returns to the initiating device its device ID and the
`device IDs of other devices in its (the target device’s) range that may not be
`within the range of the initiating device. Ex. 1005, 19:43–57. With this
`information, the detection range of the initiating device is extended a
`distance d1 (one hop from the target to an out of range device) or by taking
`the devices in series a further distance, e.g., d2 (an additional hop from the
`out of range device to another out of range device). Id. at 19:29–67.
`Another embodiment in Mgrdechian extends the communication
`range using a positional database. See Ex. 1005, 20:1–47. In this
`embodiment, the IDs of devices are uploaded to a central server to create a
`positional database. Id. at 20:3–7. For example, if Device A issues an ID
`request and receives responses from devices B and E, Device A send the IDs
`of devices B and E to the remote server, causing the remote server to return
`profile information for devices B and E to Device A. Id. at 20:9–25. If the
`positional database of the remote server indicates Device C is within the
`range of Device B and if the system is programmed to return information for
`all users within one hop, the system also will return to Device A information
`associated with Device C’s ID. Id. at 20:14–30, Fig. 10. Similarly, if the
`positional database indicates device D is within range of Device C and the
`system is programmed to return information for all users within two hops,
`the server also returns to Device A information associated with device D’s
`ID. Id. at 20:31–35.
`2. Claim 1
`The Petition identifies as the preamble of claim 1 the recitation “A
`system for facilitating use of proximity beacons for the exchange of
`information between a first wireless device or a first entity associated with
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`the first wireless Device and a second wireless device or a second entity
`associated with the second wireless device, the system comprising.”
`Pet. 25–26. Petitioner cites Mgrdechian as disclosing a system in which
`devices continuously or intermittently broadcast their IDs or other
`information (i.e., proximity beacons) allowing their detection by other
`devices within range in order to exchange information between a first
`wireless device, e.g., Device A, and second wireless device, e.g., Device B
`or Device C, or entities associated with the devices. Id. (citing Ex. 1005,
`6:59–61, 9:65–10:5). Petitioner asserts that Mgrdechian discloses the
`claimed “information” as wireless device identifications and information
`associated with those identifiers, such as profile information corresponding
`to the wireless IDs. Id. at 26 (citing Ex. 1005, 3:34–35, 3:59–67, 11:57–58).
`Petitioner further cites Mgrdechian’s disclosure of an expanded range
`feature in which Device A, having requested from a server profile
`information associated with devices B and E that are within range of Device
`A also receives from the server profile information associated with Device C
`because Device C is within range of Device B. Id. at 27–28 (citing Ex.
`1005, 20:1–47, Figs. 3A, 10; Ex. 1003, Williams Decl. ¶¶ 94–97).
`Based on the full trial record, we are persuaded that Petitioner has
`demonstrated by a preponderance of the evidence that Mgrdechian discloses
`a system with the features recited in the preamble of claim 1.
`a) Claim Limitation [1.a]
`The Petition identifies as claim limitation [1.a] the recitation “at least
`one server for providing a second unique identifier associated with an
`account associated with the second entity comprising.” Pet. 28. Petitioner
`cites Mgrdechian’s disclosure of an expanded range feature in which Device
`A, having requested from a server profile information associated with
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`Devices B and E that are within range of Device A, also receives from the
`server profile information associated with Device C because Device C is
`within range of Device B. Id. at 28–30. Noting that Mgrdechian discloses
`the server uses Device C’s ID and returns profile information for Device C,
`and that Device A saves profile information the server returns for Device C,
`Petitioner contends that Device A saves Device C’s unique identifier, so that
`Device A can use Device C’s identifier to message Device C when Device C
`comes within range of Device A. Id. at 28–29; see also id. at 39–42
`(discussing claim limitation [1.g]). Petitioner contends that to provide
`Device A the ability to message Device C when Device C subsequently
`comes within range, at a minimum it would have been obvious for Device
`C’s ID, e.g., Bluetooth ID, to be included with the profile information sent
`by the server to Device A. Id. at 22 (citing Ex. 1005, 5:31–35, 12:48–50,
`13:32–34; Ex. 1003, Williams Decl. ¶ 87). Patent Owner does not respond
`explicitly to Petitioner’s arguments concerning claim limitation [1.a].
`Based on the evidence and arguments of record, we find that
`Petitioner has demonstrated by a preponderance of the evidence that
`Mgrdechian discloses a system with the features recited in claim limitation
`[1.a].
`b) Claim Limitation [1.b]
`The Petition identifies as claim limitation [1.b] the recitation “a server
`data processor, for locating a disclosure policy associated with the second
`unique identifier or associated with the account associated with the second
`entity, and for comparing the disclosure policy to a first unique identifier
`associated with the first wireless device or other data associated with an
`account associated with the first entity associated with the first wireless
`device, wherein the disclosure policy specifies data representing one or more
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`rules for privacy of information concerning the first wireless device or the
`entity associated with the first wireless device and the second wireless
`device or the entity associated with the second wireless device.” Pet. 30–31.
`Petitioner cites Mgrdechian as disclosing a processor in a server that
`retrieves and returns information for all users active within one hop,
`including Devices B and C to the extent that disclosure policies of Devices B
`and C match with parameters of a disclosure policy of Device A. Id. at
`31–32 (citing Ex. 1005, 13:50–14:8, 16:16–19, 16:60–17:10, 20:1–47,
`Figs. 7A–7B; Ex. 1003, Williams Decl. ¶¶ 103–107). Patent Owner does
`not respond explicitly to Petitioner’s arguments concerning claim limitation
`[1.b].
`Based on the evidence and arguments of record, we find that
`Petitioner has demonstrated by a preponderance of the evidence that
`Mgrdechian discloses a system with the features recited in claim limitation
`[1.b].
`c) Claim Limitation [1.c]
`The Petition identifies as claim limitation [1.c] the recitation “a
`network interface, for communicating first information to the first wireless
`device as permitted by the disclosure policy, wherein at least a portion of the
`first information includes the second unique identifier.” Pet. 33–34.
`Petitioner cites Mgrdechian as disclosing that the computer system has a
`network interface because the computers are coupled to the Internet. Id. at
`34 (citing Ex. 1005, 10:48–61). Petitioner also cites Mgrdechian as
`disclosing that the computer system uses Device C’s ID to return some or all
`of Device C’s profile information to Device A, and that it would have at
`least been obvious to include Device C’s ID as information returned with
`Device C’s profile information. Id. (citing Ex. 1005, 12:18–26, 20:1–47,
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`Fig. 10; Ex. 1003, Williams Decl. ¶¶ 108–113). As discussed above, where
`Devices A and B are in range of each other and Device C is in range of
`Device B, but not Device A, Mgrdechian discloses the server returning to
`Device A some or all of Device C’s profile information, even though Device
`A has not detected Device C. See Section V.B.1; Ex. 1005, 20:1–47.
`In the Decision to Institute, we agreed with Petitioner that for Device
`A to store Device C’s profile information and make use of it when Device C
`comes within Device A’s range, delineating the profiles of a user
`corresponding to Device B and a user corresponding to Device C using the
`corresponding device IDs is an obvious expedient, particularly because user
`devices announce their presence by transmitting their device IDs or by
`responding to inquiries addressed to their device IDs. Dec. to Inst. 29–30.
`Thus, we stated that we were persuaded Petitioner had shown Mgrdechian
`teaches that, at least in some circumstances, it would have been obvious that
`the server communicate a second unique identifier associated with an
`account associated with the second entity, as recited in claim limitation 1[c].
`Id.
`Patent Owner keys on our discussion that claim limitation [1.c] would
`have been at least obvious to argue that claim limitation [1.c] is not
`anticipated by Mgrdechian. PO Resp. 23–24. Patent Owner contends the
`portions of Mgrdechian that Petitioner cites teach only that profile
`information is returned to Device A and that these portions of Mgrdechian
`are silent about sending any kind of device ID to Device A. Id. at 26.
`According to Patent Owner, “Petitioner’s assertion that ‘[a] POSITA would
`have understood that the profile information returned from the server for
`Device C includes its ID’ (Reply, 2) is not supported by Mgrdechian.” PO
`Sur-reply 2 (alteration in original).
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`Noting that the Decision to Institute found a likelihood of success on
`the anticipation ground, Petitioner responds that the argument in Patent
`Owner’s Response ignores what Mgrdechian discloses to a person of
`ordinary skill. Pet. Reply 2–3. Petitioner argues that Mgrdechian discloses
`to a person of ordinary skill that when Device C (the claimed second
`wireless device) is within one hop of Device A (the claimed first wireless
`device), “the server automatically uses Device C’s ID (the claimed second
`unique identifier)” and “return[s] information associated with Device C’s ID
`to Device A” through the server’s network interface; this enables Device A
`to scan for and communicate directly with Device C when Device C is in
`range. Id. at 2 (alteration in original) (citations omitted).
`Although Mgrdechian distinguishes between device IDs and profile
`information associated with device IDs, Mgrdechian consistently refers to
`profile information as associated with device IDs, e.g., the server uses the
`device ID to locate the corresponding profile information. See, e.g.,
`Ex. 1005, 11:53–57. Mgrdechian discloses embodiments in which “the one
`or more wireless identifications are unique identifications” and “the unique
`identifications include a Bluetooth identification or an RFID.” Id. at
`3:33–36. Mgrdechian also explicitly states that “profile information . . . may
`be associated with a wireless device ID.” Id. at 8:33–34, 11:26–27
`(referencing Figs. 3C, 3D showing in a dating application the types of
`profile information that may be associated with a wireless device ID). As
`the information (e.g., location, school, religion, occupation, interest, favorite,
`entertainment, and photo) in the profile in Figures 3C and 3D would be
`associated with a specific user, we find that Mgrdechian explicitly discloses
`to a person of ordinary skill associating a unique wireless ID with a specific
`profile.
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`19
`Whether a reference anticipates is assessed from the perspective of an
`ordinarily skilled artisan. See Dayco Prods., 329 F.3d at 1368 (Fed. Cir.
`2003) (“[T]he dispositive question regarding anticipation [i]s whether one
`skilled in the art would reasonably understand or infer from the [prior art
`reference’s] teaching that every claim element was disclosed in that single
`reference.” (quoting In re Baxter Travenol Labs., 952 F.2d at 390 (Fed. Cir.
`1991))). Although Mgrdechian describes a portion of the profile information
`being returned to Device A without explicitly enumerating returning Device
`C’s wireless ID, Mgrdechian’s disclosure that profiles may be associated
`with wireless IDs informs a person of ordinary skill that the wireless ID
`would be among the information returned because the wireless ID is a key
`piece of reference information essential for Device A to scan for and
`recognize Device C. See Ex. 1005, 20:56–58 (“a user may scan for profiles
`in the vicinity, e.g., by transmitting an identification request); see also id.
`at 10:45–47 (“When an identification request is received, one or more of
`these devices may access and transmit a device ID back to [the] initiating
`device . . . in a reply.”).
`As Petitioner points out, Mgrdechian discloses a “daisy chain”
`embodiment in which the server responds to a request from Device A by
`transmitting the IDs of neighboring Devices B and E to Device A. Pet.
`Reply ; Ex. 1005, 20:1–10. Although Patent Owner acknowledges that the
`server uses the device ID (Device C’s ID) to locate and return information
`associated with Device C’s ID to Device A, Patent Owner contends that
`Mgrdechian does not teach or suggest Device C’s ID would be returned to
`Device A. PO Resp. 17.
`Figures 3C and 3D illustrate the content of a profile. A profile is
`associated with a wireless Device and would be useless as a feature of
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`Mgrdechian if it could not be located. Mgrdechian discloses locating the
`profile using a wireless ID. See, e.g., Ex. 1005, 11:53–57. We find that
`when the server returns De