Apple Inc v. Qualcomm Inc

1. Case Identification

• Case #: IPR2018-01276
• Patent #: 8,971,861
• Filed: June 28, 2018
• Petitioner(s): Apple Inc.
• Patent Owner(s): Qualcomm Inc.
• Challenged Claims: 1-34

2. Patent Overview

• Title: RELEVANT CONTENT DELIVERY
• Brief Description: The ’861 patent relates to a system for delivering relevant content to a mobile device. The system uses a host computer to receive physiological state data from sensors on the mobile device, analyze that data, select content from a plurality of predefined content based on the analysis, and transmit the selected content back to the device.

3. Grounds for Unpatentability

Ground 1: Claims 6, 15, and 31 are obvious over Hoffman, Morris, and Lundqvist

• Prior Art Relied Upon: Hoffman (Application # 2012/0041767), Morris (Patent 7,962,604), and Lundqvist (Application # 2010/0179865).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hoffman disclosed the foundational system of a mobile device with sensors collecting athletic information ("physiological state data") and a connected host computer that analyzes the data to provide customized content. To this base system, Morris was alleged to add a technique for monitoring user idleness and replacing advertisement content after a threshold period of inactivity. Finally, Lundqvist was asserted to teach the conventional practice of automatically deleting content from a cache based on time or usage to manage limited storage space. The combination of these teachings allegedly met the limitations of claim 6, which requires monitoring for a trigger action (user inactivity per Morris) and, in response to its non-occurrence, aborting the presentation of content and deleting it (per Morris and Lundqvist).
  • Motivation to Combine: A POSITA would combine Hoffman with Morris to improve user engagement by keeping content fresh and preventing the display of stale information to an idle user. The further addition of Lundqvist's automatic deletion was argued to be a predictable solution for managing the limited storage capabilities of the portable devices described in Hoffman.
  • Expectation of Success: Petitioner contended that combining these known techniques for content management and data storage would have yielded predictable results, as it involved applying standard solutions to well-understood problems in the art.

Ground 2: Claims 7-9, 16-18, 23-25, and 32-34 are obvious over Hoffman and Lin

• Prior Art Relied Upon: Hoffman (Application # 2012/0041767) and Lin (Application # 2010/0125492).
• Core Argument for this Ground:
  • Prior Art Mapping: Hoffman was argued to teach a system that awards "activity points" convertible into a form of currency based on a user's progress toward fitness goals. This process involves comparing a user's measured athletic information against an ideal state (the goal). Lin was cited for its disclosure of a system for dynamically pricing advertisements, where a price is adjusted based on user-specific factors and can be restricted by a maximum and minimum value. Petitioner asserted that the combination taught determining a price for content based on the similarity between a user's actual physiological state and an ideal state, as required by claim 7, and setting price boundaries as recited in claim 8.
  • Motivation to Combine: A POSITA would combine Lin's dynamic pricing with Hoffman's activity reward system to further enhance user motivation, a primary goal of Hoffman. By dynamically adjusting the "price" of content, products, or services based on fitness achievements, the combined system would create a more powerful incentive structure.
  • Expectation of Success: The petition argued that applying a known dynamic pricing business method from Lin to the user reward system of Hoffman was a straightforward and predictable extension to improve the system's effectiveness.

Ground 3: Claims 2, 11, 20, and 27 are obvious over Hjelt and Kurtz

• Prior Art Relied Upon: Hjelt (Patent 7,278,966) and Kurtz (Application # 2008/0292151).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hjelt disclosed a core system where a mobile terminal collects physiological data during user activity and transmits it to a remote destination for analysis, which then returns customized content like an adjusted exercise program. Kurtz was cited for its teaching of capturing a user's image data to monitor a physiological condition and selecting content (e.g., a diagnosis) based on an analysis of the image. The combination was alleged to meet the limitations of claim 2 by teaching a system that receives image data from a mobile device and selects content based, in part, on that image data in addition to other physiological data.
  • Motivation to Combine: A POSITA would be motivated to integrate the image capture technique of Kurtz into the physiological monitoring system of Hjelt to create a more robust and comprehensive user assessment tool. Visual data from images could supplement sensor data to better track a user's progress toward fitness goals, enabling more accurate and personalized content delivery.
  • Expectation of Success: Petitioner argued that adding a known data input modality (image capture via a mobile device camera) to an existing data monitoring system was a simple and predictable design choice to enhance system capabilities.
• Additional Grounds: Petitioner asserted additional anticipation and/or obviousness challenges based on Hoffman alone and Hjelt alone, arguing these primary references individually disclosed all limitations of the base independent claims and several dependent claims.

4. Key Claim Construction Positions

• Means-Plus-Function Terms: Petitioner argued that numerous "means for..." limitations in the apparatus claims (e.g., "means for receiving... physiological state data") are subject to pre-AIA 35 U.S.C. §112, ¶6. For each such term, the petition identified the function recited and the corresponding structures disclosed in the ’861 patent's specification, such as the "host computer system 140" and "computer system 800," which it argued were taught by the prior art's disclosure of analogous structures like a general-purpose computer.
• "Physiological state data": Petitioner proposed this term be construed as "data about the user's physical condition," based on examples in the specification. This construction was argued to be broad enough to encompass not only biometric data like heart rate but also "athletic information" such as movement, speed, and distance as disclosed in the asserted prior art.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was inappropriate. The core reason provided was that none of the asserted prior art references (Hoffman, Morris, Lundqvist, Lin, Hjelt, Kurtz) or the specific combinations thereof were considered or cited during the original prosecution of the ’861 patent. Consequently, the petition asserted that it raised new, non-cumulative invalidity arguments that had not been previously presented to the U.S. Patent and Trademark Office.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-34 of the ’861 patent as unpatentable.