Target Corp v. Proxicom Wireless LLC

1. Case Identification

• Case #: IPR2020-00904
• Patent #: 7,936,736
• Filed: May 8, 2020
• Petitioner(s): Target Corporation
• Patent Owner(s): Proxicom Wireless, LLC
• Challenged Claims: 1, 5-8, 10, 12, 14-15, 18, 20-22

2. Patent Overview

• Title: Server for Brokering Information Exchange Between Wireless Devices
• Brief Description: The ’736 patent describes a system where a central server brokers the exchange of information between two wireless devices that are in proximity. The system uses a short-range wireless connection for initial device discovery and a long-range wireless connection for communicating with the server, which applies a disclosure policy to determine what information can be shared.

3. Grounds for Unpatentability

Ground 1: Anticipation/Obviousness over Eagle - Claims 1, 5-8, 10, 12, 14-15, 18, 20-22 are anticipated under 35 U.S.C. §102 or, alternatively, obvious under 35 U.S.C. §103 over Eagle.

• Prior Art Relied Upon: Eagle (Application # 2005/0250552).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Eagle discloses every element of the challenged claims in its system for facilitating communications between portable wireless devices. Eagle teaches a "requester device" (first wireless device) detecting a nearby "identified device" (second wireless device) and receiving its "Bluetooth device ID" via a short-range link. The requester device then sends its own ID ("Requester ID") and the identified device's ID in a "notification message" to a "remote server" over a long-range cellular network. The server uses these IDs to retrieve "profile data," which includes a "trust network" (a list of "friends" device IDs) that functions as the claimed "information disclosure policy data." Petitioner asserted that the server’s process of checking if the Requester ID is within the identified device's trust network meets the limitation of comparing the first identification information with the disclosure policy. Finally, the server sends an "alert message" with further information back to the requester device only if it is part of the trust network, satisfying the claims' conditional information-sharing step.
  • Motivation to Combine (for §103): Petitioner contended that, to the extent any element was not explicitly disclosed, a person of ordinary skill in the art (POSITA) would have been motivated to use the components of Eagle’s system for their intended and described purposes. The motivation was to achieve Eagle's stated goal of facilitating communications between users based on pre-set privacy and preference settings.
  • Expectation of Success (for §103): As Eagle describes a complete and functional system, a POSITA would have had a high expectation of success in implementing its teachings to achieve the claimed method and system.

Ground 2: Obviousness over Eagle and Mgrdechian - Claims 8, 14, and 22 are obvious over Eagle in view of Mgrdechian.

• Prior Art Relied Upon: Eagle (Application # 2005/0250552) and Mgrdechian (Patent 7,545,784).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that these dependent claims add a limitation wherein receiving information from the server causes the first wireless device to limit the re-sending of previously reported identifiers. Petitioner asserted that Eagle provides the foundational system, while Mgrdechian supplies this specific teaching. Mgrdechian discloses a system where a device receives and stores profile information from a server, which prevents "automatically retrieving profile information" in subsequent encounters. This is achieved by checking for locally cached data before sending new requests to the server, thereby limiting redundant transmissions.
  • Motivation to Combine: A POSITA would combine Mgrdechian’s caching and request-limiting teachings with Eagle’s communication system for the well-understood and predictable benefits of improving system efficiency, reducing unnecessary network traffic, and conserving device battery life. Petitioner noted that Eagle itself recognizes the benefits of limiting transmissions, and Mgrdechian provides a known and advantageous method for doing so.
  • Expectation of Success: Combining a known caching technique to limit redundant data requests (Mgrdechian) with a wireless communication system (Eagle) was a straightforward design choice. A POSITA would have known this combination would predictably work and provide the expected functionality of improved efficiency.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial would be inappropriate. It asserted that the grounds were not cumulative under 35 U.S.C. §325(d) because the primary references, Eagle and Mgrdechian, were never cited or considered by the Examiner during the original prosecution of the ’736 patent.
• Furthermore, Petitioner argued against discretionary denial under Fintiv factors, contending that the parallel district court litigation was in its early stages, with a trial date that was not imminent and subject to potential delay. Petitioner stated that it had not delayed in filing the IPR and that an institution decision would occur long before any substantive litigation milestones, making a stay likely and promoting efficiency.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1, 5-8, 10, 12, 14-15, 18, and 20-22 of the ’736 patent as unpatentable.