Target Corp v. Proxicom Wireless LLC

1. Case Identification

• Case #: IPR2020-00931
• Patent #: 8,090,359
• Filed: May 15, 2020
• Petitioner(s): Target Corporation
• Patent Owner(s): Proxicom Wireless, LLC
• Challenged Claims: 1-5, 14-18, 27, 31, 36-37, 42-43, 48-49, 52-55

2. Patent Overview

• Title: Facilitating Communications Between Wireless Devices
• Brief Description: The ’359 patent describes a system where a central server brokers the exchange of information between two wireless devices. The system involves a first device detecting an identifier from a second device via a short-range wireless link (e.g., Bluetooth), transmitting that identifier to the central server over a wide-area network (e.g., cellular), and receiving back information or a service related to the identifier.

3. Grounds for Unpatentability

Ground 1: Anticipation and Obviousness over Perttila

Claims 1-5, 14-18, 27, 31, 36-37, 42-43, 48-49, 52, and 55 are anticipated by or obvious over Perttila.

• Prior Art Relied Upon: Perttila (Application # 2004/0243519).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Perttila discloses all features of independent claims 1 and 14. Perttila teaches an "interactive communications system" where a user's mobile device (the first wireless device) receives a "merchant-media ID code" from a merchant's beacon device (the second wireless device) via a short-range link like Bluetooth. The user's device then sends this ID to a remote server over a mobile network or the internet. The server, in response, returns "merchant-based service information," such as a "user-redeemable electronic coupon," which constitutes information for an "ongoing electronic commerce transaction." Perttila further discloses personalizing these offerings based on user profiles and past behavior, satisfying limitations in dependent claims related to customization and historical data. For claim 49, Petitioner argued it would have been obvious to use known cellular protocols (GPRS, EDGE, LTE) mentioned in the ’359 patent itself to implement the wide-area communication taught by Perttila.
  • Motivation to Combine (for §103 grounds): Not applicable for anticipation. For the obviousness assertion on claim 49, Petitioner contended a POSITA implementing Perttila’s system would have naturally and obviously used known, existing cellular network standards to achieve the wide-area communication described.
  • Expectation of Success (for §103 grounds): A POSITA would have had a high expectation of success in using standard cellular protocols, as they were well-established and designed for such data transmission tasks.

Ground 2: Obviousness over Perttila in view of Insolia

Claims 27, 31, 53, and 54 are obvious over Perttila in view of Insolia.

• Prior Art Relied Upon: Perttila (Application # 2004/0243519) and Insolia (Patent 8,121,917).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground built upon the teachings of Perttila by adding specific features from Insolia. Petitioner argued that to the extent Perttila did not explicitly teach basing server actions on a "history of past detections" (claim 27) or preventing actions based on a "previous reception" of an identifier (claim 53), Insolia supplied these missing elements. Insolia teaches a "loyalty server" that provides benefits (e.g., loyalty points) to a user's terminal. Crucially, Insolia discloses limiting the accrual of loyalty rewards based on a "pre-defined criteria" such as frequency, to prevent a user from "repeatedly interacting with the same...promotional object." This directly teaches managing server actions based on a history of past interactions, as recited in the challenged claims.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Insolia's loyalty and frequency-capping features with Perttila's e-coupon system to improve it. Specifically, adding the ability to track interaction history and limit rewards would prevent abuse, increase consumer confidence, and allow businesses to maximize the impact of promotions, which were known goals in the art. Both references are in the same field of facilitating e-commerce transactions using mobile devices and a remote server.
  • Expectation of Success (for §103 grounds): A POSITA would have reasonably expected success in this combination, as it involved applying a known business rule (limiting promotions based on frequency) to an existing e-coupon system to achieve the predictable result of a more robust and commercially effective platform.

4. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under §325(d) because the primary references, Perttila and Insolia, were never considered during the original prosecution of the ’359 patent, making the petition's grounds substantial and new.
• Petitioner also argued against discretionary denial under Fintiv, stating that the co-pending district court case was in its early stages, a stay had been granted in similar post-institution motions before the same judge, and the IPR challenges claims beyond those asserted in the litigation, favoring institution to promote efficiency.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1-5, 14-18, 27, 31, 36-37, 42-43, 48-49, and 52-55 of the ’359 patent as unpatentable.