PTAB

IPR2022-00129

Apple Inc v. BillJCo LLC

Key Events

Petition

petition Intelligence

Title: Managing Information for Automatic Presentation
Brief Description: The ’839 patent discloses a mobile data processing system configured to receive a self-contained "object" that includes both information for presentation and instructions that specify a trigger event. Upon recognizing the trigger event, such as a whereabouts condition, the system automatically presents the information.

Prior Art Relied Upon: Lutnick (Application # 2008/0167106).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Lutnick, which teaches a system for displaying promotions on mobile gaming devices (MGDs), discloses all limitations of the challenged claims. Lutnick described a server transmitting promotions (information) and instructions that tell an MGD when to present the promotion. Petitioner asserted these transmissions meet the "object" limitation. The instructions specify triggers, including location-based "whereabouts conditions" (e.g., proximity to a store), which the MGD monitors. Upon recognizing the trigger, the MGD presents the promotion.
- Motivation to Combine: Although a single-reference ground, Petitioner argued that to the extent Lutnick does not explicitly disclose packaging the promotions and instructions into a single, self-contained object, it would have been obvious. A POSITA would combine them to create a downloadable package to ensure promotions could be displayed reliably, even with intermittent network connectivity, which Lutnick identified as a potential issue.
- Expectation of Success: A POSITA would have a reasonable expectation of success in packaging information and instructions together, as this was a predictable and well-understood software design choice for ensuring functionality in mobile environments.

Prior Art Relied Upon: Lutnick (Application # 2008/0167106) and Rankin (Application # 2002/0137462).
Core Argument for this Ground:
- Prior Art Mapping: This ground addressed claims requiring the source of the location trigger (the "another data processing system") to be mobile. Petitioner asserted that while Lutnick taught using beacons as a trigger source, it did not explicitly state the beacons were mobile. Rankin was introduced to supply this missing element, as it expressly disclosed a network of mobile beacons, such as those on a bus, that communicate with mobile devices using protocols like Bluetooth.
- Motivation to Combine: A POSITA would combine Rankin's mobile beacon technology with Lutnick's location-based promotion system to extend its functionality. This would allow for dynamic, location-aware advertising in mobile environments like public transit, a clear and desirable application for such technology.

Prior Art Relied Upon: Lutnick (Application # 2008/0167106) and Evans (Patent 6,327,535).
Core Argument for this Ground:
- Prior Art Mapping: This ground targeted claims requiring the event specification to include a condition for detecting content in a "wireless data record." Petitioner argued that Lutnick's beacon signals fulfilled the general requirement, but Evans was used to show the obviousness of a more structured record. Evans taught location beacons that transmit a detailed data record containing a date/time stamp field, a location field, and a confidence field to improve the accuracy of location services on a mobile device.
- Motivation to Combine: A POSITA would be motivated to incorporate the structured data record from Evans into Lutnick's system to enhance its performance and reliability. Using timestamps would prevent acting on stale location data, and confidence fields would allow the system to evaluate the quality of the location signal, leading to a more robust and predictable promotion triggering system.
Additional Grounds: Petitioner asserted an additional obviousness challenge for claims 24 and 48 over Lutnick in view of Bluetooth Core (a 2004 technical specification), arguing that for claims requiring detection of content in a "frame," the standard Bluetooth packet structure taught by Bluetooth Core rendered the claims obvious.

Petitioner argued that the term "object [] containing information and [originator] instructions for presenting said information," central to independent claims 1 and 25, should be construed as "a self-contained object with both the information for presentation and the instructions describing under what conditions to present that information."
This proposed construction was based on statements the Patent Owner made during prosecution to distinguish prior art, allegedly creating a clear record of disavowal. The construction was critical to Petitioner's argument that Lutnick's combined transmission of promotions and display rules met the "object" limitation.

Petitioner contended that the ’839 patent was not entitled to the priority dates of its parent applications (the ’064 and ’041 applications).
The argument was that key claim limitations, including the "self-contained object" and the "event specification," constituted new matter added to the application that issued as the ’839 patent and lacked written support in the earlier filings. This contention was fundamental to the petition, as it established a later priority date that made Lutnick and the other references available as prior art under §102.

Petitioner argued that discretionary denial under Fintiv was inappropriate because the parallel district court litigation was in a very early stage, with no significant investment of resources and no substantive orders issued.
Petitioner further asserted that it intended to seek a stay of the litigation pending the outcome of the inter partes review (IPR), and it stipulated that it would not pursue in court the same invalidity grounds raised in the petition if the IPR was instituted. These factors, combined with the fact that the petition challenges claims not asserted in the litigation, were argued to weigh strongly against discretionary denial.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-3, 8, 20, 21, 23-27, 32, 44, 45, 47, and 48 of the ’839 patent as unpatentable.