PTAB

IPR2022-00131

Apple Inc v. BillJCo LLC

Key Events

Petition

petition Intelligence

Title: Location-Based Services for Mobile Data Processing Systems
Brief Description: The ’267 patent relates to location-based exchanges of data between distributed mobile systems. The invention is directed to a mobile device that receives location-related "whereabouts data" from a remote system. Based on "privilege data" that is locally stored and configured by the user through a dedicated interface, the device automatically searches for a matching privilege and, upon finding one, performs a privileged action, such as presenting information to the user. Key aspects emphasized during prosecution involved the local storage of privilege data and the search being performed after the whereabouts data is received.

Prior Art Relied Upon: Haberman (Application # 2005/0096044).
Core Argument for this Ground: Petitioner argued that Haberman, which was not considered during prosecution, teaches all elements of the challenged claims under 35 U.S.C. §103. Haberman discloses a mobile device that receives location-based informational content from wireless transmitters. This content constitutes the claimed "whereabouts data," and the transmitter's identity serves as the "originating identity." Users can create and store a "preferences profile" on the device, which corresponds to the claimed "locally stored privilege data." Upon receiving a transmission, the device searches the profile to see if the content matches a user preference. If a match is found, the device performs the privileged action of presenting the information. Petitioner mapped these teachings directly to the limitations of independent claims 1 and 29, and further argued that Haberman’s disclosure of user-configurable preferences, direct wireless communication, and unsolicited broadcasts rendered the dependent claims obvious.

Prior Art Relied Upon: Haberman (Application # 2005/0096044) and Boger (Application # 2002/0159401).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that the combination of Haberman and Boger renders the claims obvious. Haberman provides the primary system for location-based filtering. Boger, which details the standard Bluetooth protocol, was introduced to explicitly teach the limitation of "relating the originating identity... with a destination identity." Boger explained that Bluetooth packets include a specific destination address (AM_ADDR) for the intended recipient device, directly teaching the claimed relationship between a sender and a specific recipient.
- Motivation to Combine: A POSITA would combine the references because Haberman explicitly suggests using Bluetooth for its transmissions. Boger provided the well-known, standard implementation details for such Bluetooth communication, making the combination a predictable and logical design choice to achieve the system disclosed in Haberman.
- Expectation of Success: Implementing Haberman's system using the standard packet structure from Boger involved combining known prior art elements according to their established functions and would yield predictable results.

Prior Art Relied Upon: Vanluijt (Application # 2002/0132614).
Core Argument for this Ground: Petitioner argued Vanluijt, also not considered during prosecution, independently renders all challenged claims obvious. Vanluijt discloses a system where a mobile device receives location-specific data from autonomous beacons at points of interest like shops or restaurants. This data is the claimed "whereabouts data," and the beacon itself provides the "originating identity." The mobile device can filter received data based on "pre-stored user preferences," which corresponds to the "privilege data." The system automatically compares incoming data to these preferences and alerts the user if there is a match, thus performing a search and a privileged action. Petitioner contended that a user's preference for information from a specific beacon inherently creates the claimed relationship between the originating identity (the beacon) and the destination identity (the user's device).

Petitioner argued that discretionary denial under §314(a), particularly considering the Fintiv factors, would be inappropriate. The petition is pitted against a co-pending litigation in the Western District of Texas where the case is in its early stages, with no significant investment in discovery or claim construction and a trial date that is merely tentative and likely to be rescheduled. In contrast, an IPR proceeding provides a more efficient path to resolution with a firm one-year statutory deadline. To prevent duplicative efforts, Petitioner stipulated it would not pursue the same invalidity grounds in district court if the IPR is instituted. Furthermore, Petitioner argued the merits of the petition are strong and rely on prior art references (Haberman, Boger, and Vanluijt) that were not before the examiner during the original prosecution, weighing in favor of institution to review patentability and promote the integrity of the patent system.

Petitioner requests institution of an inter partes review and cancellation of claims 1, 5, 13, 20, 21, 29, 30, 34, 42, and 49 of the ’267 patent as unpatentable.