Hewlett Packard Enterprises Co v. BillJCo LLC

1. Case Identification

• Case #: IPR2022-00420
• Patent #: 10,477,994
• Filed: January 18, 2022
• Petitioner(s): Hewlett Packard Enterprise Co., Aruba Networks, LLC, Cisco Systems, Inc., Apple Inc.
• Patent Owner(s): BillJCo, LLC
• Challenged Claims: 1-3, 6, 8-10, 13-16, and 19

2. Patent Overview

• Title: Location Based Exchanges
• Brief Description: The ’994 patent discloses systems and methods for location-based services for mobile data processing systems. The technology focuses on enabling decentralized, peer-to-peer exchanges of data between mobile devices to provide location-based features and functionality without requiring a common, centralized service provider.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wrappe and Philips - Claims 1-2, 6, 8-9, 13-15, and 19 are obvious over Wrappe in view of Philips.

• Prior Art Relied Upon: Wrappe (WO 2005/106523) and Philips (WO 02/15601).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wrappe disclosed the core elements of the independent claims, including a "beaconing data processing system" (its "microcell beacons") with a Bluetooth interface that periodically broadcasts a unidirectional wireless data record. This record serves as a physical location reference, containing a site identifier (e.g., a store ID) and signal strength information, but not the beacon's physical coordinates. Wrappe’s beacons can be transmit-only, thus meeting the claim limitations of "not soliciting" and "not configured to process" inbound communications. Petitioner asserted that Philips supplied the primary missing element: broadcasting "application identifier data" within the wireless record.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Philips with Wrappe to improve the user experience of Wrappe's system. Wrappe's method for delivering location-specific content (e.g., coupons) required multiple steps. Philips taught including an application identifier in the beacon's broadcast to allow a receiving mobile device to automatically identify and launch the correct application for the received data. A POSITA would have found it obvious to incorporate Philips’s efficient, user-friendly technique into Wrappe's system to create a more seamless and automatic process for presenting location-specific information.
  • Expectation of Success: The combination involved adding a known type of data field (an application identifier from Philips) to a known wireless data record structure (from Wrappe). This was argued to be a simple and predictable modification for a POSITA.

Ground 2: Obviousness over Wrappe, Philips, and Weiser - Claims 3, 10, and 16 are obvious over Wrappe and Philips, as applied in Ground 1, and further in view of Weiser.

• Prior Art Relied Upon: Wrappe (WO 2005/106523), Philips (WO 02/15601), and Weiser (Application # 2007/0136132).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground addressed dependent claims 3, 10, and 16, which added the limitation that the "application identifier data...is configured...to match a configured arrival or departure condition." Petitioner argued that the base combination of Wrappe and Philips taught the broadcasting of an application identifier. Weiser taught a system where a specific software application was transmitted to a mobile device when the user entered a specific area, such as a shopping mall. This act of entering a location directly corresponded to the claimed "arrival condition."
  • Motivation to Combine: A POSITA would have been motivated to combine Weiser's arrival-based triggering mechanism with the beaconing system of Wrappe and Philips. This would enable the creation of more sophisticated location-aware applications that could, for example, launch a mall-specific application upon a user's arrival, thereby improving functionality and providing a uniform promotional experience across the location. The combination represented a predictable integration of known location-based triggers with known beaconing technology.

• Additional Grounds: Petitioner asserted that claims 1-2, 6, 8-10, 13-16, and 19 were also obvious over the combinations of Ground 1 and Ground 2 when each was further combined with Evans (Patent 6,327,535). Evans was cited to teach including a date/time stamp field and a confidence field in the wireless data record, which would have been obvious improvements to enhance the reliability and accuracy of the location data.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was not warranted because the primary prior art references relied upon in the petition (Wrappe, Philips, Weiser, and Evans) were not considered during the original prosecution of the ’994 patent.
• Petitioner also argued against discretionary denial under Fintiv. It contended that the parallel district court litigations were in their early stages with minimal investment from the parties and the court. Furthermore, it was argued that the district court trial dates were not imminent relative to the projected date for a Final Written Decision (FWD) in the inter partes review (IPR) and that the strong merits of the petition weighed heavily in favor of institution.

5. Relief Requested

• Petitioner requested the institution of an IPR trial and the cancellation of claims 1-3, 6, 8-10, 13-16, and 19 of the ’994 patent as unpatentable.