Cisco Systems Inc v. BillJCo LLC

1. Case Identification

• Case #: IPR2022-00427
• Patent #: 10,292,011
• Filed: January 14, 2022
• Petitioner(s): Cisco Systems, Inc., Apple Inc., Hewlett Packard Enterprise Co., Aruba Networks, LLC
• Patent Owner(s): BillJCo, LLC
• Challenged Claims: 1-3, 9, 11-13, 19-20

2. Patent Overview

• Title: Location Based Exchanges of Data Between Distributed Mobile Data Processing Systems
• Brief Description: The ’011 patent relates to location-based services for mobile data processing systems, specifically enabling location-based features and functions through peer-to-peer data exchanges between distributed mobile systems without requiring a common connected service.

3. Grounds for Unpatentability

Ground 1: Obviousness over Ribaudo and Lorincz - Claims 1-3, 9, 11-13, and 19-20 are obvious over Ribaudo in view of Lorincz.

• Prior Art Relied Upon: Ribaudo (Application # 2007/0030824) and Lorincz (MoteTrack: A Robust, Decentralized Approach to RF-Based Location Tracking, 2006).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Ribaudo taught the core elements of the independent claims, including a decentralized system where mobile devices beacon a unidirectional wireless data record (containing a "client ID" and "availability level") to detect other users in proximity for networking purposes. This record, Petitioner contended, did not include physical location coordinates, as Ribaudo distinguished its relative proximity method from GPS-based absolute location systems. Petitioner asserted that Lorincz, which taught a decentralized location tracking system called "MoteTrack," supplied the missing claim elements of periodically beaconing the data and including a data field for signal strength (powerLevel). Lorincz’s system used periodic beacons with source IDs and power levels to accurately compute a mobile node’s location.
  • Motivation to Combine: Petitioner argued a person of ordinary skill in the art (POSITA) would combine Lorincz with Ribaudo to improve the accuracy of Ribaudo’s proximity determination system. Ribaudo expressed a desire for more accurate distance filtering but did not detail the implementation. A POSITA would have looked to known techniques, like those in Lorincz, which explicitly taught using signal strength from periodic beacons to achieve meter-level accuracy in location tracking, a predictable solution to improve Ribaudo's system.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success in combining the references, as it involved applying a known accuracy-improving technique (using signal strength from periodic beacons) to a known type of system (proximity detection) to achieve a predictable result (more precise filtering of matches based on distance).

Ground 2: Obviousness over Ribaudo and Wrappe - Claims 1-3, 9, 11-13, and 19-20 are obvious over Ribaudo in view of Wrappe.

• Prior Art Relied Upon: Ribaudo (Application # 2007/0030824) and Wrappe (International Publication No. WO 2005/106523).

• Core Argument for this Ground:

  • Prior Art Mapping: This ground relied on Ribaudo for the same base system teachings as in Ground 1. Petitioner argued that Wrappe, which disclosed methods for microcell beacon-assisted position determination, provided the teachings for periodic beaconing and including signal strength data. Wrappe taught that a "control circuit" could "broadcast identification information periodically" and that the beacon may "broadcast the transmission strength level" so that a range can be estimated. Petitioner contended this directly taught the limitations that were alternatively supplied by Lorincz in Ground 1.
  • Motivation to Combine: Petitioner asserted that a POSITA would be motivated to modify Ribaudo's system with Wrappe's teachings for two main reasons. First, implementing periodic beaconing as taught by Wrappe was a well-known method to conserve power on a mobile device. Second, because Ribaudo taught filtering matches by distance but did not specify how, a POSITA would incorporate Wrappe's explicit use of "transmission strength level" to improve Ribaudo’s filtering capability and proximity determination accuracy.

• Additional Grounds: Petitioner asserted additional obviousness challenges based on three-way combinations of the prior art. Ground 3 argued the challenged claims are obvious over Ribaudo, Lorincz, and Evans (Patent 6,327,535). Ground 4 argued the claims are obvious over Ribaudo, Wrappe, and Evans. In both grounds, Evans was primarily introduced to teach that a wireless data record could include additional fields such as a timestamp, location information, and confidence parameters to improve data reliability and accuracy.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under 35 U.S.C. §325(d) was unwarranted because the primary prior art references (Ribaudo, Lorincz, Wrappe, Evans) and their combinations were not considered during prosecution, presenting new information for the Board to evaluate.
• Petitioner further argued that discretionary denial under 35 U.S.C. §314(a) based on Fintiv factors was inappropriate. Petitioner asserted that the co-pending district court litigations were in their early stages, with no substantive rulings issued and fact discovery not yet fully underway. It was argued that the scheduled trial dates were unreliable and likely to be delayed, meaning an inter partes review (IPR) would conclude before or around the same time as any trial. Petitioner also noted it would stipulate to not pursue the same invalidity grounds in district court if the IPR is instituted, thus promoting efficiency and avoiding overlap.

5. Relief Requested

• Petitioner requested institution of an IPR and cancellation of claims 1-3, 9, 11-13, and 19-20 of the ’011 patent as unpatentable.