Proxicom Wireless, LLC

Patent Trials and Appeals Board

Nov 8, 2021

IPR2020-00933 (P.T.A.B. Nov. 8, 2021)

Trials@uspto.gov Paper 30
571-272-7822 Date: November 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TARGET CORPORATION,
Petitioner,

v.

PROXICOM WIRELESS, LLC,
Patent Owner.
____________

IPR2020-00933
Patent 8,374,592 B2
____________

Before BRIAN J. McNAMARA, CHARLES J. BOUDREAU, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)
IPR2020-00933
Patent 8,374,592 B2

2
I. INTRODUCTION
A. Background
Target Corporation (“Petitioner”) filed a Petition for inter partes
review of claims 19–23, 25, 26, 28, and 29 (“the challenged claims”) of U.S.
Patent No. 8,374,592 B2 (Ex. 1001, “the ’592 patent”). Paper 2 (“Pet.”), 1.
Proxicom Wireless, LLC (“Patent Owner”) filed a Preliminary Response.
Paper 9. On November 10, 2020, we instituted an inter partes review of the
challenged claims on all grounds raised in the Petition. Paper 10
(“Institution Decision” or “Inst. Dec.”), 32.
Subsequent to institution, Patent Owner filed a Patent Owner
Response (Paper 18, “PO Resp.”), Petitioner filed a Reply to the Patent
Owner Response (Paper 21, “Pet. Reply”), and Patent Owner filed a
Sur-reply to Petitioner’s Reply (Paper 22, “PO Sur-reply”). An oral hearing
was held on August 19, 2021. A transcript of the hearing has been entered
into the record. Paper 28 (“Tr.”).
In our Scheduling Order, we notified the parties that “any arguments
for patentability not raised in the [Patent Owner] response may be deemed
waived.” See Paper 11, 10; see also Patent Trial and Appeal Board
Consolidated Trial Practice Guide 66 (Nov. 2019) (“The patent owner
response . . . should identify all the involved claims that are believed to be
patentable and state the basis for that belief.”).1
For the reasons that follow, we conclude that Petitioner has proven by
a preponderance of the evidence that claims 19–23 of the ’592 patent are

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2020-00933
Patent 8,374,592 B2

3
unpatentable. Petitioner, however, has failed to meet its burden of proof
regarding the unpatentability of claims 25, 26, 28, and 29.
B. Real Parties in Interest
Petitioner identifies itself as the sole real party in interest. Pet. 6.
Patent Owner identifies itself as the sole real party in interest.
Paper 4, 2.
C. Related Matters
The parties indicate that the ’592 patent is the subject of the following
district court proceedings:
Proxicom Wireless, LLC v. Target Corporation, No. 6:19-cv-
1886 (M.D. Fla. filed Oct. 2, 2019)2 (“the District Court
litigation”) and
Proxicom Wireless, LLC v. Macy’s, Inc., No. 6:18-cv-00064
(M.D. Fla. filed Jan. 12, 2018).
Pet. 6; Paper 4, 2.
D. The Challenged Patent
The ’592 patent disclosure “is generally concerned with facilitating
the exchange of information and transactions between two entities associated
with two wireless devices when the devices are in close proximity to each
other utilizing both a short range and a long range wireless capability.”
Ex. 1001, 2:55–59. The devices use a short range communication protocol,
such as Bluetooth, only to detect the presence of other devices and use a

2 Stayed on June 17, 2020 pending resolution of ten petitions for inter partes
review filed by Petitioner. See Paper 6.
IPR2020-00933
Patent 8,374,592 B2

4
long range communication protocol, such as Wi-Max, to communicate with
a central server and to perform the actual substantive communications with
other devices. Id. at 6:35–48. Each device transmits identifier information
via short range communication as a proximity detection process. Id.
at 6:51–55. This use of peer-to-peer short range communication beneficially
allows proximity between devices to be determined without the need of a
global positioning system (GPS), which may not always be present or
available for use. Id. at 3:57–64. Use of a central server to mediate
communications between the devices beneficially provides security to the
transaction, allows for anonymity between the parties, and implements
policy enforcement. Id. at 4:14–62.
In one application, only a user’s device is capable of long range
communication and the second device is only capable of broadcasting its
identifier information. Ex. 1001, 7:22–31. This application is illustrated in
Figure 2, which is reproduced below:

IPR2020-00933
Patent 8,374,592 B2

5
Figure 2 shows a block diagram of fixed broadcast device 204 and mobile
device 202. Id. at 5:9–10. The user’s mobile device detects the broadcast
device and transmits the broadcast device’s identifier information, along
with a request for information regarding the broadcast device, to central
server 100. Id. at 14:48–60. The server determines what information
regarding the broadcast device is available and transmits a description of the
information to the user’s device. Id. at 14:61–63. The user then has the
option to download the information. Id. at 14:63–15:3.
E. The Challenged Claims
Petitioner challenges claims 19–23, 25, 26, 28, and 29 of the
’592 patent. Pet. 1, 10. Claims 19 and 25 are independent. Claim 19 is
illustrative of the challenged claims and is reproduced below:
19. A method for a server to exchange information with one
or more wireless devices comprising the steps of:
the server receiving identifier information from a first
wireless device using a wide area wireless network, the
identifier information provided to the first wireless device from
a second wireless device using short range wireless
communication;
said server using identifier information to determine
information concerning an entity or object located in proximity
to the second wireless device; and
the server delivering information to the first wireless
device based at least in part upon the identifier information and
information representing a reward for an entity associated with
the first wireless device’s participation in a loyalty program,
wherein said information includes a name associated with said
entity or object located in proximity to the second wireless
device or a name associated with said loyalty program as
determined by the server utilizing said identifier information.
Ex. 1001, 24:56–25:7.
IPR2020-00933
Patent 8,374,592 B2

6
F. Instituted Grounds of Unpatentability
The Petition relies on the following prior art references:
Name Reference Exhibit
Perttila US 2004/0243519 A1, published Dec. 2, 2004 1006
Insolia US 8,121,917 B2, issued Feb. 21, 2012 1008
Davis US 2010/0030638 A1, published Feb. 4, 2010 1009
We instituted trial based on all asserted claims and grounds of
unpatentability as follows:
Claims Challenged 35 U.S.C. § References
19–23 103(a)3 Perttila, Insolia
25, 26, 28, 29 103(a) Perttila, Davis
Pet. 10. Petitioner submits a declaration of Mr. David Hilliard Williams
(Ex. 1003, “Williams Declaration”) in support of its contentions. Patent
Owner submits a declaration of Michael Foley, Ph.D. (Ex. 2010, “Foley
Declaration”) in support of its contentions.
II. ANALYSIS
A. Principles of Law
To prevail in its challenge to Patent Owner’s claims, Petitioner must
demonstrate by a preponderance of the evidence that the claims challenged
in the Petition are unpatentable. 35 U.S.C. § 316(e) (2018); 37 C.F.R.

3 The application resulting in the ’592 patent was filed prior to the date when
the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), took effect. Thus, we refer to the pre-AIA version of
section 103.
IPR2020-00933
Patent 8,374,592 B2

7
§ 42.1(d) (2019). This burden of persuasion never shifts to Patent Owner.
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015).
A claim is unpatentable under 35 U.S.C. § 103(a) if the differences
between the claimed subject matter and the prior art are such that the subject
matter, as a whole, would have been obvious at the time of the invention to a
person having ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 406 (2007). The question of obviousness is resolved on the basis
of underlying factual determinations including (1) the scope and content of
the prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) when in evidence, any
objective evidence of nonobviousness.4 Graham v. John Deere Co., 383
U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
Petitioner contends that a person having ordinary skill in the art at the
time of the invention (“POSITA”) would have had “a Bachelor’s degree in
Electrical Engineering, or a related field, and approximately 3-5 years of
professional experience in the field of wireless communications.” Pet. 14.
Petitioner acknowledges that “graduate education could substitute for
professional experience” and “significant experience in the field could
substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 36–38).
Patent Owner concedes that the level of skill as defined by Petitioner
“is sufficient for the Board to evaluate the Petition Grounds.” PO Resp. 9.

4 The parties have not directed us to any such objective evidence.
IPR2020-00933
Patent 8,374,592 B2

8
The level of ordinary skill in the art may be evidenced by the
references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355
(Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In
re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The level of ordinary skill
proposed by Petitioner appears to be consistent with that of the references,
and we apply Petitioner’s proposed level of ordinary skill for purposes of
this Decision.
C. Claim Construction
In an inter partes review, claims are construed using the same claim
construction standard that would be used to construe the claims in a civil
action under 35 U.S.C. § 282(b), including construing the claims in
accordance with the ordinary and customary meaning of such claims as
understood by one of ordinary skill in the art and the prosecution history
pertaining to the patent. 37 C.F.R. § 42.100(b). Thus, we apply the claim
construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
(Fed. Cir. 2005) (en banc).
Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–17. Usually, the specification is
dispositive, and it is the single best guide to the meaning of a disputed term.
Id. at 1315.
IPR2020-00933
Patent 8,374,592 B2

9
Only those terms that are in controversy need be construed, and only
to the extent necessary to resolve the controversy. Nidec Motor Corp. v.
Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)
(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
Cir. 1999)).
Petitioner contends that it “interprets the claim terms according to
their plain and ordinary meaning consistent with the specification.” Pet. 15.
Petitioner asserts that the challenged claims use “terms of degree (e.g., ‘short
range’ communication/link, ‘wide area’ link/network/technology),” but does
not explain how this assertion affects claim construction. Id. Petitioner
acknowledges that “[a] district court in another proceeding has construed
terms of this patent,” but argues that those “constructions do not impact the
outcome of this IPR as the prior art . . . meets the limitations under these
constructions.” Id. (citing Ex. 1003 ¶ 71; Ex. 1021).
Patent Owner argues that we should interpret two claim terms: “an
entity or object located in proximity to the second device” and “wireless
device.” PO Resp. 12–19. We address each of these terms below.
1. “an entity or object located in proximity to the second device”
Patent Owner argues that “an entity or object located in proximity to
the second wireless device,” as used in independent claims 19 and 25,
should be construed “to require that the claimed ‘entity or object’ must have
a physical presence.” PO Resp. 11. According to Patent Owner, “the
reference to the object being ‘located in proximity to the second device’
makes clear that the claimed ‘object’ of that phrase must be physically
present.” Id. at 12. Patent Owner argues similarly that “located in proximity
to the second device” also applies to the recited “entity,” thus requiring “that
IPR2020-00933
Patent 8,374,592 B2

10
the ‘entity’ referred to in this claim element must be physically present.” Id.
at 13. Patent Owner argues that “proximity” is used in accordance with its
ordinary and customary meaning and refers to physical placement. Id.
at 14–17.
Petitioner argues that we need not construe “entity or object” to
require a physical presence as proposed by Patent Owner because a device
can be in proximity to intangible objects. Pet. Reply 2–3. Petitioner argues
that Patent Owner’s citations to the ’592 patent’s use of “proximity” are not
relevant to how the term is used in the claims. Id. at 3–4 (citing PO
Resp. 15–17). Petitioner argues that Patent Owner’s declarant did not base
his interpretation of “proximity” on how the term is used in the specification
of the ’592 patent. Id. at 4–5.
Patent Owner replies that “object” must be construed to have a
physical presence because “the claimed ‘object’ is limited by the
requirement that it be ‘located in proximity to the second device.’” PO
Sur-reply 1; see also id. at 2–4 (presenting similar arguments). Patent
Owner contends that Petitioner’s assertions regarding Patent Owner’s
declarant take the testimony out of context. Id. at 5–9. According to Patent
Owner, “the issue here [is] whether the claimed ‘entity or object’ can be
‘located in proximity to the second wireless device’ if the ‘entity or object’
is not physically present.” Id. at 5.
Notwithstanding the arguments in its briefing, Petitioner’s counsel
acknowledged during the hearing that the claims require the entity or object
to have a physical presence. See, e.g., Tr. 8:17–19 (“[T]here’s no debate . . .
that physical presence is connoted by the word ‘proximity’ and by
‘located.’”). There is, accordingly, no controversy regarding whether “an
IPR2020-00933
Patent 8,374,592 B2

11
entity or object located in proximity to the second device” requires the entity
or object to have a physical presence. Moreover, as explained below our
decision does not depend on an express construction of this term. We
conclude, therefore, that there is no need for us to construe this term.
2. “wireless device”
Patent Owner argues that, as recited in the challenged claims,
“wireless device” “refer[s] to wireless communication capabilities, not that a
wireless device would be precluded from having any external wires
whatsoever.” PO Resp. 19. However, Patent Owner concedes that
construction of “wireless device” is “not necessary to resolve the dispute
here.” Id.
Petitioner argues that “‘wireless device’ should be construed as a
device without external wires,” noting that the claims of the ’592 patent
recite a “wireless device” rather than a “wireless communication device.”
Pet. Reply 5. However, Petitioner also concedes that construction of this
term is unnecessary. Id.
No construction of this term is necessary. The parties both agree that
no construction is needed, and as explained below our decision does not
depend on a construction of this term.
D. Overview of the Asserted Prior Art
1. Perttila
Perttila discloses “a system, apparatus, and method for sending
service data in response to electronic communications between a user
communications device and a merchant-media arrangement.” Ex. 1006 ¶ 8.
Figure 1a shows such a system and is reproduced below:
IPR2020-00933
Patent 8,374,592 B2

12

Figure 1a shows coupon-retrieval system 20 for the communication of an
electronic coupon to user 28 via link 42 established with source server 24 by
mobile communications device 28a. Id. ¶¶ 19, 36. When the user’s mobile
device is within proximity of merchant-media arrangement 36, which may
be a poster or the like, the arrangement transmits to the mobile device a
merchant ID code and, optionally, link information for connecting to the
server. Id. ¶ 37. This transmission may be via radio frequency identification
(RFID) or Bluetooth. Id. The mobile device establishes a communication
link with the server through a mobile network or the Internet and transmits a
merchant-information-request signal to the server. Id. ¶ 38. The server first
extracts the mobile device ID and the merchant ID code from the request.
Id. The server then generates an electronic coupon based on the merchant
ID code and provides the user with an option to download the coupon. Id.
¶¶ 28, 37–39.
IPR2020-00933
Patent 8,374,592 B2

13
2. Insolia
Insolia discloses “systems and methods for implementing a loyalty
program.” Ex. 1008, 1:7–8. Insolia recognizes that, regarding the
immediate consumption channel, which provides food and beverages that
are immediately available and ready to consume from vending machines and
the like, the diverse nature of the equipment used and of the consumer’s
interaction with the equipment can complicate the implementation of broad
marketing opportunities. Id. at 1:12–55. Insolia purports to provide a
system that overcomes these drawbacks. Id. at 2:7–11. Figure 1 illustrates
Insolia’s system and is reproduced below:

Figure 1 shows a block diagram illustrating a system for implementing a
loyalty network. Id. at 3:49–50. Loyalty program management system 10
includes personal terminal 12, interaction terminal 14, and loyalty server 24.
Id. at 5:47–64. The personal terminal is transported by user 16. Id.
at 5:65–66. The interaction terminal can be associated with product 18, such
as a beverage, equipment 20, such as a vending machine, or promotional
object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal
IPR2020-00933
Patent 8,374,592 B2

14
and the interaction terminal communicate when the personal terminal is
brought within proximity of the interaction terminal. Id. at 9:12–18. A
benefit, such as a loyalty point, can be awarded to the user for interacting
with the interaction terminal. Id. at 9:58–64. The benefit can be stored on
one or both of the personal terminal and the loyalty server. Id. at 13:35–38.
When used, the benefit is communicated to the equipment to provide the
user with a product for free or at a reduced price. Id. at 14:31–35. In some
embodiments, the rate at which the loyalty points are awarded can be filtered
to limit the accrual of rewards to a predefined rate. Id. at 36:19–20.
3. Davis
Davis discloses an advertising system that uses an online trust
network to target advertisements based upon the ratings of the
advertisements’ content or source. Ex. 1009 ¶ 4. A first user assigns trust
levels for ratings provided by other specific users of the system. Id. ¶ 35.
Ratings provided by other users are traced to the first user along trust paths.
Id. ¶ 37. An effective trust level is calculated along each trust path and an
effective rating of an entity, such as a restaurant, is calculated based on the
ratings along the trust paths. Id. Figure 4 illustrates the calculation of an
effective trust level and is reproduced below:
IPR2020-00933
Patent 8,374,592 B2

15

Figure 4 is a diagram of a mechanism for calculating an effective trust level
for various users U2–U7 within first user’s U1 trust network. Id. ¶ 38. By
way of example, there are two trust paths from first user U1 to user U6: a
first path from U1 to U2 to U6 and a second path from U1 to U3 to U6. Id.
The first path has an effective trust level of 30%, the product of the trust
level for U1 to U2 (100%) and the trust level for U2 to U6 (30%). Id. The
second path has a trust level of 49%, the product of the trust level for U1 to
U3 (70%) and the trust level for U3 to U6 (70%). Id. Averaging these
values, first user U1 has a 39.5% effective trust level for with user U6. Id.
In a similar manner, first user U1 has a 100% effective trust level with
user U5 and a 21% effective trust level with user U7. Id. at Fig. 4. An
effective rating for seller S1 of 5.03 is calculated by summing the products
of the effective trust level and rating for each user U5, U6, and U7, and
dividing by the sum of the effective trust levels. Id. ¶ 37 (Formula 1), Fig. 4.
IPR2020-00933
Patent 8,374,592 B2

16
The advertising system will only send advertisements to a user if the
effective rating for the seller is above a threshold level. Id. ¶¶ 39–40, 44.
E. Asserted Obviousness in View of Perttila and Insolia
Petitioner argues that claims 19–23 would have been obvious over the
combination of Perttila and Insolia. Pet. 17–45. We have reviewed the
Petition, Patent Owner Response, Petitioner Reply, Patent Owner Sur-reply,
and evidence of record and determine that, for the reasons explained below,
Petitioner has shown, by a preponderance of the evidence, that claims 19–23
would have been obvious in view of Perttila and Insolia and that Petitioner
has set forth reasoning with rational underpinnings why it would have been
obvious to combine the teachings of Perttila and Insolia.
1. Independent Claim 19
Petitioner relies on Perttila to disclose a method substantially as
recited in claim 19 and relies on Insolia to teach use of a loyalty program.
Pet. 26–39.
a. Preamble
Claim 19 recites “[a] method for a server to exchange information
with one or more wireless devices.” Ex. 1001, 24:56–57. Petitioner maps
Perttila’s source server 24 to the recited server, and user-communication
device 28 and merchant-media arrangement 36 to the recited wireless
devices. Pet. 26 (citing Ex. 1006 ¶¶ 8–9); see also id. at 26–28 (citing
Ex. 1003 ¶ 109; Ex. 1006 ¶¶ 8–9, 12, 19, 25, 60, Fig. 1a). Petitioner argues
that “a POSITA would have understood that Perttila discloses a wireless
merchant-media arrangement and at minimum it would have been obvious to
IPR2020-00933
Patent 8,374,592 B2

17
use a wireless merchant-media arrangement . . . to advantageously enable
easy location in a store.” Id. at 26–27 (emphasis omitted) (citing Ex. 1006
¶ 60).
Patent Owner does not contest this aspect of the Petition. See
generally PO Resp.
Perttila discloses that, when a user’s mobile communications
device 28 is within proximity of merchant-media arrangement 36, the
arrangement transmits a merchant ID code to the mobile device. Ex. 1006
¶ 37. The mobile device then establishes a communication link with source
server 24 and transmits a request containing the ID code to the server, and
the server generates an electronic coupon based on the merchant ID code
and provides the user with an option to download the coupon. Id. ¶¶ 36–39.
Perttila at least suggests that the user’s mobile communications device and
the merchant-media arrangement communicate wirelessly. See id. ¶ 37
(disclosing that the merchant-media arrangement can transmit the merchant
ID code to the mobile device via radio frequency identification (RFID) or
Bluetooth).
Accordingly, for the foregoing reasons, to the extent the preamble is
limiting, Perttila supports Petitioner’s contentions.
b. The Receiving Recitation
Claim 19 recites “the server receiving identifier information from a
first wireless device using a wide area wireless network, the identifier
information provided to the first wireless device from a second wireless
device using short range wireless communication.” Ex. 1001, 24:58–62.
Petitioner maps Perttila’s user-communication device 28 to the recited first
wireless device, merchant-media arrangement 36 to the recited second
IPR2020-00933
Patent 8,374,592 B2

18
wireless device, and the “merchant ID code” to the recited identifier
information. Pet. 28–29; see also id. at 29–30 (citing Ex. 1006 ¶¶ 9, 12–15,
37–38). Petitioner notes that the merchant-media device includes RFID
tag 38 or, alternatively, a local short-range wireless access point or beacon
device. Id. at 29–30 (quoting Ex. 1006 ¶¶ 37–38).
Patent Owner does not contest this aspect of the Petition. See
generally PO Resp.
As noted above, Perttila discloses that merchant-media
arrangement 36 transmits the merchant ID code to mobile communications
device 28 over a short-range wireless communication link, and the mobile
device sends the ID code to source server 24. Ex. 1006 ¶¶ 36–39.
Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
contentions.
c. The Determining Recitation
Claim 19 recites “said server using identifier information to determine
information concerning an entity or object located in proximity to the second
wireless device.” Ex. 1001, 24:63–65. Petitioner maps Perttila’s electronic
coupon to the recited information and “the content promoted by [Perttila’s]
billboard” to the recited entity or object and argues that the “‘remote source
server’ generates ‘an electronic coupon’ ‘in the form of an electronic data set
corresponding to the merchant-media’s ID code,’ [an] ‘electronic coupon
that corresponds to the content promoted by the billboard.’” Pet. 30; see
also id. at 30–32 (citing Ex. 1006 ¶¶ 15, 27–29, 37, 39).
Patent Owner makes several arguments regarding this recitation.
First, Patent Owner interprets the Petition to map Perttila’s billboard to the
recited second device and argues that Perttila does not disclose using its
IPR2020-00933
Patent 8,374,592 B2

19
merchant-media arrangement’s ID code “to determine information about ‘an
entity or object located in proximity to’ [the] billboard.” PO Resp. 30–31;
see also id. at 35 (“Petitioner has identified the merchant media
arrangement/billboard itself as the ‘second device’ of the challenged
claims.”). Rather, Patent Owner argues, Perttila’s electronic coupon is
associated with the billboard itself. Id. at 36 (“The Perttila server merely
uses the merchant media ID to determine the billboard to which the ID
relates . . . . [T]he Perttila server simply provides the coupon that it has been
told to provide based on the merchant media ID.”). “Perttila does not teach
that the entity or object being promoted by the billboard of the ‘merchant-
media arrangement’ is located in proximity to the disclosed ‘merchant-media
arrangement’ . . . .” Id. at 34.
Petitioner replies that Perttila’s electronic coupon is information
concerning an object in proximity to the “short-range communicator” (that
is, the RFID tag or Bluetooth link). Pet. Reply 7. Petitioner argues that such
objects include the billboard and content promoted by the billboard. Id.; see
also id. at 11 (“Because the billboard (and thus the promotional content) is
in proximity to the merchant-media arrangement’s tag/beacon, the billboard
and separately its promotional content each meet the requirement of the
claimed object.” (citing Pet. 30–32; Ex. 1003 ¶¶ 82, 113–114)).
Patent Owner argues that mapping the content promoted by Perttila’s
billboard to the recited object does not satisfy the claim requirements
because this mapping “results in reading the claim language to mean
‘[second wireless device] in proximity to the second wireless device.’” PO
Sur-reply 18–22 (alteration in original).
IPR2020-00933
Patent 8,374,592 B2

20
As we noted in the Institution Decision, Perttila’s merchant-media
arrangement includes RFID tag 38 (or, alternatively, a Bluetooth link). See
Inst. Dec. 19, 20–21. Petitioner maps the short-range transmitter to the
recited second device (see Pet. 28–30; Inst. Dec. 19, 20–21) and maps the
electronic coupon to the recited information (see Pet. 30; Inst. Dec. 19).
Petitioner maps the billboard and, separately, its contents to the recited entity
or object, which is in proximity to the short-range transmitter. See Pet. 30;
Pet. Reply 7; Inst. Dec. 20–21.
Patent Owner equates “merchant-media arrangement” as a billboard;
that is, a single entity. In the Institution Decision, we noted that the
merchant-media arrangement includes a billboard and the RFID tag or
Bluetooth link is “co-located” at the merchant-media arrangement. Inst.
Dec. 18–21. Petitioner maps the “short-range communicator,” which it
defines as the RFID tag or Bluetooth link, to the recited second device. Pet.
Reply 7; see also Pet. 30–31. Thus, we disagree with Patent Owner’s
assertion that the Petition maps the merchant media arrangement, as a
singular entity, to both the recited second wireless device and the recited
entity or object.
We further disagree with Patent Owner’s assertion that the electronic
coupon does not correspond to the content promoted by the billboard. See
PO Resp. 34–35. Perttila discloses that the “downloadable electronic
coupon . . . corresponds to the content promoted by the billboard.” Ex. 1006
¶ 27 (emphasis added). Perttila’s remote server uses the merchant-media ID
code “to associate the promotional information with an e-coupon to be
provided to the user visiting this billboard location.” Id. ¶ 28.
IPR2020-00933
Patent 8,374,592 B2

21
In its Reply, Petitioner further maps the “store in which the merchant-
media arrangement is located” and “product offerings in the store” to the
recited entity or object. Pet. Reply 7 (citations omitted). We disagree with
these mappings. As noted above, Perttila’s e-coupon corresponds to the
content of the billboard. Petitioner has cited no disclosure that Perttila’s
e-coupon corresponds to the store or an item in the store.
Regarding Petitioner’s “store in which the merchant-media
arrangement is located” mapping, Petitioner does not explain adequately
how Perttila’s e-coupon, which Petitioner maps to the recited information,
concerns the store itself. Rather, Petitioner relies only on products offered
for sale within the store. See Pet. Reply 11–12; Tr. 22:25–23:24.
Regarding Petitioner’s “product offerings in the store” mapping, at
best, Petitioner appears to present an inherency argument that if the billboard
is placed in a store, the advertised products must be in the store. See Pet.
Reply 11 (“Perttila expressly discloses placing the merchant-media
arrangement ‘at the store itself,’ such that the location where product
offerings corresponding to the e-coupons are redeemed is the ‘same
location’ as where the e-coupons are provided.” (citing Ex. 1006 ¶¶ 28, 39;
Pet. 20–21, 30–32; Ex. 1003 ¶¶ 86, 113–114)). However, while it may be
likely that the advertised products are in the store, this is not necessarily the
case. For example, the products may be out of stock, in which case
Petitioner acknowledges that the claim language is not satisfied. Tr. 24:7–12
(“[T]he limitations are met when the e-coupon is distributed for a product,
and that product is in the store with the merchant media arrangement. If
there are times, for example, when the store is sold out of that particular
product, that wouldn’t be met during those times.”). Petitioner’s assertions
IPR2020-00933
Patent 8,374,592 B2

22
regarding the recited entity or object corresponding to product offerings
within the store are based on speculation, which is insufficient to satisfy the
requirements for an inherency argument. In re Robertson, 169 F.3d 743,
745 (Fed. Cir. 1999) (“Inherency, however, may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” (citations omitted)).
Additionally, Patent Owner argues that Perttila’s server does not make
a determination that any object is in proximity to the second wireless device.
PO Resp. 32–33; see also PO Sur-reply 12–13.
Petitioner argues that claim 1 does not require the central server to
make a determination that an object is in proximity to the second device.
Pet. Reply 8–9.
Claim 19 requires the central server to “determine information
concerning an entity or object located in proximity to the second wireless
device” and to determine either “a name associated with said entity or object
located in proximity to the second wireless device or a name associated with
said loyalty program.” However, claim 19 does not require the server to also
determine that the object (or entity) is in proximity to the second device.
Moreover, Patent Owner’s arguments are inconsistent with the ’592 patent,
which indicates that the first device is positioned in proximity to an object
about which information is delivered rather than the server making a
determination that an object is in proximity to the second device. See, e.g.,
Ex. 1001, 8:45–54 (discussing the first device being “tied to a location or
product”). Even if we were to interpret the claims as containing such a
requirement, as noted above Perttila’s server “associate[s] the promotional
information with an e-coupon to be provided to the user visiting this
IPR2020-00933
Patent 8,374,592 B2

23
billboard location.” Ex. 1006 ¶ 28. The “the promotion information is
linked to th[e] particular location.” Id. Thus, Perttila at least suggests that
its server has information that the billboard is in proximity to the RFID tag.
Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
contentions.
d. The Delivering Recitation
Claim 19 recites,
the server delivering information to the first wireless device
based at least in part upon the identifier information and
information representing a reward for an entity associated with
the first wireless device’s participation in a loyalty program,
wherein said information includes a name associated with said
entity or object located in proximity to the second wireless
device or a name associated with said loyalty program as
determined by the server utilizing said identifier information.
Ex. 1001, 24:66–25:7. Petitioner maps Perttila’s electronic coupon to the
recited information and argues that the coupon is transmitted to user-
communication device 28 and “can be ‘validated to facilitate merchant
transactions’ in an ‘electronic commerce arrangement.’” Pet. 32–33 (citing
Ex. 1006 ¶¶ 15, 28, 33). Petitioner argues that “[t]he e-coupon contains the
name of a particular ‘manufacturer, product, service, event, etc.,’ associated
with the advertisement and/or product/service in the same store.” Id. at 33
(citing Ex. 1006 ¶¶ 25, 39). According to Petitioner, “[a] POSITA would
have further understood that the coupon itself has the name of the store or
company associated with the advertisement/company to inform the recipient
where/how to redeem it.” Id. at 33 (citing Ex. 1003 ¶ 117); see also id.
at 33–34 (citing Ex. 1006 ¶¶ 9, 15, 20, 25, 28, 33, 39, 69, Fig. 1b).
IPR2020-00933
Patent 8,374,592 B2

24
Petitioner acknowledges that “Perttila . . . does not disclose a loyalty
program.” Pet. 36 (emphasis omitted). Petitioner relies on Insolia to teach
“a system for implementing a loyalty program,” and argues that Insolia’s
system includes an “interaction terminal [that] may ‘be associated with a
promotional object’ such as ‘a poster, an advertisement . . . or a display,’ and
[a] server [that] provides loyalty rewards to a user’s personal terminal when
it is ‘in proximity’ with the promotional object.” Id. (second alteration in
original) (citing Ex. 1008, 2:21–23, 6:32–37, 9:16–18). Petitioner argues
that a person having ordinary skill in the art
would have been motivated to apply Insolia’s teachings of a
server providing loyalty points to a user’s device when the
device is in proximity to an advertisement or other merchant-
media arrangement in implementing Perttila’s server . . . such
that the e-coupon is given as an award for participation in a
loyalty program, to advantageously provide an additional
incentive to engage with the advertisement.
Id. at 36–37 (emphasis omitted) (citing Ex. 1003 ¶ 120); see also id.
at 25–26.
Perttila discloses that source server 24 uses the merchant ID code to
generate an “electronic coupon that corresponds to the content promoted by
the billboard.” Ex. 1006 ¶ 27. Perttila discloses that the coupon includes
“information [that] may or may not involve a pricing information for a
particular manufacturer, product, service, event, etc.” Id. ¶ 25. The server
provides the user with an option to download the coupon. Id. ¶¶ 28, 37–39.
Perttila explains that the electronic coupon is part of an electronic commerce
transaction: “The remote server can generate and return an appropriate
electronic commerce application, such as an electronic coupon by relying on
the merchant ID code to identify the type of product conveyed by the
IPR2020-00933
Patent 8,374,592 B2

25
merchant-media arrangement.” Id. ¶ 33. The user then redeems the coupon,
either directly with the retailer or through continued communication with the
server. Id. ¶¶ 40–43.
Insolia recognizes that “[o]perators may want to provide the consumer
with an experience that breeds consumer loyalty, and consumers may want
to be rewarded for their loyalty.” Ex. 1008, 2:1–3. Insolia discloses
providing the user with a benefit, such as a loyalty point, for interacting with
the system. Id. at 9:58–64. These loyalty points can be awarded based on
“trademark loyalty” to a particular brand. Id. at 35:8–18. The consumer can
use the loyalty points to acquire a product for free or at a reduced price. Id.
at 14:31–35.
Insolia’s loyalty program management system 10 includes personal
terminal 12, interaction terminal 14, and loyalty server 24. Ex. 1008,
5:47–64, Fig. 1. The personal terminal is transported by user 16. Id.
at 5:65–66. The interaction terminal can be associated with product 18, such
as a beverage, equipment 20, such as a vending machine, or promotional
object 22, such as a poster. Id. at 5:51–53, 6:9–37. The personal terminal
and the interaction terminal communicate when the personal terminal is
brought within proximity of the interaction terminal. Id. at 9:12–18. A
benefit, such as a loyalty point, can be awarded to the user for interacting
with the interaction terminal. Id. at 9:58–64. Petitioner’s declarant testifies
that incorporating Insolia’s reward of loyalty points into Perttila’s system
would provide incentives for a customer to engage with the merchant-media
arrangement. Ex. 1003 ¶ 120. We credit this testimony of Petitioner’s
declarant, which Patent Owner does not rebut.
IPR2020-00933
Patent 8,374,592 B2

26
Accordingly, for the foregoing reasons, Perttila and Insolia support
Petitioner’s contentions. We further determine that Petitioner has set forth
reasoning with rational underpinning for modifying Perttila to include a
loyalty reward system as taught by Insolia.
Patent Owner argues that “Insolia does not disclose that its ‘loyalty
server’ delivers information in the form of a ‘name’ associated with a
‘loyalty program’ to any other component of the system.” PO Resp. 38.
Instead, Patent Owner asserts, Insolia’s “‘loyalty server’ delivers, at most,
only ‘benefits’ to the other components,” but “[t]here is no teaching that the
‘benefits’ delivered by the ‘loyalty server’ include a ‘name.’” Id. at 39.
Similarly, Patent Owner argues that Petitioner does not set forth adequate
explanation for why an ordinarily skilled artisan would have modified
Perttila’s system based on the teachings of Insolia. Id. at 39–41.
Petitioner argues that Patent Owner’s arguments misconstrue its
challenge in the Petition, which Petitioner characterizes as “applying
Insolia’s loyalty program teachings in implementing Perttila’s e-coupon
system.” Pet. Reply 14 (citing Pet. 36–39). Petitioner argues that, when
applying Insolia’s teaching of loyalty rewards to Perttila’s system, Perttila’s
“e-coupon is given as an award for participation in a loyalty program, to
advantageously provide additional incentive to engage with the
advertisement.” Id. at 15 (citing Pet. 36–37; Ex. 1003 ¶ 120).
Patent Owner replies that Petitioner’s reliance on Insolia is
“meaningless” because “Petitioner’s circular argument takes a coupon,
renames it a ‘reward,’ and concludes that the coupon’s product or company
name is now, necessarily, ‘a name associated with said loyalty program as
IPR2020-00933
Patent 8,374,592 B2

27
determined by the server utilizing said identifier information.’” PO
Sur-reply 24.
Patent Owner’s arguments appear to misunderstand Petitioner’s
arguments. Petitioner asserts that an ordinarily skilled artisan would have
incorporated Insolia’s teaching of a loyalty program by treating Perttila’s
e-coupons in the same manner that Insolia treats loyalty points such that
Perttila’s “e-coupon is given as an award for participation in a loyalty
program” and “a POSITA would have understood that the name associated
with the loyalty program—such as the company promoting a particular
product—is included with the e-coupon.” Pet. 36–37. The e-coupons would
be awarded based on, for example, brand loyalty. Petitioner asserts that the
e-coupon would have the company name. Id. at 37. This assertion is
supported by the testimony of Petitioner’s declarant. See Ex. 1003
¶¶ 117, 119.
Accordingly, for the foregoing reasons, Perttila and Insolia support
Petitioner’s contentions. We further determine that Petitioner has set forth
reasoning with rational underpinning for modifying Perttila to deliver
e-coupons as part of a loyalty reward program.
e. Conclusion
For the foregoing reasons, we conclude that Petitioner has shown, by
a preponderance of the evidence, that claim 19 is unpatentable over the
combination of Perttila and Insolia.
2. Dependent Claim 20
Claim 20 depends from claim 19 and further recites “wherein said
information delivered by said server to the first wireless device is further
IPR2020-00933
Patent 8,374,592 B2

28
based upon a history of previous detections related to said identifier
information.” Ex. 1001, 25:8–11. Petitioner relies on Insolia to teach using
a loyalty system and basing the delivery of information from a server to a
user’s communication device on a history of the user’s past interaction with
the second device. Pet. 39–40. Petitioner argues that “Insolia discloses a
server limiting the loyalty rewards given to a user’s ‘personal terminal’ to a
‘predefined rate,’ based on past interactions with the ‘interaction terminal’
stored by the server and loyalty awards sent to the terminal, to ‘reduce[]
repeated visits’ to the same equipment ‘too frequently.’” Id. at 40 (alteration
in original) (emphasis omitted). Petitioner argues that it would have been
obvious to apply these teachings to Perttila’s server for the same reasons
advanced for claim 19. Id.
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
As noted above, Insolia’s system breeds customer loyalty, which
benefits merchants, and rewards customers for their loyalty by providing
loyalty points to customers for interacting with the system. Ex. 1008, 2:1–3,
9:58–64. Loyalty points can be awarded without the customer making a
purchase. Id. at 35:11–15. The “loyalty server . . . may filter the loyalty
reward to minimize abuses and fraudulent activities.” Id. at 35:15–18.
Similarly, the rate at which loyalty points are awarded can be filtered to limit
the accrual of rewards to a predefined rate to “reduce[] repeated visits to the
same vending or host equipment too frequently.” Id. at 36:17–25. Thus,
Insolia teaches tracking a user’s interactions with a particular device.
Insolia’s system incentivizes customers to interact with the system, but
provides safeguards against abuse of the loyalty reward program. Moreover,
IPR2020-00933
Patent 8,374,592 B2

29
we determine that Petitioner has set forth reasoning with rational
underpinning for modifying Perttila to limit the rate at which users can
obtain e-coupons.
Accordingly, for the foregoing reasons, Perttila and Insolia support
Petitioner’s contentions that Perttila and Insolia disclose the subject matter
of claim 20, and we conclude that Petitioner has shown by a preponderance
of the evidence that this claim is unpatentable.
3. Dependent Claim 21
Claim 21 depends from claim 19 and further recites “wherein said
information delivered by said server to the first wireless device is further
based upon a history of previous information delivered to said first wireless
device representing a reward or electronic coupon.” Ex. 1001, 25:13–17.
Petitioner relies on Insolia to teach using a reward system and basing the
delivery of information from a server to a user’s communication device on a
record of loyalty rewards previously provided to the user. Pet. 41–43.
Petitioner argues that “Insolia discloses that the ‘accrual of loyalty awards’
. . . is based on a record of loyalty awards previously provided to the user.
. . . [T]he user ‘may redeem the loyalty rewards’ for products and services
‘when a suitable balance has accrued.’” Id. at 42 (citing Ex. 1008,
35:19–21, 36:34–38, 36:53–60). Petitioner argues that it would have been
obvious to apply these teachings to Perttila’s server because “such an
arrangement advantageously limits the value of ‘products o[r] services’ that
can be redeemed using loyalty points.” Id. (citing Ex. 1003 ¶ 126; Ex. 1008,
35:21–22, 36:56–60).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
IPR2020-00933
Patent 8,374,592 B2

30
As explained above, Insolia’s loyalty reward system incentivizes
customers to interact with the system by providing loyalty points to
customers for interacting with the system. E.g., Ex. 1008, 2:1–3, 9:58–64.
When a customer has accrued a certain balance of rewards, the customer
may redeem the rewards. Id. at 35:19–21, 36:53–56. Petitioner’s declarant
opines that incorporating these teachings into Perttila’s system would
“advantageously limit[] the value of ‘products o[r] services’ that can be
redeemed using loyalty points.” Ex. 1003 ¶ 126. We credit this testimony
of Petitioner’s declarant, which Patent Owner’s declarant does not rebut.
Therefore, we determine that Petitioner has set forth reasoning with rational
underpinning for modifying Perttila to limit the rate at which users can
obtain e-coupons.
Accordingly, for the foregoing reasons, Perttila and Insolia support
Petitioner’s contentions that Perttila and Insolia disclose the subject matter
of claim 21, and we conclude that Petitioner has shown by a preponderance
of the evidence that this claim is unpatentable.
4. Dependent Claim 22
Claim 22 depends from claim 19 and further recites “wherein said
first server is prevented from delivering information representing a reward
or electronic coupon to the first wireless device based upon a history of
previous information delivered to said first wireless device representing a
reward or electronic coupon.” Ex. 1001, 25:18–22. Petitioner relies on
Insolia to teach using a reward system in which “the loyalty reward is
filtered to limit the accrual of loyalty rewards to a predefined rate,’ ‘the
consumer may obtain loyalty rewards from the interaction terminal at a rate
that is no faster than the predefined rate.’” Pet. 43.
IPR2020-00933
Patent 8,374,592 B2

31
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
As explained in § II.E.2 above, Insolia teaches limiting the accrual of
rewards to a predefined rate to “reduce[] repeated visits to the same vending
or host equipment too frequently.” Ex. 1008, 36:17–25. Moreover, we
determine that Petitioner has set forth reasoning with rational underpinning
for modifying Perttila to limit the rate at which users can obtain e-coupons.
For the same reasons as explained above, Perttila and Insolia support
Petitioner’s contentions that Perttila and Insolia disclose the subject matter
of claim 22, and we conclude that Petitioner has shown by a preponderance
of the evidence that this claim is unpatentable.
5. Dependent Claim 23
Claim 23 depends from claim 19 and further recites “wherein said
information delivered by said server to the first wireless device is
additionally based on a history of past purchasing behavior associated with
an account associated with either the first wireless device or the identifier
information.” Ex. 1001, 25:24–28. Petitioner relies on Insolia to teach
providing “additional loyalty rewards or promotional rewards . . . to the
consumer when the consumer demonstrates product loyalty.” Pet. 44; see
also id. at 44–45 (citing Ex. 1008, 12:45–46, 35:31–36, 35:60–36:2).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
Insolia discloses that its system varies the value of the benefit
provided to the customer based on the customer’s prior purchases:
The loyalty management engine or module 38 . . . may
vary or limit the benefit depending on the nature of the
IPR2020-00933
Patent 8,374,592 B2

32
interaction of the user 16 with the product 18, equipment 20, or
promotional object 22. For example, the loyalty management
engine or module 38 may set a relatively more valuable benefit
when the loyalty management engine or module 38 can confirm
that the user 16 actually purchased or received a product from
the equipment 20, and the loyalty management engine or
module 38 may set a relatively less valuable benefit when the
loyalty management engine or module 38 cannot confirm that
the user 16 purchased or received a product from the
equipment 20.
Ex. 1008, 12:45–56. Petitioner’s declarant opines that including these
features in Perttila’s system would allow the merchant to reward a
customer’s product loyalty and incentivize the customer to purchase the
advertised goods. Ex. 1003 ¶ 131. We credit this testimony of Petitioner’s
declarant, which Patent Owner’s declarant does not rebut. Therefore, we
determine that Petitioner has set forth reasoning with rational underpinning
for modifying Perttila to vary the benefit provided to a customer based on
the customer’s past purchasing behavior.
Accordingly, for the foregoing reasons, Perttila and Insolia support
Petitioner’s contentions that Perttila and Insolia disclose the subject matter
of claim 23, and we conclude that Petitioner has shown by a preponderance
of the evidence that this claim is unpatentable.
F. Asserted Obviousness in View of Perttila and Davis
Petitioner argues that claims 25, 26, 28, and 29 would have been
obvious over the combination of Perttila and Davis. Pet. 45–55. We have
reviewed the Petition, Patent Owner Response, Petitioner Reply, Patent
Owner Sur-reply, and evidence of record and determine that, for the reasons
explained below, Petitioner has not shown, by a preponderance of the
IPR2020-00933
Patent 8,374,592 B2

33
evidence, that claims 25, 26, 28, and 29 would have been obvious in view of
Perttila and Davis.
Petitioner relies on Perttila to disclose a method substantially as
recited in independent claim 25 and relies on Davis to teach use of feedback
ratings. Pet. 48–53. In large measure, the recitations of claim 25 are similar
to those of claim 19, and Petitioner relies on the same arguments made with
respect to claim 19. See Ex. 1001, 25:36–53; Pet. 48–53.
One notable difference, however, is that claim 25 recites “said server
using the identifier information to determine a name of an entity or object
located in proximity to the second wireless device.” Ex. 1001, 25:44–46
(emphasis added). Petitioner maps “the content promoted by [Perttila’s]
billboard” to the recited entity or object and argues that Perttila’s server
“generates ‘an electronic coupon’ ‘in the form of an electronic data set
corresponding to the merchant-media’s ID code,’ [an] ‘electronic coupon
that corresponds to the content promoted by the billboard.’” Pet. 49. In
addition to relying on its showings made regarding the determining and
delivering recitations of claim 19, Petitioner argues that Perttila’s
“merchant-media ID is used to determine information, including a name of
the product being promoted as well as its manufacturer, associated with the
merchant-arrangement that is subsequently sent to the user communication
device.” Id. at 50 (citing Ex. 1003 ¶¶ 140–141).
Patent Owner argues that the Petition does not explain adequately how
Perttila’s system uses identifier information to determine the name of an
entity or object as required by claim 25. PO Resp. 43–45. Patent Owner
argues that “the ‘name of the product being promoted as well as its
IPR2020-00933
Patent 8,374,592 B2

34
manufacturer’ is not ‘a name of an entity or object located in proximity to
the second wireless device’ as recited” in claim 25. Id. at 44.
In reply, Petitioner argues that Perttila’s e-coupon contains a name
“associated with” the subject matter promoted by the billboard, the store in
which the billboard is located, and products in proximity to the billboard.
Pet. Reply 18–19, 20–21.
We agree that the Petition does not explain adequately how Perttila
uses the merchant-media ID code, which Petitioner maps to the recited
identifier information (see Pet. 28–30, 49), to determine the name of the
recited entity or object as required by claim 25. In the Petition, Petitioner
asserts only that Perttila’s “merchant-media ID is used to determine
information, including a name of the product being promoted as well as its
manufacturer, associated with the merchant-arrangement.” Pet. 50
(emphasis added). However, as explained in § II.E.1.c above, Petitioner’s
assertions regarding the recited entity or object corresponding to product
offerings within the store rely on speculation and fail to demonstrate with
requisite particularity how this limitation is satisfied by Perttila. Petitioner
similarly fails to explain adequately how the manufacturer of a promoted
product is necessarily in proximity to the merchant-media arrangement.
Petitioner’s declarant presents substantially the same arguments as those
presented in the Petition, and also fails to explain how Perttila satisfies the
requirements of claim 25. See Ex. 1003 ¶¶ 140–141; Pet. 50 (citing same).
Petitioner presents additional mappings in its Reply to assert how
Perttila discloses this limitation: “a name associated with the (1) ‘particular
manufacturer, product, service, event, etc.,’ promoted on a billboard, such as
a ‘particular food’; (2) ‘store itself’ in which the billboard is located . . . ;
IPR2020-00933
Patent 8,374,592 B2

35
and (3) products in proximity to the billboard.” Pet. Reply 19 (citations
omitted). Petitioner’s first and third mappings are reiterations or variations
of its mapping in the Petition and fail for the same reasons explained above.
Regarding Petitioner’s second mapping, we note that, rather than merely
requiring a name associated with an entity or object, claim 25 recites “a
name of an entity or object.” Ex. 1001, 25:44–45. Thus, Petitioner’s second
mapping would require the server to use the merchant-media ID code (which
Petitioner maps to the recited identifier information) to determine the name
of the store. Petitioner cites to paragraph 39 of Perttila to support its
contention, arguing that this paragraph discloses “informing a user
where/how to redeem the coupon.” Pet. Reply 19. Paragraph 39 discloses
that a customer may receive an e-coupon and “store it for later activation” at
“a merchant-purchase center.” We see no disclosure, however, of Perttila
disclosing that the server determines the name of the store. Petitioner’s
conclusory assertions fail to provide clarification.
Petitioner relies on paragraphs 115–117 and 140–141 of the Williams
Declaration to support its assertions. See Pet. 50; Pet. Reply 19. However,
Mr. Williams fails to explain how Perttila’s server uses the merchant-media
ID code to determine the name of an entity or object located in proximity to
the merchant-media arraignment. In large part, Petitioner’s declarant
presents substantially the same arguments as those presented in the Petition,
and, thus, fails to explain how Perttila satisfies the requirements of claim 25
for the reasons discussed previously. See Ex. 1003 ¶¶ 116 (discussing “a
name associated with said entity or object”), 140 (presenting a conclusory
assertion). Additionally, Mr. Williams cites to Perttila paragraphs 25 and 39
to support his assertion that Perttila’s “electronic coupon information
IPR2020-00933
Patent 8,374,592 B2

36
includes the name and ‘pricing information’ of ‘a particular manufacturer,
product, service, [or] event’ related to the advertisement.” Ex. 1003 ¶ 117.
However, these paragraphs do not contain any discussion of a name.
Moreover, as discussed above, claim 25 requires the server to determine the
name of the object or entity rather than a name “related to” an
advertisement.
For the foregoing reasons, Petitioner’s arguments and evidence fail to
provide adequate support for Petitioner’s contentions that Perttila and Davis
teach or suggest a server using identifier information to determine the name
of an entity or object located in proximity to the second wireless device as
required by claim 25 and incorporated into dependent claims 26, 28, and 29.
Therefore, Petitioner fails to meet its burden of demonstrating by a
preponderance of the evidence that these claims are unpatentable.
III. CONCLUSION5
In summary,
Claim(s) 35 U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
19–23 103(a) Perttila,
Insolia
19–23

5 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
IPR2020-00933
Patent 8,374,592 B2

37
Claim(s) 35 U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
25, 26, 28,
29
103(a) Perttila,
Davis
25, 26, 28, 29
Overall
Outcome
19–23 25, 26, 28, 29
IV. ORDER
Accordingly, it is
ORDERED that claims 19–23 of the ’592 patent are determined to be
unpatentable;
FURTHER ORDERED that claims 25, 26, 28, and 29 of the
’592 patent are not determined to be unpatentable; and
FURTHER ORDERED that, because this is a final written decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. §§ 42.8(a)(3), (b)(2).
IPR2020-00933
Patent 8,374,592 B2

38
For PETITIONER:
James L. Davis, Jr.
Cassandra Roth
ROPES & GRAY LLP
james.l.davis@ropesgray.com
cassandra.roth@ropesgray.com

For PATENT OWNER:
Lauren N. Robinson
Aaron R. Hand
BUNSOW DE MORY LLP
lrobinson@bdiplaw.com
ahand@bdiplaw.com