Proxicom Wireless, LLC

Patent Trials and Appeals Board

Nov 8, 2021

IPR2020-00932 (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.
____________

IPR2020-00932
Patent 8,090,359 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 All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background
Target Corporation (“Petitioner”) filed a Petition for inter partes
review of claims 9, 22, 28, 35, 38–41, and 51 (“the challenged claims”) of
U.S. Patent No. 8,090,359 B2 (Ex. 1001, “the ’359 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.”), 30.
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 9, 22, 28, 35, 38–41, and 51 of
the ’359 patent are unpatentable.

1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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B. Real Parties in Interest
Petitioner identifies itself as the sole real party in interest. Pet. 5.
Patent Owner identifies itself as the sole real party in interest.
Paper 4, 2.
C. Related Matters
The parties indicate that the ’359 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 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. The parties further note that the ’359 patent is the subject
of a petition for inter partes review filed by Petitioner and challenging
different claims in IPR2020-00931 (“the ’931 IPR”). Pet. 6; Paper 4, 2.
D. The Challenged Patent
The ’359 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, 2:53–57. The devices use a short range communication protocol,
such as Bluetooth, only to detect the presence of other devices and use a
long range communication protocol, such as Wi-Max, to communicate with

2 Stayed on June 17, 2020 pending resolution of ten petitions for inter partes
review filed by Petitioner. See Paper 6.
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a central server and to perform the actual substantive communications with
other devices. Id. at 6:33–46. Each device transmits identifier information
via short range communication as a proximity detection process. Id.
at 6:49–53. 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 3:55–62. 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 4:12–60.
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, 7:20–29. This application is illustrated in
Figure 2, which is reproduced below:

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Figure 2 shows a block diagram of fixed broadcast device 204 and mobile
device 202. Id. at 5:6–7. 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. The server may also
coordinate the several steps of an electronic commerce transaction between
the user’s device and the broadcast device. Id. at 17:36–18:64.
E. The Challenged Claims
Petitioner challenges claims 9, 22, 28, 35, 38–41, and 51 of the
’359 patent. Pet. 1, 10. All of these claims are dependent claims, with each
of claims 9, 28, 35, 38–41, and 51 depending directly from independent
claim 1 and claim 22 depending directly from independent claim 14.
Claims 1 and 9 are reproduced below:
1. A method for a central server to exchange information
between one or more wireless devices comprising the steps of:
the central server receiving second device identifier
information from a first wireless device, the second device
identifier information having been collected by the first wireless
device from a second device and wherein said second device
provides the second device identifier information to the first
wireless device using short range communication without the
use of wires from the second device to the first wireless device;
said central server using the second device identifier
information to determine one or more of an identity or related
information concerning an entity or object located in proximity
to the second device; and
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subsequent to the step of the central server receiving the
second device identifier information from the first wireless
device, the central server taking further action to deliver
information or a service to the first wireless device based at
least in part upon (a) the second device identifier and (b) at least
one of the following:
(i) feedback ratings relevant to an entity associated with
either the first wireless device or the second device identifier
information;
(ii) information representing a reward for an entity
associated with the first device’s participation in a loyalty
program; or
(iii) a current step in a multiple step process for an
ongoing electronic commerce transaction.
9. The method of claim 1 wherein the steps performed by
the central server further comprise:
facilitating a purchase of the goods or services from a
merchant account associated with the second wireless device
and a customer account associated with the first wireless
device;
providing confirmation to each account; and/or
receiving customer confirmation of receipt of a good or
service via the first wireless device, thereby completing a
transaction.3
Ex. 1001, 23:35–63, 24:47–56.
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
Swartz US 6,837,436 B2, issued Jan. 4, 2005 1007

3 We note that claim 9 has been modified by a Certificate of Correction.
Ex. 1001, 32.
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We instituted trial based on all asserted claims and grounds of
unpatentability as follows:
Claims Challenged 35 U.S.C. § Reference(s)
9, 22, 51 102(b)4 Perttila
9, 22, 51 103(a) Perttila
9, 22, 28, 35, 38–41 103(a) Perttila, Swartz
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.
§ 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).
“Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every
limitation is found either expressly or inherently in a single prior art
reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed.

4 The application resulting in the ’359 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
sections 102 and 103.
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Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d
1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single
prior art disclosure of all elements of a claimed invention arranged as in the
claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332
(Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542,
1548 (Fed. Cir. 1983)).
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.5 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

5 The parties have not directed us to any such objective evidence.
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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 generally sufficient for the Board to evaluate the Petition Grounds.” PO
Resp. 15–16. However, Patent Owner also notes that “Petitioner’s proposed
level of skill in the art does not include any reference to electronic
commerce” and contends that “a POSITA should also have 1-2 years of
experience designing or implementing systems for electronic commerce
including the use of wireless communications.”6 Id. at 16 (citing Ex. 2010
¶¶ 6–9, 22–24).
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. We note that we would reach the same conclusions herein
using Patent Owner’s alternate definition.
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

6 We note that Patent Owner does not assert that this additional proposed
requirement has any bearing on any disputed issue in this case.
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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.
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, ‘local
[area/wireless] link’),” but does not explain how this assertion affects claim
construction. Id. (alteration in original). 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
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prior art . . . meets the limitations under these constructions.” Id. at 15
(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. 18–26. 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 device,” as used in independent claims 1 and 14, should be
construed “to require that the claimed ‘entity or object’ must have a physical
presence.” PO Resp. 18. 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 19. Patent
Owner argues similarly that “located in proximity to the second device” also
applies to the recited “entity,” thus requiring “that the ‘entity’ referred to in
this claim element must be physically present.” Id. at 19–20. Patent Owner
argues that “proximity” is used in accordance with its ordinary and
customary meaning and refers to physical placement. Id. at 21–24.
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. Petitioner argues
that Patent Owner’s citations to the ’359 patent’s use of “proximity” are not
relevant to how the term is used in the claims. Id. at 3–4 (citing PO
Resp. 21–23). 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 ’359 patent. Id. at 4–5.
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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, “[t]he
crucial question about ‘an entity or object located in proximity to the second
device’ is whether the claimed ‘entity or object’ can be ‘located in proximity
to the second 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
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. 25–26. However, Patent Owner concedes that
construction of “wireless device” is “not necessary to resolve the dispute
here.” Id. at 25.
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Petitioner argues that “‘wireless device’ should be construed to
require a device without external wires,” noting that the claims of the
’359 patent recite a “wireless device” rather than a “wireless communication
device.” Pet. Reply 5–6. However, Petitioner also concedes that “no
construction of this term is necessary.” Id. at 5.
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:

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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.
2. Swartz
Swartz discloses a marketing and shopping system. Ex. 1007,
1:20–25. Figure 1 shows the system and is reproduced below:
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Figure 1 shows a block diagram of a preferred embodiment of the system,
which includes portable terminals 12A–12F and central host 14. Id.
at 3:62–63, 4:58–5:23, 9:8–11. In use, customers identify themselves to the
system, such as by inserting a loyalty card into a card reader. Id.
at 18:29–33. The system then assigns a portable terminal to the user. Id.
at 18:58–62. Alternatively, customers can use their own portable terminals.
Id. at 19:48–49. The customer then proceeds through the store and uses the
portable terminal to record items the customer wishes to purchase. Id.
at 20:18–19. This can be done by, for example, using the portable terminal
to scan a bar code on each item. Id. at 20:19–27. After the customer has
selected all of the items to be purchased, the customer returns the portable
terminal to the dispenser unit, and information collected with the portable
terminal regarding the purchased items is processed by a central processing
unit. Id. at 22:1–8. The customer then pays for the selected products, with
the system accounting for any discounts or coupons to be applied. Id.
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at 23:8–11, 23:37–45. By allowing the customers, rather than store
employees, to scan and bag their selected items as they shop, the store saves
money and the customer saves time. Id. at 22:48–60.
E. Asserted Anticipation by or Obviousness in View of Perttila
Petitioner argues that claims 9, 22, and 51 would have been
unpatentable as being anticipated by or obvious in view of Perttila.
Pet. 18–45. In support of its showing, Petitioner relies upon the Williams
Declaration. Id. (citing Ex. 1003). 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 9, 22, and 51 would
have been unpatentable in view of Perttila.
Claims 9 and 51 depend directly from independent claim 1, and
claim 22 depends directly from independent claim 14. Ex. 1001, 24:47–56,
26:38–47, 28:63–65. Although Petitioner does not challenge the
independent claims, the recitations of the independent claims are
incorporated into the challenged claims, all of which are dependent claims.
Thus, the Petition addresses the recitations of the independent claims.
Pet. 25–34, 38–43. Accordingly, we analyze these claims, as well as the
challenged claims, below.
1. Independent Claim 1
Claim 1 recites a method for a central server to exchange information
between one or more wireless devices and includes steps performed by a
central server, a first wireless device, and a second device. Ex. 1001,
23:35–63. Of particular relevance, claim 1 recites “said central server using
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the second device identifier information to determine one or more of an
identity or related information concerning an entity or object located in
proximity to the second device.” Id. at 23:46–49. Petitioner maps Perttila’s
electronic coupon to the recited identity or related 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
merchant-media arrangement’s ID code “to determine information about ‘an
entity or object located in proximity to’ [the] billboard.” PO Resp. 36; see
also id. at 41 (“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 42 (“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 40.
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Petitioner replies that Perttila’s electronic coupon is related
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 12 (“Because the billboard
(and thus the content it is promoting) is, in fact, in proximity to (‘co-located’
with) 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 ¶¶ 83, 117–118)).
Patent Owner replies that Petitioner’s mapping of the short-range
transmitter to the recited second device is inconsistent with Petitioner’s
mapping of Perttila’s merchant ID code to the recited second device
identifier information because the merchant ID code identifies the billboard
(or its content), but does not identify the RFID tag or Bluetooth link. PO
Sur-reply 16–18. 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 device] in proximity to the second device.’” Id. at 18–22
(alteration in original).
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. Petitioner maps the short-range transmitter to the recited
second device (see Pet. 28; Inst. Dec. 19) and maps the electronic coupon to
the recited identity or related 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;
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Pet. Reply 7–8; Inst. Dec. 19. Perttila’s server uses the merchant ID code to
generate an “electronic coupon that corresponds to the content promoted by
the billboard.” E.g., Ex. 1006 ¶¶ 27, 33. Thus, Perttila supports Petitioner’s
contentions.
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. 19–20. 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 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. 40–41. 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.
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 7–8 (citations omitted). We disagree
with these mappings. As noted above, Perttila’s e-coupon corresponds to the
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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 identity or
related information, concerns the store itself. Rather, Petitioner relies only
on products offered for sale within the store. See Pet. Reply 13;
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 13 (“Perttila expressly discloses the merchant-media arrangement
may be placed ‘at the store itself’ such that the location where product
offerings corresponding to the e-coupons are redeemed is the ‘same
location’ as that where the e-coupons are provided.” (citing Ex. 1006 ¶¶ 28,
39; Pet. 22, 30–32; Ex. 1003 ¶¶ 87, 117–118)). 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
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,
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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. 38–39; 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 1 requires the central server to make a single determination—
the “identity or related information concerning an entity or object located in
proximity to the second device”—but 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 ’359 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, 8:43–52 (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
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. The parties’ arguments in the Petition, Response, Reply, and
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Sur-reply are substantially similar to the parties’ arguments in the ’931 IPR.
For the reasons set forth in our Final Written Decision in the ’931 IPR,
which we issue concurrently with this Decision, we conclude that Petitioner
has shown by a preponderance of the evidence that claim 1 is unpatentable
as being anticipated by and obvious over Perttila.
2. Dependent Claim 9
Claim 9 depends directly from claim 1 and further recites,
wherein the steps performed by the central server further
comprise:
facilitating a purchase of the goods or services from a
merchant account associated with the second wireless device
and a customer account associated with the first wireless
device;
providing confirmation to each account; and/or
receiving customer confirmation of receipt of a good or
service via the first wireless device, thereby completing a
transaction.
Ex. 1001, 24:47–56; see also id. at 32 (certificate of correction). Thus,
claim 9 recites three alternative steps and Petitioner only needs to show that
one such step is in the prior art in order to render this claim unpatentable. In
addition to relying on its showing made regarding claim 1, Petitioner argues
that Perttila discloses all three steps. Pet. 34–38 (citing Ex. 1003 ¶ 140;
Ex. 1006 ¶¶ 28, 42, 45, 53, Fig. 1b).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
Petitioner argues that Perttila’s source server 24 facilitates the
purchase of goods or services as recited in claim 9 by “receiving a request to
‘redeem,’ ‘verif[ying]’ the presence of, and ‘void[ing]’ a coupon in the
database.” Pet. 35 (alterations in original) (citing Ex. 1006 ¶¶ 42, 53).
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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. “The merchant-media ID code is used to
associate the promotional information with an e-coupon to be provided to
the user . . . .” Id. ¶ 28. The server “extracts the user/terminal ID along with
the tag (merchant-media) ID from the request,” which “are stored by the
source server.” Id. ¶ 38. Before a coupon is redeemed, source server 24
first validates the coupon. Id. ¶ 41. The validation process prohibits a
particular coupon from being used more than once or by an unauthorized
user. See, e.g., id. (disclosing that validation includes marking a coupon as
void to “prevent[] a second use and/or use after an attempt to [use] by [an]
unauthorized holder of the coupon”). During coupon redemption, “the
source server 24 . . . checks the database 50 to determine whether the coupon
is valid . . . by searching the database for a file with [the] user ID and tag ID
of the [coupon] void request.” Id. ¶ 42. Thus, Perttila supports Petitioner’s
contentions.
Petitioner argues that Perttila’s source server 24 provides
“confirmation to each account” as recited in claim 9 by “[u]pdating the
database, which stores the coupon information for both [the merchant and
customer] accounts.” Pet. 35 (citing Ex. 1006 ¶¶ 42, 53). Perttila’s coupon
redemption process begins with data-processing station 54 sending a coupon
void request to the source server. Ex. 1006 ¶ 41. After finding “a file with
[the] user ID and tag ID of the void request,” the source server “records a
service flag to indicate that the coupon is valid” and “sends an
acknowledgement back to the [redemption data-processing] station 54.” Id.
¶ 42. Petitioner argues that it would have been obvious for Perttila’s data
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processing station to be part of the merchant-media arrangement, in which
case, Petitioner argues, “the second device sends the request to redeem the
coupon.” Pet. 35–36 (citing Ex. 1003 ¶ 140; Ex. 1006 ¶¶ 42, 53). We are
not persuaded by Petitioner’s arguments, which fail to explain adequately
how updating a server database constitutes providing confirmation to each of
the merchant account associated with the second device and a customer
account associated with the first wireless device. As noted, however,
claim 9 presents this recitation as an alternative.
Petitioner argues that source server 24 receives customer confirmation
as recited in claim 9 when the user redeems a previously purchased movie
ticket. Pet. 36 (citing Ex. 1006 ¶¶ 28, 42, 45, 53). Perttila discloses that the
electronic coupon can be in the form of a movie ticket. Ex. 1006 ¶ 44.
When the user presents the e-ticket to the server, such as at the movie
theater, “the server can determine the right phase of the service process and
provide the right support for that phase.” Id. ¶ 53. This may include, for
example, “ticket verification[] in order to gain access to enter the movie
theatre.” Id. ¶ 45. Thus, Perttila supports Petitioner’s contentions.
Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
contentions that Perttila discloses the subject matter of claim 9, and we
conclude that Petitioner has shown by a preponderance of the evidence that
this claim is unpatentable as being anticipated by and obvious over Perttila.7

7 “It is well settled that ‘anticipation is the epitome of obviousness.’” In re
McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting Connell v. Sears
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
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3. Dependent Claim 51
Claim 51 depends directly from claim 1 and further recites “wherein
said second device identifier is associated with a unique account or record
identifier known to the central server.” Ex. 1001, 28:63–65. In addition to
relying on its showing made regarding claim 1, Petitioner argues that
Perttila’s source server 24 “associates the received ‘RFID tag’ or ‘Bluetooth’
‘beacon’ information, including the ‘merchant ID code,’ with a ‘unique ID’
and is ‘pre-programmed’ to retrieve ‘media content information assigned to
the unique ID for the media communications arrangement.’” Pet. 44; see
also id. at 44–45 (citing Ex. 1006 ¶¶ 29, 37, 60–61).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
Perttila discloses that the merchant-media arrangement includes “ID
storage device 330 [that] stores a unique ID for the RFID reader
arrangement 300.” Ex. 1006 ¶ 60. A transceiver in the merchant-media
arrangement sends the unique ID to a remote server, which “is pre-
programmed with media content information assigned to the unique ID” and
“uses the unique ID to retrieve media content information associated
therewith and uses the [user’s RFID] tag information to send the media
content information to the user address using the preferred type of
communications.” Id. ¶ 61; see also id. ¶ 29 (disclosing that the remote
processing arrangement can be a server). As noted above, the merchant-
media arrangement can communicate through alternative short-range
communication links, such as a Bluetooth link. Id. ¶ 37.
Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
contentions that Perttila discloses the subject matter of claim 51, and we
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conclude that Petitioner has shown by a preponderance of the evidence that
this claim is unpatentable as being anticipated by and obvious over Perttila.
4. Independent Claim 14
Claim 14 recites a server for exchanging information including a
receiver, a storage device, and a transmitter. Ex. 1001, 25:25–51. Of
particular relevance, claim 14 recites “a storage device, for storing the
second device identifier information and one or more of an identity or
related information concerning an entity or object located in proximity to the
second device.” Id. at 25:35–38. In addition to relying on its showing made
regarding claim 1, Petitioner maps Perttila’s database 50 to the recited
storage device and argues that “Perttila discloses that the server stores
coupons in ‘the database 50’ according to ‘the user/terminal ID along with
the tag (merchant media) ID.’” Pet. 40 (emphasis omitted).
Patent Owner relies on the same interpretation of the Petition
advanced regarding claim 1 to map Perttila’s billboard to the recited second
device and argues that Perttila does not store information concerning any
entities or objects located in proximity to the billboard. PO Resp. 43–44.
Patent Owner argues that Perttila’s database does not “store[] the location of
the item to which the electronic coupon is directed, or the proximity of that
item to the billboard.” Id. at 44–46.
Petitioner argues that claim 14 does not require the storage device to
store the location of the item to which the electronic coupon is directed. Pet.
Reply 9.
We disagree with Patent Owner’s arguments for the same reasons set
forth in § II.E.1 above. Perttila discloses that source server 24 uses the
merchant ID code to generate an “electronic coupon that corresponds to the
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content promoted by the billboard.” Ex. 1006 ¶ 27. “The merchant-media
ID code is used to associate the promotional information with an e-coupon
to be provided to the user . . . .” Id. ¶ 28. The server “extracts the
user/terminal ID along with the tag (merchant-media) ID from the request,”
which “are stored by the source server.” Id. ¶ 38. Perttila explains that
during coupon redemption, “the source server 24 . . . checks the database 50
to determine whether the coupon is valid . . . by searching the database for a
file with [the] user ID and tag ID of the [coupon] void request” (id. ¶ 42),
indicating that the merchant ID code (“tag ID”) and electronic coupon are
stored in database 50. We further note that Perttila refers to database 50 as
“coupon-database.” Id.
Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
contentions. The parties’ arguments in the Petition, Response, Reply, and
Sur-reply are substantially similar to the parties’ arguments in the ’931 IPR.
For the reasons set forth in our Final Written Decision in the ’931 IPR,
which we issue concurrently with this Decision, we determine that Petitioner
has shown by a preponderance of the evidence that claim 14 is unpatentable
as being anticipated by and obvious over Perttila.
5. Dependent Claim 22
Claim 22 depends directly from claim 14 and further recites,
a processor,
for facilitating a purchase of goods or services from a
merchant account associated with the second device and a
customer account associated with the first wireless device;
providing confirmation to each account; and/or
receiving customer confirmation of receipt of a good or
service via the first wireless device, thereby completing a
transaction.
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Ex. 1001, 26:38–47. Thus, claim 22 recites three alternative functions of the
server and Petitioner only needs to show that one such function is in the
prior art in order to render this claim unpatentable. In addition to relying on
its showings made regarding claims 9 and 14, Petitioner argues that
Perttila’s source server includes a processor that performs all three functions.
Pet. 43 (citing Ex. 1003 ¶ 166; Ex. 1006 ¶¶ 19, 29, 55).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
As noted above, Perttila discloses that the remote processing
arrangement can be a server. See Ex. 1006 ¶ 29. We further note that
Perttila uses a single reference number to refer both to the “remote
processing arrangement” and “source server,” further indicating that the
server includes a processor See, e.g., Ex. 1006 ¶¶ 54 (“remote source
server 140”), 55 (“remote processing arrangement 140”). Petitioner’s
declarant testifies that a person having ordinary skill in the art “would have
understood that [Perttila’s] server has a ‘processor’ to provide the user with
a downloadable coupon and ‘process’ the received data from the mobile
terminal, including ‘coupon-verification and credit actions.’” Ex. 1003
¶ 166 (citing Ex. 1006 ¶¶ 16, 42). We credit this testimony of Petitioner’s
declarant, which Patent Owner’s declarant does not rebut.
Accordingly, for the foregoing reasons, Perttila supports Petitioner’s
contentions that Perttila discloses the subject matter of claim 22, and we
conclude that Petitioner has shown by a preponderance of the evidence that
this claim is unpatentable as being anticipated by and obvious over Perttila.
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F. Asserted Obviousness in View of Perttila and Swartz
Petitioner argues that claims 9, 22, 28, 35, and 38–41 would have
been obvious over the combination of Perttila and Swartz. Pet. 45–62. In
support of its showing, Petitioner relies upon the Williams Declaration. Id.
(citing Ex. 1003). 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 9, 22, 28, 35, and 38–41 would
have been obvious in view of Perttila and Swartz and that Petitioner has set
forth reasoning with rational underpinnings why it would have been obvious
to combine the teachings of Perttila and Swartz.
1. Combining the Teachings of Perttila and Swartz
Each of claims 9, 28, 35, and 38–41 depends directly from claim 1,
and claim 22 depends directly from claim 14. Ex. 1001, 24:47–56,
26:38–47, 27:15–18, 27:48–51, 27:60–28:8. Petitioner relies on Perttila as
described in § II.E above. Pet. 49–62. Petitioner argues that, “[w]hile
Perttila teaches the delivery of a coupon to a user’s device based on its
proximity to the mobile-media arrangement, Swartz provides additional
implementation details for how to personalize that coupon and subsequently
redeem that coupon and purchase goods from the server using the mobile
terminal.” Id. at 47 (emphasis omitted). Petitioner argues that it would have
been obvious to incorporate “Swartz’s teachings of personalizing coupon
offerings based on a customer’s history of purchasing behavior in
implementing Perttila’s e-coupon system.” Id. at 48 (emphasis omitted)
(citing Ex. 1003 ¶ 98; Ex. 1006 ¶¶ 31, 38). Petitioner’s declarant testifies
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that this would “advantageously provide offerings that a user is likely to
redeem.” Ex. 1003 ¶ 98 (citing Ex. 1007, 4:47–50, 15:16–24).
Regarding claim 9, for example, Petitioner argues that “Swartz
discloses a system for ‘portable shopping and order fulfillment’ wherein a
customer uses a ‘cell phone’ to detect and scan products for purchase.”
Pet. 49 (emphasis omitted) (citing Ex. 1007, 2:12–14, 6:11–14, 6:45–57,
41:58–65). Petitioner argues that “a POSITA would have been motivated to
apply Swartz’s . . . teachings of a server facilitating the purchase of goods
from a merchant account associated with the merchant’s store by charging a
customer’s ‘credit account’ associated with the customer’s mobile device in
implementing Perttila’s server, which performs ‘credit actions.’” Id. at 50
(citing Ex. 1003 ¶ 200).
Patent Owner argues that “Perttila’s ‘electronic commerce
arrangement’ is its coupon delivery system, including the server that sends
the coupon,” and “Perttila is simply a mechanism for delivering ‘e-coupons’
to consumers . . . .” PO Resp. 47–48. “Perttila never mentions ‘electronic
commerce transaction’ or ‘e-commerce transaction.’” Id. at 48. Patent
Owner argues that “Swartz, in contrast, is directed to ‘marketing and
shopping system which may be used in a portable shopping and order
fulfillment system.’” Id. at 48 (emphasis omitted). According to Patent
Owner, “Petitioner’s justifications for its combinations imply that the words
used in Perttila to describe its coupon system mean something they do not.”
Id. at 49.
Petitioner argues that “Perttila expressly states that its invention is
directed to ‘a system, method and apparatus for processing electronic
commerce involving radio communication technology.’” Pet. Reply 16
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(quoting Ex. 1006 ¶ 1). Petitioner argues that the ’359 patent discloses
redeeming electronic coupons as part of an electronic commerce transaction.
Id. at 17–18 (citing Ex. 1001, 14:4–7, 14:40–15:23). Petitioner argues that
Patent Owner’s arguments are inconsistent with its statements made in a
prior litigation involving the ’359 patent. Id. at 18–19 (citing Ex. 1035,
12–16, 21–22).
Patent Owner replies by clarifying that its argument is not that Perttila
fails to disclose electronic commerce. PO Sur-reply 23–24. Rather, Patent
Owner faults Petitioner’s rationale for combining the teachings of Perttila
and Swartz; namely, that “improv[ing] Perttila’s ‘electronic commerce
arrangement’ . . . does not align with Perttila’s teachings and does not
support the proposed combination.” Id. at 25–26 (quoting Pet. 48).
As noted by Petitioner, Perttila discloses that, “[u]pon receiving [a
coupon void] request from the redemption data-processing station 54, the
source server 24 performs coupon-verification and credit actions and
updates its coupon-database accordingly.” Ex. 1006 ¶ 42 (emphasis added).
Petitioner relies on Swartz to teach credit actions to be performed by
Perttila’s server. E.g., Pet. 50 (“charging a customer’s ‘credit account’
associated with the customer’s mobile device”). Petitioner’s declarant
opines that “Perttila itself recognizes the benefits of a central server handling
‘coupon-verification and credit actions,’ and a [person of ordinary skill in
the art] would have understood that Swartz’s teachings provide known
implementation details for such an arrangement.” Ex. 1003 ¶ 100.
Mr. Williams testifies that an ordinarily skilled artisan would have
understood that modifying Perttila’s server to provide the credit actions
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taught by Swartz “would have improved Perttila’s ‘electronic commerce
arrangement.’” Id.
Patent Owner’s declarant testifies that “Petitioner’s arguments for
why a POSITA would have been motivated to combine [Perttila and Swartz]
are not true to the disclosures of Perttila, and imply that the phrases used in
Perttila have a different meaning than they do in the context of Perttila.”
Ex. 2010 ¶ 94. Dr. Foley, however, does not address Perttila’s disclosure of
its server performing “credit actions,” which is the basis for Mr. Williams’s
opinion that it would have been obvious to incorporate Swartz’s teachings
into Perttila’s system. See, e.g., Ex. 1003 ¶ 100; Pet. 48 (citing same).
We credit the testimony of Petitioner’s declarant, which relies on
Swartz to provide details regarding the credit actions performed by Perttila’s
server and which Patent Owner’s declarant does not address squarely.
Therefore, we determine that Petitioner has set forth reasoning with rational
underpinning explaining why it would have been obvious to combine the
teachings of Perttila and Swartz.
2. Dependent Claims 9 and 22
As noted above, claim 9 depends directly from claim 1 and further
recites,
wherein the steps performed by the central server further
comprise:
facilitating a purchase of the goods or services from a
merchant account associated with the second wireless device
and a customer account associated with the first wireless
device;
providing confirmation to each account; and/or
receiving customer confirmation of receipt of a good or
service via the first wireless device, thereby completing a
transaction.
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Ex. 1001, 24:47–56; see also id. at 32 (certificate of correction).
Claim 22 depends from claim 14 and contains substantially the same
recitations. Id. at 26:38–47. Petitioner argues that “a POSITA would have
been motivated to apply Swartz’s . . . teachings of a server facilitating the
purchase of goods from a merchant account associated with the merchant’s
store by charging a customer’s ‘credit account’ associated with the
customer’s mobile device in implementing Perttila’s server, which performs
‘credit actions.’” Pet. 50 (emphasis omitted) (citing Ex. 1003 ¶ 200).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
Swartz discloses establishing a credit account for the customer to
allow the customer to be charged automatically when finished with their
shopping. See, e.g., Ex. 1007, 24:5–7 (“[T]he customer may provide his
credit/debit information to the store. When the customer finishes shopping
the customer can be charged for his selections automatically.”), 32:24–29
(“The store may . . . automatically communicate [a] rebate request to the
company providing the rebate. This would provide . . . for the crediting of
the consumer’s account at the specific facility.”). Petitioner’s declarant
testifies that incorporating Swartz’s credit account into Perttila’s system
would facilitate merchant transactions. Ex. 1003 ¶¶ 199–200. We credit
this testimony of Petitioner’s declarant, which Patent Owner’s declarant
does not rebut.
For the reasons set forth above, we determine that Petitioner has set
forth reasoning with rational underpinning for modifying Perttila to include
Swartz’s teachings regarding credit actions. Accordingly, for the foregoing
reasons, Perttila and Swartz support Petitioner’s contentions that Perttila and
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Swartz disclose the subject matter of claims 9 and 22, and we conclude that
Petitioner has shown by a preponderance of the evidence that these claims
are unpatentable.
3. Dependent Claim 28
Claim 28 depends from claim 1 and further recites “wherein the
further action is additionally based on a history of past purchasing behavior
associated with an account associated with either the first wireless device or
the second device identifier information.” Ex. 1001, 27:15–18. Petitioner
argues that Perttila’s server retrieves user profile information to personalize
the e-coupon offering. Pet. 52–54 (citing Ex. 1006 ¶¶ 26, 31, 34, 38–39,
42–43). Petitioner argues that Swartz’s central host may access the
customer’s prior purchase records within its customer profile database and
offer discounts based on the prior purchasing records. Id. at 54–56 (citing
Ex. 1007, 4:47–50, 15:16–24, 34:41–60, 35:11–27, 56:64–57:5). Petitioner
argues that it would have been obvious to incorporate Swartz’s teaching into
Perttila’s system. Id. at 54–55 (citing Ex. 1003 ¶ 207).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
Perttila discloses that, in embodiments, the first device sends its own
ID code (in addition to the merchant-media ID code) to the server, and the
server uses the device ID code “to fetch user profile information from the
remote server or from another entity in order to provide more personalized
offering[s] to the user.” Ex. 1006 ¶ 31. Swartz discloses accessing a user’s
prior purchase records within its customer profile database to personalize
coupon offerings by, for example, offering a discount to entice the customer
to try a new brand of product. Ex. 1007, 34:58–60, 35:20–23. Petitioner’s
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declarant testifies that incorporating this teaching into Swartz’s system
would “advantageously improve the quality of ‘personalized’ offerings
provided by Perttila” and would “better ‘facilitate[] merchant transactions.’”
Ex. 1003 ¶ 207 (alteration in original). 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 explaining why it would have been obvious to combine the
teachings of Perttila and Swartz and to include Swartz’s teachings regarding
using a customer’s past purchasing behavior to personalize coupon
offerings.
Accordingly, for the foregoing reasons, Perttila and Swartz support
Petitioner’s contentions that Perttila and Swartz disclose the subject matter
of claim 28, and we conclude that Petitioner has shown by a preponderance
of the evidence that this claim is unpatentable.
4. Dependent Claim 35
Claim 35 depends from claim 1 and further recites “wherein the
information delivered to the first wireless device additionally comprises: an
image of an entity or object associated with the second device identifier
information.” Ex. 1001, 27:48–51. Petitioner argues that Swartz teaches
displaying an image of a scanned product on the user’s portable terminal and
argues that it would have been obvious to incorporate this teaching into
Perttila’s system. Pet. 58–59 (citing Ex. 1007, 2:22–25, 27:35–38,
28:49–51, 29:51–61; Ex. 1003 ¶ 210).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
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Swartz discloses displaying on the user’s device an image of a product
selected by a user along with additional information, such as how to prepare
a selected food product. Ex. 1007, 29:51–57. Petitioner’s declarant testifies
that incorporating this feature into Perttila’s system would have facilitated
the transaction by providing information about the product. Ex. 1003 ¶¶ 95,
97–100; see also id. ¶ 210 (citing id. ¶¶ 97–101). 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 explaining why it would have been obvious to combine the
teachings of Perttila and Swartz and to include Swartz’s teachings regarding
displaying images on the user’s device.
Accordingly, for the foregoing reasons, Perttila and Swartz support
Petitioner’s contentions that Perttila and Swartz disclose the subject matter
of claim 35, and we conclude that Petitioner has shown by a preponderance
of the evidence that this claim is unpatentable.
5. Dependent Claim 38
Claim 38 depends from claim 1 and further recites “wherein the
further action taken by the central server comprises: requesting payment
information as a step in a process for an electronic commerce transaction.”
Ex. 1001, 27:60–63. Petitioner argues that Swartz provides the customer
with price information and can charge the customer’s credit account. Pet. 59
(citing Ex. 1007, 23:8–27, 23:66–24:7, 51:4–8, 52:13–17). Petitioner argues
that an ordinarily skilled artisan would have understood this to be a request
for payment information. Id. at 59–60 (citing Ex. 1003 ¶ 212).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
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Swartz discloses establishing a credit account for the customer to
allow the customer to be charged automatically when finished with their
shopping. See, e.g., Ex. 1007, 24:5–7 (“[T]he customer may provide his
credit/debit information to the store. When the customer finishes shopping
the customer can be charged for his selections automatically.”), 32:24–29
(“The store may . . . automatically communicate [a] rebate request to the
company providing the rebate. This would provide . . . for the crediting of
the consumer’s account at the specific facility.”). Petitioner’s declarant
testifies that incorporating Swartz’s credit account into Perttila’s system
would have facilitated merchant transactions. Ex. 1003 ¶¶ 199–200, 212.
We credit this testimony of Petitioner’s declarant, which Patent Owner’s
declarant does not rebut.
For the reasons set forth above, we further determine that Petitioner
has set forth reasoning with rational underpinning for modifying Perttila to
include Swartz’s teachings regarding credit actions. Accordingly, for the
foregoing reasons, Perttila and Swartz support Petitioner’s contentions that
Perttila and Swartz disclose the subject matter of claim 38, and we conclude
that Petitioner has shown by a preponderance of the evidence that this claim
is unpatentable.
6. Dependent Claims 39–41
Claim 39 depends from claim 1 and further recites “wherein the
further action taken by the central server comprises: delivering a
confirmation of payment as a step in a process for an electronic commerce
transaction.” Ex. 1001, 27:64–67. Claim 40 depends from claim 1 and
further recites “wherein the further action taken by the central server
comprises: delivering an electronic receipt as step in a process for an
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Patent 8,090,359 B2

38
electronic commerce transaction.” Id. at 28:1–4. Claim 41 depends from
claim 1 and further recites “wherein the further action taken by the central
server comprises: delivering a confirmation of payment as a step in a
process for an electronic transaction.” Id. at 28:5–8. Petitioner argues that
Swartz teaches delivering confirmation of payment by sending a receipt to
the customer. Pet. 61–62 (citing Ex. 1007, 23:21–36, 41:20–23).
Patent Owner does not challenge separately the arguments and
evidence presented for the dependent claims. See generally PO Resp.
Swartz discloses that the customer is provided with a receipt that lists
“the entire list of all purchased items.” Ex. 1007, 23:27–28. The receipt
could be provided as a hardcopy or could be emailed to the customer. Id.
at 23:27–28, 23:35–36. Petitioner’s declarant opines that modifying
Perttila’s system to provide a receipt in this manner would have facilitated
merchant transactions. Ex. 1003 ¶ 217. We credit this testimony of
Petitioner’s declarant, which Patent Owner’s declarant does not rebut.
For the reasons set forth above, we further determine that Petitioner
has set forth reasoning with rational underpinning for modifying Perttila to
include Swartz’s teachings regarding credit actions. Accordingly, for the
foregoing reasons, Perttila and Swartz support Petitioner’s contentions that
Perttila and Swartz disclose the subject matter of claims 39–41, and we
conclude that Petitioner has shown by a preponderance of the evidence that
these claims are unpatentable.
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Patent 8,090,359 B2

39
III. CONCLUSION8
In summary,
Claim(s) 35 U.S.C. § Reference(s)
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
9, 22, 51 102(b) Perttila 9, 22, 51
9, 22, 51 103(a) Perttila 9, 22, 51
9, 22, 28,
35, 38–41
103(a) Perttila,
Swartz
9, 22, 28, 35,
38–41

Overall
Outcome
9, 22, 28, 35,
38–41, 51

IV. ORDER
Accordingly, it is
ORDERED that claims 9, 22, 28, 35, 38–41, and 51 of the ’359 patent
are 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.

8 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
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).
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40
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