BlackBerry Limited

Patent Trials and Appeals Board

Dec 1, 2020

IPR2019-00941 (P.T.A.B. Dec. 1, 2020)

Trials@uspto.gov Paper 48
571-272-7822 Date: December 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
Petitioner,

v.

BLACKBERRY LIMITED,
Patent Owner.
____________

IPR2019-00941
Patent 8,296,351 B2
____________

Before MIRIAM L. QUINN, GREGG I. ANDERSON, and
ROBERT L. KINDER, Administrative Patent Judges.

KINDER, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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Facebook, Inc., Instagram, LLC, and WhatsApp Inc. (collectively,
“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–319 to institute
an inter partes review of claims 1, 2, 9, 14, 15, and 21 (“the challenged
claims”) of U.S. Patent No. 8,296,351 B2, issued on October 23, 2012 (Ex.
1001, “the ’351 patent”). Paper 2 (“Pet.”). BlackBerry Ltd. (“Patent
Owner”) filed a Preliminary Response. Paper 6.
We instituted inter partes review of the challenged claims pursuant to
35 U.S.C. § 314. Paper 11 (“Dec.”). Subsequent to our institution of
review, Patent Owner disclaimed claims 9 and 15 of the ’351 patent.
Ex. 2006 (Disclaimer in Patent Under 37 C.F.R. § 1.321(a) signed Dec. 18,
2019). This Final Decision does not address the claims that were
disclaimed.
During the trial, Blackberry filed a Patent Owner Response (Paper 24,
“PO Resp.”), and Petitioner filed a Reply (Paper 33, “Pet. Reply”). Patent
Owner thereafter filed a Sur-reply (Paper 45, “Sur-reply”). An oral hearing
was conducted on September 3, 2020. Paper 47 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons discussed below, Petitioner has shown by a preponderance
of the evidence that claims 1, 2, 14, and 21 of the ’351 patent are
unpatentable.
I. BACKGROUND
A. The ʼ351 Patent (Ex. 1001)
The ʼ351 patent is directed to a “System and Method for Pushing
Information to a Mobile Device.” Ex. 1001, code (54). The ’351 patent
claims priority through a series of continuation applications to provisional
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application No. 60/307,265, filed on July 23, 2001. Id. at codes (63), (60).
The “invention relates to pushing information to a mobile handheld
communication device,” through the use of “an information source, a
wireless network, and a proxy content server.” Id. at 1:18–24, 47–49.
The ’351 patent conveys that “[t]he proxy content server is coupled to
[an] information source and the wireless network and receives information
from the information source.” Id. at code (57). The Specification describes
storing information received from an information source in a “proxy content
server” that sorts the information into a “plurality of channels based on pre-
defined information categories.” Id. at 1:50–57. The proxy content server
may receive and aggregate different types of information from different
information sources, such as content servers 10a, advertising servers 10b,
and other advertising sources 10c. Id. at 3:6–10, 2:31–33, Fig. 1. These
concepts are shown below in Figure 1:
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Figure 1 of the ’351 patent depicts a block diagram of an embodiment of the
system for pushing information to a mobile device. Id. at 1:61–62.
The “proxy content server” functions as a gateway between computer
network 16 and wireless network 22. Id. at 2:57–59. The “proxy content
server” receives information from one or more “information sources” and
pushes that information to one or more mobile devices. Id. at 2:59–63. In
addition, “Proxy Content Server 18 stores received information 12 to a
particular channel 21 based on user[-]specific information categories.” Id. at
4:28–30. As described in the Specification, “Proxy Content Server 18 also
provides a method of combining the information so that the mobile device
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user has a consistent and transparent experience of receiving both
information content and advertising content.” Id. at 2:63–66.
The Specification notes that information may be transmitted from a
selected channel over a wireless network and to the mobile device, resulting
in targeted advertising. Id. at 1:56–58. These concepts are illustrated in
Figure 8 below:

Figure 8 of the ’351 patent represents a flow diagram illustrating an
exemplary method of pushing information to a mobile device based on a
triggering event.
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As depicted in Figure 8, information is pushed to the mobile device based on
a “triggering event.” One example of a triggering event is a timer firing
(block 400 above), controlled by the Proxy Content Server. Id. at 13:24–27.
Examples of significant time intervals that might trigger a timer are
lunchtime, suppertime, and other significant times of the day. Id. at 13:26–
30. If a triggering event is detected, Proxy Content Server 18 determines if
any of the information categories assigned to a particular channel 21 are
relevant to the triggering event. Id. at 13:36–39. If the Proxy Content
Server determines that the triggering event is relevant to information in a
channel, the Proxy Content Server then determines the type of information.
Id. at 13:36–47. If it is advertising information, it is passed on to the mobile
device; if it is content meta tags for advertising, then meta tags are added.
Id. at 13:47–51. The ’351 patent provides one example of meta tags as
“embedded control sequences that the Proxy Content Server 18 has inserted
to indicate when advertising should be inserted.” Id. at 8:27–29.
The Specification further describes transmission of different types of
“advertising and information,” including “static” and “dynamic” advertising
information, that combine to form an advertisement. Ex. 1001, 6:41–59.
“[S]tatic advertising content . . . may include static information relating to
the identity of an advertiser, such as a logo, a company banner, a location
sensitive address, or other information that does not often change.” Id. at
7:35–39. The Specification describes “dynamic advertising content” as
information that “may change or vary at any given time.” Id. at 7:39–44
(emphasis added). “For example, the dynamic advertising content 52B may
include regularly changing advertising information, such as a special
offering, a discount, a discount coupon, a sale, or other time-sensitive
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information.” Id. The proxy content server may also combine advertising
information from different advertising channels and/or different types of
advertising information “in order to generate a complete advertisement or
information bulletin.” Id. at 8:49–59. For example, the proxy content server
may combine static advertising information with dynamic advertising
information or default advertising information for display as a complete
advertisement. Id. at 11:2–10.
B. Illustrative Claim
Claim 1, reproduced below, is illustrative of the claims at issue:
1. A system for pushing information to a mobile device,
comprising:
a proxy content server that receives information over a computer
network from an information source and stores the information
to one of a plurality of channels based on pre-defined information
categories, wherein the plurality of channels comprise memory
locations included in at least one of the proxy content server or a
proxy content server database;
the proxy content server to receive a feedback signal over a
wireless network that indicates a position of the mobile device,
and to use the feedback signal to select a channel for transmission
of the information from the selected channel over the wireless
network to the mobile device, wherein the information comprises
at least one of static advertising information, dynamic
advertising information, default advertising information, or
content information, and wherein a combination of the static
advertising information with one of the dynamic or default
advertising information comprises an advertisement or an
information bulletin.
Ex. 1001, 14:7–28. Independent claim 14 (also challenged) is similar in
scope to claim 1. Id. at 15:9–27.

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C. Related Proceedings
According to Patent Owner, the following matters are related
proceedings involving the ’351 patent or related patents. Paper 4.
i. BlackBerry Ltd. v. Snap, Inc., No. 2:18-cv-02693 (C.D. Cal.)
ii. BlackBerry Ltd. v. Facebook, Inc. et al., No. 2:18-cv-01844 (C.D.
Cal.), and related appeal, Blackberry Ltd. v. Facebook, Inc., No. 20-
1256 (Fed. Cir.). Ex. 1039.
iii. BlackBerry Ltd. v. Twitter, Inc., No. 2:19-cv-1444 (C.D. Cal)
iv. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00516
v. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00528
vi. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00706
vii. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00787
viii. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00899
ix. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00923
x. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00924
xi. Facebook, Inc. et al., v. Blackberry Limited, IPR2019-00925
xii. Facebook, Inc. et al., v. Blackberry Limited, IPR2019-00941
xiii. Facebook, Inc. et al. v. BlackBerry Limited, IPR2019-00942
xiv. Snap, Inc. v. BlackBerry Limited, IPR2019-00830.
D. Evidence Relied Upon
Petitioner relies on the following references:
Noble, WO 01/61559 A1, published Aug. 23, 2001 (Ex. 1003,
“Noble”);
Hassett, US 6,807,558 B1, issued Oct. 19, 2004, (Ex. 1004,
“Hassett”);
Excerpts from Anthony T. Mann, Microsoft SQL Server 7 for
Dummies (1998) (Ex. 1005, “Mann”);
Johnson, US 6,456,234 B1, issued Sept. 24, 2002 (Ex. 1006,
“Johnson”); and,
De Boor, WO 99/59283, filed May 7, 1999, published Nov. 18, 1999
(Ex. 1007, “De Boor”).
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Petitioner also relies on Declarations of Sandeep Chatterjee, Ph.D.,
filed as Exhibits 1002 and 1038. Patent Owner relies on a Declaration of
Matthew B. Shoemake, Ph.D., filed as Exhibit 2008.
E. Grounds Asserted
Petitioner challenges claims 1, 2, 9, 14, 15, 21 of the ʼ351 patent on
the following grounds (Pet. 3–4):
Claims Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 9,1 14, 15, 21 § 103(a)2 Noble, Hassett
1, 2, 9, 14, 15, 21 § 103(a) Noble, Mann, Johnson
1, 2, 9, 14, 15, 21 § 103(a) Noble, Hassett, De Boor
1, 2, 9, 14, 15, 21 § 103(a) Noble, Mann, Johnson, De Boor

II. ANALYSIS
A petition must show how the challenged claims are unpatentable
under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4).
Petitioner has “the burden of proving a proposition of unpatentability by a
preponderance of the evidence.” 35 U.S.C. 316(e) (2018).
Once a trial is instituted, we will “issue a final written decision with
respect to the patentability of any patent claim challenged by the petitioner.”
35 U.S.C. § 318(a). Because Patent Owner disclaimed claims 9 and 15 of
the ’351 patent (Ex. 2006), however, we will not address these claims in this

1 Claims 9 and 15 are disclaimed. Ex. 2006.
2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
Pub. L. No. 112–29, 125 Stat. 284 (Sept. 16, 2011), took effect on March 16,
2013. Because the application from which the ’351 patent issued was filed
before that date, our citations to Title 35 are to its pre-AIA version.
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Final Decision because they are treated as though they never existed. See
Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1373
(Fed. Cir. 2019) (“When Sanofi disclaimed the disclaimed claims, it
effectively eliminated those claims from the patent leaving the . . . patent as
though the disclaimed claim(s) had never existed.”) (internal quotation
marks, citations, and punctuation omitted for clarity).
A. Claim Construction
In an inter partes review, we construe claim terms in an unexpired
patent “in accordance with the ordinary and customary meaning of such
claim as understood by one of ordinary skill in the art and the prosecution
history pertaining to the patent,” as the claims would be construed “in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). “In
determining the meaning of the disputed claim limitation, we look
principally to the intrinsic evidence of record, examining the claim language
itself, the written description, and the prosecution history, if in evidence.”
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014
(Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Of course, “[t]here
is a heavy presumption that claim terms are to be given their ordinary and
customary meaning.” Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353,
1358 (Fed. Cir. 2017). “Properly viewed, the ‘ordinary meaning’ of a claim
term is its meaning to the ordinary artisan after reading the entire
patent.” Id. (quoting Phillips, 415 F.3d at 1321).
Only terms which are in controversy need to be construed, and then
only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v.
Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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Petitioner addresses two claim terms “channel” and “proxy content
server.” Pet. 7–8. Petitioner also proposes adopting two proposed
constructions agreed upon by the parties in the district court proceeding. Id.
at 46 (“dynamic advertising information” and “static advertising
information”).
Patent Owner focuses on two terms in its Response: “proxy content
server” and “content information.”
After considering the parties’ contentions and agreed constructions,
we determine it necessary to construe the following two claim terms for
purposes of this Final Decision.
1. “proxy content server”
Patent Owner argues that “proxy content server” should be construed
as “a server that aggregates at least content information from an information
source for distribution to a device.” PO Resp. 22. If we were to adopt
Patent Owner’s proposed construction, Patent Owner contends that the prior
art Noble reference would be distinguished. According to Patent Owner, the
server in Noble only aggregates advertising information, and thus, does not
aggregate “content information” and therefore does not qualify as a “proxy
content server.” See PO Resp. 29; Sur-reply 8 (“if BlackBerry’s
construction is adopted, there is no dispute all of Petitioners’ grounds fail”).
Thus, determining the proper meaning of “proxy content server” is necessary
to resolve the parties’ dispute in this proceeding, because Noble is a
reference required by each ground.
At the institution phase of this proceeding, we declined to construe
“proxy content server” because Petitioner conveyed that it did “not matter if
the Board adopts the proposed construction offered by Petitioner, Patent
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Owner, or resorts to the plain language as suggested by the district court,”
whereas “the prior art discloses the claimed proxy content server under any
of those views.” Pet. 8–9. Likewise, Patent Owner agreed at institution that
the claim term need not be construed. Dec. 11.
In the underlying district court litigation, Petitioner proposed that this
term be construed as a “server that receives information over a computer
network and provides it to another device,” whereas Patent Owner proposed
the term means a “server that aggregates information from an information
source for distribution to a device.” Ex. 1024, 12. The district court
determined that this phrase does not require construction because the claims
“provide extensive information about the claimed proxy content server and
how it functions and/or interacts with other components of the claimed
system.” Id. at 14. Below, we examine the parties’ contentions for this term
and then provide our determination.
Patent Owner contends that, because “the claimed ‘proxy content
server’ is a ‘server’ that acts as a ‘proxy’ for ‘content,’” the term “‘proxy
content server’ [should] be construed as ‘a server that aggregates at least
content information from an information source for distribution to a
device.’” PO Resp. 22 (citing Ex. 2008 ¶¶ 38, 39). Patent Owner contends
its interpretation is based on the plain meaning of proxy content server,
whereas the plain meaning of “proxy” is a server that “aggregates”
information and then “distribut[es]” that information to other devices. Id.
Patent Owner further reasons that “because the claims recite a ‘proxy
content server,’ the information being aggregated and distributed must
include ‘content information.’” Id. Patent Owner thus concludes that “the
plain meaning of ‘proxy content server’ is ‘a server that aggregates at least
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content information from an information source for distribution to a
device.’” Id. (citing Ex. 2008 ¶ 39) (emphasis added).
Patent Owner points to the Specification and argues
that the proxy content server “aggregates existing
information 12, such as Internet or Intranet content, from one or
more Information Sources 10, and pushes the information 12 to
a mobile device 24.” Ex. 1001 (’351 Patent) at 2:59-63. The
specification also consistently discloses that the “proxy content
server” aggregates and distributes at least “content information.”
See, e.g., Ex. 1001 (’351 Patent) at 2:63-66 (“The Proxy Content
Server 18 also provides a method of combining the information
so that the mobile device user has a consistent and transparent
experience of receiving both information content and advertising
content. ”); Ex. 1001 (’351 Patent) at 4:16-18 (“the Proxy
Content Server 18 has advertising channels 21a, content
channels 21b and general advertising channels 210.”); see also
Ex. 2008 (Shoemake Decl.) ¶ 40.
PO Resp. 23. Patent Owner also notes that the “proxy content server” is
introduced in the “Summary” section as a server that “receives information
from the content server.” Sur-reply 2 (citing Ex. 1001, 1:50–52).
Patent Owner contends that the “proxy content server” must aggregate
content in every embodiment. Sur-reply 3. For one reason, “[e]very word in
the claims, including each of the constituent words of the claimed ‘proxy
content server,’ must be given effect,” and for another reason Petitioner’s
proposed construction would “require construing the two instances of the
word ‘content’ differently within the same claim.” Id. Further, Patent
Owner contends that “[t]he word ‘content,’ when applied as a modifier to
‘information,’ distinguishes ‘content information’ from ‘advertising
information.’” Id. at 3–4.
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Patent Owner contends that challenged claims’ recitation of specific
steps performed by the “proxy content server” does not nullify the
requirement that those steps must be performed by a “proxy content server.”
Id. at 4. In addressing the claim limitations requirement that the “proxy
content server” select “advertising information” or “content information”
responsive to a mobile device’s “position” (claim 1) or “a triggering event”
(claim 14), Patent Owner contends these limitations “can be met by a ‘proxy
content server’ targeting only ‘advertising information.’ But this server
must separately qualify as a ‘proxy content server,’ and must, therefore, also
aggregate and distribute ‘content information.’” Id. at 5.
At oral argument, Petitioner noted that “[t]he only part of [Patent
Owner’s] construction that’s at all controversial is this requirement that the
server must aggregate at least content information,” and the reason this is
important is “that content information is something other than advertisement
information,” as agreed to by the parties. Tr. 10:25–11:4. Thus, the core of
the issue before us is whether the “proxy content server” must always be
capable of receiving content information (which by agreement is
information, other than advertising information and meta tags). Id. at 11:19–
26; Reply 1–2. For the reasons set forth below, we find Petitioner’s
contentions more persuasive and determine based on the final record that
there is no requirement that a “proxy content server” aggregate “at least
content information.”
We are persuaded by Petitioner’s arguments because they are based
on the intrinsic record, starting with the claim language. See Phillips v.
AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“the claims
themselves provide substantial guidance as to the meaning of particular
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claim terms”). Petitioner argues “[t]he surrounding claim language makes
crystal clear that the term ‘proxy content server’ does not require a server
that aggregates ‘at least content information’ from an information source.”
Reply 2.
Petitioner first notes that “claim 1 recites a ‘proxy content server’ that
receives ‘information’ from an information source, and that that
‘information’ does not need to include ‘content information.’” Id. at 3.
Petitioner then provides the highlighted reproduction of portions of claim 1
as depicted below:
[a] a proxy content server that receives information over a
computer network from an information source…;
[b] the proxy content server… to select a channel for
transmission of the information from the selected channel over
the wireless network to the mobile device, wherein the
information comprises at least one of static advertising
information, dynamic advertising information, default
advertising information, or content information ….
Id. (noting claim 14 has similar requirements). Petitioner reasons that the
first limitation requires “that the ‘proxy content server receives information
… from an information source,’ and nothing in that claim limitation requires
the received ‘information’ to include ‘content information.’” Id. Then, the
second limitation [b] “makes this even clearer by referring to ‘the
information’ selected for transmission to the mobile device, which both
parties’ experts agree refers back to the same ‘information’ received by the
proxy content server in limitation [a].” Id. (citing Ex. 1038, ¶8; Ex. 1039,
15:11–16:4).
Petitioner argues persuasively that the alternative nature of the claim
language refutes Patent Owner’s position.
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Critically, limitation [b] states that “the information
comprises at least one of static advertising information, dynamic
advertising information, default advertising information, or
content information.” The “information” received by the proxy
content server in limitation [a], therefore, need not include
content information – it could contain only “static advertising
information,” for example. Both sides’ experts also agree on
this. (Ex. 1038, ¶8; Ex. 1039, 17:8-18:14.) The claim language
on its face thus refutes Patent Owner’s assertion that the claimed
“proxy content server” must “aggregate[] at least content
information from an information source for distribution to a
device.”
Reply 4. Despite Patent Owner’s arguments to the contrary (Sur-reply 4–5),
we read this claim language cited above as strong support in defining what a
“proxy content server” is and how it functions. The claims require that the
“proxy content server” receive any one of the following: (i) static
advertising information, (ii) dynamic advertising information, (iii) default
advertising information, or (iii) content information. The alternative nature
of this claim language also provides strong support for our determination
that the “proxy content server” need not receive “content information” at all.
The language of dependent claims 5 and 17 supports Petitioner’s
contentions. Petitioner notes that these claims require that “the information
corresponds to a particular advertiser,” again referring back to the same
“information” in the independent claims received by the proxy content
server. Reply 5. Thus, according to Petitioner, “[c]laims 5 and 17
contemplate a scenario in which ‘the information’ received by proxy content
server only comprises advertising information and contains no content
information.” Id. Petitioner argues that this is so “because nothing in the
patent suggests that ‘content information’ can ‘correspond[] to a particular
advertiser.’” Id. (citing Ex. 1001, 6:56–57). If the proxy content server
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always had to receive “content information,” Petitioner concludes that
“[c]laims 5 and 17 would be rendered a nullity . . . because the ’351 patent
does not suggest that ‘content information’ could ever ‘correspond[] to a
particular advertiser,’ as claimed.” Id.
We agree with Petitioner’s position, which is supported by the
Specification. Petitioner first notes that there is a distinction between a
“proxy content server,” as claimed, and a “proxy content information
server.” Id. at 4–5. Petitioner contends that the Specification does not use
the word “content” as a synonym for “content information,” but rather, a
broader term encompassing all types of information that the proxy content
server can receive and store. Id. at 5. Petitioner relies on several examples
from the Specification, including the consistent use of the word “content” to
describe both advertising content and information content. Id. at 6–7.
Referring to Figure 1, Petitioner quotes an example showing
that ‘[t]he Proxy Content Server 18 aggregates existing
information 12, such as Internet or Intranet content, from one or
more information sources 10, and pushes the information 12 to a
mobile device.” (’351, 2:59-63 (underlining added).) But
“information sources 10” and “information 12” include
advertising information.
As depicted below, Petitioner demonstrates that information
sources 10 include advertising servers 10b as well as other advertising
sources 10c. Id. at 7 (citing Ex. 1001, 2:31–34).
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Petitioner’s annotated Figure 1 with partial highlighting of elements 10b,
10c, 12b, and 12c. Reply 6–7.
Further, the Specification refers to information 12b and 12c that comes from
these two sources as “advertising content.” Reply 7 (citing Ex. 1001, Ex.
1001, 3:45–46 (“For advertising content 12b, 12c”) (emphasis omitted).
Petitioner reasons, and we agree, that “[a]lthough the proxy content server is
capable of receiving and storing both information content and advertising
content, there is no requirement that it receive and store either category of
content.” Id. For instance, Petitioner cites to numerous other examples in
the Specification where “the word ‘content’ is used broadly in a way that
includes advertising content – in fact, the term ‘advertising content’ appears
more than 30 times in the written description.” Id. at 7–8 (emphasis
omitted) (citing Ex. 1001, 2:63–66, 3:17–19, 6:54–57, 7:30–34). Thus, we
find persuasive Petitioner’s argument that “there is no basis for Patent
Owner’s suggestion that the word ‘content’ within ‘proxy content server’ is
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a shorthand or synonym for ‘content information,’ which excludes
advertising information.” Id. at 8.
As for Patent Owner’s argument that the Summary section defines the
claimed “proxy content server” as receiving “at least content information,”
Petitioner has contrastingly shown how the Specification provides examples
and support for receiving advertising information without regard to content
information. See Sur-reply 6–7 (citing C.R. Bard, Inc. v. U.S. Surgical
Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (Statements in the summary
section “are more likely to support a limiting definition of a claim term.”));
see also Reply 5–8; Tr. 61:19–63:13 (citing Ex. 1001, Fig. 5, 10:18–20).
Petitioner further explains how the Figure 6 embodiment shows a specific
example where the proxy content server receives information, and the
information may be content information or advertising information.
Tr. 62:4–26 (quoting Ex. 1001, 11:19–24 (“Information is received by the
Proxy Content Server 18 from a[n] Information Source 10 in step 200 or
204. The information may be content information 12A or advertisement
information 12B.”) (emphasis added). These excerpts from the Specification
strongly support Petitioner’s position that proxy content server does not need
to receive “at least content information” in all embodiments.
Petitioner also relies persuasively on U.S. Patent No. 8,676,929 B2
(“the ’929 patent”) involved in related IPR2019–00940. As stated on the
face of the ’929 patent, it is a continuation of the ’351 patent, and both
patents share essentially the same Specification. IPR2019-00940, Ex. 1001,
code (63). Claim 10 of the ’929 patent recites: “when the information
relevant to the detected triggering event comprises advertisement,
transmitting the advertisement to the mobile device instead of the content
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information that includes the meta tag.” Id. at 15:11–15 (emphasis added).
This embodiment is supported by at least Figure 6, and the corresponding
explanation in the Specification that “the Proxy Content Server 18 reviews
the information to see if meta tags should be added for embedded
advertising (step 212). This insertion of meta tags is performed if the
content is information content (step 212).” Ex. 1001, 11:66–12:2. Thus, as
these examples demonstrate, certain embodiments contemplate that the
“information” will not include content information and content information
will not be received by the proxy server. See Tr. 63:3–13 (Counsel for
Petitioner explaining: “‘This insertion of meta tags is performed if the
content is information content.’ . . . [I]f it’s not information content, it skips
the meta tag stuff because you don’t have this combination of
advertisements meta tag. You don’t need this meta tag insertion.”).
Finally, the parties’ positions during the related district court case, and
the district court’s decision to not construe the claim term, both support
Petitioner’s contentions. During the district court litigation, Patent Owner
never argued that the proxy content server had to aggregate “at least content
information” from an information source. See Reply 9 (citing Ex. 1029,
113). Instead, Patent Owner’s position was that the term simply required a
“server that aggregates information from an information source for
distribution to a device,” with no requirement that the server aggregate any
particular category of information. Id. As opposed to adopting an express
construction, the district court determined that both independent claims
“provide extensive information about the claimed proxy content server and

3 We adopt the court’s page numbering – page 11 of 43.
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how it functions and/or interacts with other components of the claimed
system.” Ex. 1029, 13. We agree with the district court’s determination.
Further, Patent Owner’s prior position is evidence that the addition of “at
least content information” is not supported in this proceeding. Because of
the nature of the dispute before the district court, we give little weight to this
evidence. See PO Resp. 25; Sur-reply 8 n.5.
Based on the final trial record before us, we determine that the term
“proxy content server” does not require a server that aggregates “at least
content information” from an information source. Because the surrounding
claim language provides extensive information about what a content proxy
server is, and how it is intended to function, we rely on this context and the
plain and ordinary meaning of the term as it is used in the Specification.
2. “pre-defined information categories”
Because Patent Owner contests whether the combination of prior art
references teaches this limitation, and the parties dispute its meaning, we
determine it necessary to address the scope of this limitation. Claim 1
requires “a proxy content server that . . . stores the information to one of a
plurality of channels based on pre-defined information categories.”
Ex. 1001, 14:10–13. Claim 14 recites a similar limitation. Id. at 15:11–14.
Petitioner contends that the claim language does not require using
multiple pre-defined information categories for determining the channel for
storing a particular piece of information. Pet. 62; Ex. 1002 ¶¶ 180–181;
Ex. 1038 ¶ 36. Petitioner reasons that “[t]he claim language recites
‘stor[ing] the information to one of a plurality of channels based on pre-
defined information categories,’ which does not require that multiple
categories actually be used in storing information into a single channel.”
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Reply 25 (emphasis omitted). According to Petitioner, “[a] more natural
reading is that the claim language simply requires that the information be
stored into a channel based on one of a number of categories.” Id.
Patent Owner contends that the claim language requires more than a
single pre-defined category. PO Resp. 44–45. We agree with Patent
Owner’s position and reject Petitioner’s proposal that a “more natural
reading” only requires that the information be stored into a channel based on
one of a number of categories. Petitioner has not cited to any persuasive
evidence in the intrinsic record to support its position. Accordingly, we
adopt the plain meaning of the term to require storing the information to one
of a plurality of channels based on two or more pre-defined information
categories.
We note, however, that the outcome of this Decision does not depend
on this determination because Petitioner has shown persuasively how the
combination of references discussed below teach this claim limitation under
either interpretation.
B. Obviousness Based on Noble, Mann, and Johnson
Petitioner challenges the patentability of claims 1, 2, 14, and 21 of the
’351 patent (claims 9 and 15 having been disclaimed) under 35 U.S.C.
§ 103(a) as obvious based on Noble, Mann, and Johnson. Pet. 56–73. In
support thereof, Petitioner identifies the disclosures in each reference alleged
to describe the subject matter in the challenged claims and further relies on
the testimony of Dr. Chatterjee (Exs. 1002, 1038).
Patent Owner contends that the combination of references fails to
prove unpatentability. PO Resp. 25–40. In support thereof, Patent Owner
relies on the testimony of Dr. Shoemake (Ex. 2008).
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We have reviewed the parties’ contentions and supporting evidence.
Based on the final record, we are persuaded that Petitioner has demonstrated
by a preponderance of the evidence that claims 1, 2, 14, and 21 of the ’351
patent would have been obvious based on Noble, Mann, and Johnson. We
begin our analysis with the principles of law that apply generally to a ground
based on obviousness, followed by a brief summary of each reference, the
parties’ contentions, and then the reasons for our determination.
1. Principles of Law
A claim is unpatentable under § 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 the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.
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
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the art;4 and (4) where in evidence, so-called secondary considerations.5
Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l Co., 550 U.S. at 418. The relevant
inquiry is whether Petitioner has set forth “some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Further, “rejections on
obviousness grounds cannot be sustained by mere conclusory statements.”
Id.
2. Overview of Noble6 (Ex. 1003)
Noble discloses a cellular coupon system for pushing promotional
information through a wireless communication network. Ex. 1003, code
(57), 4:23–5:2.7 Noble explains that “promotional information can be sent

4 Based on the final record, including our review of the ’929 patent and
cited prior art, we find persuasive Petitioner’s assessment of the level of
ordinary skill in the art and apply it in this Final Decision. See Pet. 3–4 (A
person of ordinary skill in the art “would have possessed at least a bachelor’s
degree in software engineering, computer science, computer engineering, or
electrical engineering with at least two years of experience in software
application development,” as well as “experience in developing software and
systems for storing, retrieving, and transmitting displayable information . . .
over a computer network to another device.”). Patent Owner accepts
Petitioner’s assessment. Ex. 2008 ¶ 28.
5 Neither party has offered evidence of secondary considerations in the final
record.
6 Petitioner has shown that Noble is entitled to a § 102(e) priority date of
February 2, 2000, and Patent Owner has not contested or rebutted this
showing. Pet. 11 n.4.
7 Citations are to the original page numbering.
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to the wireless device even without a specific request from the device user,”
wherein a “distribution server preferably selects particular promotional
information based, in part, on the type of triggering event and the subscriber
profile.” Id. at code (57).
Petitioner’s annotated Figure 2 provides a diagrammatic overview of
the system:

Petitioner’s annotated Figure 2 of Noble (Pet. 11) depicts a block diagram
showing portions of an embodiment of the promotional information
delivery/redemption system with added highlighting. Ex. 1003, 8:12–14.
Figure 2 of Noble depicts a “promotional information delivery/redemption
system 200” that comprises a server 201 (yellow) connected via a wide area
network (WAN) 203 (orange) to on-line merchant 204 computer system
(green). Pet. 12 (quoting Ex. 1003, 8:12–20, 2:18). A wireless
communication network 210 (blue) links mobile devices (“MU”), such as
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cellular phones 212a-212c, personal digital assistant (PDA) 213 and a
portable computer 214 to server 201. Ex. 1003, 8:21–9:5, 9:7–12, 9:19–23.
Noble’s server 201 “receives promotional material—such as ‘discount
coupons, gift certificates, and advertisement material’—from an online
merchant computer system via the computer network.” Pet. 12 (citing
Ex. 1003, 8:12–20, 2:18, 10:16–19, 12:10–14, 27:10–12).
Noble’s server automatically transmits (i.e., “pushes”) promotional
information to mobile units based on user-specified “triggering events” or
“event based triggers.” Ex. 1003, 4:22–5:2, 15:17–20, 19:12–19 (“the server
periodically receives the location update from the mobile unit in step 701,
and tracks the location of the mobile unit until it is determined, in step 702,
that a triggering event has occurred”), 18:1–7 (“The server 507a monitors
for an occurrence of any of the triggering events 503a, and upon such
occurrence 503a, initiates a ‘push’ of promotional information selected
based on the user profile 508a.”). Noble explains that “a ‘push’ of
promotional information means the transmittal of promotional information
without a specific request for such promotional information.” Id. at 18:6–7.
Noble identifies one type of trigger as a “location/favorite event trigger,”
which “may occur when the user comes within a vicinity of merchants”
resulting in the server transmitting associated promotional information to the
device. Id. at 24:3–6, 17:1–5, 16:13–16.
3. Overview of Mann (Ex. 1005)
Mann, entitled Microsoft SQL Server 7 for Dummies, describes
features and operation of version 7 Microsoft’s SQL Server relational
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database management system. Ex. 1005, 1–58. Mann explains that
Microsoft SQL Server 7 stores each database in a separate file. Id. at 73–74,
78, 82. Mann provides an example of a database named
“CUSTOMERORDERS” that may be stored in a file named “E:\MSSQL7\
DATA\CUSTOMERORDERS.MDF.” Id. at 82. Mann further explains that
the data (i.e., information) for a database is stored in the database file. Id.
Mann further discloses that a database file is a memory location.
Mann explains that “[a] file name is sometimes referred to as a physical
name. A physical name is the physical location given to an object.” Id.; see
also id. at 318 (defining “Physical Name” as “[a] physical location assigned
to an object”). Mann explains that a database file is stored in a computer
readable storage medium—i.e., “memory,” for example, that Microsoft SQL
Server 7 uses a computer’s “C:\ drive” for storage by default. Id. at 31.
Mann also discloses that “[a]fter you create a database . . . you can create
one or more tables to stuff your data into . . . . A table is created inside a
database, so the database must exist first.” Id. at 125.
4. Overview of Johnson (Ex. 1006)
Johnson, entitled “System and Method for Proactive Content Delivery
by Situation Location,” “relates generally to location dependent delivery of
information to mobile data processing systems.” Ex. 1006, 1:19–21.
Johnson discloses a server that uses a database for storing promotional
information, but further discloses its content, structure and organization, and
explains that it is a relational database. Id. at code (57), 13:16–24. Johnson
explains that a deliverable content database record includes fields with

8 We use the page number of the publication, not the page numbering added
by Petitioner.
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unique identifiers to the record in the database and fields may be system
generated upon inserting the record (i.e., database row) into the deliverable
content database (i.e., database table). Id. at 13:16–24.
5. Analysis – Disputed Limitations of Claims 1 and 14
We first examine the parties’ contentions and supporting evidence as
to limitations that Patent Owner has contested. Then, we examine
Petitioner’s contentions and evidence as to limitations and issues that were
generally uncontested by Patent Owner in the final trial record.
Patent Owner disputes whether the combination of Noble, Mann, and
Johnson teaches two limitations found in both independent claims 1 and 14:
(i) Proxy Content Server
(ii) Storing Information Based on Pre-defined Information
Categories
PO Resp. 29–32, 42–45. See Ex. 1001, 14:8–28 (claim 1), 15:9–27
(claim 14).
Below, we provide the parties’ contentions and evidence with respect
to each term and then provide our analysis for each.
i. Petitioner’s Challenge
Petitioner states that “[a]ll four grounds presented in this Petition rely
primarily on Noble . . . which describes a push-based system for delivering
promotional information to a wireless mobile device.” Pet. 9. Further,
“Noble discloses a server that can collect promotional information from
merchants and deliver it to mobile devices based on their current location or
time-triggered events.” Id. Petitioner recognizes that Noble does not fully
address “the storage of information ‘to one of a plurality of channels based
on pre-defined information categories,’ as recited in claims 1 and 14.” Id.
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For this limitation, Petitioner relies on Mann and Johnson, “which describe
well-known database technologies and their use for storing promotional
information, respectively.” Pet. 9–10. Petitioner alleges “that the category-
based storage recited in the challenged claims amounts to nothing more than
an obvious application of pervasive and off-the-shelf relational database
techniques.” Pet. 10.
Petitioner also notes that “[t]he limitations of claims 1 and 14 are
nearly identical,” but “claim 14 . . . recites that the proxy content server
selects a channel ‘in response to a triggering event.’” Pet. 53. Petitioner
explains that this “difference is immaterial” because “Noble discloses at
least two types of ‘triggering events,’ and for both, Noble’s server selects
information in response to the triggering event.” Pet. 53–54.
Proxy Content Server
Petitioner contends the “proxy content server” takes the form of the
server in Noble’s “promotional information delivery/redemption system.”
Pet. 59, 23. Petitioner identifies Noble’s servers as, for example, server 201
(Fig. 2) and server 301 (Fig. 3). Pet. 23 (citing Ex. Ex. 1002 ¶ 81; Ex. 1003,
5:14–18, 10:10–12). Petitioner argues the server in Noble qualifies as a
“proxy content server.” Pet. 59. Relying on Figure 2 of Noble, Petitioner
shows how the claimed “proxy content server,” “computer network,” and
“information source” correspond to structures in Noble:
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Petitioner’s annotated Figure 2 of Noble with highlighting and annotations
labeling 201 as a proxy content server, 203 as a computer network, and 204
as an information source. Pet. 24.
As explained by Petitioner, Noble’s server receives promotional
information over a computer network 203 from various merchants, such as
on-line merchant 204. Pet. 24 (citing Ex. 1003, 10:16–19 (“Merchants who
wish to place promotional information for their goods and services
preferably access the server 301.”), 24:23–25:1, 8:12–20, 11:14–17, 12:10–
14; Ex. 1002 ¶ 83). A merchant, such as online merchant 204, corresponds
to an “information source.” Id. Petitioner contends that the server in Noble
stores the received promotional information into database storage 307 shown
in Figure 3 of Noble. Pet. 25 (citing Ex. 1003, 11:14–17, Fig. 3 (depicting
database storage 307 storing “promotional information”)). Petitioner further
explains how the server can later distribute promotional information to a
mobile device of a user. Id. (citing Ex. 1003, 7:14–19; Ex. 1002 ¶¶ 84, 129).
Storing Information Based on Pre-defined Information Categories
Petitioner contends that “it would have been obvious based on Noble
that the promotional information in Noble would have been stored ‘to one of
a plurality of channels [i.e., memory locations] based on pre-defined
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information categories.’” Pet. 59 (citing Ex. 1003 ¶¶ 90–97). Petitioner
admits, however that “Noble does not disclose the underlying details of its
storage methodology.” Id. Thus, Petitioner relies on the teachings of Mann
and Johnson. Pet. 60. Petitioner argues that
Mann describes storing information to locations in a relational
database table based on the table’s columns and the
information’s association with those columns. And Johnson
confirms that it would have been obvious to store promotional
information in this manner. Accordingly, the combination of
Noble with Mann and Johnson discloses and renders obvious
storing the promotional information of Noble to one of a plurality
of channels based on pre-defined information categories.
Pet. 60 (emphasis omitted).
Petitioner relies on Mann’s teachings related to Microsoft SQL Server
7, which stores information in one or more tables and the table is created
inside a database such that the database is, in turn, stored in a file. Id. (citing
Ex. 1005, 125, 73, 74, 78, 82. As Dr. Chatterjee explains, a database file is
stored in a physical location in a computer readable storage medium—i.e.,
“memory.” Ex. 1002 ¶ 177 (citing Ex. 1005, 82). Dr. Chatterjee testifies
that Mann’s relational database system teaches that data is stored in a
database table in entries called “records” or “rows” and Mann also teaches
tables comprising columns. Id. ¶ 178 (citing Ex. 1005, 49 (table)).
Dr. Chatterjee reasons that Mann’s tables may be stored in memory, and
each column value for a record is stored in a memory location such as the
Order ID column value of “100” for the first record in Mann’s table below.
Id.
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Figure 4-3 of Mann showing a table with “Customer ID,” “Order ID,” “Last
Name,” and “First Name” column headings. Ex. 1002 ¶ 79; Ex. 1005, 49.
Addressing the claim requirement to be “based on,” Dr. Chaterjee explains
that the memory location for storing a column value in Mann’s table for a
record is based on the column and the column’s position in the table layout.
Ex. 1002 ¶ 179 (“the memory location storing that value will also be based
on that association”). Dr. Chatterjee discusses another example showing
that associating a value with a specific column means that the memory
location for storing the value will be based on that column within the table’s
layout and the column corresponds to a pre-defined information category.
Id.
Petitioner sets forth two ways that the combination of Noble, Mann,
and Johnson teach the claim requirement of “stores the information to one of
a plurality of channels based on pre-defined information categories” based
on how the word “categories” is interpreted. Pet. 62. Petitioner contends
the claim could be more broadly interpreted to simply require that
information be stored to a channel based on any of the predefined
information categories. Id. (citing Ex. 1001, 4:28–30, 4:43–46). As set
forth above, we did not agree with this interpretation. If we were to adopt
Petitioner’s preferred interpretation, however, Mann clearly teaches storing
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information “based on any of the predefined information categories.”
Instead, we read the claim language to require that the information
stored to one channel be based on multiple pre-defined information
categories. Under this view, Petitioner’s second position is persuasive.
Petitioner contends that Mann still teaches this requirement by disclosing a
clustered index for a database. Pet. 62. Petitioner contends that “[w]ith a
clustered index, the records/rows in a database table are physically sorted in
memory based on the columns associated with the index.” Id. (citing Ex.
1002 ¶¶ 181–183). Relying on the testimony of Dr. Chatterjee, Petitioner
reasons that in such a “combination, multiple columns (“pre-defined
information categories”) would be used to determine the memory location
for a particular piece of information in the table.” Id. (citing Ex. 1002 ¶
184).
Dr. Chatterjee further explains that there are two types of indexes in
Mann, clustered and non-clustered, and with a clustered index, the records in
a table are sorted in order physically on the disk based on values for a
specified column or columns that the form the basis for the index. Ex. 1002
¶ 184 (citing Ex. 1005, 52, 128, 312). Dr. Chatterjee testifies that when data
is added to the table, the records are physically reordered. Id. After
providing several examples of this reordering, Dr. Chatterjee further testifies
that:
Therefore, because, as explained above, a column
corresponds to a pre-defined information category, a clustered
index that physically ordered the records in a table by using a
column would be another way that the memory location for
storing a column value for a particular record would be based on
a pre-defined information category. Thus, using a value for the
“First Name” column as an example, the channel (memory
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location) for storing that value would be based on both the “First
Name” column and the “Last Name” column—and accordingly
the information would be stored to a channel based on pre-
defined information categories. In essence, the “Last Name”
column would be used to determine the memory location relative
to other records in the table, while the “First Name” column
would be used to determine the memory location relative to other
column values in the record.
Ex. 1002 ¶ 184 (emphasis omitted); see also Tr. 25:24–27:7.
In its Reply, Petitioner explains “in a ‘clustered index’ approach, the
records/rows in a relational database table are physically sorted in memory
and sorted based on one or more columns.” Reply 25 (emphasis omitted).
Petitioner reiterates that “[t]he storage of an item of promotional information
into a channel is thus based on two categories, i.e., two columns in the
table.” Id. Petitioner then reproduces an exemplary table created by Dr.
Chatterjee (Ex. 1002 ¶ 197) as depicted below.

A two column table with “Geographical Location” and “Promotional
Information” at the top of each column and three row data entries. Reply 26.
Petitioner further explains that “[i]n a clustered index approach sorted
based on Geographic Location, these three ads would be physically stored
on disk, one-after-the-other, in the order listed above.” Reply 26 (citing Ex.
1002 ¶¶ 183–184, 197). “Thus, the memory location for storage of the
Promotional Information in the second row (‘Buy one get one free at Philz
Coffee’) is not only based on the fact that it resides in the ‘Promotional
Information’ column, but is also based on the Geographical Location
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column.” Id. Relying on the testimony of Dr. Chatterjee, Petitioner explains
that “[t]his is because the ‘Geographic Location’ column dictates where,
relative to other rows in the table, the promotional information will be
physically stored.” Id. (citing Ex. 1038 ¶¶ 37–38); see also Tr. 28:3–12
(“And our position is that you can’t really separate the values from the
column, the column here is the category. And in the geographic location
one, that’s the organizational principle by which the data is going to be
stored. If you store it in a clustered index based on the geographical location
column, that’s going to dictate the particular order of the items in that
column.”). Petitioner demonstrates that under this clustered index approach,
“multiple columns (‘pre-defined information categories’) would be used to
determine the memory location for a particular piece of information in the
table.” Id. at 26 (quoting Pet. 61 (citing Ex. 1002 ¶ 184)); see also Ex. 1038
¶ 38 (“the memory location for the promotional information ‘would be based
on both the Promotional Information column and the Geographical Location
column—i.e., two pre-defined information categories’”). As explained
more below, we find these contentions persuasive.
ii. Patent Owner’s Argument
Proxy Content Server
Patent Owner’s contentions for “proxy content server” rest on its
claim interpretation, which we have rejected for the reasons set forth above.
Patent Owner contends that Noble does not teach a “proxy content server”
because “[t]he claimed ‘proxy content server’ must process ‘content’;
otherwise, it would not be a ‘proxy content server.’” PO Resp. 29. Patent
Owner then argues that Noble’s server does not interact with any “content
information,” but instead, Noble’s server only interacts with “promotional
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information.” Id. at 30. As Dr. Shoemake testifies, “[t]he server in Noble
only receives, stores, and transmits ‘promotional information,’” and
“Petitioners have not identified any discussion of ‘content information’ in
Noble.” Ex. 2008 ¶ 84. In Dr. Shoemake’s “opinion, these types of
‘promotional information’ in Noble are all ‘advertising information,’ not
‘content information.’” Id. ¶ 87.
In its Sur-reply, Patent Owner only contends that Noble lacks a
“proxy content server” because such a server must aggregate “at least
content information.” Sur-reply 1–8. Patent Owner reasons that because
both parties agree the claimed “content information” is distinguishable from
Noble’s “advertising information,” each ground fails to identify any server
that aggregates and distributes “content information.” Id. at 1.
Storing Information Based on Pre-defined Information Categories
Patent Owner argues that the proposed combination “still fails to
disclose ‘stor[ing] the information to one of a plurality of channels based on
pre-defined information categories’ (plural), as claimed, because the
combination stores information based on at most a single category.”
PO Resp. 42. Patent Owner contends that the alleged “information” in
Petitioner’s example “is always stored in the same ‘column’ labeled
‘Promotional Information’ (i.e., based on the same, single alleged ‘pre-
defined information category’).” Id. at 44 (arguing the channel used to store
the information is based on a single pre-defined information category).
Patent Owner did not directly address Petitioner’s contentions related
to the “clustered index” approach in its Response. In its Sur-reply, Patent
Owner contends the “clustered index” argument “fails, however, because the
alleged second ‘pre-defined information category’ is the column label
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(‘Geographical Location’) and not the values of the individual rows in that
category (e.g., ‘37.8,-122.4’).” Sur-reply 17 (citing Ex. 2007, 53:11–23).
Patent Owner further contends that “selecting a row within the ‘Promotional
Information’ column is not based on the alleged ‘Geographical Location’
category—at most, the content of other, non-‘pre-defined’ cells is used to
determine where in the ‘Promotional Information’ category to store the
alleged ‘information.’” Id.
iii. Analysis (claims 1 and 14)
Based on the final record before us, we find Petitioner’s contentions
with respect to claim 1 persuasive. Petitioner’s analysis of the combination
of Noble, Johnson, and Mann, as supported by Dr. Chatterjee, explains how
the combination teaches all the elements of claims 1 and 14 and provides
several persuasive rationales for combining the teachings. Based upon
Petitioner’s evidence presented, including the testimony of Dr. Chatterjee,
we are persuaded by Petitioner’s evidence and argument. Immediately
below, we examine in detail those limitations challenged by Patent Owner.
Proxy Content Server
As we explained in detail above in the claim construction analysis
(§ II.A.1), we find no basis to limit “proxy content server” to a server that
must aggregate “at least content information” in every embodiment.
Although a “proxy content server” may aggregate content information in
some embodiments, we determined that the intrinsic record does not require
a “proxy content server” to aggregate “at least content information.”
Because Patent Owner’s contentions rest on this claim construction, we find
them unpersuasive. See Sur-reply 1–8; Reply 12.
Petitioner has shown persuasively how Noble’s “promotional
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information delivery/redemption system,” and “server 201 (Fig. 2) and
server 301” teach this limitation. Pet. 59, 23 (citing Ex. Ex. 1002 ¶ 81;
Ex. 1003, 5:14–18, 10:10–12). We credit Dr. Chatterjee’s testimony that
“[t]he ‘proxy content server’ corresponds to the server in Noble’s
‘promotional information delivery/redemption system.’” Ex. 1002 ¶ 81. As
Dr. Chatterjee explains, each of server 201 (Fig. 2), server 301 (Fig. 3), and
server 507 and 507a (Figs 5a–5b) refer to the same server. Id. (citing
Ex. 1003, 5:14–16, 5:17–18, 10:10–12, Figs. 2, 5). Dr. Chatterjee testifies
that Noble discloses that its server receives promotional information over a
computer network from various merchants, such as on-line merchant 204,
which also qualifies as an “information source.” Id. ¶¶ 83, 87. According to
Dr. Chatterjee, Noble further discloses that its server aggregates the
information it receives by collecting the promotional information from
merchants into database storage 307 and then the server distributes the
information to a mobile device of a user. Id. ¶¶ 84, 87; see also Pet. 46–48.
Based on the final record before us, we find Petitioner’s arguments
and evidence persuasive. Dr. Shoemake’s testimony to the contrary
(Ex. 2008 ¶¶ 83–88) is based on the erroneous claim construction which we
have rejected, thus, we find it unpersuasive.
Storing Information Based on Pre-defined Information Categories
In its Reply, Petitioner first notes that Patent Owner failed to address
any of Petitioner’s arguments about the use of a clustered index in the
Response. Reply 25. As we cautioned in in the Scheduling Order, “any
arguments for patentability not raised in the response may be deemed
waived.” Paper 12, 8. In this instance, we consider Patent Owner’s rebuttal
in its Sur-reply (16–18) because Petitioner made additional arguments
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directed to the clustered index approach in its Reply (25–26). We note,
however, that Dr. Chatterjee’s testimony related to the clustered index
approach remains essentially unrebutted because Dr. Shoemake did not
directly address any contentions related to Mann’s clustered index. See
Ex. 2008 ¶¶ 128–135; see also Ex. 1038 ¶ 38 (“I note that Dr. Shoemake
claims to have reviewed my declaration (Ex. 2008, ¶22), but he does not
mention, let alone address, the ‘clustered index’ teachings in Mann
discussed in my opening declaration.”).
Based on the final record before us, Petitioner has established that the
combination of references, and specifically Mann’s clustered index, teaches
the requirement that “a proxy content server . . . stores the information to
one of a plurality of channels based on pre-defined information categories.”
Ex. 1001, Claims 1 and 14. As noted above, we adopt Patent Owner’s
proposed interpretation that storing the information must be based on more
than one information category, but even under this interpretation Petitioner
has shown persuasively how Noble, Johnson, and Mann teach such an
approach.
The clustered index approach requires that the records/rows in a
relational database table be physically sorted in memory and sorted based on
one or more columns. Ex. 1038 ¶ 37; Ex. 1002 ¶¶ 182–183. Adopting this
storage by clustered index approach in the example provided below, Dr.
Chatterjee has explained how in the “Geographical Location” column, each
of the two rows/records would be physically stored in the order listed above,
one after the other. Ex. 1038 ¶ 37. In this scenario, the memory location for
a particular piece of “Promotional Information” (such as “10% off Joe’s
Coffee”) would not simply be based on the “Promotional Information”
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column, but also the “Geographic Location” column. Id. Dr. Chatterjee
provides an exemplary table depicted below.

A two column table with “Geographical Location” and “Promotional
Information” at the top of each column and three row data entries. Reply 26
(citing Ex. 1002, ¶ 197).
Dr. Chatterjee explains persuasively that
This is because the “Geographic Location” column would
be used to determine the memory storage location relative to
other records in the table, while the “Promotional Information”
column would be used to determine the memory location relative
to other column values in the row/record. ([Ex. 1002] ¶¶184,
197.) In the case of “10% off Joe’s Coffee,” the “Geographic
Information” column (whose value is “37.4,122.2”) would
dictate that the row be stored before the second entry listed
above.
Ex. 1038 ¶ 37. Based upon review of Mann, we find Dr. Chatterjee’s
explanation reasonable. As also noted above, Dr. Chatterjee’s testimony
remains unrebutted.9

9 We have fully considered Dr. Chatterjee’s cross-examination testimony
relied upon by Patent Owner (Sur-reply 17) but we determine it does not
support Patent Owner’s theory. In fact, we determine after reviewing the
entire testimony in context that it was consistent with Dr. Chatterjee’s
Declarations. See Ex. 2007, 53:6–23 (“those two examples are stored based
on the promotional information as well as the geographical location, because
those would determine the memory location where the storage would
happen” and “I was referring in general that the memory location to which
the information is stored would be based on not only the promotional
information column, but also the geographical location column”).
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Notably, the claim language simply requires that the storing occur
based on information categories but the language does not otherwise require
any specific relationship amongst those categories. Ex. 1002 ¶ 97 (“the ’351
specification . . . contemplates categories of advertising information, and
does not otherwise place any limitation on what an “information category”
can represent”) (citing Ex. 1001, 12:56–13:1); Tr. 28:13–20 (“So the claim
just requires that it be based on information categories. It doesn’t require
any particular -- any relationship. It just says ‘based on.’”). Noble’s
teaching of identifying promotional information based on pre-defined
“coupon categories” combined with Mann’s clustered index approach of
organization would allow the server to later retrieve and deliver promotions
based on a user-selected coupon category because the promotional
information was stored in a memory location associated with that coupon
category and also based on the geographical location. See Ex. 1002 ¶ 96.
Based on the examples above, Petitioner has demonstrated that under the
clustered index approach, the memory location for the promotional
information would be based on both the “Promotional Information” column
and the “Geographical Location” column, which are two “pre-defined
information categories,” as required by the claims. Ex. 1038 ¶ 38; Ex. 1002
¶ 197.
Based on the final record, Petitioner also provides a rational basis for
combining Noble, Johnson, and Mann, as well as a reasonable expectation of
success from that combination. Petitioner reasons that “Mann also provides
express motivation to combine, explaining that Microsoft’s SQL Server is
‘very popular’ and makes ‘creating and administering database extremely
easy’ and that SQL Server 7 features ‘make Microsoft the top RDBMS
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vendor.’” Pet. 65 (quoting Ex. 1005, 1, 9). “Mann further explains that
SQL Server is ‘better suited for enterprise-wide support and large databases’
(Mann, p.39)—the sort of large system contemplated by Noble.” Id. We
find persuasive Petitioner’s contention that “a person of ordinary skill would
have found it obvious to use the clustered index in Mann, and would have
had a reasonable expectation of success.” Pet. 66 (citing Ex. 1002 ¶¶ 196,
199). Dr. Chatterjee explains that the combination “would have involved
only the use of existing features described by Mann in accordance with both
Noble’s and Mann’s (and Johnson’s) teachings regarding data organization
and retrieval.” Ex. 1002 ¶ 197. As testified by Dr. Chatterjee, a skilled
artisan would have been motivated to use a clustered index because it was
well-known and clustered indexes provide performance benefits. Id.
¶¶ 197–198, 197 (“using a nonclustered index is ‘not as fast as using a
clustered index’”) (quoting Ex. 1005, 128).
For the foregoing reasons, and based on the final record, Petitioner
has shown by a preponderance of the evidence that the combination of
Noble, Johnson, and Mann teaches the contested limitations of claims 1 and
14. Petitioner has also provided a persuasive rationale for making the
combination that would achieve predictable performance benefits as
described by Dr. Chatterjee. See Ex. 1002 ¶¶ 196–199.
6. Analysis – Undisputed Limitations of Claims 1 and 14
For all other limitations not challenged, we have reviewed the
evidence and adopt Petitioner’s reasoning and evidence as set forth in the
Petition and find it persuasive.
We find Petitioner has shown that Noble, Johnson, and Mann teach
“[a] system for pushing information to a mobile device,” as well as the
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remaining limitations requiring “a proxy content server that receives
information over a computer network from an information source,” and
“wherein the plurality of channels comprise memory locations included in at
least one of the proxy content server or a proxy content server database.”
Pet. 58–67. For example, Noble discloses a proxy content server database in
the form of database 307 and the server stores the promotional information it
receives from merchants in a database. Pet. 66 (citing Ex. 1003, 11:14–17,
24:23–25:1, 12:10–14, 10:16–19). Patent Owner does not dispute
Petitioner’s showing, except as noted above.
Claim 1 next requires “the proxy content server to receive a feedback
signal over a wireless network that indicates a position of the mobile device,
and to use the feedback signal to select a channel for transmission of the
information from the selected channel over the wireless network to the
mobile device.” Ex. 1001, 14:7–28, 15:18–21 (similar recitation for claim
14). Petitioner establishes how Noble, Johnson, and Mann teach these
limitations. Pet. 67–68 (explaining that “Noble does not expressly disclose
using the location signal to select a channel (memory location) in its
database, but this would have been obvious in view of Mann and Johnson”).
Petitioner also provides a persuasive rationale for the combination because a
“skilled artisan would have understood that, under the combination of Noble
with Mann and Johnson, the channel for matched promotional information
would be selected in order to retrieve the promotional information stored in
the channel.” Pet. 68.
The final clause of claim 1 (and 14) requires “the information
comprises at least one of static advertising information, dynamic advertising
information, default advertising information, or content information,” and it
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also requires “wherein a combination of the static advertising information
with one of the dynamic or default advertising information comprises an
advertisement or an information bulletin,” (“combination limitation”).
Ex. 1001, 14:22–28. Petitioner establishes how Noble and Johnson teach
these limitations. Pet. 69, 46. Petitioner explains how the promotional
information in Noble comprises at least static or dynamic advertising
information and Petitioner provides several examples of each used in
Noble’s system. Pet. 46–49. Petitioner also demonstrates that Johnson
teaches the three recited types of advertising, including dynamic advertising
information and default advertising information. Pet. 69. For example,
Johnson discloses a “textual message such as ‘Starbucks has a 60% off sale
just ahead at 314 Main Street with free no-spill coffee mugs!!!’.” Id. (citing
Ex. 1006, 8:60–63) (emphasis omitted). Petitioner explains persuasively
how “a person of ordinary skill would have understood this textual message
in Johnson comprises static advertising information (‘Starbucks’) as well as
dynamic advertising information (‘60% off sale’ and ‘free no-spill coffee
mugs!!!’) and/or default advertising information (‘314 Main Street’).” Id.
Further, Dr. Chatterjee testifies that a person of ordinary skill would have
understood and found it obvious that Johnson’s example message could be
employed in the system of Noble. Ex. 1002 ¶ 207.
As for the combination limitation, Petitioner establishes how Noble
and Johnson teach a combination of the static advertising information with
one of the dynamic or default advertising information that comprises an
advertisement or an information bulletin. Pet. 49. In light of the teaching of
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all three types of advertising in Johnson, we find persuasive Petitioner’s
argument that:
A person of ordinary skill would have understood and
found it obvious that at least one of the promotions that would be
provided in Noble, e.g., ‘10% off Joe’s Coffee,’ would constitute
a combination of static and dynamic advertising, as it would
include static information relating to the identity of the advertiser
(e.g., “Joe’s Coffee”), and dynamic information relating to a
particular sale event (e.g., “10% off”). (Id., ¶142.)
Pet. 49. Petitioner establishes that “combining these two types of
information amounts to nothing more than an obvious and predictable
variation for providing a visual advertisement.” Id. (citing Ex. 1002 ¶ 140).
More specifically, we agree that a person of ordinary skill would have
understood and found it obvious that an advertisement would combine static
and default or dynamic advertising information such as those examples
disclosed by Johnson.
Dr. Chatterjee points to the example text message of Johnson quoted
above as one example of teaching the combination limitation, but also
further explains “Johnson discloses fields for both the promotional message
itself (i.e., ‘content field 712’) as well as a field for an associated web
address or phone number (i.e., ‘speed reference info 716’).” Ex. 1002 ¶ 211.
According to Dr. Chatterjee, “Johnson explains that the information stored
in these fields for a particular record is transmitted together to a mobile
device,” thus, “Johnson . . . discloses a combination of the static advertising
information with one of the dynamic or default advertising information by
retrieving both the promotional message and ‘speed reference info’ from its
database and providing them together to a mobile device.” Id. (citing Ex.
1006, 13:64–66) (emphasis omitted). We agree with Dr. Chatterjee’s
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testimony that “it would have been obvious to a person of ordinary skill in
the art to combine Noble and Johnson, and specifically to incorporate
Johnson’s teachings regarding ‘speed reference info 716’ into the system of
Noble.” Id. Finally, Patent Owner has not contested these specific
contentions with respect to the combination of Johnson and Noble.
Petitioner has shown by a preponderance of the evidence that a person
of ordinary skill would have a rational basis to combine Noble, Johnson, and
Mann, and that this combination teaches the uncontested limitations recited
in independent claims 1 and 14. Petitioner has established, therefore, that
claims 1 and 14 would have been obvious based on Noble, Johnson, and
Mann.
7. Analysis – Claims 2 and 21
Claim 2 requires “[t]he system of claim 1, wherein the feedback signal
is generated by the mobile device.” Ex. 1001, 14:29–30. Petitioner
establishes how Noble’s mobile unit 501a sends an update of the location of
the mobile unit 501a to the server 507a and the location is determined by the
mobile unit using a GPS receiver. Pet. 50 (citing Ex. 1003, 17:1–3, 17:12–
21, 18:4–9). We agree with Petitioner that the mobile device generates
Noble’s feedback signal, thus meeting the limitation of claim 2. Id. (citing
Ex. 1002 ¶ 144). Patent Owner has not contested this contention.
Claim 21 requires “[t]he system of claim 14, further comprising: the
proxy content server database coupled to the proxy content server that stores
data relating to the mobile device, wherein the data is also used by the proxy
content server to select the channel for transmission over the wireless
network to the mobile device.” Ex. 1001, 16:7–12. Petitioner shows how
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the combination of Noble, Mann, and Johnson teach the limitations of claim
21. Pet. 73.
Petitioner relies on the teachings of Mann and Johnson for using user
profile triggering event information to select a channel (memory location) in
its database. Pet. 71; Ex. 1002 ¶ 214 (“A person of ordinary skill in the art
would have understood that the combination of Noble, Mann, and Johnson
would have predictably resulted in using the triggering event information
(e.g., merchant information) to select the channel for matched promotional
information.”). Petitioner also notes that “Johnson further discloses storing
a device’s location history in a database and using that information for
selecting promotional information,” which provides additional support for
the combination of references teaching this limitation. Pet. 71 (citing
Ex. 1006, 9:10–14, 9:53–60, 15:60–16:5; Ex. 1002 ¶¶ 215–217). Patent
Owner has not contested these contentions.
Other than the arguments addressed above for claims 1 and 14, Patent
Owner does not specifically challenge Petitioner’s contentions with respect
to claims 2 and 21. For the reasons set forth above, we determine Petitioner
has established by a preponderance of the evidence that claims 2 and 21
would have been obvious over Noble, Mann, and Johnson.

C. Obviousness Based on Noble, Mann, Johnson, and De Boor
Petitioner challenges the patentability of claims 1, 2, 14, and 21 of the
’351 patent (claims 9 and 15 having been disclaimed) under 35 U.S.C.
§ 103(a) as obvious based on Noble, Mann, Johnson, and De Boor. Pet. 73.
This ground is the same as that examined above, but Petitioner adds De Boor
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(Ex. 1007) to account for an alternative interpretation of the final clause of
claims 1 and 14. Pet. 10, 73.
Patent Owner does not separately contest Petitioner’s contentions with
respect to the addition of De Boor for this ground. See PO Resp. 19, 31, 50
(discussing De Boor generally but not the specific contentions of this
ground).
We have reviewed the parties’ contentions and supporting evidence.
Based on the final record, we are persuaded that Petitioner has demonstrated
by a preponderance of the evidence that claims 1, 2, 14, and 21 of the ’351
patent would have been obvious based on Noble, Mann, Johnson, De Boor.
We begin our analysis with a brief summary of De Boor and then the
reasons for our determination.
1. Overview of De Boor (Ex. 1007)
De Boor discloses a system for providing integrated advertising
capabilities to a wireless communication device and various techniques for
sending advertising information to mobile devices. Ex. 1007, code (57). De
Boor describes a technique for creating “stand-alone full screen [advertising
files] 320a” that specify the content and formatting of an advertisement for
display on a wireless communication device. Id. at 11:28–30, 14:8–15:2.
2. Analysis
Petitioner relies on essentially the same analysis for the ground above,
except now also relying on De Boor to teach the combination limitation
because De Boor “discloses an advertising delivery technique that mirrors
the ’351 specification.” Pet. 73. De Boor also describes a technique for
creating “stand-alone full screen advertising files 320a” that specify the
content and formatting of an advertisement for display on a wireless
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communication device. Pet. 74 (quoting Ex. 1007, 11:28–30, 14:8–15:2).
Petitioner relies on De Boor’s fields in the full screen advertisements as well
as De Boor’s disclosure of creating an advertisement that combines content
data with an associated file, such as a vendor logo. Pet. 75. According to
Petitioner, “[s]uch an advertisement, when applied to Noble, discloses ‘a
combination of the static advertising information with one of the dynamic or
default advertising information’ that ‘comprises an advertisement,’ as recited
in the claims.” Id.
Petitioner provides a persuasive rationale for combining the teachings
of De Boor into the combination of references examined above. Pet. 75–77.
As explained by Petitioner, “[t]he combination would have predictably
resulted in the promotional information push delivery system of Noble, with
the additional ability to provide rich content advertisements as disclosed in
De Boor.” Pet. 75 (citing Ex. 1002 ¶¶ 230–231). Petitioner reasons that it
would have been obvious to adapt Noble, pursuant to the teachings of
De Boor, to provide dynamic advertising information as content data 325 of
a full-screen advertisement 320a as disclosed in De Boor. Pet. 76 (citing
Ex. 1002 ¶ 232). Petitioner relies on De Boor’s disclosure that full-screen
advertisement 320a may also contain the vendor’s logo, introductory text,
and background graphics. Id. According to Petitioner, De Boor’s full-
screen advertisement 320a would have also included, in addition to the
dynamic advertising information, static advertising information such as a
logo for the merchant (e.g., a logo for Joe’s Coffee). Id. Thus, Petitioner
argues, and we agree, that the combination of Noble and De Boor would
have predictably resulted in a full-screen advertisement that qualifies as “a
combination of the static advertising information with one of the dynamic or
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default advertising information,” and “comprises an advertisement.” Id.
(citing Ex. 1002 ¶ 232).
Petitioner establishes that a person of ordinary skill in the art would
have been motivated to combine De Boor with Noble because De Boor
seeks to provide “for rich content advertisements that include any variety of
fonts, type styles, and graphic images to be included in an advertisement on
the wireless communication device.” Id. (quoting Ex. 1007, 3:30–32;
Ex. 1002 ¶ 234). Further, “[a] person of ordinary skill would have
appreciated that displaying a merchant’s logo with the promotional
information would have provided a richer user experience, and made the
advertisement more engaging.” Id. at 77 (citing Ex. 1002 ¶ 234).

D. Obviousness Based on Noble and Hassett and Obviousness Based on
Noble, Hassett, and De Boor
Petitioner challenges the patentability of claims 1, 2, 14, and 21 of the
’351 patent under 35 U.S.C. § 103(a) as obvious based on Noble and Hassett
and separately based on Noble, Hassett, and De Boor. Pet. 20–56, 73.
Because we determine the challenge based on Noble, Mann, and Johnson as
well as Noble, Mann, Johnson, and De Boor are both dispositive of all
challenged claims, we need not reach the parties’ arguments as to whether
these claims would have been obvious over Noble and Hassett or obvious
over Noble, Hassett, and De Boor. See Boston Sci. Scimed, Inc. v. Cook
Grp. Inc., 809 Fed. Appx. 984, 990 (Fed. Cir. Apr. 30, 2020)
(nonprecedential) (recognizing that the “Board need not address issues that
are not necessary to the resolution of the proceeding” and, thus, agreeing
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that the Board has “discretion to decline to decide additional instituted
grounds once the petitioner has prevailed on all its challenged claims”).
IV. CONCLUSION
For the reasons set forth above, based on the final trial record, we
determine that the information presented in the Petition establishes by a
preponderance of the evidence that all challenged claims (1, 2, 14, and 21)
would have been obvious. We therefore determine that each challenged
claim is unpatentable as set forth below.10

10 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).
11 We do not reach these grounds because the challenge based on Noble,
Mann, and Johnson as well as Noble, Mann, Johnson, and De Boor are both
dispositive of these claims.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1, 2, 14,
21 § 103(a)
Noble, Mann,
Johnson
1, 2, 14, 21
1, 2, 14,
21 § 103(a)
Noble, Mann,
Johnson, De Boor
1, 2, 14, 21
1, 2, 14,
21 Noble, Hassett
11
1, 2, 14,
21
Noble, Hassett,
De Boor

Overall
Outcome
1, 2, 14, 21
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V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 1, 2, 14, and 21 of the ’351 patent have been
proven to be unpatentable;
FURTHER ORDERED because this is a Final Written Decision,
parties to this proceeding seeking judicial review of the Decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.
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For PETITIONER:

Heidi Keefe
Andrew Mace
COOLEY LLP
hkeefe@cooley.com
amace@cooley.com

For PATENT OWNER:

James Glass
Sam Stake
Ognjen Zivojnovic
John McKee
QUINN EMANUEL URQUHART & SULLIVAN LLP
jimglass@quinnemanuel.com
samstake@quinnemanuel.com
ogizivojnovic@quinnemanuel.com
johnmckee@quinnemanuel.com