Carnival Corporation

Patent Trials and Appeals Board

Oct 12, 2021

IPR2021-00782 (P.T.A.B. Oct. 12, 2021)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: October 12, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DECURTIS LLC
Petitioner,
v.
CARNIVAL CORPORATION,
Patent Owner.

IPR2021-00782
Patent 10,045,184 B2

Before THOMAS L. GIANNETTI, NEIL T. POWELL, and
MICHAEL T. CYGAN, Administrative Patent Judges.
POWELL, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314

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I. INTRODUCTION
A. BACKGROUND
DeCurtis LLC (“Petitioner”) filed a Petition for inter partes review of
claims 1–20 of U.S. Patent No. 10,045,184 B2 (Ex. 1001, “the ’184 patent”).
Paper 1 (“Pet.”). Patent Owner, Carnival Corporation, filed a Preliminary
Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is
authorized by statute when “the information presented in the petition . . . and
any response . . . shows that there is a reasonable likelihood that the
petitioner would prevail with respect to at least 1 of the claims challenged in
the petition.” 35 U.S.C. § 314(a) (2018). An inter partes review may not be
instituted on fewer than all claims challenged in the Petition. SAS Inst., Inc.
v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).
Having considered the Petition and the Preliminary Response, we
deny institution of inter partes review for the reasons provided below.
B. RELATED PROCEEDINGS
The parties indicate that the ’184 patent is involved in DeCurtis LLC
v. Carnival Corp, Case No. 1:20-cv-22945-RNS (S.D. Fla.). Pet. 2–3;
Paper 5, 2. Petitioner indicates that two additional patents (US 10,049,516
and US 10,157,514) are the subject of petitions for inter partes review
proceedings. Pet. 3.
C. THE ’184 PATENT
The ’184 patent discloses a guest engagement system that provides
guest services, including unlocking doors automatically. Ex. 1001,
code (57). The system employs individual guest devices, which guests
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carry. Id. The system uses the guest devices to “automatically identify and
authenticate the guests.” Id.
The guest engagement system may use “Bluetooth low energy (BLE)
communications.” Id. at 2:12–24. Each guest device may “emit a periodic
beacon signal broadcasting a unique identifier of the guest device” using
BLE. Id. at 2:12–19. The guest engagement system may have a sensor
network with distributed sensors that detect the guest devices’ beacon
signals using BLE. Id.at 2:19–24.
The ’184 patent discloses details in connection with Figure 1A, which
is reproduced below.

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Figure 1A shows guest engagement system 10, which includes sensor
network 13, interface devices 17, communication network 19, and servers
21. Id. at 5:27–28, 6:19–49, 6:66–7:6.
Sensor network 13 includes sensors 15. 6:19–22. Sensors 15 are
“configured to communicate wirelessly with guests’ medallions 11.” Id. “A
sensor 15 of the network may be used for sensing a guest’s location (or
proximity to the sensor 15), for example by detecting beacon signals or other
signals emitted by the medallion 11.” Id. at 6:21–25. Additionally,
A sensor 15 may also be located in or otherwise associated with
a particular interface device 17 or interface function of the
system, such as a sensor that is associated with a door lock 17a,
an automatic door or turnstile, a vending terminal 17b, a cash
register, a slot machine, an interactive display 17c or portal 17d,
or the like.
Id. at 6:28–33.
Servers 21 are in communication with various components of guest
engagement system 10. Id. at 6:66–7:4. Communication is provided
between various components of guest engagement system 10 by “one or
more communication network[s] 19.” Id. at 7:4–6.
The ’184 patent also explains that
In one example, the guest engagement system 10 includes at least
one authentication server used to authenticate guests' medallions
and provide encryption and decryption services. The system can
further include one or more servers storing databases of guest
information (e.g., guest reservations), payment transaction
servers (e.g., including guest billing information), location
information (e.g., locations of sensors 15 within the facility, and
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locations of medallions 11 throughout the facility and elsewhere)
and the like.
Id. at 7:6–15.
The ’184 patent discusses the functionality of door lock 17a in more
detail in connection with Figures 7A–7I. Id. at 17:38–41. Figure 7A is
reproduced below.

Figure 7A shows “an automated door lock assembly 700 that provides the
functionality of the door lock 17a to automatically unlock a door based on an
interaction with the guest’s medallion.” Id.
Door lock assembly 700 can serve to selectively unlock the guest’s
room door, for example, on ship or in a hotel. Id. at 17:41–47. Based on
wireless communication with guests’ medallion 11 and communication with
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central reservation server 21, access panel 705 “determines whether or not to
instruct the door lock module 703 to unlock the door.” Id. at 18:16–28.
In order to communicate with medallion 11, access panel 705
“maintains its BLE transceiver (or the BLE transceiver of the associated
sensor 15) activated so as to detect any beacon signals transmitted by
medallions 11 in proximity to the access panel 705.” Id. at 20:6–11. When
it receives periodic beacon signals from medallion 11, access panel 705
starts a door unlocking sequence. Id. at 20:15–19. “[A]ccess panel 705
initiates a secure connection to medallion 11 across which the access panel
705 can request the medallion’s unique private identifier.” Id. at 20:24–27.
After receiving the unique private identifier, access panel ascertains whether
the unique private identifier is associated with a guest that is allowed access.
Id. at 20:36–41. If so, access panel 705 presents a welcome message and
begins door unlocking. Id. at 20:48–53.
In some embodiments, medallion 11 is configured to operate in a
beacon mode, as well as a bi-directional mode. Id. at 21:41–44. When
medallion 11 operates in beacon mode, “guest engagement system 10 may
need to instruct the medallion 11 to switch to the bi-directional mode of
operation in order to enable the medallion 11 to establish the secure
communication channel with the access panel 705.” Id. at 21:52–58. In
some instances, when medallion 11 comes within a certain distance, such as
100 feet, of a door, “guest engagement system 10 causes one or more
sensors 15 that are within communication range of the medallion 11 to
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transmit a wake command to the medallion 11 to cause the medallion 11 to
switch to the bi-directional mode of operation.” Id. at 22:21–31.
D. ILLUSTRATIVE CLAIM
Of the challenged claims, claims 1, 7, 11, and 19 are independent.
Each of claims 2–6, 8–10, 12–18, and 20 depends, directly or indirectly,
from one of claims 1, 7, 11, and 19. Claim 1 is illustrative and is reproduced
below with bracketed identifying labels added.1
1. [1pre] A guest engagement system comprising:
[1[a]] a plurality of portable guest devices provided to users of
the guest engagement system to be carried by the users,
each guest device including a wireless communication
antenna and operative to emit a periodic beacon signal
broadcasting a unique identifier of the guest device using
Bluetooth low energy (BLE) communications;
[1[b]] a sensor network comprising a plurality of sensors each
mounted at a different known location and operative to
detect the periodic beacon signals including the unique
identifiers emitted using BLE communications by portable
guest devices of the plurality of portable guest devices that
are proximate to the sensor;
[1[c]] a communication network connecting each of the plurality
of sensors of the sensor network; and
[1[d]] a central server communicatively connected to each of the
plurality of sensors of the sensor network via the
communication network, and storing a log associating
each unique identifier of a portable guest device detected
using BLE communications by a sensor of the sensor
network with the known location of the sensor and a
timestamp,

1 We use the same labels that Petitioner applies to the limitations of claim 1.
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[1[e]] wherein the plurality of sensors of the sensor network
comprises a plurality of access panels each configured to
control an associated electronically controlled door lock,
[1[f]] each access panel is operative to detect the periodic beacon
signals including the unique identifiers emitted using BLE
communications by guest devices that are proximate
thereto, and to selectively unlock the associated
electronically controlled door lock based on the unique
identifier of the detected periodic beacons, and
[1[g]] each access panel comprises: a radio configured for
wireless communication with a door lock communication
module electrically connected to an electronically
controlled locking mechanism of the associated
electronically controlled door lock;
[1[h]] a first transceiver configured for wireless BLE
communication with the guest devices to identify users
seeking to activate the electronically controlled locking
mechanism; and
[1[i]] a second transceiver configured for communication with
the central server storing identifiers of users authorized to
activate the electronically controlled locking mechanism.
Ex. 1001, 40:17–62.
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E. ASSERTED GROUNDS OF UNPATENTABILITY
Petitioner challenges the patentability of claim 1–20 of the ’184 patent
on the following grounds (Pet. 5):
Claim(s)
Challenged 35 U.S.C. § References
1–8, 10 1032 Barry3, Trani4, Elfström5
9 103 Barry, Trani, Elfström, and Brulé6
11–15 103 Soleimani7, Berg8
16 103 Soleimani, Berg, and Trani
17, 18 103 Soleimani, Berg, and Barry
19, 20 103 Soleimani, Berg, Brulé
In support of its unpatentability contentions, Petitioner also relies on
the Declaration of Kevin Almeroth, Ph.D. Ex. 1002.

2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29,
125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
2013. Because the application from which the ’184 patent issued was filed
after that date, with no benefit claim prior to that date, the AIA version of
§ 103 applies.
3 U.S. Patent Application Publication 2016/0308859 A1 (published Oct. 20,
2016) (“Barry,” Ex. 1004).
4 U.S. Patent Application Publication 2016/0284147 A1 (published Sep. 29,
2016) (“Trani,” Ex. 1005).
5 U.S. Patent 8,730,004 B2 (issued May 20, 2014) (“Elfström,” Ex. 1006).
6 U.S. Patent Application Publication 2015/0178532 A1 (Published June 25,
2015) (“Brulé,” Ex. 1007).
7 U.S. Patent 9,483,887 B1 (issued Nov. 1, 2016) (“Soleimani,” Ex. 1008).
8 International Patent Application WO 2016/177668 A1 (published
November 10, 2016) (“Berg,” Ex. 1009).
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II. ANALYSIS
A. LEVEL OF ORDINARY SKILL IN THE ART
Petitioner contends that
[a] person of ordinary skill in the art (“POSITA”) for the ʼ184
patent is a person with a Bachelor of Science degree in electrical
engineering, computer science, or a related subject matter, plus
at least two years of professional experience in the field of
computer networks, wireless communications, or a similar field.
Pet. 7 (citing Ex. 1002 ¶¶ 42–43). Petitioner elaborates that “more
experience would compensate for less formal education, and vice versa.” Id.
Patent Owner has not provided an assessment of the level of ordinary skill in
the art. To the extent necessary, and for purposes of this Decision, we
accept the assessment offered by Petitioner as it is supported by the
Almeroth Declaration and is consistent with the ’184 patent and the asserted
prior art.
B. CLAIM INTERPRETATION
The Petition explains that “Petitioner and its expert have applied the
plain and ordinary meaning of all claim terms of the challenged claims.”
Pet. 8. In its Preliminary Response, Patent Owner does not propose any
explicit claim constructions. We do not discern a need to construe expressly
any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
are in controversy, 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) (applying Vivid Techs. in the context
of an inter partes review).
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C. GROUND 1 – ALLEGED OBVIOUSNESS OVER BARRY, TRANI, AND
ELFSTRÖM
1. Overview of Barry
Barry discloses “a multi-factor multi-biometric electronic access
control reader environment.” Ex. 1004 ¶ 38. Barry shows this in Figure 1,
which is reproduced below.

Figure 1 shows wall 10 with opening 12 and associated door 13, as well as
locking mechanism 14 and device 20. Id.
Device 20 is mounted flush on wall 10 beside door opening 12. Id.
Person 15 “may momentarily present themselves before device 20.” Id.
¶ 39. Then,
device 20 may authenticate the identity of the person 15,
something possessed by the person (16), and/or something
known by the person. Accordingly, if device 20 approves access
of person 15 through the door opening 12, then the device 20 can
communicate with the locking mechanism 14 to unlock or
otherwise enable passage of person 15 through door opening 12
along a path designated by the arrowed line B.
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Id. Device 20 may be “a multi-factor, multi-biometric (MFMB) electronic
access control (EAC) reader.” Id. ¶ 43. To ensure passage of only
authenticated individuals, device 20 may “verify[] that users either convey a
valid biometric signal such as a face scan . . . or voice scan . . . , possess a
valid credential, know something such as a valid Personal Identification
Number (PIN) . . . , or some combination thereof.” Id.
2. Discussion
In asserting obviousness of claims 1–8 and 10 over Barry, Trani, and
Elfström, Petitioner “relies on Barry as a base reference, combined with
Trani for its disclosure of the portable BLE ‘beacon’ feature, and Elfström
for its disclosure of the claimed antennas, transceivers, and a list of user
identifiers stored on a central ‘reservation server.’” Pet. 16–17. Petitioner
argues that it would have been obvious to modify Barry’s teachings with
those of Trani and Elfström. Id. at 17–18, 20–23, 30, 32–34, 36–38, 41, 43,
45.
Patent Owner argues, among other things, that Petitioner’s showings
regarding claim limitations 1[d] and 7[d] are deficient. Prelim. Resp. 26–28.
Limitations 1[d] and 7[d] recite
a central server communicatively connected to each of the
plurality of sensors of the sensor network via the communication
network, and storing a log associating each unique identifier of a
portable guest device detected using BLE communications by a
sensor of the sensor network with the known location of the
sensor and a timestamp.
Ex. 1001, 40:32–38, 41:45–51. Patent Owner argues that Petitioner presents
deficient arguments regarding the claim language “storing a log associating
each unique identifier of a portable guest device detected using BLE
communications by a sensor of the sensor network with the known location
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of the sensor and a timestamp.” Prelim. Resp. 26–28. We turn now to a
detailed discussion of that issue.
a) Petitioner’s Arguments
Addressing limitation 1[d], Petitioner states that “Barry discloses this
element.” Pet. 25. Petitioner first addresses limitation 1[d]’s requirement
for “a central server communicatively connected to each of the plurality of
sensors of the sensor network via the communication network.” Id.
Regarding this requirement, Petitioner argues that “Barry discloses a cloud
server connected to multiple door sensors.” Id.
Petitioner then address limitation 1[d]’s requirement for “storing a log
associating each unique identifier of a portable guest device detected using
BLE communications by a sensor of the sensor network with the known
location of the sensor and a timestamp.” Id. at 25–26. Addressing this
requirement, Petitioner first asserts that “Barry’s central server stores a log
with detected identifiers and timestamps. Barry at [0046] (each attempt is
logged, including ‘authentication event data’); [0053] (access panel can
‘report access event data to a remote host’); [0198-99] (event log sent to
server). Identifiers may be associated with location and timestamp.” Id. In
support of this argument, Petitioner cites Dr. Almeroth’s testimony that
Barry’s central server logs detected identifiers and timestamps.
Barry at [0046] (“The device 20 may create access event data for
each access attempt. For example, authentication event data,
access control operational data and alarm notifications may be
sent to a cloud based system or a local PACS controller working
in tandem with the device.”); [0053] (access panel can “report
access event data to a remote host”); [0198-99] (“Creates an
event log. Sends access event data and authentication event data
to a remote, preferably cloud based, archive host via internet
connection.”). Guest device identifiers may be associated with
the sensor location and a timestamp to disambiguate access
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attempts from the same user. Id. at [0175] (“[A]ccess control
event data and biometric event data 180 may include at least one
of the data that uniquely identifies the access attempt such as
door number, location, time of day and timing of key intra-access
events….”). A [person of ordinary skill in the art] would have
understood that Barry’s server stores a claimed “log associating
each unique identifier…with the known location of the sensor
and a timestamp.”
Ex. 1002 ¶ 97. Petitioner also argues that a person of ordinary skill in the art
would have recognized Barry’s central server either stores a log received
from an access panel, or the central server itself compiles and stores a log.
Pet. 26.
Petitioner cites the foregoing arguments to address limitation 7[d],
stating that “Barry discloses [limitation 7[d]] for the reasons in
Section X.C.5 above.”
b) Patent Owner’s Arguments
Patent Owner argues that Petitioner does not demonstrate that Barry
expressly or inherently discloses limitations 1[d] and 7[d]. Prelim. Resp.
26–28. Patent Owner notes that “Petitioner only points to paragraph [0175]
of Barry as allegedly disclosing that ‘[i]dentifiers may be associated with
location and timestamp.’” Id. at 27. Patent Owner then argues that
Barry discloses that “access control event data and biometric
event data 180 may include at least one of the data that uniquely
identifies the access attempt….” Barry ¶ [0175]. The
enumerated list of such data, however, does not include a “unique
identifier of a portable guest device” as required by claim 1.
Id. Patent Owner adds that
even assuming arguendo that Barry discloses logging a device
identifier, there is no disclosure of the log associating the device
identifier with both (1) the known location of the sensor and (2)
and timestamp. Barry’s disclosure of a laundry list of possible
event data types, ‘one or more’ of which may be included, does
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not disclose either expressly or inherently (necessarily) a log
associating each of the three elements.
Id. at 27–28.
c) Analysis
Petitioner does not support sufficiently its position that Barry
discloses limitation 1[d]’s and limitation 7[d]’s requirement for “storing a
log associating each unique identifier of a portable guest device detected
using BLE communications by a sensor of the sensor network with the
known location of the sensor and a timestamp.” Ex. 1001, 40:34–38, 41:45–
51 (emphasis added). Regarding the requirement for associating the
identifier, the location, and the timestamp, the only thing the Petition says is
“[i]dentifiers may be associated with location and timestamp.” Pet. 26. The
only disclosure Petitioner cites for this argument is Barry’s paragraph 175.
Id.
Paragraph 175 does not disclose expressly that “[i]dentifiers may be
associated with location and timestamp.” Paragraph 175 discloses that
[r]eferring to FIG. 7, access control event data and biometric
event data 180 may include at least one of the data that uniquely
identifies the access attempt such as door number, location, time
of day and timing of key intra-access events, solutions to all
factor tests submitted, measure of how accurately users were
characterized, the measure of how accurately users could be
distinguished amongst themselves, a characterization of the
temporal variations in the users' characterizations, the prevailing
ambient environmental conditions proximate to the controlled
portal, a raw data image (either two or three dimensional) of the
user attempting access, a synthesized image (either two or three
dimensional) of the user attempting access, and multi-biometric
comparison results.
Ex. 1004 ¶ 175. Neither this long list of different kinds of data, nor any
other part of paragraph 175, discloses an “identifier” or “identifiers,” much
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less a “unique identifier of a portable guest device,” as recited in
limitation 1[d]. Moreover, paragraph 175 does not disclose “associating”
the three specific data recited in the claim.
To the extent Petitioner’s argument that “Barry discloses”
limitation 1[d] means Barry inherently discloses limitation 1[d], Petitioner
also does not support that position. Establishing inherent disclosure of a
limitation requires showing that the limitation necessarily results from the
prior art disclosure. Continental Can Co. v. Monsanto Co. v. Monsanto Co.,
948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be
established by probabilities or possibilities.”). Petitioner does not allege or
demonstrate that a “unique identifier of a portable guest device” necessarily
results from the disclosure of Soleimani’s paragraph 175, much less that
such an identifier is necessarily associated with location and a timestamp.
As noted above, the Petition states that “[i]dentifiers may be associated with
location and timestamp.” (Pet. 26 (emphasis added)).
Because Petitioner does not support its position that “Barry discloses”
limitations 1[d] and 7[d] and does not argue that limitations 1[d] and
limitation 7[d] would have been obvious, Petitioner does not demonstrate a
reasonable likelihood of prevailing on Ground 1.
D. GROUND 2 – ALLEGED OBVIOUSNESS OVER BARRY, TRANI,
ELFSTRÖM, AND BRULÉ
Building from Ground 1, Ground 2 cites Brulé to address certain
recitations added by claim 9, which depends from claim 7. Pet. 48–50. The
arguments presented in Ground 2 do not cure the deficiencies, discussed
above in Section II.C.2.c, of Petitioner’s challenge of independent claim 7 in
Ground 1. Accordingly, Petitioner does not demonstrate a reasonable
likelihood of prevailing on Ground 2.
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E. GROUND 3 – ALLEGED OBVIOUSNESS OVER SOLEIMANI AND
BERG
1. Overview of Soleimani
Soleimani relates to methods and systems that allow people to use a
wireless device to gain access to a secured area or resource. Ex. 1008, 1:7–
10. Figure 2 of Soleimani is reproduced below.

Figure 2 “illustrates an example of utilizing a wireless mobile device to
obtain access to a secured area or resource via an access control device.” Id.
at 3:27–29.
In particular, Figure 2 shows access control device 210. Id. at 5:44–
45. Access control device 210 includes “secured door 210, RF
communication unit 214, and electronically actuated lock 216.” Id. at 5:44–
47.
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“In the example illustrated in [Figure] 2, RF communication unit 214
repeatedly transmits or broadcasts an RF advertisement 220.” Id. at 6:19–
21. RF advertisement 220 may include various information, such as “an
identifier associated with access control device 210,” various other
identifiers, and various other indications. Id. at 6:61–7:8.
Figure 2 also shows wireless mobile device 230 carried by user 240.
Id. at 8:41–43. Wireless mobile device 230 can detect RF advertisement
220. 7:22–23. Also, wireless mobile device 230 may “obtain a received
signal strength indicator (RSSI) 260 for the detected RF advertisement 220.”
Id. at 7:47–50.
Wireless mobile device 230 may compare RSSI 260 to first signal
strength threshold 250 shown in Figure 2. Id. at 8:29–31. First signal
strength threshold “corresponds approximately to a first distance from RF
communication unit 214 . . . , which is illustrated by a first distance circle
251.” Id. at 8:30–37. In Figure 2, user 240 is outside first distance circle
251, and “RSSI 260 is less than first signal strength threshold.” Id. at 8:41–
47.
Soleimani continues the example of Figure 2 in Figure 3. Id. at
10:22–23. Figure 3 is reproduced below.
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Figure 3 shows user 240 inside of first distance circle 251 and “RSSI 260 is
greater than first signal strength threshold 250.” Id. at 10:23–26.
“In response to RSSI 260 being equal to or greater than first signal
strength threshold 250, wireless mobile device 230 or other aspects of access
control system 100 may perform certain operations.” Id. at 10:38–41. For
example, “wireless mobile device 230 may provide an indication of its
proximity to access control device 210 to access control server 110 or RF
communication unit 230.” Id. at 10:56–60. Other actions may also be
performed. For example, location information and motion information may
be considered. Id. at 10:43–54. Wireless mobile device 230 may also “scan
for RF advertisement messages 222.” Id. at 10:64–11:3.
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Wireless mobile device 230 may also compare RSSI 260 to second
signal strength threshold 252. Id. at 11:67–12:2. Second signal strength
threshold “corresponds approximately to a second distance from RF
communication unit 214, which is illustrated by a second distance circle 253
in [Figure] 3.” Id. at 12:2–5. As Figure 3 shows, “second distance circle
253 is closer to RF communication unit 214 than first distance circle 251,”
and “[s]econd signal strength threshold 252 is greater than first signal
strength threshold 250.” Id. at 12:5–9. In Figure 3, user 240 is “outside of
second distance circle 253,” and “RSSI 260 is less than the second signal
strength threshold [252].” Id. at 12:9–15.
Soleimani continues the examples of Figures 2 and 3 in Figure 4. Id.
at 12:16–17. Figure 4 is reproduced below.

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Figure 4 shows user 240 inside of first distance circle 251 and “RSSI 260 is
greater than second signal strength threshold 252.” Id. at 12:17–21.
“In response to RSSI 260 being equal to or greater than second signal
strength threshold 252, wireless mobile device 230 or other aspects of access
control system 100 may perform certain operations.” Id. at 12:34–37. For
example, location and/or motion information may be considered.
Id. at 12:39–52.
Also “[i]n response to RSSI 260 being equal to or greater than second
signal strength threshold 252, wireless mobile device 230 may transmit
message 236 to RF communication unit 214.” Id. at 12:53–56.
Message 236 may include various information, such as identifiers and
indicators. Id. at 13:6–14. RF communication unit 214 may determine
whether to grant access based on message 236. Id. at 13:15–57.
When discussing Figures 2–4, Soleimani discloses RF communication
unit 214 and wireless mobile device 230 swapping messages using BLE.
Soleimani discloses RF communication unit 214 sending RF advertisement
messages 220, 222 using BLE. Id. at 6:24–37, 11:38–42. Soleimani also
discloses that wireless mobile device 230 may transmit message 236 using
BLE. 12:53–60. Subsequently, Soleimani discloses that “although [Figures]
2-10 discuss examples in which RF communication unit 210 is configured to
operate in a BLE GAP Peripheral role and wireless mobile device 230 is
configured to operate in a BLE GAP Common role, those roles may be
reversed.” Id. at 17:60–18:7.9

9 This passage’s references to “RF communication unit 210” appear to be
typographical errors. Because the other portions of Soleimani most
frequently refer to “RF communication unit” using reference numeral 214,
and because no figure appears to show an RF communication unit labeled
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2. Discussion
In asserting obviousness of claims 11–15 over Soleimani and Berg,
Petitioner “uses Soleimani as a base reference,” adding that “Berg teaches
dual antennas.” Pet. 50. Petitioner argues that a person of ordinary skill in
the art would have been motivated to modify Soleimani’s teachings with
Berg’s. Id. at 50–52, 54–56, 58–59.
Patent Owner alleges, among other things, deficiencies in Petitioner’s
arguments regarding limitation 11[f]. Prelim. Resp. 28–30. We turn now to
a detailed discussion of this issue.
a) Limitation 11[f]
Limitation 11[f] recites “each sensor of the sensor network is
operative to transmit a command to a guest device in its communication
range to cause the guest device to change operating mode between the first
and second operating modes.” Ex. 1001, 42:64–67. In this limitation, “the
first and second operating modes” refers back to limitation 11[e], which
recites
wherein each guest device is configured to selectively operate
according to first and second operating modes, each guest device
engaging in bi-directional communication using the first wireless
communication antenna configured for BLE communications in
the first operating mode and engaging in a beacon mode
periodically broadcasting a beacon signal using the first wireless
communication antenna configured for BLE communications in
the second operating mode.
Id. at 42:55–63.

with reference numeral 210, we understand this passage as referring to “RF
communication unit 214,” rather than “RF communication unit 210.”
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(1) Petitioner’s Arguments
Petitioner indicates that Soleimani’s “wireless mobile device”
constitutes the “guest engagement device” recited in limitation 11[f]. See
Pet. 52 (equating Soleimani’s “wireless mobile devices” with limitation
11[a]’s “plurality of portable guest devices.”).
Petitioner contends that Soleimani’s disclosed “indication of . . .
proximity” (Ex. 1008, 10:56–60) constitutes “the ‘command’ recited by
claim 11.” Pet. 65. Specifically, Petitioner argues that
[a]n access control device may transmit a “received signal
strength indication” (RSSI) in its periodic beacon. Soleimani at
7:47-50. If the RSSI signal exceeds a threshold, the portable
device may respond, by “provid[ing] an indication of its
proximity.” Id. at 10:56-60. When the roles of the devices are
reversed, a [person of ordinary skill in the art] would recognize
that the access control device would become responsible for
receiving the RSSI information in the beacon, and providing the
portable device with the indication of proximity. This indication
of proximity, which triggers the portable device to switch modes
and begin operating bi-directionally, is therefore the “command”
recited by claim 11. Compare ’184 patent at 22:21-30. For
example, access devices in Soleimani’s system could operate in
the BLE scanning/central role, and then transmit an indication of
proximity based on RSSI, which would consequently trigger the
guest device to switch from a beacon to a bi-directional mode.
Almeroth ¶ 199.
Pet. 65.
(2) Patent Owner’s Arguments
Patent Owner argues that Soleimani’s “indication of . . . proximity”
does not constitute the “command” required by limitation 11[f]. Prelim.
Resp. 28–30. Patent Owner asserts that “Soleimani does not disclose that
‘the indication of proximity’ causes any device to change operating modes.”
Id. at 28. Patent Owner notes that Soleimani discloses the “indication of . . .
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proximity” at column 10, lines 56–63, which does not say anything about
triggering functionality. Id. at 28–29. Additionally, Patent Owner argues
that Soleimani does not even disclose switching any device to a bi-
directional operating mode under the conditions associated with the
“indication of . . . proximity.” Id. at 29. Patent Owner explains that the
“indication of . . . proximity” occurs when RSSI 260 meets or exceeds first
signal strength threshold. Under that condition, Soleimani discloses
performing various actions, but “[n]one of these actions corresponds to
transmitting a command to cause a device to change operating mode
between the first and second operating modes as required by the claims,”
Patent Owner argues. Id.
Patent Owner also asserts that “Petitioner provides no evidence that
the ‘indication of proximity’ is a command.” Id. Patent Owner argues that,
unable to cite a disclosure of a “command” in Soleimani, Petitioner
“attempts to paper over this deficiency through a comparison to part of the
’184 Patent’s disclosure.” Id. Explaining that the portion of the ’184 patent
cited by Petitioner expressly discloses a “command,” Patent Owner contends
that the comparison does not support Petitioner’s position. Id. at 29–30.
(3) Analysis
Petitioner does not address persuasively limitation 11[f]. Petitioner
fails to support sufficiently its assertion that Soleimani’s “indication of
proximity . . . triggers the portable device to switch modes and begin
operating bi-directionally.” Pet. 65. For example, Petitioner does not
provide a persuasive basis for asserting that Soleimani’s “indication of
proximity” triggers any device to switch to a bi-directional communication
mode. In the section addressing limitation 11[f], the Petition cites only two
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portions of Soleimani: column 7, lines 47–50 and column 10, lines 56–60.
Id. The first cited portion says “[w]ireless mobile device 230 may also be
configured to obtain a received signal strength indicator (RSSI) 260 for the
detected RF advertisement.” Ex. 1008, 7:47–50. The second cited portion
says “[i]n response to RSSI 260 being equal to or greater than first signal
strength threshold 250, wireless mobile device 230 may provide an
indication of its proximity to access control device 210 to access control
server 110 or RF communication unit 230.” Id. at 10:56–60. Facially, these
statements do not disclose Soleimani’s “indication of . . . proximity” triggers
a device to switch to a bi-directional communication mode.
And Petitioner does not otherwise show that a person of ordinary skill
in the art would have understood that Soleimani’s “indication of . . .
proximity” would trigger a device to switch to a bi-directional
communication mode. Consistent with Patent Owner’s argument, Petitioner
does not cite any disclosure in Soleimani of a switch to a bi-directional
communication mode merely because of the “indication of . . . proximity” or
the associated condition that RSSI 260 equals or exceeds first signal strength
threshold 250. See Prelim. Resp. 28–29. Indeed, Petitioner does not show
that Soleimani’s mobile device 230 does not operate in a bi-directional
communication mode continuously, including before and after providing the
“indication of its proximity.”
Aside from those deficiencies, the Petition fails to reconcile
persuasively its reliance on different embodiments of Soleimani. Petitioner
explains that “Soleimani expressly teaches that while some of its
embodiments describe RF communication unit 210 operating in a BLE GAP
broadcaster/peripheral role with wireless mobile device 230 operating in the
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BLE GAP scanning/central or common role, those roles may be reversed.”
Pet. 57–58. Soleimani’s disclosure of reversing the roles constitutes an
“alternative embodiment,” as Petitioner notes in a related petition. IPR2021-
00783, Paper 1, 33. Petitioner argues that
[w]hen the roles of devices are reversed, a [person of ordinary
skill in the art] would recognize that the access control device
would become responsible for receiving the RSSI information in
the beacon, and providing the portable device with the indication
of proximity. This indication of proximity, which triggers the
portable device to switch modes and begin operating bi-
directionally, is therefore the “command” recited by claim 11.
Pet. 65.
But Petitioner cites no portion of Soleimani disclosing that, in the
reversed roles embodiment, the portable device would switch to a bi-
directional communication mode. Instead, when arguing that Soleimani
discloses the portable device switching to a bi-directional communication
mode, Petitioner cites Soleimani’s disclosure of the unreversed embodiment.
Pet. 61–63. Petitioner argues that “[a person of ordinary skill in the art]
would recognize that when Soleimani references the transmission of
message 236 for validation, in addition to other messages being exchanged,
it is describing a well-known, bi-directional request/response authentication
process.” Id. at 62–63. To the extent Petitioner is correct that this disclosure
of the unreversed embodiment means mobile device 230 switches to a bi-
directional communication mode, Soleimani’s reversed embodiment would
reverse the roles of wireless mobile device 230 and RF communication unit
214. Ex. 1008, 17:60–64. Thus, rather than having wireless mobile device
230 switching to a bi-directional communication mode, Soleimani’s
reversed-roles embodiment would involve RF communication unit 214
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switching to a bi-directional communication mode. Petitioner does not
provide a persuasive reason that a person of ordinary skill in the art would
have deviated from Soleimani’s disclosure by having (1) mobile device 230
switch to a bi-directional communication mode (as allegedly happens in the
unreversed embodiment) and (2) RF communication unit 214 send an
“indication of . . . proximity” (as allegedly happens in the reversed-roles
embodiment).
Because Petitioner does not address persuasively limitation 11[f],
Petitioner does not demonstrate a reasonable likelihood of prevailing on
Ground 3.
F. GROUND 4 – ALLEGED OBVIOUSNESS OVER SOLEIMANI, BERG,
AND TRANI
Building from Ground 3, Ground 4 cites “Trani for the sensor types
required by claim 16.” Pet. 69. The arguments presented in Ground 4 do
not cure the deficiencies, discussed above in Section II.E.2.a, of Petitioner’s
challenge of independent claim 11 in Ground 3. Accordingly, Petitioner
does not demonstrate a reasonable likelihood of prevailing on Ground 4.
G. GROUND 5 – ALLEGED OBVIOUSNESS OVER SOLEIMANI, BERG,
AND BARRY
Building from Ground 3, Ground 5 cites “Barry for the additional
limitations of claims 17 and 18 relating to ‘sensor network peripherals.’”
Pet. 70. The arguments presented in Ground 5 do not cure the deficiencies,
discussed above in Section II.E.2.a, of Petitioner’s challenge of independent
claim 11 in Ground 3. Accordingly, Petitioner does not demonstrate a
reasonable likelihood of prevailing on Ground 5.
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H. GROUND 6 – ALLEGED OBVIOUSNESS OVER SOLEIMANI, BERG,
AND BRULÉ
In asserting obviousness of claims 19 and 20 over Soleimani, Berg,
and Brulé, Petitioner “relies on Soleimani and Berg as base references and
further relies on Brule for additional teachings of vending terminals and
payment transactions.” Pet. 74. Petitioner argues that a person of ordinary
skill in the art would have had motivation to combine the references’
teachings. Id. at 50–52, 54–56, 58–59, 75–78.
Patent argues that Petitioner does not show sufficiently that a person
of ordinary skill in the art would have combined the references’ teachings.
Patent Owner first argues that Petitioner has not demonstrated a motivation
to combine Berg with Soleimani. Prelim. Resp. 31–33. Patent Owner then
argues that Petitioner has not demonstrated a motivation to modify
Soleimani with the teachings of Brulé. Id. at 34. With respect to this issue,
weighing the parties’ arguments, we see some merit in Petitioner’s
arguments that a person of ordinary skill in the art would have been
motivated to combine the teachings of Soleimani, Berg, and Brulé. We do
not further address the merits of Petitioner’s challenge to claim 19. As
explained below in Section III, given that Petitioner fails to show a
reasonable likelihood of prevailing with respect to nearly all of the
challenged claims, we exercise our discretion not to institute inter partes
review.
Patent Owner also argues that Petitioner does not address persuasively
claim 20’s requirement that “each sensor of the sensor network is operative
to transmit a command to a guest device in its communication range to cause
the guest device to change operating mode between the first and second
operating modes.” Prelim. Resp. 28–30. This limitation is identical to
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Patent 10,045,184 B2
29
limitation 11[f], which is discussed above in Section II.E.2.a. Accordingly,
Petitioner addresses the “command” recited in claim 20 by referring back to
its arguments that Soleimani discloses limitation 11[f]. Pet. 78. As
discussed in Section II.E.2.a.(3), Petitioner’s arguments regarding limitation
11[f] are unavailing. For the same reasons, Petitioner does not demonstrate
that Soleimani discloses the “command” recited in claim 20. Consequently,
Petitioner does not demonstrate a reasonable likelihood of prevailing on its
challenge of claim 20.
III. CONCLUSION
As explained above in Sections II.C–H, Petitioner fails to demonstrate
a reasonable likelihood of prevailing on it challenge of claims 1–18 and 20.
Given this, we determine that it would not be an efficient use of Board
resources to institute an inter partes review. See Chevron Oronite Co. v.
Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (PTAB Nov. 7, 2018)
(informative); see also Deeper, UAB v. Vexilar, Inc., IPR2018-01310,
Paper 7 at 41–43 (PTAB Jan. 24, 2019) (informative). Accordingly, we
exercise discretion under 35 U.S.C. § 314(a) to decline to institute inter
partes review.
IV. ORDER
For the reasons given, it is:
ORDERED that the Petition is denied; and
FURTHER ORDERED that no inter partes review is instituted.
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30
PETITIONER:

James Glass
jimglass@quinnemanuel.com

Richard Lowry
richardlowry@quinnemanuel.com

PATENT OWNER:

Christopher Higgins
0chptabdocket@orrick.com