shopkick, Inc.v.Novitaz

Patent Trial and Appeal Board

May 29, 2015

10290008 (P.T.A.B. May. 29, 2015)

Trials@uspto.gov Paper 7
Tel: 571-272-7822 Entered: May 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

SHOPKICK, INC.,
Petitioner,

v.
NOVITAZ, INC.,
Patent Owner.
_______________

Case IPR2015-00277
Case IPR2015-00278
1

Patent 7,962,361 B2
_______________

Before DONNA M. PRAISS, SCOTT A. DANIELS, and
BARRY L. GROSSMAN, Administrative Patent Judges.

GROSSMAN, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

1
We use this caption in this paper to indicate that this Decision applies to, and is
entered in, both cases. The parties are not authorized to use this caption.
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I. INTRODUCTION
Shopkick, Inc. (“Petitioner”) filed a Petition in IPR2015-00277 requesting
an inter partes review of claims 1–50 of U.S. Patent No. 7,962,361 B2 (“the ’361
patent”). Paper 1 in IPR2015-00277 (“’277 Pet.”). Petitioner also filed a Petition
in IPR2015-00278 seeking review of claims 51–73 of the ’361 patent. Paper 1 in
IPR2015-00278 (“’278 Pet.”). Novitaz, Inc. (“Patent Owner”) filed a Preliminary
Response to the ’277 Petition and to the ’278 Petition. Paper 6 in each case
(“Prelim. Resp.”). We review the Petitions under 35 U.S.C. § 314, which provides
that an inter partes review may not be instituted “unless . . . there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of the claims
challenged in the petition.”
The parties are the same in the ’277 and ’278 Petitions. The same patent is
challenged in the ’277 Petition and in the ’278 Petition. Each reference relied on
in the ’278 Petition also is relied on in the ’277 Petition. Petitioner relies on the
same Declaration by Dr. Robert Akl, discussing all 73 claims of the ’361 patent, in
the ’277 Petition and in the ’278 Petition. Patent Owner’s Preliminary Response to
the ’278 Petition is essentially identical to its Preliminary Response to the ’277
Petition. The issues presented in each case are essentially the same. The exhibits
on which Petitioner and Patent Owner rely in the ’278 Petition are the same as, and
have the same exhibit numbers as, the corresponding exhibits in the ’277 Petition.
Accordingly, to facilitate the just, speedy, and inexpensive resolution of these
cases, we address both Petitions in this Decision.
2

2
All citations to the record are to the ’277 Petition (generally, “Pet.”), unless
indicated otherwise.
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Based on the record before us, we are not persuaded that the information
presented in the Petitions demonstrates a reasonable likelihood that Petitioner will
prevail in proving that at least one challenged claim would have been obvious
under 35 U.S.C. § 103(a) based on the cited references. Accordingly, we deny the
Petitions and do not institute an inter partes review.
A. Related Proceedings
Petitioner and Patent Owner both state that the ’361 patent is involved in a
pending district court case, Novitaz, Inc. v. shopkick, Inc., Civil Action No. 3:14-
cv-05077 (N.D. Cal.). Pet. 2–3; Paper 5, 3.
There is an inter partes review proceeding that is related to this proceeding.
IPR2015-00279 seeks inter partes review of claims 1–58 (all of the claims) of U.S.
Patent No. 8,229,787 B2, which is a continuation of the ’361 patent.
B. The ’361 Patent
The ’361 patent is titled “Customer Relationship Management System for
Physical Locations.” Ex. 1001. The ’361 patent issued on June 14, 2011, based on
an application filed on November 7, 2002. Id. The ’361 patent discloses a
customer relationship management (“CRM”) system intended for customers who
go to retail stores, banks, restaurants, or any other type of business with a physical
location at which goods and services are provided. Ex. 1001, col. 1, ll. 13–22.
These physical locations are referred to as “brick and mortar” establishments. Id.
The ’361 patent relates to a method for identifying a person who is a repeat
customer when the person enters a brick and mortar establishment. Id. at Abstract.
The method allows a business to provide improved service and facilitate future
sales. Id. at col. 2, l. 66–col. 3, l. 1 (“The present invention provides solutions for
enhanced customer experience for businesses conducted in ‘brick and mortar’
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establishments.”). “It enables targeted marketing and sales promotions (up-
sell/cross-sell) for individual customers,” designed to provide increased sales,
customer retention, and customer loyalty. Id. at col. 3, ll. 5–13.
The preferred way of identifying the customer is using a wireless system.
Id. at col. 3, ll. 14–16. The system also locates the customer within the physical
structure and creates an engagement plan containing information for a salesperson
to use for interacting with the customer. Id. at col. 7, ll. 38–46. The engagement
plan is created based, at least in part, on personal information of the customer. Id.
at col. 7, ll. 64–65. Personal information refers to any type of information
associated with that customer, such as a profile, name, transaction history,
preferences, account number, or user identification number. Id. at col. 7, l. 65–
col. 8, l. 1. The engagement plan may also be tailored based, at least partially, on
prior interactions of the customer with a website, a store, a catalog transaction, or a
telephone sales interaction, or an inquiry. Id. at col. 8, ll. 2–6. The status of the
customer may be assigned based on a tiered scale based on prior spending or other
criteria. Id. at col. 8, ll. 23–28.
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Figure 2, reproduced below, is a general flow diagram of the CRM system
disclosed in the ’361 patent.

Figure 2 from the ’361 patent illustrates a process
for outputting information about a customer using a wireless system.
C. Illustrative Claims
Claim 1 is the sole independent claim in IPR2015-00277. Claims 51, 53, 59,
61, 62, and 69 are independent claims in IPR2015-00278. Claims 1 and 51 are
illustrative and are reproduced below.
1. A computer implemented method of engaging a customer
of a business establishment, the method comprising:
detecting an interaction of the customer with a website
associated with the business establishment, and storing a website
event based on the detected interaction;
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wirelessly detecting within the business establishment a
wireless device carried by the customer;
determining an identity of the customer based on the
customer's wireless device;
wirelessly detecting the customer's interaction with at least
one product, the product located within the business
establishment remote from a point of sale device;
storing a plurality of wirelessly tracked events of the
customer within the business establishment including the
detected customer interaction with the at least one product, the
plurality of tracked events occurring before a purchase
transaction by the customer at the point of sale device;
determining prior to the purchase transaction an engagement
plan specific to the identified customer and based at least on the
tracked and stored events of the customer including the
wirelessly tracked events and the stored website event; and
providing the engagement plan to an employee of the
business establishment prior to the purchase transaction of the
customer in order to facilitate an interaction between the
employee of the business establishment and the customer.

51. A computer implemented method of managing a
business establishment, the method comprising:
detecting a transaction of a customer with a website
associated with the business establishment, and storing a website
event based on the detected transaction;
wirelessly detecting within the business establishment a
wireless device carried by the customer;
wirelessly tracking locations of the customer within the
business establishment by tracking the customer's wireless
device;
determining, prior to a purchase transaction by the customer,
an identity of the customer based on the wireless device carried
by the customer;
identifying, prior to the purchase transaction, the customer as
having a preferred status with the business establishment, the
preferred status based on at least the website event of the
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customer and prior transactions of the customer within the
business establishment;
determining, prior to the purchase transaction, an
engagement plan specific to the identified customer for use by an
employee in engaging the customer, the engagement plan
including information about the customer including the
customer's preferred status; and
providing the engagement plan to the employee of the
business establishment prior to the purchase transaction to
inform the employee of the identified customer's preferred status
and to facilitate an interaction between the employee and the
identified customer having the preferred status.
D. References Relied Upon
Petitioner relies upon the following prior art references:

Reference Date Exhibit Number
Marshall
U.S. Pub. 2002/0116266
Pub. Aug. 22, 2002 Ex. 1002
Roslak
U.S. Pat. No. 7,010,501 B1
Iss. Mar. 7, 2006 Ex. 1004
Ogasawara
U.S. Pat. No. 6,513,015 B2
Iss. Jan. 28, 2003 Ex. 1005
Asthana
“An Indoor Wireless System
for Personalized Shopping
Assistance,”
Undated
3
Ex. 1006

3
In discussing this document, the Petitions refer to “IEEE Proceedings of Mobile
Computing Systems and Applications” and state that this document was “presented
December 8, 1994,” (’277 Pet. 4–5, ’278 Pet. 4) but provide no citation to evidence
establishing the date or circumstances of the presentation. Petitioner’s proffered
expert, Dr. Robert Akl, states that the Asthana article was “presented December 8,
1994” and “published nearly eight years before the 2002 priority date of the ’361
patent.” Ex. 1009 ¶ 51 (emphases added). Dr. Akl does not disclose the
underlying facts on which this statement or opinion is based, and thus it is entitled
to no probative weight. 37 C.F.R. § 42.65(a). Accordingly, Petitioner has not met
its burden of establishing that Asthana is a reference against the ’361 patent.
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Reference Date Exhibit Number
Sorensen
U.S. Pat. No. 7,006,982 B2
Iss. Feb. 28, 2006 Ex. 1007
Hudda
4

U.S. Pub. 2001/0049636
Pub. Dec. 6, 2001 Ex. 1008
E. The Asserted Grounds
Petitioner asserts the following grounds of unpatentability, all of which are
based on 35 U.S.C. § 103(a) (Pet. 3–4):
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Claim(s) Challenged
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IPR2015-00278
Claim(s) Challenged
References
1–18, 20–22, 24–25, 27–
36, 38–45, 47–50
51–53, 56–59, 61–73 Marshall and Ogasawara
1, 4–16, 21–22, 24–25,
27, 30–36, 39–40, 43–
45, 47, 49
51–54, 56, 58–65, 67–70 Roslak and Ogasawara
2–3, 8, 17–18, 20, 28–
29, 38, 41–42, 48, 50
52, 54, 57, 60, 66, 71–72 Roslak, Ogasawara, and
Marshall
2, 23, 26, 27, 35, 39 55, 57 Marshall, Ogasawara, and
Asthana
2, 23, 26, 27, 35, 39 55, 57 Roslak, Ogasawara, and
Asthana
18, 19, 37, 46 71 Marshall, Ogasawara, and
Sorensen
18, 19, 37, 46 71 Roslak, Ogasawara, and
Sorensen
8, 9 NA Marshall, Ogasawara, and
Hudda

4
Hudda is relied on only in IPR2015-00277.
5
In its “Identification of Challenge,” Petitioner provides a chart of the grounds on
which it seeks an inter partes review of “claims 1–50.” ’277 Pet. 3–4. Petitioner’s
chart does not include reference to claims 23 and 26. Petitioner argues in the
Petition, however, that claims 23 and 26 are unpatentable. ’277 Pet. 44–47. We,
thus, have included claims 23 and 26 in our summary chart of the asserted grounds.
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IPR2015-00277
Claim(s) Challenged
5

IPR2015-00278
Claim(s) Challenged
References
8, 9 NA Roslak, Ogasawara, and Hudda
II. ANALYSIS
A. Real Parties in Interest
A petition for inter partes review “may be considered only if . . . the petition
identifies all real parties in interest.” 35 U.S.C. § 312(a)(2). Thus, we address first
this threshold issue.
In accordance with 37 C.F.R. § 42.8(b)(1), Petitioner identifies “shopkick”
as the sole real party in interest. Pet. 2.
Patent Owner asserts that Petitioner “failed to identify all real-parties-in-
interest” (Prelim. Resp. 1) and “thus the petition must fail” (id. at 2).
The Office Patent Trial Practice Guide provides guidance regarding factors
to consider in determining whether a party is a real party in interest. 77 Fed. Reg.
48,756, 48,759–60 (Aug. 14, 2012). Considerations may include whether a non-
party “funds and directs and controls” an IPR petition or proceeding. Id. at 48,760.
Additional relevant factors include: the non-party’s relationship with the
petitioner; the non-party’s relationship to the petition itself, including the nature
and/or degree of involvement in the filing; and the nature of the entity filing the
petition. Id. Generally, a party does not become a “real party-in-interest” merely
through association with another party in an unrelated endeavor. Id. A party also
is not considered a real party in interest in an inter partes review solely because it
is a joint defendant with a petitioner in a patent infringement suit or is part of a
joint defense group with a petitioner in the suit. Id.
Whether a party who is not a named participant in a given proceeding is a
“real party-in-interest” to that proceeding “is a highly fact-dependent question.”
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Id. at 48,759. There is no “bright line test.” Id. Courts invoke the term “real
party-in-interest” to describe relationships and considerations sufficient to justify
applying conventional principles of estoppel and preclusion. Id.
The non-party’s participation with a petitioner may be overt or covert, and
the evidence may be direct or circumstantial, but the evidence as a whole must
show that the non-party possessed effective control over the petitioner relating to
the inter partes review. Zoll Lifecor Corp. v. Philips Elecs. N. Am. Corp., Case
IPR2013-00609, slip op. at 10 (PTAB Mar. 20, 2014) (Paper 15). Accordingly, we
look to the evidence as a whole on which Patent Owner relies to determine the fact
dependent issue of whether Petitioner identified all real parties in interest in this
proceeding.
In support of its position, Patent Owner asserts that SK Telecom “acquired”
Petitioner in 2014 (Prelim. Resp. 3); that Petitioner “has a common interest and
joint defense privilege with at least one of Petitioner’s new owners” (id. at 4); and
that Petitioner provided an “evasive and non-responsive response” to Patent
Owner’s discovery request in the related district court litigation between the parties
(id. at 3).
Patent Owner states that, in the related district court litigation, “SK Planet,
Inc.”
6
was served with a subpoena to produce documents “related to the acquisition
of Shopkick, Inc.” Id. at 4–5. Patent Owner characterizes the response to the
subpoena as “an evasive, coy, non-responsive response.” Id. at 8. Patent Owner
argues that “SK Planet did not state that it had no responsive documents in its
possession, custody or control . . . proves that such acquisition documents do in

6
Based on a newspaper article, Patent Owner asserts that SK Planet Inc. is a fully
owned subsidiary of SK Telecom. Prelim. Resp. 3 (citing Ex. 2001).
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fact exist” Id. at 7. Patent Owner also argues that, based on the fact that SK Planet
asserted a “common interest privilege” to producing the requested documents, “it
is evident that SK Planet and Shopkick are working together to defend the related
lawsuit and that SK Planet has a financial interest in Shopkick’s patent defense,
demonstrating SK Planet’s control over Shopkick (or opportunity to control
Shopkick).” Id. at 10. Patent Owner also argues that SK Planet responded to the
subpoena by engaging and using the same lawyers as Petitioner in the related
litigation, in this IPR proceeding, and in the two related IPR petitions discussed
above.
Patent Owner also states, without citation of persuasive evidentiary support,
that Petitioner’s “CEO” is Cyriac Roeding. Id. at 13. Patent Owner then suggests
that because the Cyriac and Angel Roeding Family Trust 2014 is identified in the
related litigation as a minority owner of outstanding stock in Shopkick
Management Company, Inc., Petitioner has failed to name all the real parties in
this proceeding. Id.
Patent Owner also refers to a number of articles from Petitioner’s “LinkedIn
page announcing its acquisition” as evidence that another entity controls or has the
opportunity to control Petitioner’s participation in these IPR proceedings. Prelim.
Resp. 13 (citing Ex. 2008).
Based on these arguments, Patent Owner concludes that:
Petitioner has stonewalled Patent Owner in explaining the details
of its ownership and control transfer, has evaded discovery on
this point, has confirmed there are responsive documents on this
issue, has asserted common interest privileges among the
numerous controlling companies, has publicly stated and
reported that its new owners operate it, and has failed to inform
the Board of any of these issues.
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Prelim. Resp. 14.
We find Patent Owner’s evidence and arguments speculative and
unpersuasive. On the record before us, we are not persuaded that the evidence
establishes that SK Planet, SK Telecom, or any other entity identified by Patent
Owner, is “an involved and controlling parent corporation representing the unified
interests of itself and Petitioner,” as found in Zoll. Id. at 12.
In RPX Corp. v. Virnetx, Inc., Case IPR2014-00171, slip op. at 6–10 (PTAB
June 23, 2014) (Paper 52),
7
the Board discussed a number of factors to determine
whether petitioner RPX was a proxy for a non-party. Those factors included
whether the petitioner is compensated by the non-party for filing the petition;
whether the petitioner was authorized, explicitly or implicitly, by the non-party to
file the petition or to represent the non-party in the inter partes review; and
whether the petitioner is a “nominal plaintiff” with “no substantial interest” in the
IPR challenge. Id. at 7–10. Unlike the facts in RPX, based on the record before us,
there is no persuasive evidence that Petitioner is acting as a proxy for any other
entity.
In Denso Corp. v. Beacon Navigation GmbH, Case IPR2013-00026, slip op.
at 10–11 (PTAB Mar. 14, 2014) (Paper 34), the Board determined that the mere
fact that parties are co-defendants or concurrent defendants in litigation does not
make them real parties in interest. In Denso, as here, there was no persuasive
evidence that the non-party engaged in strategic planning, preparation, and review
of the inter partes review petition.

7
In RPX, the parties submitted a proposed redacted version (Paper 52) of the
Board’s decision. In Paper 53, the Board entered the redacted decision and ordered
that the redacted decision (Paper 52) would be available to the public.
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The fact that Petitioner and its alleged parent or related corporation share
counsel in litigation, and that the same counsel has entered an appearance in this
inter partes review proceeding does not, without something more, establish the
parent or related corporation’s ability to control Petitioner’s conduct in this
proceeding. Syntroleum Corp. v. Neste Oil OYJ, Case IPR2013-00178, slip op.
at 7 (PTAB Sept. 4, 2014) (Paper 22); see also Zoll, Paper 15, slip op. at 12
(“common counsel alone is not dispositive of control”). Unlike the facts in Zoll,
the evidence before us does not establish that Petitioner’s actions “have blurred
sufficiently the lines of corporate separation” such that any of the unnamed parties
“has had control, or could have controlled Petitioner, in all aspects of its business,”
which would include the aspects of its business relating to the inter partes review.
Id. For example, Patent Owner has not directed us to persuasive evidence that
Petitioner and the unnamed parties have shared corporate leadership, or that
officers of the unnamed parties conducted negotiations with Patent Owner or
others on behalf of both Petitioner and the unnamed parties, as found in Atlanta
Gas Light Co. v. Bennett Regulator Guards, Inc., Case IPR2013-00453, slip op.
at 2–6, 11 (PTAB Jan. 6, 2015) (Paper 88). See also, Galderma S.A. v. Allergan
Industrie, SAS, Case IPR2014-01422, slip op. at 12 (PTAB Mar. 5, 2015) (Paper
14) (same person serving as President and CEO of both parent and subsidiary
determined to have “a significant degree of effective control over the present
matter”).
The totality of the evidence before us does not establish a relationship
sufficient to make any of the unnamed parties identified by Patent Owner a real
party in interest in these inter partes reviews. The evidence on which Patent
Owner relies does not establish or suggest that the unnamed parties fund, direct, or
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control the IPR petition or proceeding, or that Petitioner is a proxy for the unnamed
parties. There is no persuasive evidence that any of the unnamed parties has
control over the petition itself or over Petitioner’s role in this proceeding.
Accordingly, based on the totality of the evidence before us, Patent Owner fails to
establish that any unidentified party should have been identified as a real party in
interest in this proceeding.
8

B. Claim Construction
In an inter partes review, claim terms in an unexpired patent are interpreted
according to their broadest reasonable construction in light of the specification of
the patent in which they appear. 37 C.F.R. § 42.100(b); In re Cuozzo Speed Techs.
LLC, 778 F.3d 1271, 1279–83 (Fed. Cir. 2015) (“Congress implicitly adopted the
broadest reasonable interpretation standard in enacting the AIA,” and “the standard
was properly adopted by PTO regulation”). Claim terms also are given their
ordinary and customary meaning, as would be understood by one of ordinary skill
in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504
F.3d 1249, 1257 (Fed. Cir. 2007).
Petitioner proposes a specific construction for the phrase “engagement
plan.” Pet. 7–8. Patent Owner does not propose any specific claim construction,
nor does Patent Owner address the construction proposed by Petitioner.

8
In considering jurisdiction over a corporate parent based on activities of its
subsidiary, the United States Court of Appeals for the Federal Circuit has held that
“a corporate subsidiary’s contacts in the forum state cannot be imputed to the
parent corporation absent clear and convincing evidence that the parent controls
the subsidiary’s activities.” Avocent Huntsville Corp. v. Aten Intern. Co., 552 F.3d
1324, 1337–38 (Fed. Cir. 2008) (citing Negron-Torres v. Verizon Commc’ns, Inc.,
478 F.3d 19, 27 (1st Cir. 2007) (declining to assert jurisdiction over Verizon based
on the actions of its subsidiary without strong evidence of control by the parent
corporation)). Here, there is no such strong evidence of control.
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Petitioner asserts that the broadest reasonable construction of “engagement
plan” consistent with the specification is any “information useful for interacting
with a customer.” Pet. 8 (citing Ex. 1009 ¶¶ 13–17). In support of its proposed
interpretation, Petitioner also cites one sentence from the Specification. Id. at 7
(citing Ex. 1001, col. 7, ll. 49–50).
The Specification provides numerous examples of information that may be
included in an engagement plan. The Specification states:
The engagement plan has information useful for
interacting with the customer. Such information can be aimed at
a service provider or retailer and can include suggestions,
strategies, explicit instructions, etc. The engagement plan can
also include other types of useful information, including a
preference of the customer such as favorite salesperson or waiter,
favorite food item or type of product, preferred seat, etc. The
engagement plan may also include a preferred engagement level,
i.e., brief to extended. Information for cross-selling can also be
included. Additionally, incentives such as coupons, rebates,
loyalty rewards, etc. can accompany/be included in the
engagement plan.
The engagement plan also entails marketing and
promotions output directly to the user. More discussion
regarding this feature is provided below.
The engagement plan is preferably created based at least in
part on personal information of the customer. Personal
information refers to any type of information associated with that
customer alone, such as a profile, name, transaction history,
preferences, account number, user identification number, etc.
The engagement plan may also be tailored based at least partially
on input relating to a prior interactions of the customer with one
or more of a website, a physical location such as a store, a
catalog transaction (catalog sale or request for information), and
a telesales interaction. An interaction occurs, for example, when
the customer in some manner views, discusses, searches for,
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and/or requests an item or service in one of the contexts set forth
above.
Ex. 1001, col. 7, l. 47–col. 8, l. 9.
The Specification does not state, however, that any of these numerous
examples are required in an engagement plan. Accordingly, based on the
Specification and the record before us, for purposes of this Decision, we agree with
Petitioner that the broadest reasonable interpretation of the phrase “engagement
plan” is information useful for interacting with a customer.
C. Asserted Grounds of Unpatentability
As discussed below, all the challenged claims, claims 1–73, are asserted to
be unpatentable under 35 U.S.C. § 103(a) based on various combinations of
references listed above. ’277 Pet. 3; ’278 Pet. 3. In the Preliminary Response,
Patent Owner does not address the substantive unpatentability grounds.
Section 103(a) forbids issuance of a patent when “the differences between
the subject matter sought to be patented 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.” In
Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the Court set out a
framework for applying the statutory language of § 103:
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined.
Id. at 17–18. “While the sequence of these questions might be reordered in any
particular case, the factors continue to define the inquiry that controls.” KSR Int’l.
v. Teleflex Inc., 550 U.S. 398, 407 (2007).
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The Supreme Court has made clear that we apply “an expansive and flexible
approach” to the question of obviousness. Id. at 415. Whether a patent claiming
the combination of prior art elements would have been obvious is determined by
whether the improvement is more than the predictable use of prior art elements
according to their established functions. Id. at 417. To reach this conclusion,
however, requires more than a mere showing that the prior art includes separate
references covering each separate limitation in a claim under examination.
Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011). Rather,
obviousness requires the additional showing that a person of ordinary skill at the
time of the invention would have selected and combined those prior art elements in
the normal course of research and development to yield the claimed invention. Id.
Against this general background, we consider the references, other evidence,
and arguments on which Petitioner relies.
1. Independent Claims 1, 51, 53, 59, 61, 62, and 69
Claim 1 is the sole independent claim in IPR2015-00277. Claims 51, 53, 59,
61, 62, 69 are the independent claims in IPR2015-00278. We focus our analysis
below on independent claim 1 to avoid unnecessary repetition. This same analysis,
however, applies equally to independent claims 51, 53, 59, 61, 62, and 69.
Petitioner asserts that claim 1 “is rendered obvious” based on either the
combination of Marshall and Ogasawara or, alternatively, based on the
combination of Roslak and Ogasawara. Pet. 20; see also ’278 Pet. 18
(“Independent claim 51 is rendered obvious by Marshall in combination with
Ogasawara, and further by Roslak in combination with Ogasawara.”). In a
summary, Petitioner states that “[a]s set forth more fully below and in the
declaration of Dr. Akl, the methods and systems . . . claimed in the ‘361 Patent are
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anticipated and/or rendered obvious by the prior art.” Pet. 20 (emphasis added);
see also ’278 Pet. 18 (asserting that claims 51–73 “are anticipated and/or rendered
obvious by the prior art”) (emphasis added). This one sentence is the only
reference to “anticipation” in the Petitions. It fails to provide the particularity of
the anticipation grounds,
9
including identification of the claim on which the
challenge is based, and the evidence that supports the grounds for the challenge to
each claim, as required by the statute. 35 U.S.C. § 312(a)(3). Dr. Akl’s
Declaration discusses the legal standard for anticipation (Ex. 1009 ¶¶ 20–25), but
does not provide an analysis as to whether any challenged claim is anticipated by a
single prior art reference.
Accordingly, to the extent Petitioner asserts that the challenged claims are
anticipated by the prior art, we deny institution based on this asserted ground. We
proceed below with our analysis of Petitioner’s challenge based on obviousness.
Petitioner asserts that the prior art of record is analogous and properly
combined. Pet. 14–19; see also ’278 Pet. 13 (“The Prior Art References are
Analogous”), ’278 Pet. 15 (“The Prior Art References are Properly Combined”).
Petitioner asserts:
A person of ordinary skill in the art at the time the invention of
the ‘361 Patent was made would have been motivated to
combine the primary references Marshall and Roslak with one or

9
“A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987). “The
identical invention must be shown in as complete detail as is contained in the . . .
claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).
The elements must be arranged as required by the claim, but this is not an
ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond,
910 F.2d 831, 832 (Fed. Cir. 1990).
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more of the secondary references Ogasawara, Hudda, Asthana,
and Sorensen. (Akl Decl., ¶¶ 61-64). Motivation to combine
prior art references may be found, among other places, explicitly
or implicitly in “the prior art references themselves,” “design
incentives,” or in “the background knowledge, creativity, and
common sense of the person of ordinary skill in the art.”
Pet. 16; see also ’278 Pet. 15 (asserting verbatim the identical argument without
the Hudda reference, which is not relied upon in the ’278 Petition).
Dr. Akl opines on the level of skill in the art. Pet. 6–7 (citing
Ex. 1009 ¶ 19); see also ’278 Pet. 6 (citing Ex. 1009 ¶ 19).
Petitioner does not identify in the Petitions, however, differences between
the prior art and the claims at issue or provide a substantive analysis of why or how
a person of ordinary skill in the art would have modified the prior art to render the
claims obvious. Unigene Labs., 655 F.3d at 1360. Petitioner merely quotes each
limitation in claim 1 and, following each quoted limitation, asserts that,
individually, Marshall, Roslak, or Ogasawara discloses the limitation. Pet. 20–31.
Petitioner then provides quotes from the particular reference. Id. As stated by the
Supreme Court,
“a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was,
independently, known in the prior art. . . . This is so because
inventions in most, if not all, instances rely upon building blocks
long since uncovered, and claimed discoveries almost of
necessity will be combinations of what, in some sense, is already
known.”
KSR, 550 U.S. at 418–19.
By way of specific example, concerning claim 1, we look to the clause
Petitioner identifies as clause (e), reciting the step of:
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determining prior to the purchase transaction an engagement plan
specific to the identified customer and based at least on the
tracked and stored events of the customer including the
wirelessly tracked events and the stored website event.
Pet. 26. Petitioner states “Marshall discloses this limitation” (id.); “Roslak
discloses this limitation” (id. at 27); and “Ogasawara further discloses an
‘engagement plan’” (id. at 28). Petitioner does not identify for this clause,
however, or for other clauses in the challenged claims, what are the differences
between the prior art and the claims at issue, which is one of the fundamental
factual inquiries underlying an obviousness analysis. Outside the Box Innovations,
LLC v. Travel Caddy, Inc., 695 F.3d 1285, 1295 (Fed. Cir. 2012) (citations
omitted). These factual inquiries promote “uniformity and definiteness” in
determining what would have been obvious. Id.
Petitioner also does not identify a persuasive fact-based “reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR, 550 U.S. at 418.
Petitioner states, for example, “Ogasawara’s method naturally extends Marshall’s
method of wirelessly identifying preferred customers in-store, supplementing
Marshall as to specific types of personal information that can be given to sales
persons.” Pet. 18. This statement does not compensate for the lack of any
meaningful analysis of the differences between the prior art and the claims at issue.
Moreover, there is no persuasive evidence that a person of ordinary skill at the time
of the invention would have modified, selected and/or combined prior art elements
in the normal course of research and development to yield the claimed invention.
The Petitions and Dr. Akl’s Declaration (Ex. 1009 ¶¶ 61–66) merely state
conclusory labels.
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We recognize that, in discussing the last clause in claim 1, Petitioner asserts
“Roslak renders this limitation obvious.” ’277 Pet. 30. Petitioner then states that
“[w]hile Roslak does not explicitly disclose that the shopper profile can be
provided to store personnel, such a step is obvious given the purpose of Roslak.”
Id. (citing Ex. 1009 ¶ 88). Paragraph 88 of Exhibit 1009 (the Akl Declaration),
however, does not refer to Roslak or provide a reason why the proposed
modification of Roslak would have been obvious. Accordingly, Petitioner has not
directed us to persuasive evidence supporting Petitioner’s argument. See also ’278
Pet. 24–25 (arguing obviousness based on Roslak but citing evidence
(Ex. 1009 ¶ 233) that does not discuss or refer to Roslak).
Moreover, in determining the differences between the prior art and the
claims, the question under 35 U.S.C. § 103 is not whether the differences
themselves would have been obvious, but whether the claimed invention as a
whole would have been obvious. Litton Indus. Products, Inc. v. Solid State
Systems Corp., 755 F.2d 158 (Fed. Cir. 1985) (“It is elementary that the claimed
invention must be considered as a whole in deciding the question of
obviousness.”); see also Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1537
(Fed. Cir. 1983) (“the question under 35 U.S.C. § 103 is not whether the
differences themselves would have been obvious. Consideration of differences,
like each of the findings set forth in Graham, is but an aid in reaching the ultimate
determination of whether the claimed invention as a whole would have been
obvious.”).
Under the statute, any petition for inter partes review must “identif[y] . . .
with particularity . . . the grounds on which the challenge to each claim is based.”
35 U.S.C. § 312(a)(3). Petitioner has the burden of proof to establish that it is
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entitled to the requested relief. 37 C.F.R. § 42.20(c). The petition must include a
full statement of the reasons for the relief requested, including a detailed
explanation of the significance of the evidence. Id. § 42.22(a). The petition must
include a statement of the relevance of the evidence to the challenge raised.
Id. § 104(b)(5). “The Board may exclude or give no weight to the evidence where
a party has failed to state its relevance or to identify specific portions of the
evidence that support the challenge.” Id. “Thus, we will address only the basis,
rationale, and reasoning put forth by the Petitioner in the petition, and resolve all
vagueness and ambiguity in Petitioner’s arguments against the Petitioner.” Liberty
Mutual Ins. Co. v. Progressive Casualty Ins. Co., Case CBM-2012-00003, slip op.
at 10 (PTAB Oct. 25, 2012) (Paper 8). It is Petitioner’s responsibility “to explain
specific evidence that support its arguments, not the Board’s responsibility to
search the record and piece together what may support Petitioner’s arguments.”
Dominion Dealer Solutions, LLC v. Autoalert, Inc., Case IPR2013-00225, slip op.
at 4 (PTAB Oct. 10, 2013) (Paper 15).
10

The fact that the cited references are “analogous to the claimed invention”
(Pet. 15) does not establish that it would have been obvious to combine their
features. Petitioner asserts that the motivation to combine the references is “in ‘the
prior art references themselves,’ ‘design incentives,’ or in ‘the background
knowledge, creativity, and common sense of the person of ordinary skill in the
art.’” Pet. 16; see also ’278 Pet. 15 (stating the identical argument). These

10
We recognize our discretionary authority to modify the grounds stated in a
petition for inter partes review. See In re Cuozzo Speed Techs., LLC, 778 F.3d
1271, 1277 (Fed. Cir. 2015) (In a Final Decision, there was no bar to finding
claims unpatentable based on a combination of references different from the
combination of references on which the inter partes review was instituted.). This
does not change, however, Petitioner’s burden of proof.
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conclusory labels do not substitute for a fact-based analysis in the Petitions
establishing what is being modified, and why it would have been obvious to a
person of ordinary skill to make the modification. Petitioner must show some
reason why a person of ordinary skill in the art would have thought to combine
particular available elements of knowledge, as evidenced by the prior art, to reach
the claimed invention. KSR, 550 U.S. at 418.
We determine that the Petitions do not set forth a meaningful obviousness
analysis over the prior art cited because they do not adequately explain the
significance of the evidence and do not direct us to persuasive evidence to support
a rationale for the particular combination of references identified in the separate
patentability challenges.
For these reasons, we determine that Petitioner has not demonstrated a
reasonable likelihood that independent claims 1, 51, 53, 59, 61, 62, and 69 are
unpatentable over the prior art relied on by Petitioner. Accordingly, we do not
institute a trial with respect to claims 1, 51, 53, 59, 61, 62, and 69.
2. Dependent Claims
Claims 2–50 depend, directly or indirectly, from claim 1, and thus include
all its limitations and elements. Dependent claims 52, 54–58, 60, 63–68, and 70–
73 depend, directly or indirectly, from one of independent claims 51, 53, 59, 61,
62, or 69, and thus include all the limitations and elements of the independent
claim. Petitioner’s arguments and evidence concerning the dependent claims do
not compensate for the deficiencies discussed above concerning the independent
claims. Accordingly, we also do not institute a trial on any dependent claim.
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III. CONCLUSION
Upon consideration of the Petitions and Preliminary Responses, we are not
persuaded that the record before us demonstrates a reasonable likelihood that
Petitioner will prevail in establishing that at least one challenged claim would have
been obvious under 35 U.S.C. § 103(a) based on the cited references.
Accordingly, we deny the Petitions and do not institute an inter partes review.
IV. ORDER
For the reasons given, it is:
ORDERED that the Petitions in IPR2015-00277 and IPR2015-00278 are
denied and inter partes review is not instituted.

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FOR PETITIONER:

Nagendra Setty
Don Daybell
ORRICK HERRINGTON & SUTCLIFFE LLP
N13PTABDocket@orrick.com
d2dptabdocket@orrick.com

FOR PATENT OWNER:

Woodrow Pollack
Stefan Stein
GRAY ROBINSON, P.A.
woodrow.pollack@gray-robinson.com
stefan.stein@gray-robinson.com