Shopkick, Inc.v.Novitaz, Inc.

Patent Trial and Appeal Board

Sep 3, 2015

13101932 (P.T.A.B. Sep. 3, 2015)

Trials@uspto.gov Paper 11
571-272-7822 Entered: September 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

SHOPKICK INC.,
Petitioner,

v.

NOVITAZ, INC.,
Patent Owner.
____________

Case IPR2015-00279
Patent 8,229,787 B2

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

DANIELS, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71
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Shopkick filed a Request for Rehearing (Paper 8, June 29, 2015
“Request” or “Req. Reh’g”) of the Board’s Decision Denying Institution
(Paper 7, May 29, 2015, “Decision” or “Dec.”), holding that Shopkick had
failed to demonstrate a reasonable likelihood that claims 1–58 of Novitaz’s
Patent 8,229,787 B2 (the “’787 patent”) (Ex. 1001) are unpatentable.
Shopkick now contends that we overlooked evidence that points to a
broader construction of “marketing message” and have “articulated an
unjustifiably narrower construction based on an obsolete dictionary from
1975.” Req. Reh’g. 1. Shopkick asserts that we misapprehended or
overlooked intrinsic evidence in the specification with respect to the term
“marketing message,” and failed to give appropriate weight to Dr. Akl’s
testimony (Ex. 1010) with respect to how one of ordinary skill in the art
would have understood “marketing message.” Id. at 2. Shopkick also
argues that we misapprehended or overlooked the teachings in the prior art
references to Marshall and Roslak, as well as Shopkick’s articulated
reasoning and evidentiary analysis supporting the various combinations of
prior art. Id.
The burden of showing a decision should be modified is on the party
challenging the decision. 37 C.F.R. § 42.71(d). Shopkick has not sustained
its burden, therefore, the Request is DENIED.
ANALYSIS
Broadest Reasonable Construction
Shopkick takes issue with the Board’s construction of “marketing
message,” as “an offer to sell, or, a sales offer for, a good or service.”
Shopkick asserts that this construction is too narrow and not the “broadest
reasonable construction” as required by our rules. Req. Reh’g. 8. Shopkick
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argues that “marketing message” should be interpreted more broadly as
“information useful for interacting with a customer” and that this
interpretation is consistent with the ’787 patent disclosure. Id. Below, we
examine both the intrinsic and extrinsic evidence upon which Shopkick
bases its Request.
Intrinsic Evidence
When construing claims, our “focus must begin and remain centered
on the language of the claims themselves.” Interactive Gift Exp., Inc. v.
Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). The main error in
Shopkick’s construction is that it is overbroad and simply overlooks the
plain language, distinct steps, and elements of the claims. For example,
under Shopkick’s interpretation, “information useful for interacting with a
customer” reasonably includes a customer’s name being received by a retail
salesperson, for instance, so that the salesperson can approach a customer
with a level of familiarity. See Ex. 1001, 3:22–27. An interpretation this
broad would encompass at least two distinct elements and steps in the
recited method of claim 1, as shown in italics below.
1. A computer implemented method of marketing to a customer
of a business establishment, the method performed by a
computer system, 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;
detecting a presence of the customer within the business
establishment by virtue of a wireless device carried by the
customer;
determining an identity of the customer based on the
customer’s wireless device;
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storing a plurality of wirelessly tracked events of the
customer within the business establishment including a detected
customer interaction with at least one product, the plurality of
tracked events occurring before a purchase transaction by the
customer at a point of sale device; and
determining, by the computer system, prior to the
purchase transaction a marketing message for the identified
customer based on the tracked events.
Indeed, under Shopkick’s interpretation, “information useful for
interacting with a customer” encompasses most, if not all, steps recited in
the method of claim 1. By way of further example, “storing a plurality of
wirelessly tracked events,” such as interactions of a customer with particular
products in a store, as called for in claim 1, is also reasonably understood as
“information useful for interacting with a customer” under Shopkick’s
construction. Not only does Shopkick’s construction render the different
elements and steps of the claim needless, but given such an overly broad
interpretation that encompasses the separately recited limitations in the
claim, the claim as a whole would be essentially no more than a method for
detecting and determining information useful for interacting with a
customer. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions that render phrases in
claims superfluous); see also Bicon Inc. v. Straumann Co., 441 F.3d 945,
950 (Fed. Cir. 2006) (“claims are interpreted with an eye toward giving
effect to all terms in the claim”). Shopkick’s construction goes too far, it is
inconsistent with the language, limitations, and plain meaning of the claim
on its face, and fails to give effect to the distinct limitations explicitly recited
in the claims.
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Shopkick specifically argues that our construction did not properly
consider the intrinsic evidence in the ’787 patent as it relates to the term
“marketing.” Req. Reh’g 8–10. Shopkick’s argument here, however, relies
only on the broadly described marketing “[m]ethodology” described in the
’787 patent. The “wide-ranging” embodiments of marketing in the
specification that Shopkick contends better define the term “marketing
message” refer to general marketing concepts, e.g. “[m]ethodology for
personalized marketing” and “tailored marketing.” Id. at 8–9 (citing Ex.
1001 3:45–54, 8:63–67, Fig. 2; Dec. 9). Our reading of both descriptions, in
context, is that these broader marketing concepts are background
information, e.g. personal information that allows a computer system to
determine appropriate product information to output to the customer. The
specific output product information described in the embodiments noted by
Shopkick, is more reasonably understood as a “marketing message for the
identified customer” as recited in claim 1. (Emphasis added). The actual
marketing message, or “output” these descriptions refer to is explicitly
described as “product information” and “product information and/or
pricing.” Ex. 1001 3:45–54, 8:63–67. There is no description that Shopkick
points to that such “output” to the customer includes the personal
information which may have facilitated the appropriate product information
for the customer. While the product information may be based upon, or
derived from personal information of the customer, it is in no way clear that
personal information is included in “a marketing message for the identified
customer based on the tracked events” as recited for instance in claim 1.
Shopkick’s argument is essentially a reformulation of its original
claim construction argument in the Petition that “marketing message” should
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be construed at least as broadly as the term “engagement plan.” Compare
Req. Reh’g 7–10 and Pet. 7–8 (Paper 1, Nov. 19, 2014). Shopkick made
this argument based on certain intrinsic evidence that, during the prosecution
of the ’787 patent, the Examiner (1) accepted a terminal disclaimer to
overcome a double patenting rejection based on U.S. Patent No. 7,962,361,
and (2) the Examiner wrote the term “marketing plan” instead of “marketing
message” in the double patenting rejection. Pet. 7–8 citing Ex. 1011, 2–3.
We did not find this evidence persuasive that the Examiner intended for
these terms to have equivalent meanings. See Dec. 8. Shopkick does not
contend that we misapprehended or overlooked this evidence, rather, it
reargues the claim construction based upon the ’787 patent specification.
As we explained in our Decision, and reiterate here, the intrinsic
evidence of record from the written description of the ’787 patent does not
favor Shopkick’s construction because
“[m]arketing,” in the context of the ’787 patent, is understood
in these examples as a part, or portion, of the engagement plan.
For instance, the engagement plan may give the sales person the
targeted customer’s name, (personal information) and a
suggestion for offering (marketing) a certain product, or a
service potentially, to that customer. See id. at 8:63–9:6.
Another factor weighing against equating these terms, is that
the word “engagement” is generally used in the specification in
relation to a customer, whereas “marketing” is used in relation
to a product, or service, presented directly to the customer. See
id. at 7:47–63.
Dec. 9. No matter how Shopkick asserts its construction, it is inconsistent
with the plain meaning of the claim language as well as the detailed
description in the specification of the ’787 patent. We are not persuaded
here, as in our Decision, that personal information such as that which is part
of the engagement plan and encompassed by Shopkick’s proposed
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construction, is properly included in the claim interpretation of “marketing
message.”
Accordingly, we did not overlook the intrinsic evidence of record.
Extrinsic Evidence
Turning to extrinsic evidence, Shopkick contends that the dictionary
definition we relied upon for the word “marketing” is outdated. Req. Reh’g.
7–8. From THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 800 (New College Ed. 1975), we found that a plain and ordinary
meaning of “marketing,” is to “offer for sale.” Dec. 10. Our Decision did
not, however, turn on or indicate this as the only possible definition of
“marketing,” only that it was consistent with our understanding of the plain
meaning of the term “marketing message” from the claims of the ’787 patent
and based on the description in the specification, where “marketing
message” is “tied to selling a certain item, product or service.” Id. at 9. It
may be that “marketing” definitions from other sources may comport with
Shopkick’s construction, however, this does not mean that they are
consistent with the plain meaning of the claims and written description of
the ’787 patent.
Marshall and Roslak
Shopkick also contends that we overlooked their arguments and
evidence that Marshall discloses a “marketing message” in accordance with
the proper claim construction because Marshall discloses an embodiment of
its system that makes an offer for sale of a cordless drill. Req. Reh’g. 3–7.
First, although Shopkick cites various portions of Marshall’s disclosure and
contends that the example of a cordless drill is a product to which a
“marketing message” is targeted, Shopkick does not direct us to any portion
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of the Petition where this evidence may have been previously presented as
required by 37 C.F.R. § 42.71(d). See also DeSilva v. DiLeonardi, 181 F.3d
865, 867 (7
th
Cir. 1999)(“A brief must make all arguments accessible to the
judges, rather than ask them to play archaeologist with the record.”). Rule
42.71(d) provides (emphasis added):
The burden of showing a decision should be modified lies with
the party challenging the decision. The request must specifically
identify all matters the party believes the Board misapprehended
or overlooked, and the place where each matter was previously
addressed in a motion, opposition, or a reply.
Under the statute, the petition alone must “identif[y] . . . with
particularity . . . the grounds on which the challenge to each claim is based.”
35 U.S.C. § 312(a)(3). It is also Shopkick’s burden to prove that it is
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. at § 42.22(a).
Thus, it is Shopkick’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); see Liberty Mutual Ins. Co. v. Progressive
Casualty Ins. Co., Case CBM-2012-00003, slip op. at 10 (PTAB Oct. 25,
2012) (Paper 8)( “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.”).
In its Request, Shopkick points to its Petition, page 23, as evidence
that it previously asserted that Marshall discloses an offer for sale of a
product within the proper meaning of “marketing message.” Req. Reh’g 4–5
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citing Ex. 1003 ¶¶ 4, 56–57. Petitioner’s argument on page 23 of the
Petition alleges that “Marshall uses this information to designate ‘preferred’
customers and target sales to those customers.” Pet. 23 citing Ex. 1003
¶¶ 65–66. The specific portion of Marshall that Shopkick quotes in support,
and apparently relies upon as to the meaning of “target[ed] sales,” states
only that a customer can be notified of “the availability of [an] award or
other item of value.” Ex. 1003 ¶ 56. We are not persuaded by such
evidence that an award of points is itself a product offered for sale, nor that
an “item of value” is intended to be a product, such as a cordless drill,
offered for sale.
1
See Req. Reh’g 5–6. As we explained in our Decision,
“Marshall’s paragraph 56, read in context, relates to the award of ‘credits or
points, or other items of value,’ based on certain customer criteria, not any
type of offer for sale of a product.” Dec. 19.
Similarly, in Roslak, the examples relied upon now by Shopkick in
the Request raise matters that were not specifically addressed in the Petition.
Req. Reh’g. 6–7. Shopkick points us to arguments at page 24 of the Petition
relating to Roslak’s “inference engine,” as generating an offer for sale of a
product. Req. Reh’g. 6. In its Petition, however, Shopkick argues that the
inference engine “is used to predict and/or monitor customer preferences as
to product placement, content, display location, etc.” Pet. 24 (citing Ex.
1005, 8:58–9:8). This is not persuasive of the inference engine itself
providing any sort of message, marketing or otherwise, much less an offer
for sale of a product. Roslak’s “inference engine,” relied upon by Shopkick
in its Petition, compiles information based on a customer’s selections, it does

1
We note that the only specific “offer[s]” described in Marshall’s paragraph
57 are “a targeted offer of time points” not an offer for a cordless drill.
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not deliver an offer for sale of a product to the customer. See Ex. 1005,
19:47–20:7. It is also not clear that Roslak’s disclosure of a “shopping list”
is tied to the “inference engine” as Shopkick now asserts for the first time.
Req. Reh’g. 6. Indeed, the “shopping list[s]” described by Roslak at
columns 15 and 16, are generated in response to a list provided by the
customer themselves (Ex. 1005, 15:55–57) or, a list based on a recipe input
by the customer (Ex. 1005, 16:1–48), and as such are not understood to be
an offer from a seller to a buyer, but merely a listing of goods. Moreover,
that the list or a display in the store “can also offer specials pertaining to
items on the list” (Ex. 1005, 16:46–48), such as indicating a discount on a
can of peaches, does not change the fact that the underlying goods
themselves are specifically listed or requested by the customer, and not
actually offered for sale by the seller to the buyer in a marketing message.
See Req. Reh’g. 6.
We note that these arguments refer to and explain many aspects of the
references not discussed in the Petition. Again, we could not have
misapprehended or overlooked something not adequately explained initially.
A request for rehearing is not an opportunity to supplement a petition.
Motivation to Combine
Shopkick further argues that we “misapprehended or overlooked the
motivation to combine Marshall and Roslak with other secondary references
as expressly disclosed in the Petition and by Dr. Akl.” Req. Reh’g. 12.
Shopkick alleges that the motivation to combine the various references is set
forth in the Petition at pages 8–13 and 25–60, and in Dr. Akl’s Declaration
at paragraphs 42–73, and 89–253. Shopkick’s support for its argument here
broadly refers to essentially each page of the 60 page Petition, almost 200
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paragraphs of Dr. Akl’s Declaration, and fails, without exception, to point to
any specific reasoning that could be considered adequate articulated
reasoning supported by evidentiary underpinnings. By way of example,
having reviewed all the evidence referenced above by Shopkick, we direct
attention to the apparent reasons to combine Marshall and Roslak with the
secondary references as set forth at paragraph 69 of Dr. Akl’s testimony:
In light of the teachings in the art to enhance in-store customer
interactions using personal information, especially web
browsing and shopping habits, it is my opinion that one of
ordinary skill would have been motivated to combine each of
the secondary references with Marshall or Roslak.
(Ex. 1010 ¶ 69).
At this point in his testimony, Dr. Akl’s stated opinion on motivation
to combine references is based entirely upon an individual summary
description of each reference (see id. ¶¶ 42–8), and his analysis that
Shopkick’s asserted references are analogous art that use personal
information to facilitate seller-customer interaction (id. at ¶¶ 59–67). The
fact that references relate to the same technical field does not, without more,
demonstrate the obviousness of their combination. The relevant technical
field relates to the scope and content prong of an obviousness analysis.
Graham v. John Deere Co. 383 U.S. 1, 17–18 (1966). The fact that
references are within the same technical field does not conclude that
analysis. Rather, it forms part of the background, upon which the
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obviousness or nonobviousness of the subject matter must be determined.
2

Id.
The crux of the problem with Shopkick’s obviousness analysis is the
lack of reasoning and evidentiary underpinnings to support the asserted
combination. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness”) (cited with approval in KSR, 550 U.S. at
418); Dec. 30. The insufficiency of Shopkick’s reasoning is exemplified
specifically in paragraphs 70–73 of Dr. Akl’s Declaration. These paragraphs
each purport to address the combination of Marshall and Roslak with respect
to each secondary reference in turn, i.e. Ogasawara (para. 70), Hudda (para.
71), Athana (para. 72), and Sorensen (para. 73). We determined in our
Decision, for example with respect to the secondary reference to Ogasawara,
that Shopkick
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 supplements Marshall’s method
of wirelessly identifying preferred customers in-store,
expanding the types of personal information given to sales

2
Shopkick also asserts that its analysis satisfies the second prong of the
Graham analysis because “[t]he Petition and Dr. Akl’s Declaration . . .
discuss at the outset the prior art and factual differences between the prior art
and the claims at issue.” Req. Reh’g. 12 citing Pet. 8–13; Ex. 1010 ¶¶ 42–
58. We disagree. Sections IV. A.–F. of the Petition (and similarly Dr. Akl’s
declaration) simply recite a summary of each reference. Pet. 8; Ex. 1010,
14. Our review of these citations reveals no substantive discussion or
explanation in the Petition or Declaration ascertaining the factual differences
between the references and the claims at issue as required under Graham.
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persons.” Pet. 16. Petitioner states with respect to Roslak,
“Ogasawara likewise naturally combines with Roslak’s
predictive customer “inference engine” to predict customer
preferences and display sales recommendations to customers.”
Id. These statements . . . merely provide conclusory labels for
the prior art references and assert one “naturally supplements”
and “naturally combines” with the teaching of the other.
Dec. 28. Here, in its Request for Rehearing, Shopkick again asserts that a
reason to combine Ogasawara and Roslak (or Ogasawara and Marshall) is
that both references similarly use customer information to permit product or
sales recommendations to customers. Req. Reh’g. 13–14. This tells us,
perhaps, that the references may be analogous. Shopkick’s argument,
however, fails to provide any reason or explanation as to what information
or data from Ogasawara would be helpful to Marshall’s rewards incentive
program, or why one of skill in the art would incorporate or utilize such
additional information or data from Ogasawara to supplement Marshall or
Roslak. Shopkick contends that “one skilled in the art would look to
Ogasawara to expand on the nature and purpose of personal customer
information and preferences that can be collected.” Id. at 14. This statement
does not provide an articulated reasoning as to what additional personal
information or data, i.e. personal information expansion, would be collected
or added from Ogasawara. It does not explain what Roslak or Marshall’s
computer systems lack in this regard or even why one of skill in the art
would understand that Roslak or Marshall’s systems need, or could be
improved with, such additional information or data from Ogasawara’s ID
card. This statement also fails to give any indication as to how one of skill
in the art would incorporate Ogasawara’s ID card and the information stored
thereon into the rewards incentive program and accumulation session data
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disclosed by Marshall, or the centrally controlled personal shopping system
and portable communications terminal disclosed by Roslak.
Shopkick further contends in this regard that the combination of
Ogasawara and Marshall, and Ogasawara and Roslak “meets and exceeds
the claim limitations.” Req. Reh’g 14. However, it is not enough to simply
show that the references disclose the claim limitations; in addition, it is
important to identify a reason that would have prompted a person of
ordinary skill in the art to combine the elements as the new invention does.
See, e.g. Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1303 (Fed. Cir. 2010) (citing KSR,
550 U.S. at 401).
Shopkick’s arguments for each combination are similarly deficient.
3

For the combination including Hudda, Shopkick’s declarant merely
describes the shopping system disclosed by the Hudda reference and states,
“[o]ne of ordinary skill would naturally apply the teachings of such a system
to the methods of Marshall and Roslak.” Ex, 1010 ¶ 71; Pet 16–17. With
respect to the combination including Asthana, Shopkick states that
“Asthana’s devices naturally extend those of Marshall and Roslak,
especially given Marshall’s goal – providing ‘very high level of customer
service’ with ‘limited available personnel.’” Pet. 17; Ex. 1010 ¶ 72. For the
combination including Sorensen, Petitioner states that “Roslak focuses on a
personal shopping system for use online or in-store (Roslak, 1:16-19), and

3
We make no substantive distinction between Shopkick’s assertions relating
to motivation and reasoning combine in the Petition and in Dr. Akl’s
Declaration as the arguments are almost word for word, the same. Compare
Pet. 15–18 and Ex. 1010 ¶¶ 70–73.
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Sorensen naturally extends that with its methods, from the perspective of a
skilled artisan. Pet. 18; Ex. 1010 ¶ 73. These statements and testimony are
conclusory and lack articulated reasoning because they do not explain what
elements or methods of the references would be combined, why such
elements would be combined by one of skill in the art, nor how one of skill
in the art would actually combine the elements or systems to achieve the
claimed invention. Furthermore, we find terms such as “naturally extend,”
“naturally supplements” and “naturally apply” to be a thin veil of
wordsmithing, inserted as a substitute in both the Petition and Dr. Akl’s
Declaration for the word “combine,” “combining,” or “combining with.”
Dr. Akl’s Testimony
Lastly, Shopkick contends that we did not sufficiently credit Dr. Akl’s
opinion testimony in our Decision. Req. Reh’g. 15. Although Dr. Akl may
be preeminently qualified to give factual testimony in the field of the
claimed invention, on the record before us, Dr. Akl’s Declaration fails (as
does the Petition) for at least the reasons discussed above, to set forth
sufficiently the necessary Graham factors, including an articulated reasoning
for Shopkick’s asserted combination of references. We did not overlook that
the Petition can be drafted to closely mirror an expert’s opinion as Shopkick
alleges. Id. What we determined, as we do here again, was that neither the
Petition, nor Dr. Akl’s opinion testimony that closely mirrors the Petition,
contains the appropriate legal and factual analysis and evidentiary
underpinnings to demonstrate a reasonable likelihood that the claims of the
’787 patent are unpatentable.

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Conclusion
As explained in our Decision, and discussed above, we conclude that
Petitioner has not shown that there is a reasonable likelihood that it would
prevail with respect to at least 1 of the claims challenged in the Petition.
Petitioner has not carried its burden of demonstrating that the Board’s
Decision misapprehended or overlooked any matters. 37 C.F.R. § 42.71(d).
The Request is DENIED.

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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
GRAY ROBINSON, P.A.
woodrow.pollack@gray-robinson.com