Shopkick, Inc.v.Novitaz, Inc.

Patent Trial and Appeal Board

May 29, 2015

13101932 (P.T.A.B. May. 29, 2015)

Trials@uspto.gov Paper 7
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 IPR2015-00279
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 Institution of Inter Partes Review
37 C.F.R. § 42.108
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I. INTRODUCTION
A. Background
Shopkick Inc. (“Petitioner”) filed a Petition to institute an inter partes
review of claims 1–58 of U.S. Patent No. 8,229,787 B2 (“the ’787 patent”).
Paper 1 (“Pet.”). Novitaz (“Patent Owner”) timely filed a Preliminary
Response. Paper 6 (“Prelim. Resp.”).
We have authority to determine whether to institute an inter partes
review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Based on the record
before us, we are not persuaded that the information presented in the Petition
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 Petition
and do not institute an inter partes review.
B. Additional Proceedings
In addition to this Petition, Petitioner has filed two Petitions, one
challenging the patentability of claims 1–50 of U.S. Patent No. 7,962,361
(the ’361 patent”), and the other, challenging the patentability of claims 51–
73 of the ’361 patent.
1
See IPR2015-00277, IPR2015-00278. Petitioner
states that the ’787 patent is presently asserted against Petitioner in Novitaz,
Inc. v. Shopkick, Inc., Civil Action No.: C 14-05077 (N.D. Cal.). Pet. 2,
Paper 5.
C. The ’787 Patent
The ’787 patent (Ex. 1001), titled “CUSTOMER RELATIONSHIP
MANAGEMENT SYSTEM FOR PHYSICAL LOCATIONS,” generally

1
The ’787 patent at issue in this proceeding is a continuation of the ’361
patent.
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relates to a retail customer profiling system for “brick and mortar” retail
establishments that can identify and physically locate a customer at the
establishment in order to engage the customer with customized direct
marketing opportunities. Ex. 1001, 2:30–67, 3:3–17.
Figure 2 of the ’787 patent, reproduced below, illustrates
a customer relationship management (“CRM”) system and process for
outputting marketing material for a specifically identified customer.
Ex. 1001, 7:35–9:60.

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As depicted by Figure 2 of the ’787 patent, above, a customer is
identified, for example at an entrance to a brick and mortar store, or business
establishment at step 202. Id. at 7:37–8:13. At step 204 an engagement plan
is developed to target the identified customer. Id. With such a plan, at step
208 the store, or a sales person, is provided with “suggestions, strategies,
[and] explicit instructions” for interacting with the customer.” Id. at 7:47–
60. Importantly, the physical location of the customer is tracked in the store
at step 212 to determine, for example, what products the customer looks at
most, so relevant marketing material can be presented directly to the
customer during shopping and prior to checkout. Id. at 8:52–9:6.
D. Illustrative Claim
Of the challenged claims, claims 1, 43, 45, 53, and 56 are
independent. Each of claims 2–42 depends, directly or indirectly, from
claim 1. Claim 44 depends, directly from claim 43. Each of claims 46–52
depends, directly or indirectly, from claim 45. Claims 54 and 55 depend,
directly or indirectly, from claim 53. Claims 57 and 58 depend from claim
56. Claim 1 illustrates the claimed subject matter and is reproduced 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;
storing a plurality of wirelessly tracked events of the
customer within the business establishment including a detected
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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.

E. The Alleged Grounds of Unpatentability
Petitioner contends that the challenged claims are unpatentable on the
following specific grounds.
2

Reference(s) Basis Claims Challenged
Marshall
3
§ 102 1–3, 5–13, 15, 17, 19, 22,
23, and 27
Marshall and Roslak
4
§ 103 30, 33–36, 39–41, 43–45,
47–49, 51–53, 55, 56, and
58
Roslak § 102 1, 17, 27, 33–34, 41, and
45
Marshall and
Ogasawara
5

§ 103 2, 4, 6–11, 16, 19, 21, 24–
26, and 28

2
Petitioner supports its challenge with a Declaration of Dr. Robert Akl,
D.Sc. (Ex. 1010, “Akl Dec’l.”). See infra.
3
Ex. 1003, U.S. Patent Appl’n No. 2002/0116266 (published Aug. 22,
2002).
4
Ex. 1004, U.S. Patent No. 7,010,501 (issued Mar. 7, 2006).
5
Ex. 1005, U.S. Patent No. 6,513,015 (issued Jan. 28, 2003).
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Reference(s) Basis Claims Challenged

Roslak and Ogasawara § 103 31–32, 35–37, 39–40, 43–
44, 48, 50, 53, and 56
Marshall and Hudda
6
§ 103 3–4, 46, 54, and 57
Roslak and Hudda § 103 3–4, 46, 54, and 57
Marshall and Asthana
7

8
§ 103 18, 20, 31, and 37
Roslak and Asthana § 103 18, 20, 31, and 37
Marshall and Sorensen
9
§ 103 13–14, 21, 29, 38, and 49–
50
Roslak and Sorensen § 103 13–14, 21, 29, 38, and 49–
50

6
Ex. 1009, U.S. Patent Appl’n No. 2001/00496636 (published Dec. 6,
2001).
7
Abhaya Asthana, Mark Cravatts & Paul Krzyzanowski, An Indoor Wireless
System for Personalized Shopping Assistance, IEEE PROCEEDINGS OF
MOBILE COMPUTING SYSTEMS AND APPLICATIONS, Dec. 8, 1994.
8
Describing Asthana, the Petition refers to “IEEE Proceedings of Mobile
Computing Systems and Applications” and states that this document was
“presented December 8, 1994,” (Pet. 4–5) but provides 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 ’787 patent.” Ex. 1010 ¶ 53. 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 ’787 patent, therefore, we do not address the grounds
including Asthana.
9
Ex. 1008, U.S. Patent No. 7,006,982 (issued Feb. 28, 2006).
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II. CLAIM CONSTRUCTION
A. Legal Standard
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); see
also 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 are given their ordinary and customary
meaning as would be understood by a person of ordinary skill in the art at
the time of the invention and in the context of the entire patent disclosure.
In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). If the
specification “reveal[s] a special definition given to a claim term by the
patentee that differs from the meaning it would otherwise possess[,] . . . the
inventor’s lexicography governs.” Phillips v. AWH Corp., 415 F.3d 1303,
1316 (Fed. Cir. 2005) (en banc) (citing CCS Fitness, Inc. v. Brunswick
Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). We apply this standard to the
claims of the ’787 patent.
B. Terms to be Construed
1. Marketing Message
Independent claims 1, 43, 45, 53, and 56 recite the step of
“determining . . . a marketing message.” According to Petitioner, the term is
at least as broad as “engagement plan.” Pet. 7. Petitioner asserts that during
prosecution of the parent ’361 patent, Patent Owner acquiesced to the
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Examiner’s position in a double patenting rejection that essentially equated
the terms “engagement plan” and “marketing message.” Id. (citing
Ex. 1011, 3). Petitioner argues that according to the Examiner, “marketing
message” means “information useful for interacting with a customer” as
stated for the term “engagement plan” in the specification of the ’787 patent.
Id. at 8. Patent Owner does not propose any claim construction.
We are not persuaded that the evidence of an obviousness-type double
patenting rejection, and subsequently filed terminal disclaimer, in the
prosecution of ’787 patent is sufficient to equate the terms “engagement
plan” and “marketing message.” The Examiner merely found that the
subject matter claimed, in what became the ’787 patent, was covered by the
claims in U.S. Patent No. 7,962,361. This rejection does not persuade us
that the Examiner made a finding that the terms should be interpreted the
same way. Ex. 1011, 2–3. We also are not persuaded by Petitioner’s
allegation that the terms “engagement plan” and “marketing message”
should be equated simply because the Examiner mistakenly wrote
“marketing plan” rather than “marketing message” in the double-patenting
rejection. Pet. 7, n.2 (citing Ex. 1011, 3). We compare these terms, as set
forth below, to determine the appropriate construction by initially looking to
the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (Claim limitations must be read “in light of the specification
as it would be interpreted by one of ordinary skill in the art.”).
The term “marketing message” is not found in the specification of the
’787 patent. On the other hand, the words “marketing”, and “message”, are
found throughout the specification, yet neither word is specifically defined.
It is clear from the specification that “engagement” of a customer is to
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“allow personalized service to the customer from the moment of his/her
arrival in the facility.” Ex. 1001, 3:8–10. The specification explains that
“[t]he engagement plan has information useful for interacting with the
person,” and “[i]t enables targeted marketing and sales promotions (up-
sell/cross-sell) for individual customers, much prior to the POS touch-point
(checkout lanes).” Ex. 1001, 3:9–11, 22–23 (emphasis added). The ’787
patent also describes a “[m]ethodology for personalized marketing” where
“[p]roduct information is selected based at least in part on the personal
information of the person.” Id. at 3:45–51 (emphasis added). The
specification further informs us that “[t]he engagement plan also entails
marketing and promotions output directly to the user.” Id. at 7:61–62.
“Marketing,” 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.
Petitioner does not identify, nor can we find, examples from the
specification apprising us that “marketing message” and “engagement plan”
are used interchangeably. Therefore, the meaning of the word “marketing”
is not as broad as “engagement” because the word “marketing” is tied to
selling a certain item, product or service. We understand from these
examples that “marketing” is a sales pitch, an attempt create a specific
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desire, or need, and sell some certain good or service. Our understanding is
consistent also with a plain and ordinary meaning of “marketing,” that is, “to
offer for sale.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE 800 (New College Ed. 1975). Further, a plain and ordinary
meaning of the word “message” is “a communication transmitted by spoken
or written words, by signals.” Id. at 823. A communicated “marketing
message” for a customer is therefore not as broad as an “engagement plan.”
We determine, based on the ’787 specification and the plain and ordinary
meaning of these words, that “a marketing message” means, “an offer to sell,
or, a sales offer for, a good or service.”
III. 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
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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.” 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).
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Patent Owner states that, in the related district court litigation, “SK
Planet, Inc.”
10
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. Petitioner argues that because “SK Planet did not state that it had no
responsive documents in its possession, custody or control . . . [that] proves
that such acquisition documents do in 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 any 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

10
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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controls or has the opportunity to control Petitioner. Prelim. Resp. 13 (citing
Ex. 2008).
Based on its 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.
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),
11
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

11
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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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.
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 any persuasive
evidence that Petitioner and any of the unnamed parties have shared
corporate leadership, or that officers of any of the unnamed parties
conducted negotiations with Patent Owner or others on behalf of both
Petitioner and any of the unnamed parties, as found in Atlanta Gas Light Co.
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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 this inter partes review. The evidence on which
Patent Owner relies does not establish or suggest that any of the unnamed
parties fund, direct, or control the IPR petition or proceeding, or that
Petitioner is a proxy for the any of the unnamed parties. There is no
persuasive evidence that any of the unnamed parties has any 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.
12

12
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 Int’l 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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We turn now to Petitioner’s asserted grounds of unpatentability to
determine whether Petitioners have met the threshold standard of 35 U.S.C.
§ 314(a).
B. Claims 1–3, 5–13, 15, 17, 19, 22, 23, and 27 – Anticipation by
Marshall
Petitioner asserts that claims 1–3, 5–13, 15, 17, 19, 22, 23, and 27
would have been anticipated by Marshall. Pet. 18. Petitioner has not
established a reasonable likelihood of prevailing on its assertion that claims
1–3, 5–13, 15, 17, 19, 22, 23, and 27 are anticipated for the reasons
explained below.
1. Overview of Marshall
Marshall discloses a method and system for tracking and rewarding a
consumer, or customer’s, attention to “content.” Ex. 1003, ¶ 7. Marshall
explains that “content may be a live interaction with a person, such as a
salesperson, and/or recorded content of any nature, presented over any
medium.” Id. A consumer’s attention to, or interaction with content, is
termed “an accumulation session,” and depending on the quality of the
accumulation session, the consumer may receive awards, i.e. “time points”
leading to a discount. Id. Figure 1 of Marshall, reproduced below,
illustrates a high level, customer enrollment, identification, and
accumulation session. Id. ¶¶ 54–79.
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As depicted in Marshall’s Figure 1, above, a customer is enrolled in
the program at step 100, and at step 125 identified as a member, and then
determination of eligibility and time for an accumulation session at steps 135
and 140 is begun. Id. Marshall teaches identifying customers in a brick-
and-mortar location, for example, by a “disposable card” that communicates
with sensors in the store to identify the customer, then “[s]uch a system
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could be linked with communications devices for store personnel to notify
personnel of the presence of customers in a specific category.” Id. at ¶ 66.
Marshall describes that the identification of customers present in a brick-
and-mortar location is important to provide a certain level of customer
service that includes “such activities as taking more time to answer questions
of the individuals, offering assistance without being requested, maintaining a
longer contact with the individual, other ways of providing customer
service.” Id. at ¶ 65.
2. Discussion
Petitioner argues that Marshall discloses a computer based method of
marketing to a consumer that includes an enrollment event of the consumer
“through ‘a web-based form,” that results in a stored “profile” of the
consumer. Pet. 18–19 (citing Ex. 1003 ¶¶ 54, 80, Figs. 1, 2, 4). Petitioner
contends that Marshall discloses that a brick-and-mortar location, i.e. a store,
is equipped with sensors detecting “a disposable card, or handheld digital
communications device upon entry” of the customer, in order to identify the
customer to store personnel. Id. at 20 (citing Ex. 1003 ¶¶ 8, 55, 59, 66).
Petitioner alleges that Marshall also tracks and records customer events such
as interactions with sales representatives and sales and product presentations
at the store prior to a purchase transaction. Id. at 22 (citing Ex. 1003 ¶ 74).
Petitioner further alleges that Marshall’s method and system determines a
“marketing message for the identified customer based on the tracked events”
as recited in claim 1 because the customers profile and category including
“information such as ‘prior purchases [and] prior web surfing habits
[“tracked events”]’ in addition to age, income, residence, family, hobby, and
occupation information” is conveyed to store personnel to provide a certain
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level of customer service. Id. at 23 (citing Ex. 1003 ¶¶ 56, 65, 66).
Petitioner argues that “[s]uch information is thus a “marketing message,” as
that phrase is used in the ‘787 Patent. Id. at 23–24 (citing Akl Decl. ¶ 86;
Section V, supra).
We are not persuaded that Marshall discloses a “marketing message”
as properly interpreted. Petitioner’s Declarant, Dr. Akl, states that Marshall
uses customer information including customer profiles, occupation,
residence, hobbies, tracked interactions, prior purchases and web-surfing
habits “to designate ‘preferred’ customers and target sales to those
customers.” Ex. 1010 ¶ 86 (citing Ex. 1003 ¶¶ 65–66). Dr. Akl testifies that
“such information, including the preferred status designation, is a ‘marketing
message’ within the meaning of that term in the ‘787 Patent.” Id. ¶ 86. As
an initial matter, we note that the excerpt from Marshall in the citation
supporting this allegation is not found in Dr. Akl’s citation to Marshall
paragraphs 65 and 66, but is properly attributed to Marshall’s paragraph 56.
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. Additionally, Dr. Akl’s claim
construction mirrors that in the Petition and erroneously relies upon an
inference from the prosecution history, and an alleged Examiner’s mistake,
that the Examiner’s double patenting rejection equated the terms
“engagement plan” and “marketing message.” Pet. 7, n.2, compare Ex. 1010
¶¶ 14–15 and Pet.7–8. Dr. Akl’s Declaration does not provide any
persuasive facts, data, or analysis to support the opinion stated. Merely
repeating an argument from the Petition in the declaration of a proposed
expert, does not give that argument enhanced probative value. Accordingly,
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we give the testimony of Dr. Akl no probative weight. Petitioner’s claim
construction analysis is not persuasive because, as discussed above, the
claims are to be given their broadest reasonable interpretation consistent
with the specification, reading claim language in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004), In re Cuozzo Speed
Techs., 778 F.3d at 1279–83.
Marshall’s “awards” are not products offered for sale, but are properly
understood, for example from the Summary of the Invention, as “points that
can be redeemed for selected goods or services or any type of goods or
services if criteria are met.” Ex. 1003 ¶ 6. These awards, or other items of
value, are not, however, by themselves “an offer to sell, or, a sales offer for,
a good or service” as “marketing message” is properly interpreted. Marshall
describes that these awards are given to, and accrued by, the customer for
behaving in a certain way, for example a customer may receive points for
“live interaction with a salesperson.” See id. ¶¶ 6–7. However, the
awarding of points itself by Marshall’s computer implemented method is not
an offer to sell anything, it is simply a reward for a particular behavior. See
id. ¶¶ 6–7. (“The person may be required to combine multiple desired
activities in order to obtain rewards, such as engaging in a purchase in order
to receive points, or to permit points to be redeemed, for providing attention
to content, or for a visit to a particular store or other location.”) Our review
of Marshall reveals nothing that describes to a person of skill in the art that
such awards, or rewards, themselves, constitute “an offer to sell, or, a sales
offer for, a good or service,” as “marketing message” is properly interpreted.
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For the reasons provided above, Petitioner has not established a
reasonable likelihood of prevailing on the ground of unpatentability of claim
1 as anticipated by Marshall under 35 U.S.C. § 102(b) because each and
every element as set forth in the claim is not found, either expressly or
inherently described, in Marshall in as complete detail as is contained in
claim 1. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d
1565, 1576 (Fed. Cir. 1991) (“There must be no difference between the
claimed invention and the reference disclosure, as viewed by a person of
ordinary skill in the field of the invention.”).
Because the remaining dependent claims 2–3, 5–13, 15, 17, 19, 22,
23, and 27 all depend either directly or indirectly from claim 1, and
necessarily include all the limitations of claim 1, these claims also are not
anticipated by Marshall.
C. Claims 1, 17, 27, 33–34, 41, and 45 – Anticipation by Roslak
Petitioner asserts that claims 1, 17, 27, 33–34, 41, and 45 would have
been anticipated by Roslak. Pet. 18. Petitioner has not established a
reasonable likelihood of prevailing on its assertion that claims 1, 17, 27, 33–
34, 41, and 45 are anticipated for the reasons explained below.
1. Overview of Roslak
Roslak discloses a personal shopping computer system that facilitates
customer/retailer interaction from home 12 as well as when the customer is
in brick-and-mortar shopping establishment 14. Ex. 1005, 7:52–55.
Roslak’s Figure 1, reproduced below, illustrates host computer 1 in shopping
establishment 14, including host modem 20 for communicating either
wirelessly, or via telephone lines, with various other communication devices
and systems. Id. at 8:1–15.
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As depicted in Figure 1 of Roslak above, home cradle 30 is a
“portable portal” intended to receive “portable terminal” 40 (not shown) and
provide communication via home data interface 34 with, for example, host
computer 16. Id. at 8:32–57. Portable terminal 40 therefore facilitates
interaction between a customer when at home, or when the customer enters
the shopping establishment:
Portable terminal 40 can further optionally include a wireless
transceiver 50 which is coupled to memory 46 and which is
configured for wireless communication with the optional at
least one wireless multi-access point 18 when a user of the
system takes the portable terminal 40 into the shopping
establishment 14. Optional transceiver 50 may be provided
with a suitable antenna 52 which is compatible with an antenna
54 of wireless multi-access point 18 (as shown in FIG. 1).

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Id. at 9:19–27. In addition, portable terminal 40 includes identifying codes
enabling host computer 16 to identify the customer as an authorized user.
Id. at 10:26–29.
2. Discussion
Petitioner argues that Roslak discloses portable terminal 40 as a
device providing customer interaction with an internet website “to order
products and obtain information about products.” Pet. 19 (citing Ex. 1005,
8:53–56). Petitioner asserts that when a customer is in the shopping
establishment the host computer can detect intrinsic identifying indicia on
portable terminal 40 and “identify the bearer to the host computer as an
authorized user.” Id. at 21 (citing Ex. 1005, 10:26–29). According to
Petitioner, Roslak’s portable terminal 40 reads bar codes on items chosen by
the customer, and the associated product data is transferred to the host
computer to develop a “shopper profile” based on these wirelessly tracked
events and customer transaction history. Id. at 22–23 (citing Ex. 1005,
13:58–14:8, 19:47–20:7)). Petitioner contends that Roslak teaches an
“inference engine” using the shopper profile, “to predict and/or monitor
customer preferences as to product placement, content, display location,
etc.” Id. at 24 (citing Ex. 1005, 8:58–9:8).
13
Petitioner’s position is that this
statement from Roslak “is perfectly analogous to the ’787 Patent’s
‘marketing message’” (id. at 25 (citing Ex. 1010 ¶ 88)).
As discussed above, the proper claim construction for the term
“marketing message” is “an offer to sell, or, a sales offer for, a good or
service.” Roslak discloses that a “shopper profile” is developed based upon

13
This citation appears to be from Roslak at column 19, line 65 to column
20, line 1.
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the customer’s interaction with products. Ex. 1005, 19:47–20:7. That
Roslak “predicts” or “monitors” a customer’s preference does not provide
sufficient evidence that the customer is receiving a specific “marketing
message” as recited in claim 1, or even that Roslak’s system is developing a
personal engagement plan for a specific identified customer. A closer
review of Roslak reveals further that “[t]he shopping profile in turn can be
utilized by [] a retailer or manufacturer for providing products and product
services specifically tailored to one or a group of consumers.” Id. at 19:57–
60. The act of “providing products and product services,” as a retailer
inherently does by having goods in stocked brick-and-mortar store for
example, does not persuade us that a “marketing message” is being
transmitted to the shopper just by seeing a product in the store.
On the present record, we are not persuaded that Roslak discloses the
step of determining “a marketing message for the identified customer based
on the tracked events” as recited in claim 1 because each and every element
as set forth in the claim is not found, either expressly or inherently
described, in Roslak in as complete detail as is contained in claim 1.
Because the remaining dependent claims 17, 27, 33–34, and 41 all depend
either directly or indirectly from claim 1, and necessarily include all the
limitations of claim 1, these claims are also not anticipated by Roslak.
Claim 45 is an independent claim and includes “a marketing message” as in
claim 1 discussed above, reciting the step of, “determining prior to the
purchase transaction a marketing message for the identified customer based
on the tracked events.” (Emphasis added.) For the same reasons as
discussed above with respect to claim 1, Roslak does not disclose “a
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marketing message” as recited in claim 45 in accordance with the proper
claim construction.
D. Alleged Obviousness over Marshall, Roslak, Ogasawara,
Hudda, and Sorensen
As discussed below, claims 2–4, 6–11, 13, 14, 16, 19–21, 24–26, 28–
41, and 43–58, are asserted to be unpatentable under 35 U.S.C. § 103(a)
based on various combinations of references listed above. Pet. 3–4. 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., 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).
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
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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. Marshall and Ogasawara or Roslak and Ogasawara
Petitioner asserts that dependent claims 2, 4, 6–11, 16, 19, 21, 24–26,
and 28 are “invalid for obviousness” based on either the combination of
Marshall and Ogasawara or, the combination of Roslak and Ogasawara. Pet.
3, 25–60. We focus our analysis below on dependent claim 2 alleged to be
obvious over Marshall and Ogasawara. This same analysis, however,
applies equally to the combinations of Roslak and Ogasawara, Marshall and
Roslak, Marshall and Hudda, Roslak and Hudda, Marshall and Asthana,
Roslak and Asthana, Marshall and Sorensen and Roslak and Sorensen.
Petitioner asserts that the prior art of record is analogous and properly
combined. Pet. 13–18. Petitioner asserts:
A person of ordinary skill in the art at the time [of] the
‘787 Patent’s invention would have been motivated to
combine the primary references with one or more of the
secondary references. (Ex. 1010 ¶¶ 66–73). Such
motivation may be explicit or implicit in “the prior art
references,” “design incentives,” or “the background
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knowledge, creativity, and common sense of the person of
ordinary skill in the art.”
Id. at 15.
Dr. Akl opines on the level of skill in the art. Ex. 1010 ¶ 16.
Petitioner does not identify in the Petition, however, any 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. See Unigene Labs., 655
F.3d at 1360. Petitioner merely quotes each limitation in the claim 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.
By way of specific example, claim 2 recites the step of:
determining the marketing message comprises: determining the
marketing message using customer preferences of the customer,

Pet. 25. Petitioner states “Marshall’s background profile, from which a
marketing message derives, includes customer preferences and ‘product or
service interests.’” Id. (citing Ex. 1003 ¶¶ 80, 81). Petitioner next states,
“Ogasawara explains that ‘customer specific preference information . . .
are provided to in-store personnel’ to enable shopping advice ‘on the basis
of the received customer information.’” Id. (citing Ex. 1005, 7:22–32,
13:44–52). Petitioner does not identify for this limitation, however, or for
other limitations 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
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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 supplements Marshall’s method of wirelessly identifying preferred
customers in-store, expanding the types of personal information given to
sales 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, in the context of
Ogasawara combined with either Marshall or Roslak, do not compensate for
the lack of 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 Petition (id.) and Dr. Akl’s
Declaration (Ex. 1010 ¶¶ 66–70) merely provide conclusory labels for the
prior art references and assert one “naturally supplements” and “naturally
combines” with the teaching of the other. “[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.
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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 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. 37
C.F.R. § 42.22(a). The Petition must include a statement of the relevance of
the evidence to the challenge raised. 37 C.F.R. § 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 CBM2012-
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).
14

The fact that the cited references are “analogous to the claimed
invention” (Pet. 13) and share “the same design incentives with each other

14
We recognize our discretionary authority to modify the grounds stated in a
petition for inter parties 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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and with the ’787 Patent itself” (id. at 15) does not establish that it would
have been obvious to combine their features. 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. These
conclusory labels do not substitute for a fact-based analysis in the Petition
establishing what is being modified and why, based on the differences
between the prior art and the claimed invention, it would have been obvious
to a person of ordinary skill to make the modification.
Our analysis provided above with respect to Marshall and Ogasawara,
and Roslak and Ogasawara can be similarly applied, as discussed below, to
each of the asserted obviousness combinations.
2. Marshall and Roslak
Petitioner asserts that the combination of Marshall and Roslak renders
claims 30, 33–36, 39–41, 43–45, 47–49, 51–53, 55, 56, and 58 obvious.
Pet. 3. We are not persuaded that Petitioner has provided a substantive
analysis of why or how a person of ordinary skill in the art would have
combined Marshall and Roslak to render the claims obvious. Petitioner
supports the combination of Roslak and Marshall based on shared “design
incentives,” and because “Roslak similarly approaches the ‘click and mortar’
phenomenon with a device for ‘combined use’ online and in-store.” Pet. 15–
16. Such unsupported argumentative conclusions are unpersuasive for
similar reasons discussed above with respect to Marshall and Ogasawara.
Moreover, neither the Petition, nor Dr. Akl’s Declaration, address
substantively the specific combination of Marshall and Roslak, but state
generally “that one of ordinary skill would have been motivated to combine
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each of the secondary references with Marshall or Roslak.” Pet. 16,
Ex. 1010 ¶ 69. This is not a sufficient fact-based analysis to persuade us that
it would have been obvious to a person of ordinary skill to combine Marshall
and Roslak.

3. Marshall and Hudda or Roslak and Hudda
Petitioner asserts that Hudda is properly combined with Marshall or
Roslak to render claims 3–4, 46, 54, and 57 unpatentable as obvious. Pet. 4,
16–17. Petitioner’s analysis of this combination merely discusses specific
teachings of Hudda and concludes that “Hudda directs consumers to nearby
in-store items and sales to personalize in-store shopping, naturally extending
Marshall and Roslak.” Pet. 17. As discussed above, such analysis in the
Petition and Dr. Akl’s Declaration merely provide conclusory labels for the
prior art references and assert that one of ordinary skill in the art “would
naturally apply the teachings” of one reference with the other. Ex. 1010
¶ 71. Again, this is not a sufficient fact-based analysis to persuade us that it
would have been obvious to a person of ordinary skill to combine Hudda
with Marshall or Roslak.
4. Marshall and Sorensen or Roslak and Sorensen
Petitioner contends that Sorensen is properly combined with Marshall
or Roslak to render claims 13–14, 21, 29, 38, 49–50 unpatentable as
obvious. Pet. 4, 17. Petitioner states that “[a]s Marshall stresses the
engagement plan, which personalizes staff interactions with customers,
Sorensen’s analytical tools more finely hone the nature and quality of such
interactions based on hard, empirical, customer data.” Pet. 17–18. Marshall,
however, already discloses a “background profile . . . including occupation,
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income, hobbies and other useful information.” Ex. 1002 ¶ 34. Petitioner’s
argument fails to explain how, or why, Sorensen’s disclosure with Marshall
would provide better customer interactions. Also, the conclusory statement
that Sorensen “naturally extends” use of Roslak’s personal shopping system
fails to provide any articulated reasoning or rational evidentiary
underpinning that supports the combination of Roslak and Sorensen.
Pet. 18.
IV. CONCLUSION
We conclude that the Petition fails to establish that the cited
references anticipate the claimed invention because neither prior art
reference relied upon for anticipation discloses a “marketing message” as
properly interpreted. We also determine that the Petition does not set forth a
meaningful obviousness analysis over any of the art cited because it does not
adequately explain the significance of the evidence, it does not articulate any
substantive difference between the claimed invention and the cited art, and it
does not direct us to any persuasive evidence to support a rationale for the
particular combination of references identified in the separate patentability
challenges.
It is Petitioner’s burden to demonstrate how the prior art anticipates
and would have made obvious the claimed subject matter as a whole, and
Petitioner has not done this. Petitioner’s presentation is incomplete in this
respect and, therefore, insufficient to demonstrate a reasonable likelihood of
prevailing on its obviousness challenge.
For these reasons, we determine that Petitioner has not demonstrated a
reasonable likelihood that independent claims 1–58 are unpatentable over
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the prior art relied on by Petitioner. Accordingly, we do not institute a trial
with respect to claims 1–58.
V. ORDER
For the reasons given, it is
ORDERED that the Petition is 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