Targeted Radio LLC

Patent Trials and Appeals Board

Sep 22, 2021

IPR2020-00681 (P.T.A.B. Sep. 22, 2021)

Trials@uspto.gov Paper 32
571-272-7822 Date: September 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

UNIFIED PATENTS, LLC,
Petitioner,

v.

TARGETED RADIO LLC,
Patent Owner.
____________

IPR2020-00681
Patent 8,948,684 B2
____________

Before JUSTIN T. ARBES, MONICA S. ULLAGADDI, and
JOHN R. KENNY, Administrative Patent Judges.

KENNY, Administrative Patent Judge.

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

IPR2020-00681
Patent 8,948,684 B2
2
I. INTRODUCTION
Petitioner Unified Patents, LLC filed a Petition requesting inter partes
review of claims 1–9 (the “challenged claims”) of U.S. Patent No. 8,948,684
B2 (Ex. 1001, the “’684 patent”) pursuant to 35 U.S.C. § 311 et seq. Paper 1
(“Pet.”). On September 24, 2020, we instituted inter partes review of all
challenged claims. Paper 12.
Patent Owner subsequently filed a Patent Owner’s Response
(Paper 16, “PO Resp.”). Petitioner filed a Reply to Patent Owner’s
Response (Paper 19, “Reply”), and Patent Owner filed a Sur-reply
(Paper 22, “Sur-reply”). At the parties’ request (Papers 23, 24), an oral
hearing was held on June 24, 2021, a transcript of which is included in the
record. Paper 31 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. For the reasons discussed
below, we determine that Petitioner has shown, by a preponderance of the
evidence, that claims 1 and 3–9 are unpatentable. Petitioner, however, has
not shown, by a preponderance of the evidence, that claim 2 is unpatentable.
A. Related Matters
The parties identify the following related, district court litigation:
Targeted Radio LLC v. Pandora Media LLC, 3:19-cv-02299 (N.D. Tex.).
Pet. 67; Paper 4, 2.
B. Challenged Patent
The ’684 patent is directed to “[m]ethods and systems for selecting
content for outputting on a mobile device during a program break in an
Internet radio stream using mobile device location information.” Ex. 1001,
code (57). The Specification of the ’684 patent (“Specification”) indicates
the following: “[t]he audio content output[] during Internet radio program
IPR2020-00681
Patent 8,948,684 B2
3
breaks is often output[] to all listeners without regard to where they are.” Id.
at 1:40–42. This outputted content “may be of limited value to many
listeners, advertisers and broadcasters because it addresses topics that are not
sufficiently local.” Id. at 1:42–45. Further, indiscriminate advertising limits
the pool of businesses that can afford to purchase ad spots on Internet radio.
Id. at 1:45–47. For example, many neighborhood businesses that market to a
local customer base cannot afford to pay for an advertisement output to the
entire listenership of an Internet radio program. Id. at 1:47–50.
The ’684 patent addresses this problem by “seamlessly select[ing]
content for outputting on a mobile device during a program break in an
Internet radio stream using mobile device location information and program
break markers.” Ex. 1001, 1:64–67. The ’684 patent reports that “[u]sing
mobile device location information to select program break content
facilitates selection of program break content that addresses topics highly
relevant to the listener, advertiser and broadcaster and thus often of greater
value to one or more of these entities.” Id. at 1:67–2:5. Further, “[u]sing
program break markers facilitates the real-time content selection required for
seamless Internet radio.” Id. at 2:5–6.
Figure 1 of the ’684 patent, reproduced below, shows a
communication system (Ex. 1001, 4:9–10):

IPR2020-00681
Patent 8,948,684 B2
4

In Figure 1 above, mobile devices 102 and 104 communicate wirelessly with
Internet access devices 106 and 108, respectively, which communicate with
Internet radio source 120 via communication network 130. Id. at 4:37–48.
Figure 6 of the ’684 patent is reproduced below:
IPR2020-00681
Patent 8,948,684 B2
5

Figure 6 above “shows method steps performed by an Internet radio source
to facilitate location-based selection of content for outputting on a mobile
device during a program break in an Internet radio stream.” Ex. 1001, 4:20–
23.
Figure 7 of the ’684 patent is shown below:
IPR2020-00681
Patent 8,948,684 B2
6

Figure 7 above shows the “method steps performed on a mobile device to
facilitate location-based selection of content for outputting on the mobile
device during a program break in an Internet radio stream.” Ex. 1001, 4:24–
27.
Figure 8 of the ’684 patent is shown below:

IPR2020-00681
Patent 8,948,684 B2
7

Figure 8 above “shows method steps performed by an Internet radio source
to facilitate trajectory-based selection of content for outputting on a mobile
device during a program break in an Internet radio stream in other
embodiments of the invention.” Ex. 1001, 4:28–31.
C. Challenged Claims
Petitioner challenges claims 1–9. Pet. 1. Claims 1 and 6–9 are
independent. Ex. 1001, 11:57–13:30. Claim 1 recites:
IPR2020-00681
Patent 8,948,684 B2
8
1. A method for streaming localized content to a mobile
device during an advertising break in an Internet radio stream,
comprising:
[1.1]1 streaming from an Internet radio source to a mobile
device an Internet radio stream;
[1.2] receiving by the Internet radio source from the
mobile device recurring location reports reporting new locations
of the mobile device resolved by the mobile device;
[1.3] detecting electronically by the Internet radio source
a marker indicating a start of an advertising break in the Internet
radio stream;
[1.4] streaming from the Internet radio source to the
mobile device during the advertising break at least one
advertisement selected by the Internet radio source using at least
one of the reported locations and a duration indicator indicating
a duration of the advertising break; and
[1.5] resuming by the Internet radio source streaming to
the mobile device of the Internet radio stream after the
advertising break.
Ex. 1001, 11:56–12:8.
D. Level of Ordinary Skill
In determining the level of ordinary skill in the art, various factors
may be considered, including the “type of problems encountered in the art;
prior art solutions to those problems; rapidity with which innovations are
made; sophistication of the technology; and educational level of active
workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
(quotation omitted).
Petitioner asserts that an ordinarily skilled artisan at the time of the
alleged invention of the ’684 patent would have had “at least a bachelor’s

1 For ease of reference, we include in brackets the numbers that were
assigned to these claim limitations in the Petition.
IPR2020-00681
Patent 8,948,684 B2
9
degree in electrical engineering, computer science, or a related subject or the
equivalent, and two years of experience working with streamed content,
including targeted advertising.” Pet. 8 (citing Ex. 1001, 1:20-60; Ex. 1011
¶ 25). Further, Petitioner asserts that more relevant experience could
compensate for less education, and vice versa. Id. (citing Ex. 1011 ¶ 25).
Patent Owner argues an ordinarily skilled artisan would have had “at
least a bachelor’s degree in electrical engineering, computer engineering, or
an equivalent discipline, and some work experience with streamed content.”
PO Resp. 20 (citing Ex. 2002 ¶ 38). Patent Owner also asserts that more
relevant experience could compensate for less education, and vice versa. Id.
(citing Ex. 2002 ¶ 38). According to Patent Owner, Petitioner’s expert,
Anthony J. Wechselberger, admitted that an ordinarily skilled artisan need
not have advertising-specific experience. Id. at 20–21 (quoting Ex. 2001,
19:15–21).
We adopt Patent Owner’s proposed definition for an ordinarily skilled
artisan. See Ex. 2001, 19:15–21. We, however, would reach the same
conclusions if we were to adopt Petitioner’s.
E. Claim Construction
In an inter partes review proceeding based on a petition filed on or
after November 13, 2018, a patent claim shall be construed using the same
claim construction standard that would be used to construe the claim in a
civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended
Oct. 11, 2018). This rule adopts the same claim construction standard used
by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d
1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the
words of a claim are generally given their “ordinary and customary
IPR2020-00681
Patent 8,948,684 B2
10
meaning,” which is the meaning the term would have to a person of ordinary
skill at the time of the invention, in the context of the entire patent including
the specification. See id. at 1312–13.
The parties request that we construe the term “advertising break,”
partially construe the term “new locations,” and determine whether
limitation 1.2 requires that recurring location reports must be received before
selecting an advertisement.2 PO Resp. 14–19; Reply 2–10; Sur-reply 1–11.
We address those requests below.
1. advertising break
Patent Owner proposes construing the term “advertising break” as “a
dead period in a radio transmission.” PO Resp. 14. Petitioner proposes
construing the term as “a break in the program content (the ‘Internet radio
stream’) where advertising content was or can be inserted.” Reply 2.

2The parties requested that some additional terms be construed, but narrowed
their requests to the terms identified above. In particular, the Petition
requested that the Board construe “mobile device” and argued that all other
terms do not require construction. Pet. 9. The Petition nevertheless
provided a proposed definition for the term “duration indicator.” Id. The
Patent Owner Response argued that the terms “mobile device” and “duration
indicator” do not require construction. PO Resp. 19–20. The Patent Owner
Response, however, requested that the Board construe “advertising break”
and limitation 1.2. PO Resp. 14–19. In response, Petitioner’s Reply
represented that “[o]nly two terms remain relevant to the Parties’ dispute.”
Reply 1. The Reply identified the two relevant terms as “advertising break”
and limitation 1.2. Id. at 1–10. In the Sur-reply, Patent Owner addressed the
term “advertising break” and limitation 1.2. Sur-reply 1–11. For limitation
1.2, the Patent Owner Response, the Reply, and the Sur-Reply addressed the
term “new locations” and addressed whether limitation 1.2 requires that
recurring location reports must be received before selecting an
advertisement. PO Resp. 16–19; Reply 3–10; Sur-reply 5–11.

IPR2020-00681
Patent 8,948,684 B2
11
a. Parties’ Arguments
Patent Owner argues that the Specification indicates that an
advertising break is a type of program break. PO Resp. 14. Patent Owner
asserts that the Summary of the Invention refers exclusively to embodiments
that select “program break content” to place in “program breaks.” Id. (citing
Ex. 1001, 1:64–4:65). Patent Owner further asserts that the Specification
teaches that in some embodiments the program break is an advertising break.
Id. at 15. According to Patent Owner, the Specification consistently uses the
term “program break” to refer to breaks in a program stream, and an
“advertising break” is one example of such a break. Id.
Patent Owner further argues that a program break is a dead period in
the Internet radio stream. PO Resp. 16. Patent Owner asserts that the
Specification teaches that, if content selected for insertion into a program
break is substantially shorter than the duration of the program break, the
result is a substantial dead period in the Internet radio stream. Id. Patent
Owner argues that, therefore, a program break and an advertising break are
both dead periods in the Internet radio stream. Id.
Petitioner argues that claim 1 uses the term “advertising break” to
refer to the same break in the Internet radio stream both before and after an
advertisement is inserted. Reply 2. Petitioner further asserts that the
Specification describes an advertising break as a break in the primary
content where secondary content is inserted. Id. Petitioner further argues
that the Specification contemplates that the break may contain
predetermined default content (i.e., not dead space). Id. Petitioner asserts
that an ordinarily skilled artisan would not have wanted to play dead air in
the embodiments of Figures 6 and 8 when no content can be found. Id.
IPR2020-00681
Patent 8,948,684 B2
12
In response, Patent Owner argues that the Specification only discusses
“predetermined default content” in the context of which content to insert into
a program break. Sur-reply 2. Patent Owner argues that a program break’s
essential quality is it is a dead period. Id. at 3 (citing Ex. 1001, 9:25–32).
Patent Owner also argues that, although dead air would represent lost
revenue, engineering involves tradeoffs. Id. Patent Owner asserts that the
disclosed system eliminates complexity that can offset the profits gained
from eliminating dead air. Id. Patent Owner also argues that the
Specification expressly discloses providing users with a dead period. Id. at
4.
b. Analysis
We adopt Petitioner’s proposed construction for advertising break: “a
break in the program content (the ‘Internet radio stream’) where advertising
content was or can be inserted.” Reply 2.
The Specification and challenged claims support Petitioner’s proposed
construction. First, both parties agree that an advertising break is a type of
program break. PO Resp. 14; Reply 2. Although the Specification does not
expressly define the term “program break,” the Specification uses the term
to refer to a break during which content which is distinct from a program
was or can be inserted. For example, the Specification discloses that audio
programs in an Internet radio stream “will normally include program breaks
during which audio content that is distinct from the program content is
delivered.” Ex. 1001, 1:34–36 (emphasis added). The Specification further
describes that the “present invention seamlessly selects content for
outputting on a mobile device during a program break in an Internet radio
stream using mobile device location information and program break
IPR2020-00681
Patent 8,948,684 B2
13
markers.” Id. at 1:64–67 (emphasis added). The Specification has
additional disclosures of selecting non-program content for insertion in a
program break. See Ex. 1001, 1:64–4:5, 7:37–48, 7:62–66, 8:35–39, 9:10–
50, 9:65–10:11, 10:12–16, Figs. 6 (step 635), Fig. 7 (step 715), Fig. 8 (step
840).
Second, the Specification uses the term “program break” to refer to a
break before and after the insertion of the non-program content into that
break, which supports the clause in Petitioner’s construction of “where
advertising content was or can be inserted.” For example, the Specification
uses the term program break to refer to a break before non-program content
is inserted into it: “[i]f a program break is found, Internet radio source 120
under control of processor 430 next identifies any content in the program
break content database 550 that matches the most recent reported location of
mobile device 200.” Ex. 1001, 8:35–39; see also 10:59–63. This
identification is done before the non-program content is inserted into the
break. Id., Fig. 6, steps 625, 635. The Specification also uses the term
“program break” to refer to a break where non-programming content has
been inserted and is delivered: “Internet radio source 120 under control of
processor 430 inserts the duration-matching program break content into the
Internet radio stream during the program break (840), and the program break
content is delivered to mobile device 200 during the program break.” Id. at
11:19–24.
Third, although the Specification does not expressly use the term
“advertising break,” it refers to program breaks in which advertising is or
can be inserted, disclosing “program breaks during which advertisements . . .
are outputted.” Ex. 1001, 1:36–39. Similarly, the Specification discloses
IPR2020-00681
Patent 8,948,684 B2
14
that content inserted during a program break can be “an advertisement.” Id.
at 3:1–2. The Specification also discloses that the “[p]rogram break content
stored in database 550 comprises audio content, such as advertisements.” Id.
at 7:50–53. Further, the Specification describes outputting advertisements
during program breaks. Id. at 10:11–27.
Fourth, the language of claim 1 makes clear that the term “advertising
break” encompasses a break in a program before and after the insertion of an
advertisement. Claim 1 recites “detecting . . . a start of an advertising break”
then “streaming . . . during the advertising break at least one advertisement”
then resuming “streaming . . . after the advertising break.” The recited
detection occurs before the insertion of the advertisement, whereas the
recited streaming and resumption of streaming occurs after the insertion of
the advertisement. Thus, the Specification and language of claim 1 support
Petitioner’s proposed construction. Ex. 1017 ¶¶ 12–27.
The Specification and language of the challenged claims do not
support Patent Owner’s proposed construction of “a dead period in a radio
transmission.” PO Resp. 14; Ex. 1017 ¶¶ 17–27. The Specification
discloses that a dead period in a radio transmission can occur in a program
break if the program break content does not have the same duration as the
program break. Ex. 1001, 9:25–32. But the Specification does not refer to
the entire program break as constituting a dead period. Id. It refers to only
the portion of the break by which duration of the break exceeds the duration
of the program break content as being the dead period. Id. In particular, the
Specification discloses: “if the duration of a given instance of location-
matching program break content is substantially less than the duration of the
program break, . . . outputting of such program break content would finish
IPR2020-00681
Patent 8,948,684 B2
15
well before completion of the program break, resulting in a substantial dead
period in the Internet radio stream.” Id. The Specification describes this
dead period as undesirable and indicates that a dead period should be
minimized or avoided. Id. (“the program content is not suitable for insertion
during the program break”).
Further, the Specification discloses that a dead period can be avoided
during the program break by making the duration of the break content
identical to that of the program break: “if the duration of a given instance of
location matching program break content is identical or only slightly shorter
than the duration of the program break, the program break content is suitable
for insertion during the program break.” Id. at 9:32–36 (emphasis added).
Thus, a program break does not require a dead period. A dead period merely
results when the duration of the program break is longer than that of the
program break content.
Therefore, we construe “advertising break” as “a break in the program
content (the ‘Internet radio stream’) where advertising content was or can be
inserted.” Ex. 1017 ¶¶ 12–27.
2. new locations
Limitation 1.2 recites “new locations.” Patent Owner proposes that
we partially construe this term as excluding “locations reported by a
subsequent report if that location is spatially identical to a previous report.”
PO Resp. 16. Petitioner proposes partially construing the term as
“includ[ing] locations that are more recently resolved by the mobile device.”
Reply 4. Petitioner argues that the term can include locations that are
spatially identical to previously reported locations as long as they are more
recently resolved. Id.
IPR2020-00681
Patent 8,948,684 B2
16
We do not need to resolve this claim construction dispute because the
parties do not identify how the adoption of either party’s proposed
construction would affect any issue of patentability in this case. Further, we
find that it would not, as discussed below.
In particular, the parties dispute whether, for the Estese-based
grounds, Petitioner has proven that certain disclosures in Estese teach, or
would motivate an ordinarily skilled artisan to modify, Estese, to have its
Internet radio source receive recurring reports of new locations. See, e.g.,
PO Resp. 48–53, Reply 13. The arguments that the parties present for that
limitation for the Estese-based grounds, however, do not rely on any either
party’s proposed partial construction for “new locations.” See Section
II.D.2.b below. Further, our analysis of that limitation for those grounds is
not affected by the adoption or rejection of either party’s proposed
construction. See Section II.D.2.e below. Thus, we do not need to construe
the term “new locations.”
3. Whether Recurring Location Reports Must Be Received Before
Selecting an Advertisement
Patent Owner proposes that limitation 1.2 should be partially
construed to require that recurring location reports be received before an
advertisement is selected. PO Resp. 18. Patent Owner relies solely on the
language of claim 1 and its expert’s interpretation of that language for this
partial construction. Id. at 18–19. Patent Owner argues that limitation 1.4
recites that an advertisement is selected by Internet radio source using at
least one of the reported locations. Id. Patent Owner contends that, thus, the
step for receiving location reports must occur before the step in which the
advertisement is selected. Id. at 18–19.
IPR2020-00681
Patent 8,948,684 B2
17
Petitioner disputes that the language of claim 1 requires the receipt of
multiple reports before selecting an advertisement. Reply 9. Petitioner
argues that claim 1 does not contain any language that requires consideration
of multiple reports to select one location. Id. at 9–10. Petitioner also argues
that the ’684 patent does not disclose selecting a location from multiple
reports. Id. Petitioner does not propose an alternative construction. Id. In
its Sur-reply, Patent Owner reiterates its argument that limitation 1.2
requires receiving recurring location reports before selecting an
advertisement. Sur-reply 9–11.
We agree with Petitioner that claim 1 does not require that recurring
location reports be provided before selecting an advertisement. Limitation
1.4 recites an advertisement being selected3 using one of the reported
locations. This recitation could imply that more than one location has been
received before the advertisement is selected. Claim 1, however, does not
limit its cited reports to those that report only one location. Claim 1 merely
recites that the location reports report new locations, which permits a single
report to report more than one location (e.g., the locations of the mobile
device at different times). Thus, even if multiple locations must be received
before selecting an advertisement in claim 1, the receipt of multiple reports
is not required.

3 Claim 1 does not recite selecting as a separate step. Rather, the claim
recites “streaming from the Internet radio source to the mobile device during
the advertising break at least one advertisement selected by the Internet radio
source using at least one of the reported locations and a duration indicator
indicating a duration of the advertising break.” Thus, the only timing
requirement specified in the claim for the selecting is that the advertisement
be selected prior to the streaming of that advertisement.
IPR2020-00681
Patent 8,948,684 B2
18
Thus, we do not construe limitation 1.2 (or claim 1) as requiring that
recurring location reports be received before an advertisement is selected.
Neither party has expressly requested that we construe claim 1 as requiring
the receipt of more than one new location before selecting an advertisement,
and we do not need to independently construe the claim as having such a
requirement. Regardless, as set forth in Section II.B.3.c.ii. below, the
adoption of such a construction would not affect our analysis of the
Rittmaster-based grounds—the grounds for which Patent Owner relies on its
proposed construction that claim 1 requires the receipt of multiple reports
before selecting an advertisement. PO Resp. 29–31.
II. ASSERTED GROUNDS
Petitioner challenges claims 1–9 based on the grounds in the table
below.
Claims Challenged 35 U.S.C. § References
1, 5–9 103 Rittmaster,4 Duvall5
1, 2, 5–9 103 Estese,6 Duvall
1, 2, 5–9 103 Estese, Hoshino7
1, 5–9 103 Rittmaster, Duvall, Hoshino

4 U.S. Patent Application Publication No. 2002/0023010 A1, published
February 21, 2002 (Ex. 1007).
5 International Patent Application Publication No. WO 02/17591 A2,
published February 28, 2002 (Ex. 1008).
6 U.S. Patent Application Publication No. 2004/0176999 A1, published
September 9, 2004 (Ex. 1006).
7 U.S. Patent Application Publication No. 2003/0177490 A1, published
September 18, 2003 (Ex. 1009).
IPR2020-00681
Patent 8,948,684 B2
19
Claims Challenged 35 U.S.C. § References
3, 4 103 Estese, Duvall, Zellner8
3, 4 103 Rittmaster, Duvall, Zellner
3, 4 103 Estese, Hoshino, Zellner
3, 4 103 Rittmaster, Duvall, Hoshino, Zellner
Pet. 3. Petitioner relies on the Declaration of Anthony J. Wechselberger in
Support of Inter Partes Review of U.S. Patent 8,948,684 (Ex. 1011) and on
the Declaration of Anthony J. Wechselberger In Support of Petitioner’s
Reply to Patent Owner’s Response (Ex. 1017). Patent Owner relies on the
Declaration of Dr. Vernon Thomas Rhyne, III (Ex. 2002).
A. Secondary Considerations
Neither party has argued that secondary considerations or objective
evidence of nonobviousness exists. Thus, we do not address secondary
considerations or objective evidence of nonobviousness in the analyses
below.
B. Asserted Obviousness over Rittmaster and Duvall
Petitioner asserts that claims 1 and 5–9 would have been obvious over
Rittmaster and Duvall. Pet. 50.
1. Rittmaster
Rittmaster is directed to “distribution of information on the Internet or
World Wide Web, based on the geographic location of the internet or web
user requesting the information and/or the geographic location of the
information provider.” Ex. 1007 ¶ 2. Rittmaster reports that “[t]he Internet
and World Wide Web (WWW) have opened vast new global marketplaces

8 U.S. Patent No. 6,675,017 B1, issued January 6, 2004 (Ex. 1010).
IPR2020-00681
Patent 8,948,684 B2
20
and opportunities for companies, organizations, institutions and individuals
to distribute and obtain information and to interact verbally and visually with
others, virtually on a world-wide basis.” Id. ¶ 3. But Rittmaster indicates
that “such a geographically expansive marketplace can be problematic for
contexts in which the information, products or services are intended for a
particular geographic area or location.” Id. ¶ 4. An example is a software
distribution company that wants to “employ the Internet or WWW as a
distribution channel, but would need to limit sales (and access to the
distributed software) to only those Internet users (customers) that are located
within the region assigned to that company.” Id. ¶ 5. To address this,
Rittmaster discloses a system for “limiting distribution of information on a
communications network based on geographic location.” Id. ¶ 9.
Figure 2 of Rittmaster is reproduced below:

IPR2020-00681
Patent 8,948,684 B2
21
Figure 2 above shows system 10 with provider processor 12, first recipient
processor 14, second recipient processor 15, Nth recipient processor 16,
network 18, and satellite 24. Ex. 1007 ¶¶ 36, 44. In this system, each user
device communicates geographic information to provider processor 12. Id.
¶ 50. Processor 12 “is operated under the control of associated server
software 29 to selectively provide or deny a given user device 14–16 access
to a product or service dependent upon the geographic information provided
by the given user device.” Id. Alternatively, geographic control can be
affected by user software. Id.
Rittmaster discloses that user devices can be “controlled by software
26–28 to periodically (or otherwise successively) communicate locations
and/or time information generated by the associated positioning system 20–
22 during a communication interchange between the provider server 12 and
the user device.” Ex. 1007 ¶ 69.
Rittmaster further discloses an embodiment where a user accesses “a
continuous stream of content, such as viewing a movie, show, television
program, video game, radio or other transmission.” Ex. 1007 ¶ 132. “[T]he
primary content program, for example, the movie or video game, is
segmented into time frames such that breaks occur in the viewing or playing
of the primary program.” Id. “Commercials or advertisements are
introduced during each break between segments.” Id. “[T]he selection of
the commercial, promotional or informational content to include in the
interleaved break(s) may be determined, in whole or part, by the physical
location of the user.” Id. This embodiment can employ the other
embodiments described in Rittmaster “for controlling content based on the
geographic location of the user (recipient processor), to control the
IPR2020-00681
Patent 8,948,684 B2
22
communication of commercial or advertisement content to the user
(recipient processor) during the interleaved breaks in the primary content.”
Id.
2. Duvall
Duvall is directed to “a technique for data item replacement in a
media stream (e.g., a particular channel) of a streaming media (e.g., radio or
television).” Ex. 1008, 1. Figure 1 of Duvall, reproduced below, shows a
distributed computer system (id. at 7):

Figure 1 above shows client computer 100 communicating with data center
servers 110. Id. Client computer 100 includes streaming media application
102, which includes data item scheduler 108 and which receives media
stream 120. Id. at 7–8. As streaming media application 102 receives media
stream 120, data item scheduler 108 uses queue points to determine starting
IPR2020-00681
Patent 8,948,684 B2
23
points of, for example, commercial breaks. Id. at 8. When media stream
120 is played and “a queue point is reached, which indicates that, for
example, a commercial break of a certain duration is to occur, the Data Item
Scheduler 108 intelligently chooses one or more cached data items of that
duration to play in lieu of items already embedded in the stream.” Id. at 9.
3. Claim 1
a. A method for streaming localized content to a mobile
device during an advertising break in an Internet radio
stream.
Petitioner argues that, to the extent the preamble of claim 1 is limiting,
Rittmaster teaches or suggests the preamble by providing commercial,
promotional, or informational content during breaks of a continuous stream
of content, such as radio over the Internet. Pet. 50. Patent Owner provides
no counterargument. See generally PO Resp. After reviewing the record,
we determine that Rittmaster teaches the preamble of claim 1.9
b. [1.1] streaming from an Internet radio source to a
mobile device an Internet radio stream;
Petitioner argues that Rittmaster teaches or suggests limitation 1.1 by
disclosing that provider server 12 streams content, such as radio over the
Internet, to users carrying probable communication devices 14–16. Pet. 51.
Patent Owner provides no counterargument. See generally PO Resp. After
reviewing the record, we determine that Rittmaster teaches limitation 1.1.

9 For this reason, we do not need to determine whether the preamble of claim
1 is limiting.
IPR2020-00681
Patent 8,948,684 B2
24
c. [1.2] receiving by the Internet radio source from the
mobile device recurring location reports reporting new
locations of the mobile device resolved by the mobile
device;
i. Parties’ Arguments
Petitioner argues that Rittmaster teaches or suggests limitation 1.2.
Pet. 51. Petitioner argues that “user devices 14–16 . . . communicate
geographic information to the provider device,” and the location information
is transmitted “periodically (or otherwise successively)” to keep track of the
user’s location over time. Id. (quoting or citing Ex. 1007 ¶¶ 50, 69–70, 127).
Petitioner further argues that the user’s device contains a “positioning
system” such as a “Global Positioning System GPS 20-22” for obtaining the
location information that is transmitted to and received by the provider
server. Id. (quoting or citing Ex. 1007 ¶¶ 44, 47).
Patent Owner argues that limitation 1.2 should be construed to require
that the “recurring location reports” be received before an advertisement is
selected by the Internet radio source, as recited in limitation 1.4.
PO Resp. 29. Patent Owner contends that, with that construction, Rittmaster
would not satisfy limitation 1.2. Id. at 29–31.
Patent Owner also argues that Petitioner improperly relies on two
distinct classes of embodiments in Rittmaster for limitations 1.2 and 1.4.
PO Resp. 31. Patent Owner argues that the embodiments in Figures 3–9 of
Rittmaster relate to systems for granting or denying access to services or
digital content. Id. at 32. Further, Patent Owner asserts that the embodiment
of Figure 10 relates to selecting content to send to a user based on the user’s
location. Id. Patent Owner asserts that Petitioner relies on the first class of
embodiments for limitation 1.2 and on the second class of embodiments for
IPR2020-00681
Patent 8,948,684 B2
25
limitation 1.4. Id. Further, Patent Owner asserts that Petitioner has not set
forth a rationale for combining these classes of embodiments. Id.
Petitioner responds that, although Rittmaster discloses two classes of
embodiments, Figures 2–10 of Rittmaster belong to the same class. Reply
11. Petitioner asserts that Figures 2–10 are directed to “Distribution Based
on Location of Recipient,” and Figure 12 is directed to “Distribution Based
on Location of Provider. Id. Patent Owner responds, arguing that two
different types of inventions are disclosed under the heading in Rittmaster of
“Distribution Based on Location of Recipient.” Sur-reply 12. Patent Owner
also argues that the numbered elements in Figure 2 that are not also in
Figure 1 are not shown in Figure 10. Id. at 13. In its Sur-reply, Patent
Owner implicitly offers a new construction regarding the purportedly
required sequence with limitation 1.2, stating “the claim requires the Internet
radio source to receive reported locations (plural) before selecting an
advertisement.” Id. at 11.
ii. Sequence
As set forth in Section I.E.3 above, we declined to adopt Patent
Owner’s proposed construction that limitation 1.2 requires that recurring
location reports be received before an advertisement is selected by the
Internet radio source. Thus, Rittmaster and Duvall’s alleged failure to teach
or suggest receiving recurring location reports before an advertisement is
selected by the Internet radio source does not undermine Petitioner’s
showing for claim 1.
As mentioned, however, in its Sur-reply, Patent Owner implicitly
offers a different construction regarding a required sequence with limitation
1.2: “the claim requires the Internet radio source to receive reported
IPR2020-00681
Patent 8,948,684 B2
26
locations (plural) before selecting an advertisement.” Sur-Reply 11. With
this implicit construction, reported locations, rather than recurring location
reports, must be received before selecting an advertisement. This proposed
construction, however, is untimely. Trial Practice Guide10 74. Thus, we
decline to consider that proposed construction on that basis. Id.
Nevertheless, if we were to consider and adopt this new construction,
on this record, we would find that Rittmaster suggests limitation 1.2.
Rittmaster discloses a user device periodically providing location
information “while the requested content is being communicated to the user
device in, what appears to the user as, a continuous stream.” Ex. 1007 ¶ 70.
Rittmaster further discloses adjusting the stream of content, in particular
cutting it off, if a user’s location does not correspond to an expected
location. Id. Further, Rittmaster teaches that the stream of content can be
lengthy. Id. Rittmaster also discloses using the geographic location of the
user to control advertisement content to the user. Id. ¶¶ 131–132.
Combined, these disclosures suggest repeatedly reporting new geographic
locations of a user during the streaming of lengthy content and then selecting
an advertisement based on the new location of the user when the new
location would call for different advertisements, which would satisfy
limitation 1.2 as implicitly construed by Patent Owner in its Sur-reply: the
advertisement would be selected after new locations of the user had been
reported.

10 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov.
2019), 73–74, available at https://www.uspto.gov/
TrialPracticeGuideConsolidated (“Trial Practice Guide”).
IPR2020-00681
Patent 8,948,684 B2
27
iii. Rittmaster’s Embodiments
We agree with Petitioner that it did not improperly combine
embodiments of Rittmaster. The embodiments of Figures 1–9 and of Figure
10, cited by Petitioner, are related, and an ordinarily skilled artisan would
consider them together.
Rittmaster describes each of these embodiments under the same
heading in its textual description: “Distribution Based on Location of
Recipient.” Ex. 1007 ¶ 34. And neither party has argued that description is
inaccurate. Given the description of these figures, an ordinarily skilled
artisan would consider their disclosures together. Rittmaster describes
Figure 10 as “a generalized representation of a shopping area which employs
a system according to an embodiment of the present invention.” Ex. 1007
¶ 27 (emphasis added). The embodiments being referred to are the
embodiments illustrated in preceding Figures 1–9. Rittmaster describes that,
in Figure 10: “[c]ontent may then be provided to the user, based on the
geographic location of the user’s portable communication device, in
accordance with any of the above described processes.” Id. ¶ 127. The
above processes are disclosed in Figures 3–9 and a system in which those
processes can run is disclosed in Figure 2. Rittmaster specifically provides
examples how the processes of Figures 5–9 can be used in the embodiment
of Figure 10. Id. Figure 3 is described as an operational process, and
Figures 4a and 4b describe schemes for carrying out step 3 of Figure 3. Id.
¶¶ 51, 67. Further, in describing the processes of Figures 3 and 5–7,
Rittmaster refers to the system depicted in Figure 2. See id. ¶¶ 71
(describing Figures 5 and 6, Rittmaster refers to elements 12, 14–16, 26, 28,
IPR2020-00681
Patent 8,948,684 B2
28
29 in Figure 2), 84–85 (describing Figure 7, referring to elements 14–16,
20–22 in Figure 2).
The fact that some of the numbered elements in Figure 2 do not
appear in Figure 10 would not discourage an ordinarily skilled artisan from
consulting the teachings of Figure 2 to understand the disclosure of Figure
10. Figure 2 in Rittmaster is “a generalized schematic view of a system
according to an embodiment of the present invention.” Ex. 1007 ¶ 18
(emphasis added). Figure 10 is “a generalized representation of a shopping
area which employs a system according to an embodiment of the present
invention.” Id. ¶ 27 (emphasis added). The fact that the figures depicting
the system (Figure 2) and a shopping area employing the system (Figure 10)
illustrate different elements would be expected given the differences in what
they illustrate. But to understand the system used in the shopping area of
Figure 10, an ordinarily skilled artisan would look to the description of
Figure 2. Id. ¶¶ 17, 27.
Under the circumstances, we find that the embodiments of Figures 2–
10 are related, and Petitioner’s reliance on the combined disclosures of those
embodiments was proper.
iv. Summary
As indicated, Patent Owner does not provide any counterarguments
for limitation 1.2 other than the sequence argument addressed above and its
argument that Petitioner improperly relied on multiple embodiments in
Rittmaster. After reviewing the record, we determine that Petitioner has
proven that Rittmaster teaches limitation 1.2.
IPR2020-00681
Patent 8,948,684 B2
29
d. [1.3] detecting electronically by the Internet radio
source a marker indicating a start of an advertising
break in the Internet radio stream;
Petitioner argues that Rittmaster and Duvall teach or suggest
limitation 1.3. Pet. 53. Petitioner asserts that Rittmaster teaches introducing
commercials or advertisements during each break between segments, so the
user receives those commercials or advertisements during the interleaved
breaks in the primary content. Id. at 53–54. Further, Petitioner argues that
the provider server introduces the content during the breaks. Id. at 54.
Petitioner further contends that Duvall teaches the detection of queue points
to determine the starting points of commercial breaks. Id. Petitioner argues
that these queue points indicate the start of an advertising break and, thus,
are the recited “marker[s],” and an ordinarily skilled artisan would have used
these queue points with Rittmaster’s server to insert advertising during the
interleaved breaks. Id.
Patent Owner presents no counterarguments for limitation 1.3. After
reviewing the record, we find that Petitioner has proven that Rittmaster and
Duvall teach limitation 1.3.
e. [1.4] streaming from the Internet radio source to the
mobile device during the advertising break at least one
advertisement selected by the Internet radio source
using at least one of the reported locations and a
duration indicator indicating a duration of the
advertising break;
Petitioner asserts that Rittmaster and Duvall teach or suggest
limitation 1.4. Pet. 55. Petitioner argues that Figure 2 of Rittmaster
provides an example of a recipient-location based system where positioning
system 20 of user device 14 provides location information via network 18
(e.g., the Internet) to provide processor 12. Id. Petitioner further argues that
IPR2020-00681
Patent 8,948,684 B2
30
Rittmaster teaches at least one advertisement that is interleaved between the
content segments using at least one of the reported locations so that the
content is based on the geographic location of the user. Id. at 56. Further,
Petitioner asserts that Rittmaster indicates that localized content should fit
between content segments. Id. at 57.
Petitioner argues that an ordinarily skilled artisan would have looked
to Duvall for implementation details on the selection of advertisements that
fit the duration of an advertising break. Id. In particular, Petitioner contends
that an ordinarily skilled artisan would have incorporated the functions of
Duvall’s Data Item Scheduler 108 for using content identification list
information 122 indicating the length of the advertising break to insert
targeted advertising content that fits that duration into the stream (Ex. 1008,
8-9, 24) into the provider server of Rittmaster. Id. Petitioner further argues
that Duvall explains that it Data Item Replacement System is illustrated with
the Data Item Scheduler 108 at the client device selecting locally stored
targeted advertisements. Id. Petitioner asserts, however, Duvall discloses
that the functionalities it discloses would operate in alternative hardware
environments and various configurations. Id. Further, Petitioner contends
that an ordinarily skilled artisan would have been motivated by Rittmaster’s
disclosure of inserting ads of appropriate duration to incorporate, and would
have had a reasonable expectation of success in incorporating, the
functionality of Data Item Scheduler 108 to select one or more targeted
advertisements based on the duration indicated by content identification list
information 122 into the server of Rittmaster. Id.
As set forth in Section II.B.3.g.i below, Patent Owner disputes that an
ordinarily skilled artisan would have combined Rittmaster’s and Duvall’s
IPR2020-00681
Patent 8,948,684 B2
31
teachings, and we address those arguments in that section. Further, as set
forth in Section II.B.3.c.i above, Patent Owner argues that claim 1 requires
“recurring location reports” to be received before an advertisement is
selected by the Internet radio source. That argument is partially based on
limitation 1.4 because limitation 1.4 recites “at least one advertisement
selected by the Internet radio source using at least one of the reported
locations.” We, however, addressed that argument in Section II.B.3.c.ii
above.
Patent Owner also argues that “Duvall does not disclose selecting an
advertisement using ‘a duration indicator indicating a duration of the
advertising break’” because its “content identification list information 122
does not disclose the duration of any dead period.” PO Resp. 34–35;
Sur-reply 18. We disagree with Patent Owner that the term “advertising
break” should be interpreted to mean a dead period in a radio transmission,
as explained above in Section I.E.1.b.
Patent Owner does not provide any other counterarguments
concerning limitation 1.4.
After reviewing the record, we find that Petitioner has proven that
Rittmaster and Duvall teach limitation 1.4.
f. [1.5] resuming by the Internet radio source streaming to
the mobile device of the Internet radio stream after the
advertising break.
Petitioner argues that Rittmaster teaches or suggests limitation 1.5.
Pet. 58. Petitioner asserts that Rittmaster discloses that the targeted
advertisement is inserted into the media stream to provide the user a
“continuous stream of content.” Id. (quoting Ex. 1007 ¶ 132). Petitioner
further quotes Rittmaster’s disclosure that: “[c]ommercials or advertisements
IPR2020-00681
Patent 8,948,684 B2
32
are introduced during each break between segments,” such that the next
segment of the programming content resumes after the advertising break. Id.
(quoting Ex. 1007 ¶ 132).
Patent Owner provides no counterarguments for this limitation. After
reviewing the record, we determine that Petitioner has proven that Rittmaster
teaches limitation 1.5.
g. Motivation to Combine Rittmaster and Duvall
i. Parties’ Arguments
Petitioner argues that Rittmaster and Duvall teach or suggest the
selection of advertisements based on the location of a user and the duration
of an advertising break. Pet. 21–22. Petitioner argues that to the extent
Rittmaster does not provide sufficient details on detecting a marker
indicating a start of an advertising break, and to the extent Rittmaster does
not provide sufficient details on a duration indicator or how such an
indicator would be used to select an advertisement, Duvall discloses such
implementation details. Id. at 22. Petitioner argues that the motivation to
select Duvall would be based on the similarities in the references. Id.
Petitioner asserts that each of the references is directed to inserting targeted
advertising into streaming media, including Internet radio. Id. Petitioner
further argues that an ordinarily skilled artisan would have been motivated to
combine the two references’ teachings based on the known benefits of
selecting advertising based on both duration and location (e.g., targeted
advertising that fits the break duration and meets the advertiser’s needs) and
the drawbacks of selecting advertising based only on one of duration or
location (e.g., advertisements that did not reach the target audience,
advertising that did not fit the length of the break). Id. at 23.
IPR2020-00681
Patent 8,948,684 B2
33
Petitioner further argues that Rittmaster describes a known base
device and system for providing local advertisements during a break that an
ordinarily skilled artisan would have recognized as being ready for the
improvement of providing advertisements to fit various durations of breaks,
given, for example, the similarities in Rittmaster’s disclosure to that of
Duvall. Pet. 23–24. Further, Petitioner argues that Duvall discloses the
known technique of selecting advertisements that fit the duration of the
break when the break duration and/or advertising content has varying
lengths. Id. at 24. Petitioner further argues that an ordinarily skilled artisan
would have applied this known improvement to Rittmaster in the same way
as it is used in Duvall to provide the predictable result of allowing Rittmaster
to provide targeted advertisements for breaks of various durations. Id.
Petitioner argues that an ordinarily skilled artisan would have had a
reasonable expectation of success in applying Duvall’s teachings to
Rittmaster’s system because Duvall uses local storage of the advertising
options in its client-side system in a manner similar to the storage of
advertisements in the server-side system of Rittmaster. Pet. 25–26.
Petitioner cites as support the testimony of Mr. Wechselberger. Ex. 1011
¶¶ 46–50.
Patent Owner argues that an ordinarily skilled artisan would not have
combined Rittmaster and Duvall in the manner proposed by Petitioner
because that combination would require substantial reconstruction and
redesign of Rittmaster. PO Resp. 38. Patent Owner asserts that Rittmaster
discloses inserting advertisements into reserved time frames and sending
each user a stream that is crafted for that user. Id. at 38–39. Further, Patent
Owner asserts that this server-side content insertion system is not
IPR2020-00681
Patent 8,948,684 B2
34
interchangeable with the client-side content replacement system of Duvall.
Id. at 39.
Petitioner responds that it is not proposing a bodily combination of
Rittmaster’s server and Duvall’s client device. Reply 19–20. Petitioner
further argues that an ordinarily skilled artisan would have recognized that
both systems require information on when a break starts, and
implementation details on how a start marker from Duvall would be readily
implemented in the server-side system that Rittmaster discloses. Id. at 20.
Patent Owner responds that the identifiers in Duvall and Rittmaster do
not serve the same functions. Sur-reply 19. Patent Owner contends that
Duvall’s identification list provides information on which portions of a
media stream to “mute” and overwrite with alternate data. Id. Patent Owner
further argues that Rittmaster uses identifiers to locate time slots to insert
data. Id. Further, Patent Owner contends that, because the identifiers do not
serve the same function, substantial reconstruction would be required to
make the concepts of Duvall useful in the context of Rittmaster. Id.
ii. Analysis
We agree with Petitioner that an ordinarily skilled artisan would have
been motivated to combine Rittmaster’s and Duvall’s teachings, would have
had a reasonable expectation of success in making that combination, and
would not, as Patent Owner argued, have had to substantially reconstruct and
redesign Rittmaster to do so.
We credit Mr. Wechselberger’s testimony that an ordinarily skilled
artisan would have been motivated to combine the teachings of Rittmaster
and Duvall with a reasonable expectation of success. Ex. 1011 ¶¶ 46–50.
IPR2020-00681
Patent 8,948,684 B2
35
As Mr. Wechselberger explains, Duvall provides the details of how to
select an advertisement from the stored advertisements using a duration
indicator combined with other factors, such as location. Ex. 1011 ¶¶ 46, 50;
Ex. 1008, 8–9, 24. Because Rittmaster’s similar system also selects
advertisements based on the user’s location and other criteria to provide
advertisements that fit the programming break, an ordinarily skilled artisan
would have expected Duvall’s teachings to work in Rittmaster’s system.
Ex. 1011 ¶ 50; Ex. 1007 ¶ 132. Duvall provides further details on how to
select content that fits the programming breaks, as suggested by Rittmaster.
Ex. 1011 ¶¶ 46, 50; Ex. 1008, 8–9, 24. Duvall discloses how to add or
implement a variable duration indicator to a system for providing targeted
content to users, like the system of Rittmaster. Ex. 1011 ¶¶ 46, 50;
Ex. 1008, 8–9, 24. And an ordinarily skilled artisan would have had a
reasonable expectation of success in applying Duvall’s teachings to
Rittmaster’s system because Duvall uses local storage of the advertising
options in its client-side system in a manner similar to the storage of
advertisements in the server-side system of Rittmaster. Ex. 1011 ¶ 50;
Ex. 1008, 8 (“local cache”); Ex. 1007, Fig. 2, storage device 13, ¶ 56
(“downloads to the user device”).
We do not credit Dr. Rhyne’s testimony that combining the teachings
of Rittmaster and Duvall would have required a substantial redesign of
Rittmaster. Ex. 2002 ¶¶ 90–92.11 Regarding this issue, Dr. Rhyne testifies:

11 In paragraph 90, Dr. Rhyne refers to the substantial reconstruction of
Estese, but the reference to Estese appears to be a typographical error. This
section of his declaration addresses the combination of Rittmaster and
Duvall.
IPR2020-00681
Patent 8,948,684 B2
36
Rittmaster would require fundamental reconstruction to
incorporate Duvall’s content identification list information 122
because Duvall’s content identification list information 122 only
identifies advertisement data already embedded in a data stream.
Rittmaster teaches using time frames during which content such
as an advertisement may be inserted. See Rittmaster at [0132];
Ex. 2001 at 33, lines 20–24. Like Estese, Rittmaster is a system
where time frames or windows allow customization by
interleaving location-based advertisements into the frame before
delivering it to the recipient. Rittmaster at [0132]. To use
Duvall’s content identification list information 122, which
identifies advertisement spots that are already part of a media
stream, would thus require replacing the frame structure of
Rittmaster with a full media stream that could then be
overwritten—or in the terminology of Duvall, “muted”—in
specific locations when told to by content identification list
information 122.
Ex. 2002 ¶ 92. We do not credit this testimony because it concerns bodily
incorporating Duvall into Rittmaster. In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012). Petitioner and Mr. Wechselberger do not propose
replacing the frame structure of Rittmaster with a full media stream.
Instead, Petitioner and Mr. Wechselberger propose taking the functionality
of Duvall’s Data Item Scheduler 108 to indicate the length of the advertising
break to insert targeted advertising content that fits that duration into the
stream. Reply 19–20; Ex. 1011 ¶¶ 46, 70. Dr. Rhyne has not set forth any
credible testimony indicating that adopting that functionality, rather than
replacing Rittmaster’s frame structure, would require substantial
reconstruction of Rittmaster. Ex. 2002 ¶¶ 90–92. Nor has Patent Owner
presented any other credible evidence indicating that adding the involved
functionality to Rittmaster would require a substantial reconstruction of
Rittmaster’s system. PO Resp. 38–41; Sur-reply 18–19.
IPR2020-00681
Patent 8,948,684 B2
37
In sum, after reviewing the record, we determine that an ordinarily
skilled artisan would have been motivated to combine Rittmaster’s and
Duvall’s teachings, would have had a reasonable expectation of success in
making that combination, and would not have had to substantially
reconstruct and redesign Rittmaster to do so.
h. Summary
In sum, we determine that Petitioner has proven that claim 1 would
have been obvious over Rittmaster and Duvall.
5. Claim 5
Claim 5 depends from claim 1 and further recites “wherein the
reported locations comprise global positioning system (GPS) locations”
(“limitation 5.0”). Petitioner argues that Rittmaster teaches or suggests
limitation 5.0 by disclosing “in preferred embodiments, the geographic
location information is generated by a means . . . such as a global positioning
system GPS.” Pet. 58 (quoting Ex. 1007 ¶ 12).
Patent Owner does not provide any counterarguments for limitation
5.0 and does not separately argue claim 5 from claim 1. PO Resp. 38–41.
After reviewing the record, we determine that Petitioner has proven
that Rittmaster teaches limitation 5.0. We further determine that Petitioner
has proven that claim 5 would have been obvious over Rittmaster and
Duvall.
6. Claim 6
Claim 6 is an independent claim that shares many common recitations
with claim 1. A comparison between claim 6 and claim 1, with differences
between the claims emphasized, is set forth below:
IPR2020-00681
Patent 8,948,684 B2
38
Claim 6 Claim 1
6. A method for streaming localized
content to a mobile device during a
break in an Internet radio stream,
comprising:

A method for streaming localized
content to a mobile device during an
advertising break in an Internet
radio stream, comprising:

streaming from an Internet radio
source to a mobile device an
Internet radio stream;
streaming from an Internet radio
source to a mobile device an
Internet radio stream;
receiving by the Internet radio
source from the mobile device a
location report reporting a location
of the mobile device;

receiving by the Internet radio
source from the mobile device
recurring location reports reporting
new locations of the mobile device
resolved by the mobile device;

detecting electronically by the
Internet radio source a marker
indicating a start of a break in the
Internet radio stream;

detecting electronically by the
Internet radio source a marker
indicating a start of an advertising
break in the Internet radio stream;

streaming from the Internet radio
source to the mobile device during
the break local political content
selected by the Internet radio source
using the reported location and a
duration indicator indicating a
duration of the break; and

streaming from the Internet radio
source to the mobile device during
the advertising break at least one
advertisement selected by the
Internet radio source using at least
one of the reported locations and a
duration indicator indicating a
duration of the advertising break;
and

resuming by the Internet radio
source streaming to the mobile
device of the Internet radio stream
after the break.

resuming by the Internet radio
source streaming to the mobile
device of the Internet radio stream
after the advertising break.
For the recitations of claim 6 that are also recited in claim 1, Petitioner
relies on its showing for claim 1. Pet. 58–59. For the recited “receiving . . .
IPR2020-00681
Patent 8,948,684 B2
39
a location report reporting a location of the mobile device” in claim 6,
Petitioner relies on its showing for “receiving . . . location reports reporting
new locations of the mobile device resolved by the mobile device” in claim
1. Id. For the recited “break” in claim 6, Petitioner relies on its showing
regarding breaks that it made for the recited “an advertising break” in claim
1. Id. For the recited “streaming . . . during the break local political
content,” Petitioner argues that the following disclosures in Rittmaster teach
or suggest that limitation:
(i) “consider a company, organization or individual
involved in distributing information having a content that is
politically or ethically sensitive in certain geographic regions but
not other geographic regions. Again, the company, organization
or individual may desire to provide the information over the
Internet but, for political, ethical or legal reasons, may also desire
to limit the accessibility to the information to certain geographic
regions.” (Ex. 1007 ¶ 7) (emphasis added);
(ii) “Such information may include, but is not limited to,
data, text or image information including software programs, for
example, having different market, legal, political, social, ethical
or moral implications in different geographic regions. In
preferred embodiments of the present invention, access to the
information by the recipient processors 14-16 is controlled,
based on the geographic location or region of the recipient
processors, the provider processor or both.” (Ex. 1007 ¶ 33); and
(iii) “the ability to present . . . informational content to a
user that is pertinent to the user's physical location . . . can be
beneficial to both the user and the advertiser.” (Ex. 1007 ¶ 131).
Pet. 59. Petitioner asserts that the above disclosures in combination with the
disclosures it cites from Rittmaster and Duvall for claim 1 render claim 6
obvious. Id.
IPR2020-00681
Patent 8,948,684 B2
40
Patent Owner presents no counterarguments that are specific to claim
6, and Patent Owner does not separately argue claim 6. In Section II.B.3
above, we addressed Patent Owner’s counterarguments for claim 1.
After reviewing the record, we determine that Petitioner has proven
that claim 6 would have been obvious over Rittmaster and Duvall.
7. Claim 7
Claim 7 differs from claim 6 as follows. Claim 7 recites “streaming
. . . a local news report,” whereas claims 6 recites “streaming . . . local
political content.”
Petitioner argues that the following disclosures in Rittmaster teach or
suggest the recited streaming of local political content:
(i) “the ability to present . . . informational content to a
user that is pertinent to the user's physical location . . . can be
beneficial to both the user and the advertiser.” (Ex. 1007 ¶ 131);
and
(ii) “In one embodiment, the web site provides
entertainment content as the primary content, such as, . . . news .
. . . One or more interleaved breaks in the primary content are
provided for displaying advertisement, promotional or
informational content as described above.” (Ex. 1007 ¶ 136).
Pet. 59. Petitioner argues that the above disclosures in combination with the
disclosures it cited from Rittmaster and Duvall for claim 1 render claim 7
obvious. Id.
Patent Owner presents no counterarguments that are specific to claims
6 or 7 and does not separately argue claim 7. In Section II.B.3 above, we
addressed Patent Owner’s counterarguments for claim 1.
After reviewing the record, we determine that Petitioner has proven
that claim 7 would have been obvious over Rittmaster and Duvall.
IPR2020-00681
Patent 8,948,684 B2
41
8. Claim 8
Claim 8 differs from claim 6 as follows. Claim 8 recites “streaming
. . . a local traffic report,” whereas claims 6 recites “streaming . . . local
political content.”
Petitioner argues that the following disclosures in Rittmaster teach or
suggest the recited streaming of a traffic report:
(i) “the ability to present . . . informational content to a
user that is pertinent to the user's physical location . . . can be
beneficial to both the user and the advertiser.” (Ex. 1007 ¶ 131);
and
(ii) “In one embodiment, the web site provides
entertainment content as the primary content, such as, . . . traffic
information . . . . One or more interleaved breaks in the primary
content are provided for displaying . . . informational content as
described above.” (Ex. 1007 ¶ 136).
Pet. 59. Petitioner argues that these disclosures in combination with the
disclosures it cited from Rittmaster and Duvall for claim 1 render claim 8
obvious. Id.
Patent Owner presents no counterarguments that are specific to claims
6 or 8, and Patent Owner does not separately argue claim 8. In Section
II.B.3 above, we addressed Patent Owner’s counterarguments for claim 1.
After reviewing the record, we determine that Petitioner has proven
that claim 8 would have been obvious over Rittmaster and Duvall.
9. Claim 9
Claim 9 differs from claim 6 as follows. Claim 9 recites “streaming
. . . a local weather report,” whereas claims 6 recites “streaming . . . local
political content.”
Petitioner argues that the following disclosures in Rittmaster teach or
suggest the recited streaming of a weather report:
IPR2020-00681
Patent 8,948,684 B2
42
(i) “the ability to present . . . informational content to a
user that is pertinent to the user's physical location . . . can be
beneficial to both the user and the advertiser.” (Ex. 1007 ¶ 131);
and
(ii) “In one embodiment, the web site provides
entertainment content as the primary content, such as . . . weather
information . . . . One or more interleaved breaks in the primary
content are provided for displaying . . . informational content as
described above.” (Ex. 1007 ¶ 136).
Pet. 59. Petitioner argues that the above disclosures in combination with the
disclosures it cited from Rittmaster and Duvall for claim 1 render claim 9
obvious. Id.
Patent Owner presents no counterarguments that are specific to claims
6 or 9, and Patent Owner does not separately argue claim 9. In Section
II.B.3 above, we addressed Patent Owner’s counterarguments for claim 1.
After reviewing the record, we determine that Petitioner has proven
that claim 9 would have been obvious over Rittmaster and Duvall.
C. Asserted Obviousness over Rittmaster, Duvall, and Zellner
Petitioner argues that claims 3 and 4 would have been obvious over
Rittmaster, Duvall, and Zellner. Pet. 64–66.
1. Zellner
Zellner discloses a “location blocking service” that allows a user “to
prevent the location of her wireless handheld device from being disclosed.”
Ex 1010, Abstract. Zellner contemplates that this functionality for a mobile
device has many applications, including to allow or prevent “targeted
advertisements” from being directed to the mobile device. Id. at 2:33–42.
2. Claim 3
Claim 3 depends on claim 1 and further recites “receiving on the
mobile device through user interaction with a location reporting selection
IPR2020-00681
Patent 8,948,684 B2
43
feature a selection enabling location reporting from the mobile device to the
Internet radio source” (“limitation 3.0”).
Petitioner argues that Rittmaster and Zellner teach or suggest
limitation 3.0. Petitioner asserts that Rittmaster teaches or suggests allowing
the user to enable sending location information by allowing the user to
decide whether to manually enter location information. Id. at 64–65 (citing
Ex. 1007 ¶ 43). Further, Petitioner argues that Zellner teaches allowing a
user to enable location reporting from a mobile device to a centralized
server. Id. at 65. Petitioner notes that Zellner discloses that “[t]he user
interface” of the mobile device “accepts user commands” to “de-activate
location blocking.” Id. (quoting and citing Ex. 1010, 3:14–26, 5:65–6:3).
Petitioner asserts that Zellner allows the user to enter commands to
“suspend[] location blocking.” Id. (quoting Ex. 1010, 5:65–6:3). Petitioner
further argues that Zellner discloses that “instead of the user selecting
whether a location should be transmitted for each transmission, the user can
enable location information to be sent ‘for all transmissions,’ thereby
‘establishing default preferences’ for enabling location reporting.” Id.
(quoting Ex. 1007, 3:59–4:2). Petitioner argues that these disclosures in
Rittmaster and Zellner teach limitation 3.0. Id.
Patent Owner provides no counterarguments for limitation 3.0. After
reviewing the record, we determine that Petitioner has proven that Rittmaster
and Zellner teach limitation 3.0.
3. Claim 4
Claim 4 depends from claim 1 and further recites: “receiving on the
mobile device through user interaction with a location reporting selection
feature a selection disabling location reporting from the mobile device to the
IPR2020-00681
Patent 8,948,684 B2
44
Internet radio source” (“limitation 4.0”). Petitioner argues that Rittmaster
and Zellner teach or suggest limitation 4.0. Pet. 65. Petitioner asserts that
Rittmaster teaches or suggests allowing a user to disable sending location
information by allowing the user to decide whether to manually enter
location information. Id. at 66 (citing Ex. 1007 ¶ 43). Petitioner further
argues that Zellner teaches allowing a user to disable location reporting from
a mobile device to a centralized server. Id. Petitioner notes that Zellner
discloses that “[t]he user interface” of the mobile device “accepts user
commands” to “activate location blocking.” Id. (quoting and citing Ex. 1010,
3:14–26. Further, Petitioner argues that Zellner allows the user to enter
commands to “initiat[e] . . . location blocking.” Id. (quoting Ex. 1010, 5:65–
6:3). Petitioner further asserts that Zellner discloses that “instead of the user
selecting whether a location should be transmitted for each transmission, the
user can disable location information to be sent ‘for all transmissions,’
thereby ‘establishing default preferences’ for enabling location reporting.”
Id. (quoting Ex. 1007, 3:59–4:2). Petitioner argues that these disclosures in
Rittmaster and Zellner teach or suggest limitation 4.0. Id.
Patent Owner provides no counterarguments for limitation 4.0. After
reviewing the record, we determine that Petitioner has proven that Rittmaster
and Zellner teach limitation 4.0.
4. Analogous Art
“Prior art is analogous if it is from the same field of endeavor or if it is
reasonably pertinent to the particular problem the inventor is trying to
solve.” Circuit Check, Inc. v. QXQ Inc., 795 F.3d 1331, 1335 (Fed. Cir.
2015). “A reference is reasonably pertinent if . . . it is one which, because of
the matter with which it deals, logically would have commended itself to an
IPR2020-00681
Patent 8,948,684 B2
45
inventor’s attention in considering his problem.” Innovention Toys, LLC v.
MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (citation and
internal quotation marks omitted).
a. Parties’ Arguments
Patent Owner argues that Zellner is not analogous art to the
’684 patent. PO Resp. 43. Patent Owner asserts that Zellner is not in the
same field as the invention of the ’684 patent. Id. Patent Owner further
asserts that the ’684 patent relates to “methods and systems for selecting
content for outputting on a mobile device during a program break in an
Internet radio stream using mobile device location information.” Id. at 44
(quoting Ex. 1001, 1:21–24). Patent Owner argues that Zellner, on the other
hand, “relates to the field of wireless networks, and in particular, to wireless
networks that track the locations and identity of wireless network devices.”
Id. (quoting Ex. 1010, 1:7–9). According to Patent Owner, because Zellner
does not relate to digital content selection or Internet radio streaming based
on user location, an ordinarily skilled artisan would not have considered it to
be analogous art to the ’684 patent. Id.
Patent Owner also argues that Zellner is not reasonably pertinent to
the problem addressed in claims 3 and 4. PO Resp. 45. Patent Owner
asserts that Zellner is directed to limiting the ability of network providers to
sell the user data that the network must collect under the Enhanced 911
(“E911”) standards. Id. Patent Owner asserts that “[i]n contrast, [c]laims 3
and 4 . . . relate to a different problem, enabling or disabling the flow of data
from a mobile device directly to a third party.” Id. at 46. Patent Owner
further argues that:
[u]nlike Zellner, the challenged claims do not relate to
data collection by a network provider, and the fundamental
IPR2020-00681
Patent 8,948,684 B2
46
relationship between a user and its network provider remains
unaltered. Rhyne at ¶ 116. The ’684 Patent does not address the
privacy concerns raised by E911 requirements (i.e., the sale of
personal data by a network provider), and Claims 3 and 4 do not
address location data forwarding like Zellner does.
Id.
Petitioner argues that Zellner is analogous art “because it is directly
pertinent to the problem the inventor was trying to solve for the inventions
of claims 3 and 4, namely, how to give users control over their location data,
including how ‘to allow or prevent ‘targeted advertisements’ from being
directed to the mobile device.” Reply 22. Petitioner argues that “the fact
that Zellner considers the specific use-case contemplated by the claims (i.e.,
preventing targeted advertising) but also has the forethought to address the
E911 requirements would only add to the reasons for [an ordinarily skilled
artisan] to look to Zellner.” Id.
In response, Patent Owner argues that Zellner is not analogous art
because it relates to “controlling the type of data collection that a network
provider may routinely perform.” Sur-reply 20.
b. Analysis
We determine that Zellner is reasonably pertinent to a particular
problem that the inventors of the ’684 patent were trying to solve (and thus
need not determine whether Zellner is in the same field of endeavor as the
’684 patent). Claims 3 and 4 are directed to a selection by a user that
enables or disables the reporting of locations from the mobile device to the
Internet radio source. This is reflected in the Specification, which discloses
that the problem the inventors were trying to solve with this selection was to
protect privacy in a system where the location of the user could be tracked to
provide content: “to protect privacy, communication client 310 may provide
IPR2020-00681
Patent 8,948,684 B2
47
a user with the ability to enable (opt-in) or disable (opt-out) provision of
location information to Internet radio source 120.” Ex. 1001, 5:65–6:1.
Patent Owner acknowledges that the cited portion of the Specification
describes a problem where, “if someone’s very concerned about their
personal location information, they may not want a product that is constantly
allowing location information to be transmitted to the radio source
provider.” Tr. 53:5–13; see also Tr. 52:18–53:4.
Zellner is reasonably pertinent to the privacy problem that the
’684 patent inventors addressed because Zellner discloses protecting a user’s
privacy by allowing the user to decide whether his or her location
information shall be transmitted in systems that track the locations of the
user’s mobile device. Zellner discloses that: “[t]he present invention relates
to the field of wireless networks, and in particular, to wireless networks that
track the location and identity of wireless network device.” Ex. 1010, 1:7–
10. Zellner addresses the privacy concerns with such tracking: “most
wireless device users view their location and identity information as
intimately private, and express strong reservations against involuntary and
automatic disclosure of such information.” Id. at 1:47–50. To address those
privacy concerns, Zellner discloses a method that allows users to block the
disclosure of tracking information in such a system: “[the] location blocking
service provides a network user with the ability to prevent the location of her
wireless handheld device from being disclosed to parties other than the
wireless network provider and PSAPs [Public Safety Answering Points].”
Id. at 2:51–57. Zellner teaches that “[a]s such, the network user retains
control of her privacy, deciding when and to whom location information will
be forwarded.” Id. at 2:58–60.
IPR2020-00681
Patent 8,948,684 B2
48
As indicated above, Petitioner describes the problem that the inventors
of the ’684 patent were trying to solve for claims 3 and 4 as: how to give
users control over their location data, including how to allow or prevent
targeted advertisements from being directed to the mobile device. Reply 22.
This description of the problem that the inventors were trying to solve is
similar to the description provided above. Further, claim 1 recites “one
advertisement selected by the Internet radio source using at least one of the
reported locations,” which is targeted advertising, and the problem with a
lack of control by users of the reporting of their locations is a privacy issue.
Ex. 1001, 5:65–6:1. As mentioned, Zellner teaches that “the network user
retains control of her privacy, deciding when and to whom location
information will be forwarded.” Id. at 2:58–60. Zellner further specifically
addresses privacy issues regarding “targeted advertisements.” Id. at 2:33–
42. Thus, Zellner is reasonably pertinent to the problem that the inventors
were trying to solve with Petitioner’s formulation of that problem.
As indicated above, Patent Owner argues that Zellner is not analogous
art because “claims 3 and 4 relate to problem of enabling or disabling the
flow of data from a mobile device directly to a third party,” whereas Zellner
relates to controlling the type of data collection that a network provider may
routinely perform. Sur-reply 20. Providing a mechanism to enable and
disable location reporting, however, appears to be a solution to the problem
described in the Specification (i.e., the need to protect a user’s privacy),
rather than a problem in and of itself. Regardless, even if we were to accept
Patent’s Owner description of the problem the inventors were trying to
solve––enabling or disabling the flow of data from a mobile device directly
to a third party—we would still find that Zellner is still reasonably pertinent
IPR2020-00681
Patent 8,948,684 B2
49
to that problem. Zellner discloses a method for enabling or disabling the
flow of data from a mobile device to third parties (i.e., parties other than the
wireless network provider and PSAPs). Ex. 1010, 2:51–57. And the
problem addressed by the ’684 patent was not whether third parties directly
or indirectly obtained location information without a user’s permission, but
rather that the user’s privacy would be breached by the third party’s (direct
or indirect) receipt of such information. Ex. 1001, 5:65–6:1. Under the
circumstances, an ordinarily skilled artisan would view Zellner as
reasonably pertinent to a problem with which the inventors of the ’684
patent were concerned. Zellner is analogous art.
5. Motivation to Combine Rittmaster and Duvall with Zellner
Petitioner argues that an ordinarily skilled artisan would have been
motivated to combine Rittmaster and Duvall with Zellner for the following
reasons. Petitioner asserts that Rittmaster teaches or suggests allowing a
user to determine whether to manually enter location information. Pet. 32.
Petitioner further argues that Zellner provides known details on how to
automate the user’s manual decision in Rittmaster. Id. Further, Petitioner
argues that an ordinarily skilled artisan would have been motivated to make
this modification because Zellner discloses that many network users would
object to being unable to control when their location information is used. Id.
at 32–33. Petitioner further contends that Rittmaster also discloses base
mobile devices that are ready for the improvement that the known technique
of Zellner provides. Id. at 35. Petitioner further argues that combining
Rittmaster, Duvall, and Zellner would have yielded predictable results and
that an ordinarily skilled artisan would have had a reasonable expectation of
IPR2020-00681
Patent 8,948,684 B2
50
success in so doing. Id. Petitioner’s arguments are supported by the
testimony of Mr. Wechselberger, which we credit. Ex. 1011 ¶¶ 58–62.
Patent Owner provides no counterarguments regarding (i) an
ordinarily skilled artisan’s motivation to combine Zellner with Rittmaster
and Duvall or (ii) the reasonable expectation of success in so doing.
After reviewing the record, we determine that Petitioner has proven
that an ordinarily skilled artisan would have been motivated to combine
Zellner with Rittmaster and Duvall and would have had a reasonable
expectation of success in so doing.
6. Summary
In sum, we determine that Petitioner has proven that claims 3 and 4
would have been obvious over Rittmaster, Duvall, and Zellner.
D. Asserted Obviousness over Estese and Duvall
Petitioner asserts that claims 1, 2, and 5–9 would have been obvious
over Estese and Duvall. Pet. 3.
1. Estese
Estese is directed to a system for providing customized
advertisements to an end user. Ex. 1006 ¶ 1. Estese reports that: “[f]or
media, such as the Internet, satellite and cable broadcasts . . . advertisements
have not been easily tailored to fit the needs of any given region or locality
which has reduced the effectiveness and attractiveness of these media to
advertisers.” Id. ¶ 2. Estese further reports that a need exists for
personalized and/or geographical based advertising for Internet, satellite, and
cable broadcasts. Id. ¶ 3.
Figure 1 of Estese, reproduced below, illustrates a system for
providing geographical based advertising (Ex. 1006 ¶¶ 12–14):
IPR2020-00681
Patent 8,948,684 B2
51

Figure 1 above “is an electrical block diagram of an exemplary client
computer system in communication with an exemplary server
communication system, via a wireless connection.” Id. ¶ 7. Figure 1 shows
system 100 with client computer system 140 and server computer system
120. Id. ¶ 14. Client computer system 140 includes geo-location subsystem
132 and may be located in a vehicle. Id. ¶¶ 13, 16.
Figure 2A of Estese, reproduced below, illustrates client-side
advertisement selection routine 200 (Ex. 1006 ¶ 16):
IPR2020-00681
Patent 8,948,684 B2
52

Figure 2A above “is an exemplary flow chart of a routine, which executes on
a client computer system and provides an end user location and/or end user
identity to a server computer system.” Id. ¶ 8. Routine 200 is executed on
client computer system 140. Id. ¶ 16. In step 202 of routine 200, processor
122 determines whether the location of the user is to be used in the
advertisement selection. Id. If the location is to be used, steps 203, 204, and
206 are performed. Id. Step 203 sets a flag. Id. Step 204 determines the
vehicle location, and step 206 determines the directional heading of the
vehicle from multiple readings provided by geo-location subsystem 132 or
IPR2020-00681
Patent 8,948,684 B2
53
an electronic compass. Id. This information is transmitted to server
computer system 120. Id., Fig. 2A, steps 210 and 216.
Figure 2B of Estese, reproduced below, illustrates server-side
advertisement selection routine 250 (Ex. 1006 ¶ 18):

Figure 2B “is an exemplary flow chart of a routine, which may execute on a
server computer system to provide advertising content based on an end user
location and/or end user identity.” Id. ¶ 9. Step 272 of routine 250
determines whether user location information was transmitted by client
computer system 140. Id. ¶ 18. If user location information was
transmitted, then server computer system 120 provides advertising content
based on the user location information to the client computer system 140.
Id. ¶ 19, Fig. 2B, steps 278, 280. Server computer system 120 provides the
IPR2020-00681
Patent 8,948,684 B2
54
advertising content by either transmitting the advertising content directly to
client computer system 140 or by sending a message to client computer
system 140, which causes processor 122 to select the appropriate advertising
content from mass storage device 126. Id. ¶ 19.
Figure 3A of Estese, reproduced below, shows the delivery of
advertising content for a user (Ex. 1006 ¶ 21):

As shown in Figure 3A above, user A receives the following media stream:
song A (302), then local ad 1, then song B, then local ad 2, then song C. Id.
The advertisements come from advertising pool 320. Id. Different
advertisements from advertising pool 320 can be given to different users
based on the user’s locations and preferences. Id.
2. Claim 1
a. Limitation 1.2
The parties dispute whether the asserted prior art teaches or suggests
limitation 1.2: “receiving by the Internet radio source from the mobile
device recurring location reports reporting new locations of the mobile
device resolved by the mobile device.”
b. Parties’ Arguments
Petitioner argues that Estese discloses or renders obvious limitation
1.2. Petitioner maps the recited Internet radio source to server computer
IPR2020-00681
Patent 8,948,684 B2
55
system 120 in Estese. Pet. 36. Petitioner further maps the recited mobile
device to Estese’s client computer system 140 (when that system is in a
mobile environment, such as an automobile). Id. at 37.
Petitioner argues that Estese discloses that “[t]he location of an end
user can be determined by various positioning systems, such as a global
positioning system (GPS) . . . which a[re] broadly referred to herein as a
geo-location subsystem.” Pet. 37 (quoting Ex. 1006 ¶ 12). Petitioner further
asserts that the mobile device (client computer system 140) includes geo-
location subsystem 132 that detects the location of the device to resolve, by
the mobile device, the location of the device. Id. (citing Ex. 1006 ¶¶ 14, 16).
Further, Petitioner argues that Estese explicitly discloses the provision of
multiple, recurring location reports and an ordinarily skilled artisan would
have understood that those recurring reports would have been provided to
server computer system 120 in server-side implementations so the
directional heading of a vehicle occupied by the end user may be
determined. Id. at 38 (citing Ex. 1006 ¶ 16, Ex. 1011 ¶¶ 74–75).
Patent Owner argues that Petitioner mistakenly equates the multiple
directional readings received by Estese’s client computer system with the
recited recurring location reports. PO Resp. 49. Patent Owner asserts that
Estese never uses the word “recurring,” and it uses the word “multiple” only
once. Id. Patent Owner further argues that Estese refers to multiple
readings, not multiple reports. Id. Further, Patent Owner argues that the
multiple location readings from geolocation subsystem 132 are received
within the client, not the server. Id. at 50.
Patent Owner further asserts that Petitioner has not sufficiently
accounted for the requirement that the recited mobile device report new
IPR2020-00681
Patent 8,948,684 B2
56
locations of the mobile device resolved by the mobile device. PO Resp. 48.
Patent Owner argues that Petitioner has presented no analysis of how Estese
discloses the reporting of new locations. Id. at 49. Patent Owner further
argues that Petitioner’s assertion that an ordinarily skilled artisan would
have understood that recurring reports would have been provided is only
supported by a conclusory statement by Petitioner’s expert. Id. at 51. Patent
Owner further asserts that in both the client-side and server-side
implementations, it is the client side that determines the directional heading
based on multiple readings. Id. at 52.
In the Reply, Petitioner argues that claim 1 does not require that the
server determine a trajectory. Reply 13. Petitioner asserts that its expert,
Mr. Wechselberger, cited numerous locations in Estese to support his
conclusion that an ordinarily skilled artisan would understand that Estese
discloses server-side trajectory determination in its server-side
implementation. Id. at 14. Petitioner further argues that an examiner arrived
at the same conclusion. Id. Petitioner also asserts that in Estese determining
the trajectory at the client side is an optional step. Id. at 14–15.
In the Sur-reply, Patent Owner argues that an ordinarily skilled artisan
would not understand Estese’s server-side implementation to be configured
to determine trajectory. Sur-reply 15. Patent Owner asserts that Petitioner
raised for the first time in its Reply the argument that Estese’s client-side
embodiment discloses receiving recurring location reports. Id. at 17.
c. Analysis of Limitation 1.2
We find that Petitioner has not proven that Estese discloses or renders
obvious 1.2. As indicated above, Petitioner argues that trajectory
determination by the server-side implementation of Estese and the basic
IPR2020-00681
Patent 8,948,684 B2
57
operation of the server-side implementation of Estese disclose or render
obvious limitation 1.2. Pet. 38 (“recurring reports (e.g., periodically
transmitted reports) would have been provided to the server computer 120 in
server-side implementations so that, for example, ‘the directional heading of
a vehicle occupied by the end user’ may be determined” (emphasis added));
Reply 18 (“the server-side implementation to operate—using location
reports to calculate trajectory” (emphasis added)); id. (“the basic operation
of the server-side implementation [would] meet the claim language”
(emphasis added)). We are not persuaded by either argument.
i. Server-Side Trajectory Determination
Regarding the alleged trajectory determination of the server-side
implementation of Estese, Estese does not disclose that its server computer
system 120 would calculate trajectories of vehicles. Estese’s only disclosure
of determining the trajectory of a vehicle cited by the parties is that routine
200 on client computer system 140 determines the trajectory of a vehicle:
“routine 200 is executed on the client computer system 140 . . . [and in] step
206, . . . the directional heading of a vehicle, occupied by the end user, is
determined, e.g., from multiple readings provided by the geo-location
subsystem 132 or an electronic compass.” Ex. 1006 ¶ 16; see also id.,
Fig. 2A, step 206. Estese does not disclose that the software routine running
on its server computer system 120 determines trajectories. Id. ¶¶ 18, 19,
Fig. 2B.
Petitioner, however, argues that the server-side routine disclosed in
Estese is exemplary and nothing in Estese precludes its server from
calculating trajectories with a server-side implementation. Reply 14–15.
Petitioner further argues that Estese’s claims contemplate that either the
IPR2020-00681
Patent 8,948,684 B2
58
client or the server could determine the directional heading of the user. Id.
at 16. Further, Mr. Wechselberger testifies that an ordinarily skilled artisan
“would have understood that exemplary methods for selecting advertising
based on the multiple readings that provide directional heading information
[would] apply to both the client-side and the server-side implementations
based at least on claims 1 and 2 and paragraph [0026] of Estese.” Ex. 1011
¶ 75. We, however, do not find that claims 1 and 2 and paragraph 26 of
Estese support this testimony by Mr. Wechselberger. Claims 1 and 2 of
Estese read as follows:
1. A method for providing customized content to an end
user, comprising the steps of:
determining an identity of an end user;
determining a location of an end user; and
providing content to the end user, wherein the content is
based on the identity and location of the end user.
2. The method of claim 1, wherein the step of determining
the location of the end user includes the steps of:
determining a geographical location of the end user; and
determining a directional heading of the end user.
Although Petitioner correctly argues that claims 1 or 2 do not require
that the client computer system “determin[e] a directional heading of the end
user,” the fact that the claims are not limited to client-side determination
does not mean that those claims teach or render obvious determining a
directional heading with a server-side implementation. Further, having the
server computer determine the directional heading of a user would not by
itself satisfy limitation 1.2. To satisfy that limitation, the server computer
would have to determine the directional heading by receiving recurring
IPR2020-00681
Patent 8,948,684 B2
59
location reports, not by another mechanism, and Petitioner has not shown
that such recurring reports would have been obvious based on the disclosure
of Estese.
Paragraph 26 of Estese reads, in pertinent part: “the embodiments
shown in the drawings and described above are merely for illustrative
purposes and not intended to limit the scope of the invention.” Ex. 1006
¶ 26. The mere fact, however, that Estese’s disclosed embodiments are
illustrative and could be modified to satisfy limitation 1.2 does not establish
disclosure of the modification or a motivation to make that modification.
See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the . . . modifications of prior
art to arrive at the claimed invention.”). Similarly, although Petitioner may
be correct that nothing in Estese discloses that the server computer system
could not calculate trajectories with proper programming, the mere fact that
the server computer system could be implemented to determine trajectories
does not mean that Estese teaches or renders obvious having the server
computer determine those trajectories. Id.
Here, Petitioner provides an insufficient rationale for having the
server computer system determine trajectories, and for that purpose, receive
recurring location reports. Ex. 2002 ¶¶ 79–80. As discussed, Estese
discloses that its client computer system determines the trajectory of a
vehicle. Ex. 1006 ¶ 16. Petitioner does not persuasively explain why an
ordinarily skilled artisan would want to transfer that function to a server
computer with Estese. Further, Estese teaches the desirability of “reducing
the amount of data flow” with server-side insertions. Ex. 1006 ¶ 24.
IPR2020-00681
Patent 8,948,684 B2
60
Petitioner’s proposed modification, having the client computer send repeated
reports to the server computer so the server computer can calculate a
trajectory, would increase, rather than reduce, that data flow, undermining
one of Estese’s objectives. In addition, Estese discloses using an access
point in the server-side implementation to determine the appropriate local
advertisement, rather than actual geographical location or heading to reduce
data flow: “[a] localized advertising pool can be maintained for fixed access
points. In this manner, geographical location may be inferred, when a
mobile node accesses data through a fixed access point. The access point
serves an appropriate local advertisement, thus, reducing the amount of data
flowing across the fixed network.” Ex. 1006 ¶ 24. Here, Petitioner’s
proposed modification would increase data flow sending repeated locations
to the server so the server can do trajectory calculations, rather than using
the access points disclosed by Estese to determine which advertisements to
select. Petitioner has not provided a persuasive reason for making such a
modification.
As indicated, Petitioner also argues that Estese teaches the
determination of the direction of a vehicle by the client computer system is
optional. Although Estese teaches that the client computer system need not
determine the direction of a vehicle (Ex. 1006 ¶ 16 (“step 206 may be
omitted”)), Petitioner has not shown that any disclosure in Estese teaches or
suggests having the server computer system determine the directional
heading when the client computer system does not. Reply 14–15. In other
words, based on the record before us, Estese teaches that one need not
determine a heading—not that the server alternatively would determine it.
Ex. 1006 ¶ 16.
IPR2020-00681
Patent 8,948,684 B2
61
As indicated above, Petitioner also argues that an examiner stated that
Estese’s Internet Radio source determines a trajectory of the mobile device
based at least in part on the GPS coordinates. Reply 14 (citing Ex. 1003, 56).
We are not persuaded by the cited statement. The statement was one of
numerous statements the Examiner made in an office action rejecting
numerous claims. Ex. 1003, 54–63. The statement reads:
With respect to claim 6, ESTESE ET AL. discloses the
Internet radio source (Fig.1), under control of the processor the
Internet radio source determines a trajectory of the mobile device
based at least in part on the GPS coordinates and selects content
for outputting on the mobile device during the program break
based at least in part on the trajectory (Paragraph [0020).
Ex. 1003, 56. Id. at 54–63. The paragraph of Estese cited by the Examiner
(paragraph 20) to support the above statement provides no support for the
proposition that the Internet Radio Source (server computer system 140)
determines the trajectory of the mobile device. In particular, paragraph 20
reads: “Accordingly, as described herein, it should be appreciated that a
location and/or an identity of an end user can be utilized to provide
appropriate advertising content to an end user.” Ex. 1006 ¶ 20. Further,
Petitioner cites no disclosures from Estese to support the Examiner’s
statement. Reply 14. And, as set forth above, Petitioner has not
persuasively shown that any cited paragraphs in Estese support a finding that
the Internet Radio Source (server computer system 120) determines the
trajectory of the mobile device. Pet. 37–38; Reply 13–18. Accordingly, we
do not find the statement by the Examiner cited by Petitioner persuasively
supports Petitioner’s argument.
In sum, Petitioner has neither proven that Estese discloses performing
trajectory determinations on its server computer nor provided a sufficient
IPR2020-00681
Patent 8,948,684 B2
62
rationale to support an argument that an ordinarily skilled artisan would be
motivated to perform trajectory determinations on the server computer in
server-side implementations. Thus, Petitioner has not supported its
contention that Estese teaches or an ordinarily skilled artisan would modify
Estese to send multiple location reports to support trajectory determinations
by the server computer system. Ex. 2002 ¶¶ 79–80.
ii. Basic Operation of the Server-Side Implementation
We also are not persuaded by Petitioner’s argument that the basic
operation of the server-side implementation of Estese satisfies limitation 1.2.
Reply 16, 18. First, Petitioner did not properly raise this argument in the
Petition. Pet. 37–38; see 37 C.F.R. § 42.23(b). The Petition makes no
mention of the basic operation of the server-side implementation as
disclosing or rendering obvious limitation 1.2. Pet. 37–38. Further, even if
we were to allow Petitioner to raise this argument through Mr.
Wechselberger’s accompanying declaration, that declaration provides
insufficient analysis to support such an argument. Ex. 1011 ¶ 75. In
pertinent part, the declaration states:
In describing one implementation that refers to client side
insertion, Estese explicitly recites that the location information is
“periodically” provided to the server so that the server can point
the client to the storage location for the appropriate targeted
advertisement. Ex. 1006, ¶[0023]. But [an ordinarily skilled
artisan] would have understood the information needed for
server-side insertion of advertising would also use periodically
provided location information to “provide appropriate
advertising content to an end user,” even when the end user is not
stationary, e.g., when in a motor vehicle. Ex. 1006, ¶¶[0013],
[0020].
Ex. 1011 ¶ 75.
IPR2020-00681
Patent 8,948,684 B2
63
Mr. Wechselberger, however, does not explain why Estese’s
server-side insertion would use periodically provided location information
and the paragraphs of Estese cited by Mr. Wechselberger to support his
proposition do not set forth such a reason. The cited paragraphs read as
follows:
[0013] The algorithm for selecting an advertisement may be
implemented as a set of filters, which determine a location of an
end user, relative to services in an area and determine a profile
and/or preferences of the end user. In the event that an end user
does not have a preference or profile, a default message or
advertisement may be provided in a given window. It should be
appreciated that the customized content can be based solely on a
profile and/or preferences of the end user or solely on a location
of the end user. It should also be appreciated that a heading of a
motor vehicle may also be utilized in conjunction with the
location of the motor vehicle to determine what advertisement is
provided to the end user. When a user profile/preference is
implemented, such a profile/preference can be used in
combination with the vehicle location to provide customized
content to the end user.
[0020] Accordingly, as described herein, it should be appreciated
that a location and/or an identity of an end user can be utilized to
provide appropriate advertising content to an end user.
Ex. 1006 ¶¶ 13, 20.
Neither paragraphs 13 nor 20 expressly set forth why an ordinarily
skilled artisan would want to periodically provide location information to the
server computer, and Mr. Wechselberger has not set forth any persuasive
reasons why we should read them to implicitly provide such a teaching or
suggestion. Ex. 1011 ¶ 75. Further, Mr. Wechselberger’s conclusory
testimony that an ordinarily skilled artisan would have understood the
information needed for server-side insertion of advertising also would use
IPR2020-00681
Patent 8,948,684 B2
64
periodically provided location information to “provide appropriate
advertising content to an end user” is not persuasive. TQ Delta, LLC v.
Cisco Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“Conclusory expert
testimony is inadequate to support an obviousness determination . . . .”).
iii. Summary
We find that Petitioner has not established that Estese and Duvall
teach or otherwise render obvious limitation 1.2. Thus, we determine
Petitioner has not proven that claim 1 would have been obvious over Estese
and Duvall.
d. Client-Side Implementation and Limitation 1.4
Given Petitioner’s repeated references to the server-side
implementation of Estese for limitation 1.2, Petitioner does not appear to be
relying on the client-side implementation of Estese as teaching or rendering
obvious limitation 1.2. Pet. 38 (“server-side implementations” (emphasis
added)); Reply 14 (“server-side implementation” (emphasis added)); id. at
16 (“Estese’s server . . . during its standard operations of providing users
targeted advertising” (emphasis added)); id. at 17 (“server-side
implementations” (emphasis added)). Nevertheless, Patent Owner’s Sur-
Reply argues that Petitioner belatedly argues in its Reply that the client-side
implementation of Estese teaches or suggests limitation 1.2. Sur-Reply 14.
We do not read the Reply as making that argument. If it had, the argument
would have been untimely. 37 C.F.R. § 42.23(b). Nevertheless, to avoid
any possible confusion regarding whether that argument was made, we
address it, and find that Petitioner’s possible reliance on the client-side
implementation of Estese would not change our determination regarding the
patentability of claim 1 under this ground because combining the client-side
IPR2020-00681
Patent 8,948,684 B2
65
implementation of Estese with Duvall would not satisfy limitations 1.2 and
1.4.
For limitation 1.2, Petitioner’s Reply (at 14) cites paragraph 23 of
Estese, which discloses sending periodic location information for a
client-side implementation: “[w]ith client side insertion, the client
periodically and, on change, provides the server with information, e.g., a
location of an end user.” Ex. 1006 ¶ 23 (emphasis added). This disclosure
arguably describes sending repeated location reports and, thus, could teach
limitation 1.2 in isolation. Claim limitations, however, do not exist in
isolation, and the client-side implementation of Estese would not satisfy
limitation 1.4: “streaming from the Internet radio source to the mobile
device during the advertising break at least one advertisement selected by
the Internet radio source.” With client-side insertion, server computer
system 120 (the Internet radio source) does not stream a selected
advertisement. Ex. 1006 ¶ 23. Instead, client computer system 140 inserts
the selected advertisement. Id. Thus, with client-side insertion, the Internet
radio source (server computer system 120) would not stream to the mobile
device during the advertising break at least one advertisement selected by
the Internet radio source. Therefore, limitation 1.4 would not be satisfied.
Petitioner has not set forth any reason an ordinarily skilled artisan would
have modified Estese to satisfy limitation 1.4 with client-side insertion. Pet.
41–43. Petitioner relies solely on Estese’s server-side implementation for
that limitation. Id.
Thus, any possible reliance by the Petitioner on the client-side
implementation in Estese would not alter our determination that Petitioner
IPR2020-00681
Patent 8,948,684 B2
66
has not proven that claim 1 would have been obvious over Estese and
Duvall.
e. The Parties’ Claim Construction Dispute Regarding the
Term “New Location” Does Not Affect Our Analysis of
Limitation 1.2
As discussed in Section I.E.2 above, the parties dispute whether the
term “new location” encompasses a geographic location that is the same as
the prior geographic location, but was newly resolved by the mobile device.
Neither party, however, has argued or shown how the adoption of either
party’s proposed construction for the term would affect an analysis of
limitation 1.2. PO Resp. 47–53; Reply 13–18; Sur-reply 14–17. We find
that this claim construction dispute does not affect our analysis of this
limitation because Petitioner has not proven that Estese teaches, or that an
ordinarily skilled artisan would have modified Estese to have, the server
computer system (the Internet Radio Source) receive repeated reports of
either new geographic locations or geographic locations that were newly
resolved. Further, nothing in our analysis in Section II.D.2.c depends on the
term “new location” encompassing only new geographic locations. For
instance, Petitioner has not proven that Estese teaches, or that an ordinarily
skilled artisan would modify Estese to have, the server computer system
receive repeated reports of new geographic locations or newly resolved
geographic locations to determine trajectories. See Section II.D.2.c.i.
Similarly, Petitioner has not proven that Estese teaches, or that an ordinarily
skilled artisan would modify Estese to have, the server computer system
receive repeated reports of new geographic locations or newly resolved
geographic locations as part of the basic operation of server-side
implementations. See Section II.D.2.c.ii. Thus, the parties’ dispute
IPR2020-00681
Patent 8,948,684 B2
67
regarding construction of the term “new location” does not affect our
analysis of limitation 1.2.
f. Summary
We determine that Petitioner has not proven that claim 1 would have
been obvious over Estese and Duvall.
4. Claims 2 and 5
Claims 2 and 5 each depend from independent claim 1. For the
limitations that claims 2 and 5 incorporate from claim 1, Petitioner relies on
its showing for claim 1. Pet. 45, 48. Thus, we determine that Petitioner has
not proven that claims 2 and 5 would have been obvious over Estese and
Duvall.
5. Claims 6–9
In light of our determination that claims 6–9 would have been obvious
over Rittmaster and Duvall, we do not need to determine whether Petitioner
has proven that the same claims would have been obvious over Estese and
Duvall.
E. Asserted Obviousness over Estese and Hoshino
Petitioner asserts that claims 1, 2, and 5–9 would have been obvious
over Estese and Hoshino. Pet. 59.
1. Hoshino
Hoshino is directed to an advertisement inserting apparatus for
inserting commercials into time series data, such as moving pictures.
Ex. 1009 ¶ 1. Figure 1 of Hoshino is reproduced below:
IPR2020-00681
Patent 8,948,684 B2
68

Figure 1 above shows content/advertisement providing system 1. Ex. 1009
¶ 39. System 1 includes content server 10, advertisement server 20,
subscriber terminal 30, and advertisement selecting server 40. Id. ¶ 66. A
subscriber can operate subscriber terminal 30 to designate moving pictures
to be provided by content server 10. Id. ¶ 70. Content server 10 can request
advertisements from advertisement server 20 that are selected by
advertisement selecting server 40 to be displayed on subscriber terminal 30.
Id. ¶ 71.
Hoshino discloses selecting advertising content that fits the duration
of the break, using, for example, a constraint expression including
“slotTime” as a selection condition. Ex. 1009 ¶¶ 199–209. slotTime is
defined as the length (time period) of each slot. Id. ¶ 204. Figures 12 and
13 of Hoshino are reproduced below:
IPR2020-00681
Patent 8,948,684 B2
69

Figure 12 above, showing slots 1–3, illustrates typical slot locations with
distributed content. Ex. 1009 ¶ 50. Figure 13 above illustrates how
candidate advertisements (CM2, CM19, CM37, and CM58) are optimally
inserted into slots 1–3 based on slot durations. Id. ¶ 51. As shown in these
figures, a fifteen second advertisement (CM58) is assigned to a fifteen-
second slot (slot 1). Id. Both a fifteen-second advertisement (CM2) and a
thirty-second advertisement (CM19) are assigned to a forty-five-second slot
(slot 2). Id. Finally, a thirty-second advertisement (CM37) is assigned to a
thirty-second slot (slot 3). Id.
2. Claims 1, 2, and 5
For this ground, Petitioner’s showing for claims 1, 2, and 5 mirrors its
showing for the asserted obviousness of these claims over Estese and
Duvall, with one exception. Pet. 59. For limitation 1.4, Petitioner argues
that an ordinarily skilled artisan would have looked to Hoshino (rather than
Duvall) for implementation details on the selection of targeted
IPR2020-00681
Patent 8,948,684 B2
70
advertisements. Id. at 59–61. For limitation 1.2, Petitioner relies on its
showing for Estese and Duvall, and, for limitation 1.4, Petitioner does not
rely on the client-side implementation of Estese. Id. at 60–61. Thus, for the
reasons expressed above regarding Petitioner’s showing for claims 1, 2, and
5 as obvious over Estese and Duvall, we determine that Petitioner has not
shown that claims 1, 2 and 5 would have been obvious over Estese and
Hoshino.
4. Claims 6–9
In light of our determination that claims 6–9 would have been obvious
over Rittmaster and Duvall, we do not need to determine whether Petitioner
has proven that the same claims would have been obvious over Estese and
Hoshino.
F. Asserted Obviousness over Rittmaster, Duvall, and Hoshino
Petitioner argues that claims 1 and 5–9 would have been obvious over
Rittmaster, Duvall, and Hoshino. In light of our determination that these
same claims would have been obvious over Rittmaster and Duvall, we do
not need to determine whether Petitioner has proven that these claims would
have been obvious over Rittmaster, Duvall, and Hoshino.
G. Asserted Obviousness over Estese, Duvall, and Zellner, over
Estese, Hoshino, and Zellner, and over Rittmaster, Duvall,
Hoshino, and Zellner
Petitioner argues that claims 3 and 4 would have been obvious over
Estese, Duvall, and Zellner, over Estese, Hoshino, and Zellner, and over
Rittmaster, Duvall, Hoshino, and Zellner. Pet. 3. We do not need to
determine whether claims 3 and 4 would have been obvious over these
grounds in light of our determination that claims 3 and 4 would have been
obvious over Rittmaster, Duvall, and Zellner.
IPR2020-00681
Patent 8,948,684 B2
71
III. MOTION TO EXCLUDE
Petitioner moved to exclude Exhibit 2004 under various provisions of
the Federal Rules of Evidence. Paper 26, 1. We do not need to decide this
motion, however, because Patent Owner relies on Exhibit 2004 solely for the
asserted grounds based on Rittmaster, Duvall, and Hoshino, and Rittmaster,
Duvall, Hoshino, and Zellner.12 PO Resp. 41–43. As set forth above, we
did not need to substantively address those grounds in this Decision. Thus,
we dismiss Petitioner’s motion to exclude as moot.
IV. CONCLUSION
As set forth in the following table, Petitioner has proven that claims 1
and 5–9 are unpatentable, but has not proven that claim 2 is unpatentable:13
Claims 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 5–9 103 Rittmaster, Duvall 1, 5–9

1, 2, 5–9 103 Estese, Duvall14 1, 2, 5

12 Above, we substantively addressed the ground of asserted obviousness
over Rittmaster and Duvall, but did not substantively address the grounds of
asserted obviousness over Rittmaster, Duvall, and Hoshino and over
Rittmaster, Duvall, Hoshino, and Zellner.
13 Patent Owner argues that “[t]he Board lacks the authority to issue a Final
Written Decision in this proceeding because the Administrative Patent
Judges (‘APJs’) are principal officers of the United States that must be
appointed by the President and confirmed by the Senate.” PO Resp. 56–
58. This issue was decided by the Supreme Court in United States v.
Arthrex, Inc., 141 S.Ct. 1970 (2021).
14 As indicated above, in light of our determinations set forth in this table,
we did not need to determine whether, for each asserted ground, Petitioner
has proven that the asserted ground renders every claim challenged by that
ground unpatentable.
IPR2020-00681
Patent 8,948,684 B2
72
Claims 35 U.S.C. § Reference(s)/ Basis
Claims
Shown
Unpatentable
Claims Not
Shown
Unpatentable
1, 2, 5–9 103 Estese, Hoshino 1, 2, 5
1, 5–9 103
Rittmaster,
Duvall,
Hoshino

3, 4 103
Estese,
Duvall,
Zellner

3, 4 103
Rittmaster,
Duvall,
Zellner
3, 4
3, 4 103
Estese,
Hoshino,
Zellner

3, 4 103
Rittmaster,
Duvall,
Hoshino,
Zellner

Overall Outcome: 1, 3–9 2

V. ORDER
It is:
ORDERED that claims 1 and 3–9 have been shown, by a
preponderance of the evidence, to be unpatentable;15

15 Should Patent Owner wish to pursue amendment of the challenged
claims in a reissue or reexamination proceeding subsequent to the
issuance of this decision, we draw Patent Owner’s attention to the April
2019 Notice Regarding Options for Amendments by Patent Owner
Through Reissue or Reexamination During a Pending AIA Trial
Proceeding. See 84 Fed. Reg. 16,654 (Apr. 22, 2019). If Patent Owner
chooses to file a reissue application or a request for reexamination of
IPR2020-00681
Patent 8,948,684 B2
73
ORDERED that claim 2 has not been shown, by a preponderance of
the evidence, to be unpatentable;
FURTHER ORDERED that Petitioner’s motion to exclude (Paper 26)
is dismissed; and
FURTHER ORDERED that because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

FOR PETITIONER:
Jessica Marks
Jung Hahm
UNIFIED PATENTS
jessica@unifiedpatents.com
jung@unifiedpatents.com

FOR PATENT OWNER:
Barry Bumgardner
Marcus Brakefield
NELSON BUMGARDNER ALBRITTON P.C.
barry@nelbum.com
hill@nbafirm.com

the challenged patent, we remind Patent Owner of its continuing
obligation to notify the Board of any such related matters in updated
mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).