EXHIBIT Y 

Patent Trial and Appeal Board’s Decision Denying 

Institution of IPR2021-00783, concerning U.S. Patent 

10,157,514 

Case 1:20-cv-22945-RNS Document 284-25 Entered on FLSD Docket 04/25/2022 Page 1 of

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Trials@uspto.gov Paper 11

Tel: 571-272-7822 Entered: October 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DECURTIS LLC

Petitioner,

v.

CARNIVAL CORPORATION,

Patent Owner.

IPR2021-00783

Patent 10,157,514 B2

Before THOMAS L. GIANNETTI, NEIL T. POWELL, and 

MICHAEL T. CYGAN, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION

Denying Institution of Inter Partes Review

35 U.S.C. § 314

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I. INTRODUCTION

A. BACKGROUND

DeCurtis LLC (“Petitioner”) filed a Petition for inter partes review of 

claim 11 of U.S. Patent No. 10,157,514 B2 (Ex. 1001, “the ’514 patent”). 

Paper 1 (“Pet.”). Patent Owner, Carnival Corporation, filed a Preliminary 

Response. Paper 7 (“Prelim. Resp.”). Institution of an inter partes review is 

authorized by statute when “the information presented in the petition . . . and 

any response . . . shows that there is a reasonable likelihood that the 

petitioner would prevail with respect to at least 1 of the claims challenged in 

the petition.” 35 U.S.C. § 314(a) (2018). An inter partes review may not be 

instituted on fewer than all claims challenged in the Petition. SAS Inst., Inc. 

v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).

Having considered the Petition and the Preliminary Response, we 

deny institution of inter partes review for the reasons provided below.

B. RELATED PROCEEDINGS

The parties indicate that the ’514 patent is involved in DeCurtis LLC

v. Carnival Corp, Case No. 1:20-cv-22945-RNS (S.D. Fla.). Pet. 3; Paper 5, 

2. Petitioner indicates that two additional patents (US 10,045,184 and 

US 10,049,516) are the subject of petitions for inter partes review 

proceedings. Pet. 3.

C. THE ’514 PATENT

The ’514 patent discloses a guest engagement system that provides 

guest services, including unlocking doors automatically. Ex. 1001, 

code (57). The system employs individual guest devices, which guests 

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carry. Id. The system uses the guest devices to “automatically identify and 

authenticate the guests.” Id. 

The guest engagement system may use “Bluetooth low energy (BLE) 

communications.” Id. at 2:12–24. Each guest device may “emit a periodic 

beacon signal broadcasting a unique identifier of the guest device” using 

BLE. Id. at 2:12–19. The guest engagement system may have a sensor 

network with distributed sensors that detect the guest devices’ beacon 

signals using BLE. Id.at 2:19–24. 

The ’514 patent discloses details in connection with Figure 1A, which 

is reproduced below.

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Figure 1A shows guest engagement system 10, which includes sensor 

network 13, interface devices 17, communication network 19, and servers 

21. Id. at 5:27–28, 6:19–49, 6:66–7:6.

Sensor network 13 includes sensors 15. 6:19–22. Sensors 15 are 

“configured to communicate wirelessly with guests’ medallions 11.” Id. “A 

sensor 15 of the network may be used for sensing a guest’s location (or 

proximity to the sensor 15), for example by detecting beacon signals or other 

signals emitted by the medallion 11.” Id. at 6:21–25. Additionally, 

A sensor 15 may also be located in or otherwise associated with 

a particular interface device 17 or interface function of the 

system, such as a sensor that is associated with a door lock 17a, 

an automatic door or turnstile, a vending terminal 17b, a cash 

register, a slot machine, an interactive display 17c or portal 17d, 

or the like.

Id. at 6:28–33.

Servers 21 are in communication with various components of guest 

engagement system 10. Id. at 6:66–7:4. Communication is provided 

between various components of guest engagement system 10 by “one or 

more communication network[s] 19.” Id. at 7:4–6.

The ’514 patent also explains that

In one example, the guest engagement system 10 includes at least 

one authentication server used to authenticate guests’ medallions 

and provide encryption and decryption services. The system can 

further include one or more servers storing databases of guest 

information (e.g., guest reservations), payment transaction 

servers (e.g., including guest billing information), location 

information (e.g., locations of sensors 15 within the facility, and 

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locations of medallions 11 throughout the facility and elsewhere) 

and the like.

Id. at 7:6–15.

The ’514 patent discusses the functionality of door lock 17a in more 

detail in connection with Figures 7A–7I. Id. at 17:38–41. Figure 7A is 

reproduced below.

Figure 7A shows “an automated door lock assembly 700 that provides the 

functionality of the door lock 17a to automatically unlock a door based on an 

interaction with the guest’s medallion.” Id.

Door lock assembly 700 can serve to selectively unlock the guest’s 

room door, for example, on ship or in a hotel. Id. at 17:41–47. Based on 

wireless communication with guests’ medallion 11 and communication with 

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central reservation server 21, access panel 705 “determines whether or not to 

instruct the door lock module 703 to unlock the door.” Id. at 18:16–28.

In order to communicate with medallion 11, access panel 705 

“maintains its BLE transceiver (or the BLE transceiver of the associated 

sensor 15) activated so as to detect any beacon signals transmitted by 

medallions 11 in proximity to the access panel 705.” Id. at 20:6–11. When 

it receives periodic beacon signals from medallion 11, access panel 705 

starts a door unlocking sequence. Id. at 20:15–19. “[A]ccess panel 705 

initiates a secure connection to medallion 11 across which the access panel 

705 can request the medallion’s unique private identifier.” Id. at 20:24–27. 

After receiving the unique private identifier, access panel ascertains whether 

the unique private identifier is associated with a guest that is allowed access. 

Id. at 20:36–41. If so, access panel 705 presents a welcome message and 

begins door unlocking. Id. at 20:48–53.

In some embodiments, medallion 11 is configured to operate in a 

beacon mode, as well as a bi-directional mode. Id. at 21:41–44. When 

medallion 11 operates in beacon mode, “guest engagement system 10 may 

need to instruct the medallion 11 to switch to the bi-directional mode of 

operation in order to enable the medallion 11 to establish the secure 

communication channel with the access panel 705.” Id. at 21:52–58. In 

some instances, when medallion 11 comes within a certain distance, such as 

100 feet, of a door, “guest engagement system 10 causes one or more 

sensors 15 that are within communication range of the medallion 11 to 

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transmit a wake command to the medallion 11 to cause the medallion 11 to 

switch to the bi-directional mode of operation.” Id. at 22:21–31.

D. ILLUSTRATIVE CLAIM

Claim 11 is reproduced below with bracketed identifying labels 

added.1

11. [11pre] A portable device comprising:

[11[a]] a body having a fully enclosed cavity, the body having 

all dimensions equal to or smaller than 2.5 inches, and the 

body having a thickness equal to or smaller than 5/8 inch;

[11[b]] a processor, a memory, a battery, and first and second 

wireless communication antennas disposed in the cavity,

[11[c]] wherein the first and second wireless communication 

antennas are respectively configured for Bluetooth low 

energy (BLE) and near field communication (NFC) 

communications,

[11[d]] the processor is configured to establish secure 

communication links with remote communication devices 

using the first wireless communication antenna configured 

for BLE communications,

[11[e]] the memory stores both public and private identifiers 

unique to the portable wireless device,

[11[f]] the processor controls the first wireless communication 

antenna to emit a periodic beacon signal broadcasting the 

unique public identifier of the portable wireless device 

using BLE communications, and

[11[g]] the processor controls the first wireless communication 

antenna to transmit the private identifier only across 

secure communication links established with remote 

communication devices using BLE communications.

Ex. 1001, 41:33–58.

 1 We use the same labels that Petitioner applies to the limitations of 

claim 11.

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E. ASSERTED GROUNDS OF UNPATENTABILITY

Petitioner challenges the patentability of claim 11 of the ’514 patent 

on the following grounds (Pet. 6): 

Claim Challenged 35 U.S.C. § References

11 1032 Soleimani3, Yuen4, Hulusi5

11 103 Berg6, Badinski7, Goosen8

11 103 Berg, Badinski, the BLE 

Specification9

11 103 Raina10, Yuen, Hulusi

In support of its unpatentability contentions, Petitioner also relies on 

the Declaration of Kevin Almeroth, Ph.D. Ex. 1012.

 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 

125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16, 

2013. Because the application from which the ’514 patent issued was filed 

after that date, with no benefit claim prior to that date, the AIA version of 

§ 103 applies.

3 U.S. Patent 9,483,887 B1 (issued Nov. 1, 2016) (“Soleimani,” Ex. 1003).

4 U.S. Patent 8,935,119 B2 (issued Jan. 13, 2015) (“Yuen,” Ex. 1004).

5 U.S. Patent Application Publication 2016/0198287 A1 (published July 7, 

2016) (“Hulusi,” Ex. 1005).

6 International Patent Application WO 2016/177668 A1 (published 

November 10, 2016) (“Berg,” Ex. 1006).

7 U.S. Patent Application Publication 2015/0220109 A1 (published Aug. 6, 

2015) (“Badinski,” Ex. 1007).

8 Christian Alexander Goosen, Design and Implementation of a Bluetooth 

4.0 LE Infrastructure for Mobile Devices, Ulm University, Faculty of 

Engineering and Informatics (May 16, 2014) (“Goosen,” Ex. 1010).

9 Specification of the Bluetooth System, Covered Core Package version: 4.0 

(June 20, 2010) (“the BLE Specification,” Ex. 1009).

10 U.S. Patent Application Publication 2016/0055697 A1 (published Feb. 25, 

2016) (“Raina,” Ex. 1008).

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II. ANALYSIS

A. LEVEL OF ORDINARY SKILL IN THE ART

Petitioner contends that

[a] person of ordinary skill in the art (“POSITA”) relating to the 

subject matter of the ʼ514 patent is a person with a Bachelor of 

Science degree in electrical engineering, computer science, or a 

related subject matter, plus at least two years of professional 

experience in the field of computer networks, wireless 

communications, or a similar field.

Pet. 7 (citing Ex. 1012 ¶¶ 39–41). Petitioner elaborates that “more 

experience would compensate for less formal education, and vice versa.” Id. 

Patent Owner has not provided an assessment of the level of ordinary skill in 

the art. To the extent necessary, and for purposes of this Decision, we 

accept the assessment offered by Petitioner as it is supported by the 

Almeroth Declaration and is consistent with the ’514 patent and the asserted 

prior art.

B. CLAIM INTERPRETATION

The Petition explains that “Petitioner and its expert have applied the 

plain and ordinary meaning of all claim terms of the challenged claims.” 

Pet. 8. In its Preliminary Response, Patent Owner does not propose any 

explicit claim constructions. We do not discern a need to construe expressly 

any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 

F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that 

are in controversy, and only to the extent necessary to resolve the 

controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 

868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context 

of an inter partes review).

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C. GROUND 1 – ALLEGED OBVIOUSNESS OVER SOLEIMANI, YUEN,

AND HULUSI

1. Overview of Soleimani

Soleimani relates to methods and systems that allow people to use a 

wireless device to gain access to a secured area or resource. Ex. 1003, 1:7–

10. Figure 2 of Soleimani is reproduced below.

Figure 2 “illustrates an example of utilizing a wireless mobile device to 

obtain access to a secured area or resource via an access control device.” Id.

at 3:27–29.

In particular, Figure 2 shows access control device 210. Id. at 5:44–

45. Access control device 210 includes “secured door 210, RF 

communication unit 214, and electronically actuated lock 216.” Id. at 5:44–

47.

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“In the example illustrated in [Figure] 2, RF communication unit 214 

repeatedly transmits or broadcasts an RF advertisement 220.” Id. at 6:19–

21. RF advertisement 220 may include various information, such as “an 

identifier associated with access control device 210,” various other 

identifiers, and various other indications. Id. at 6:61–7:8.

Figure 2 also shows wireless mobile device 230 carried by user 240. 

Id. at 8:41–43. Wireless mobile device 230 can detect RF advertisement 

220. 7:22–23. Also, wireless mobile device 230 may “obtain a received 

signal strength indicator (RSSI) 260 for the detected RF advertisement 220.” 

Id. at 7:47–50. 

Wireless mobile device 230 may compare RSSI 260 to first signal 

strength threshold 250 shown in Figure 2. Id. at 8:29–31. First signal 

strength threshold “corresponds approximately to a first distance from RF 

communication unit 214 . . . , which is illustrated by a first distance circle 

251.” Id. at 8:30–37. In Figure 2, user 240 is outside first distance circle 

251, and “RSSI 260 is less than first signal strength threshold.” Id. at 8:41–

47.

Soleimani continues the example of Figure 2 in Figure 3. Id. at 

10:22–23. Figure 3 is reproduced below.

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Figure 3 shows user 240 inside of first distance circle 251 and “RSSI 260 is 

greater than first signal strength threshold 250.” Id. at 10:23–26.

“In response to RSSI 260 being equal to or greater than first signal 

strength threshold 250, wireless mobile device 230 or other aspects of access 

control system 100 may perform certain operations.” Id. at 10:38–41. For 

example, “wireless mobile device 230 may provide an indication of its 

proximity to access control device 210 to access control server 110 or RF 

communication unit 230.” Id. at 10:56–60. Other actions may also be 

performed. For example, location information and motion information may 

be considered. Id. at 10:43–54. Wireless mobile device 230 may also “scan 

for RF advertisement messages 222.” Id. at 10:64–11:3.

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Wireless mobile device 230 may also compare RSSI 260 to second 

signal strength threshold 252. Id. at 11:67–12:2. Second signal strength 

threshold “corresponds approximately to a second distance from RF 

communication unit 214, which is illustrated by a second distance circle 253 

in [Figure] 3.” Id. at 12:2–5. As Figure 3 shows, “second distance circle 

253 is closer to RF communication unit 214 than first distance circle 251,” 

and “[s]econd signal strength threshold 252 is greater than first signal 

strength threshold 250.” Id. at 12:5–9. In Figure 3, user 240 is “outside of 

second distance circle 253,” and “RSSI 260 is less than the second signal 

strength threshold [252].” Id. at 12:9–15.

Soleimani continues the examples of Figures 2 and 3 in Figure 4. Id.

at 12:16–17. Figure 4 is reproduced below.

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Figure 4 shows user 240 inside of first distance circle 251 and “RSSI 260 is 

greater than second signal strength threshold 252.” Id. at 12:17–21.

“In response to RSSI 260 being equal to or greater than second signal 

strength threshold 252, wireless mobile device 230 or other aspects of access 

control system 100 may perform certain operations.” Id. at 12:34–37. For 

example, location and/or motion information may be considered. Id. at 

12:39–52. 

Also “[i]n response to RSSI 260 being equal to or greater than second 

signal strength threshold 252, wireless mobile device 230 may transmit 

message 236 to RF communication unit 214.” Id. at 12:53–56. 

Message 236 may include various information, such as identifiers and 

indicators. Id. at 13:6–14. RF communication unit 214 may determine 

whether to grant access based on message 236. Id. at 13:15–57.

When discussing Figures 2–4, Soleimani discloses RF communication 

unit 214 and wireless mobile device 230 swapping messages using BLE. 

Soleimani discloses RF communication unit 214 sending RF advertisement 

messages 220, 222 using BLE. Id. at 6:24–37, 11:38–42. Soleimani also 

discloses that wireless mobile device 230 may transmit message 236 using 

BLE. 12:53–60. Subsequently, Soleimani discloses that “although [Figures] 

2-10 discuss examples in which RF communication unit 210 is configured to 

operate in a BLE GAP Peripheral role and wireless mobile device 230 is 

configured to operate in a BLE GAP Common role, those roles may be 

reversed.” Id. at 17:60–18:7.11

 11 This passage’s references to “RF communication unit 210” appear to be 

typographical errors. Because the other portions of Soleimani most 

frequently refer to “RF communication unit” using reference numeral 214, 

and because no figure appears to show an RF communication unit labeled 

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2. Discussion

In asserting obviousness of claim 11 over Soleimani, Yuen, and 

Hulusi, Petitioner “relies on Solomoni as a primary reference,” while 

“rel[ying] on Yuen for its disclosure of the recited form factor dimensions 

and Hulusi for its disclosure of BLE/NFC antennas pertinent to limitations 

11b-11c.” Pet. 21. Petitioner argues that a person of ordinary skill in the art 

would have been motivated to modify Soleimani’s teachings with those of 

Yuen and Hulusi. Id. at 19–21, 24–25, 29–30.

Patent Owner alleges, among other things, deficiencies in Petitioner’s 

arguments regarding claim 11’s limitations related to storing and 

transmitting identifiers. Prelim. Resp. 15–19. We turn now to a detailed 

discussion of this issue.

a) Claim 11’s Limitations Related to Storing and 

Transmitting Identifiers

Limitation 11[e] recites that “the memory stores both public and 

private identifiers unique to the portable wireless device.” Ex. 1001, 41:49–

50. Limitation 11[f] recites that “the processor controls the first wireless 

communication antenna to emit a periodic beacon signal broadcasting the 

unique public identifier of the portable wireless device using BLE 

communications.” Id. at 41:51–54. Limitation 11[g] recites that “the 

processor controls the first wireless communication antenna to transmit the 

private identifier only across secure communication links established with 

remote communication devices using BLE communications.” Id. at 41:55–

58.

 

with reference numeral 210, we understand this passage as referring to “RF 

communication unit 214,” rather than “RF communication unit 210.”

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(1) Petitioner’s Arguments

Petitioner equates Soleimani’s wireless mobile device 230 with the 

claimed “portable wireless device.” Pet. 21. Petitioner also argues that 

“Soleimani describes a portable wireless device with . . . a memory.” Id. at 

26. Following these arguments, Petitioner addresses the claimed “public . . . 

identifier[]” and then the claimed “private identifier[].” Id. at 32–36.

Petitioner argues that Soleimani’s RF advertisement 220 contains a 

public identifier. Id. at 32–34. Petitioner explains that RF 

advertisement message 220 “includes a UUID (Universally Unique 

Identifier) to uniquely identify RF communication unit 214.” Id. at 32. 

Petitioner adds that “[a person of ordinary skill in the art] would recognize 

that a UUID in the BLE standard is a ‘public identifier’ as claimed by the 

’514 patent.” Id. at 34.

Petitioner also argues that, when Soleimani’s device roles are reversed 

from what Figure 2 shows, a person of ordinary skill in the art would 

recognize that wireless mobile device 230 stores the UUID of RF 

advertisement 220. Id. at 32–34. Petitioner first explains what Soleimani 

shows in Figure 2: transmission of RF advertisement message 220 from RF 

communication unit 214 to wireless mobile device 230. Id. at 32. Then, 

Petitioner cites Soleimani’s disclosure that the device roles may be reversed. 

Id. “[I]n this alternative embodiment, mobile device 230 transmits the RF 

advertisement 220, including transmission of an advertisement with a UUID 

from the portable user device to the access panel,” Petitioner argues. Id. at 

33. In this reversed embodiment, Petitioner contends, “a [person of ordinary 

skill in the art] would understand that the UUID is stored in memory on the 

wireless mobile device 230.” Id. at 34.

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Addressing the claimed “private identifier[],” Petitioner asserts that a 

person of ordinary skill in the art would recognize that Soleimani’s 

message 236 includes a private identifier. Id. at 35. Petitioner argues that 

“Soleimani teaches that when wireless mobile device 230 approaches an 

access control point, the wireless mobile device 230 may transmit an 

encrypted message (236) via BLE.” Id. Petitioner asserts that “[t]he 

transmitted message 236 encodes, for example, ‘an identifier associated with 

wireless mobile device 230’ for encrypted transmission.” Id. 

Accordingly, Petitioner contends that “Soleimani discloses that the 

wireless mobile device 230 is configured to transmit a private identifier 

unique to the device to RF communication unit 214 of the access panel.” Id. 

Petitioner adds that “RF communication unit 214 performs ‘validation of 

message 236, and determine[s] whether access should be granted to the 

secured area or resource controlled by access control device 210.’” Id. at 35. 

Petitioner also states that, “in some implementations,” Soleimani discloses 

“pass[ing] message 236 to access control server 110, which ‘maintain(s) a 

database indicating which users or wireless mobile devices should be 

granted access.’” Id. at 35–36. Petitioner further argues that

[a person of ordinary skill in the art] would recognize that in 

order for the access panel to validate message 236 and determine 

whether to grant access, the mobile device would have to 

communicate an identifier that is unique to the device to the 

access panel so that the identifier could be compared to the door 

access information in the access control server.

Id. at 36. Petitioner then argues that

[i]n view of the above and the discussion regarding the ‘public 

identifier’ portion of limitation 11e, a [person of ordinary skill in 

the art] would view it obvious to store the identifier associated 

with the mobile device 230 of Soleimani in the memory of 

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mobile device 230 to facilitate secure wireless communications 

with numerous external devices as the user of the device travels 

throughout a secure area or building.

Id.

(2) Patent Owner’s Arguments

Patent Owner argues that Petitioner’s arguments do not accurately 

capture the scope of Soleimani’s role-reversal disclosure. Prelim. Resp. 16–

17. Patent Owner asserts that Soleimani’s “role reversal should be 

consistently applied to the BLE roles of the devices.” Id. at 16. Patent 

Owner argues, among other things, that 

Petitioner relies on an encrypted message 236 that the mobile 

device 230 of Soleimani transmits to the access control system 

‘via BLE’ to allegedly satisfy claim requirements that the 

portable device transmits the private identifier. Pet. at 35, 38. 

But because Petitioner relies on Soleimani’s teaching to reverse 

the BLE roles of the devices . . . , the encrypted message 236 

would be received by the mobile device 230 under Petitioner’s 

read. This is the opposite to the claim requirements that the 

portable device stores and transmits a private identifier, which 

Petitioner alleges that the encrypted message 236 shows.

Id. at 16–17.

(3) Analysis

Petitioner fails to address persuasively claim limitation 11[e]’s 

requirement for both public and private identifiers stored in the portable 

device’s memory, along with the requirements of limitations 11[g] and 11[f] 

that the portable device transmit both the public and private identifiers. As 

Petitioner states, Soleimani’s discussion at column 17, line 60 through 

column 18, line 7 discloses an “alternative embodiment” from Soleimani’s 

earlier disclosure in connection with Figures 2–10. Pet. 33 (“[I]n this 

alternative embodiment, mobile device 230 transmits the RF advertisement 

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220, including transmission of an advertisement with a UUID from the 

portable user device to the access panel.”).

Petitioner treats Soleimani’s alternative embodiment as if it reverses 

only the transmission of RF advertisement 220 shown in Figure 2. Relying 

on the alternative embodiment, Petitioner argues that wireless mobile 

device 230 transmits RF advertisement 220 and transmits message 236 for 

validation by RF communication unit 214. Pet. 32–36. Based on its 

argument that wireless mobile device 230 transmits RF advertisement 

message 220, Petitioner argues that a person of ordinary skill in the art 

would recognize that mobile device 230 has a public identifier stored in 

memory. Pet. 34. Based on its argument that wireless mobile device 230 

also transmits message 236 for validation by RF communication unit 214, 

Petitioner argues that “Soleimani discloses that the wireless mobile device 

230 is configured to transmit a private identifier unique to the device to RF 

communication unit 214 of the access panel.” Pet. 35–36. Petitioner adds 

that it would have been obvious to store the private identifier in wireless 

mobile device 230’s memory. Id. at 36.

These arguments fail because Soleimani does not suggest that the 

alternative embodiment reverses only the transmission of RF 

advertisement 220. Instead, Soleimani’s discussion of the alternative 

embodiment discloses reversing the devices’ roles compared to the examples 

of “FIGS. 2-10.” Ex. 1001, 17:60–18:7. Thus, in addition to reversing the 

device roles shown in Figure 2, Soleimani’s alternative embodiment reverses 

the roles shown in Figures 3–10. In the unreversed roles of Figures 2–10, 

RF communication unit 214 transmits RF advertisement 220 to wireless 

mobile device 230 (Figure 2), after which wireless mobile device 230 

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transmits message 236 to RF communication unit 214 (Figure 4). E.g., 

Ex. 1003, 6:19–21, 7:22–23, 12:53–58, Figs. 2, 4. Accordingly, in 

Soleimani’s alternative embodiment, wireless mobile device 230 transmits 

RF advertisement message 220 to RF communication unit 214, after which 

RF communication unit 214 transmits message 236 to wireless mobile 

device 230. In both the unreversed and reversed embodiments, RF 

communication unit 214 and wireless mobile device 230 swap RF 

advertisement message 220 and message 236, such that neither device sends 

both messages.

Petitioner does not acknowledge this, much less provide a persuasive 

reason that a person of ordinary skill in the art would have deviated from 

these embodiments. Nor does Petitioner argue or show that there would 

have been a reasonable expectation of success for deviating from 

Soleimani’s message swapping. Failing to support its position that 

Soleimani discloses wireless mobile device 230 sending both RF 

advertisement message 220 with a public identifier and message 236 with a 

private identifier, Petitioner does not provide a persuasive basis for its 

argument that it would have been obvious to store both public and private 

identifiers in mobile device 230’s memory. Accordingly, Petitioner fails to 

demonstrate a reasonable likelihood of prevailing on Ground 1.

D. GROUND 2 – ALLEGED OBVIOUSNESS OVER BERG, BADINSKI,

AND GOOSEN

1. Overview of Berg

Berg discloses an access control system that determines whether a 

person is entering or exiting a protected resource based on information 

gleaned from one or more mobile devices used by the person. Ex. 1006 

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¶ 10. Berg shows an access control system in Figure 1, which is reproduced 

below.

Figure 1 shows access control system 100 for authenticating user 102. Id.

¶ 70.

Access control system 100 includes “at least one reading device 112, 

at least one wearable device 104, and at least one portable/mobile device 

108.” Id. Reading device 112 may communicate with wearable device 104 

and/or mobile device 108 via wireless connections, including BLE 

connections. Id. ¶ 71. Reading device 112 may “request access control 

information from the wearable device 104 and/or the mobile device 108. 

This access control information may be used to validate the wearable device 

104 and/or the mobile device 108 to the reading device.” Id. ¶ 74. Then,

In one embodiment, upon validating credential information 

stored on the wearable device 104, the reading device 112 

generates signals facilitating execution of the results of 

interrogating the wearable device 104 and/or the mobile device 

108 (e.g., engages/disengages a locking mechanism, 

allows/disallows movement of a monitored article, temporarily 

disables itself, activates an alarm system, provides access to a 

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computer system, provides access to a particular document, and 

the like). As provided above, the access server 120 may generate 

such signals.

Id. ¶ 75.

Access control system 100 can determine whether a person has 

entered or exited an area based on information related to the person’s mobile 

devices. Id. ¶ 102. For example, “[i]n embodiments, . . . access control 

system 100 makes an ingress or egress determination based at least in part 

on information about the distance between two mobile devices on the person 

of the individual or user.” Id. This may involve analyzing how the distance 

between a user’s smartphone and a wearable on the user’s wrist varies as the 

user “walks up to (and away from) a door.” Id.

2. Discussion

In asserting obviousness of claim 11 over Berg, Badinski, and 

Goosen, Petitioner “relies on Berg as a primary reference,” while “rel[ying] 

on Badinski to provide the recited form factor described in limitation 11a 

and Goosen to provide the periodic beacon signal described in limitation 

11f.” Pet. 38. Petitioner argues that it would have been obvious to a person 

of ordinary skill in the art to modify Berg’s teachings with certain teachings 

of Badinski and Goosen. Id. at 19–21, 44–45, 51–53. Patent Owner argues 

that Petitioner does not demonstrate a motivation to combine Goosen’s 

teachings with Berg’s or that combining the references’ teachings would 

produce the portable device of claim 11. Prelim. Resp. 23–25. We turn now 

to a detailed discussion of these issues.

a) Petitioner’s Arguments

Before addressing any specific limitation of claim 11 or any specific 

modification of Berg based on Goosen, the Petition argues that “[a person of 

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ordinary skill in the art] would have been motivated to modify the primary 

references according to the teachings of the secondary references for several 

reasons common to all grounds.” Pet. 19. Petitioner explains that “[t]he 

Cited References are in the same field of endeavor as the ’514 patent—

portable wireless devices using the BLE communication protocol.” Id. 

Petitioner adds that “[t]he Cited References also use similar techniques to 

solve the same problems as the ’514 patent.” Id. at 20.

Subsequently, the Petition cites Goosen when addressing limitation 

11[f]. Id. at 51–53. Limitation 11[f] recites “the processor controls the first 

wireless communication antenna to emit a periodic beacon signal 

broadcasting the unique public identifier of the portable wireless device 

using BLE communications.” Ex. 1001, 41:51–54. Petitioner notes that 

“Berg does not expressly disclose that the wearable device emits a periodic 

beacon signal broadcasting the unique public identifier.” Pet. 51. 

Petitioner argues that “this feature would be obvious in view of the 

teachings of Goosen.” Id. Petitioner explains that “Goosen describes a 

small, stationary device called a ‘Beacon’ that uses BLE to periodically 

transmit advertisement packages for applications at expositions and 

conferences.” Id. Petitioner notes that the transmitted advertisement 

includes a UUID linked to the beacon. Id. A smart phone near the beacon 

may receive the advertisement and its UUID, which allows the smartphone 

to identify the beacon and supply a server with location sensitive 

information, Petitioner explains. Id. at 52. Petitioner asserts that Goosen 

describes this as a “very simple,” logical use of BLE technology. Id.

Petitioner argues that “while the aforementioned disclosures of 

Goosen teach the use of stationary beacons transmitting UUIDs, Goosen 

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further describes that the roles of the mobile device and Beacon can be 

reversed, such that the smartphone transmits advertising messages and the 

Beacon scans for messages.” Id. Petitioner explains that Goosen teaches 

this idea “‘can lead to some very interesting applications’ in which ‘the 

system [can] replace smartphones with something smaller, more efficient, 

like bracelets, or build[] BLE capabilities into watches.’” Id. Petitioner 

further argues that this idea would “dovetail with Berg’s teachings regarding 

compact mobile devices that transmit unique identifiers for purposes of 

authentication with, for example, secured doors.” Id. at 53. Petitioner adds 

that “Goosen, in fact, teaches the use of ‘[w]earable advertisers’ in a ‘smart 

home’ environment to perform applications, such as unlocking doors.” Id. 

Petitioner concludes that

a [person of ordinary skill in the art] would consider it obvious 

to use a BLE antenna to emit a periodic beacon signal 

broadcasting a unique public identifier of a portable wireless 

device to facilitate wireless communications with external 

devices while making efficient use of battery power. Ex-1012 at 

¶116; Ex-1010 at 1, 41 (highlighting the battery advantages of 

BLE). A POSITA would further recognize the advantage of 

using BLE advertising broadcasts because of its low power usage 

and the resulting ability to use a smaller and more portable 

wireless device. Ex-1012 at ¶116; Ex-1010 at 43.

Id.

b) Patent Owner’s Arguments

Patent Owner argues that Petitioner does not demonstrate that a 

person of ordinary skill in the art would have been motivated to modify 

Berg’s teachings based on Goosen’s. Prelim. Resp. 23–25. Patent Owner 

contends that many of Petitioner’s arguments about Berg and Goosen “say 

no more than that a [person of ordinary skill in the art] ‘would have 

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understood that they could be combined,” which “is not enough.” Id. at 24 

(citing Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993 (Fed Cir. 

2017)). Additionally, Patent Owner disputes Petitioner’s suggestion that a 

person of ordinary skill in the art would have been motivated to add 

Goosen’s advertising transmissions to Berg’s portable devices for reduced 

power usage. Id. at 24–25. Patent Owner explains that

If Berg does not teach, and therefore can operate without, 

emitting a periodic beacon signal, modifying Berg to do so 

increases power consumption. Thus, if making efficient use of 

battery power is desirable as Petitioner alleges, a POSITA would 

have been motivated to not add to Berg’s working device a 

feature that consumes more power.

Id.

Patent Owner also argues that combining Goosen’s disclosure of 

mobile devices transmitting periodic advertisements with Berg’s disclosure 

would not result in the portable device of claim 11. Id. at 25. Patent Owner 

explains that “Goosen’s beacon refers to a ‘very simple’ Bluetooth device” 

that “does little else than to periodically advertise themselves with small 31 

byte data packages.” Id. (quoting Ex. 1010, 9 (emphasis in Preliminary 

Response)). Patent Owner adds that “[c]onsistent with the beacon’s very 

limited capability, when the roles of beacons and smartphone (the portable 

device) are reversed, ‘nothing happens on the smartphone, since it is only 

advertising itself to the scanning beacons.’” Id. (quoting Ex. 1010, 37). 

According to Patent Owner, “[t]his teaches away from the claimed portable 

wireless device, which is configured to, among others, establish secure 

communication links and transmit the private identifier only across secure 

communication links.” Id. 

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c) Analysis

Petitioner’s arguments about combining Berg and Goosen do not 

provide persuasive support for its obviousness conclusion. Petitioner takes 

an illogical position by arguing that (1) Berg does not teach sending periodic 

advertisements and (2) a person of ordinary skill in the art would modify 

Berg by adding Goosen’s periodic advertisements for reasons related to 

reduced power usage and enabling small portable devices. Pet. 51, 53. As 

Patent Owner reasons, modifying Berg to send more signals (advertising 

signals that it does not already send) would apparently use more, not less, 

power. Additionally, Berg already discloses using small portable devices, 

such as “watches, rings, . . . jewelry, . . . buttons, necklaces, . . . pins . . . 

and/or any other wearable item.” Ex. 1006 ¶ 12. Accordingly, logic does 

not support Petitioner’s suggestion that a person of ordinary skill in would 

have added Goosen’s periodic advertisement signal to Berg’s system to 

conserve power and enable use of small portable devices. To the extent 

there exists some way to reconcile Petitioner’s position with logic, Petitioner 

does not do so.

Aside from the arguments tied to power consumption, Petitioner’s 

other arguments about combining the references also fail to provide a 

persuasive reason that a person of ordinary skill in the art would have 

combined the references. These other unavailing arguments include 

Petitioner’s allegations of similarity between the references and Petitioner’s 

contention that the references “dovetail” with one another. We agree with

Patent Owner that these arguments, at most, might demonstrate that a person 

of ordinary skill in the art could have combined the references’ disclosures, 

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which does not support a conclusion of obviousness. Pers. Web Techs., 848 

F.3d at 993.

Moreover, Petitioner does not explain persuasively how a 

combination of Berg and Goosen would be consistent with claim 11’s 

limitations. As Patent Owner notes, in Goosen’s approach for using a 

portable device to transmit a periodic advertisement, the portable device 

“nothing happens on the [portable device], since it is only advertising itself 

to the scanning beacons.” Ex. 1010, 37. This does not match claim 11’s 

requirement that the portable device must both “emit a periodic beacon 

signal broadcasting the unique portable wireless device using BLE 

communications” and “transmit the private identifier only across secure 

communication links established with remote communication devices using 

BLE communications.” Ex. 1001, 41:51–58. In sum, Petitioner does not 

provide rational underpinning for its conclusion of obviousness. 

Accordingly, Petitioner does not demonstrate a reasonable likelihood of 

prevailing on Ground 2.

E. GROUND 3 – ALLEGED OBVIOUSNESS OVER BERG, BADINSKI,

AND THE BLE SPECIFICATION

1. Discussion

In asserting obviousness of claim 11 over Berg, Badinski, and the 

BLE Specification, Petitioner “relies on Berg and Badinski as in Ground 2,” 

while “rel[ying] on the BLE Specification for its disclosure regarding the 

periodic beacon signal described in limitation 11f.” Pet. 38. Petitioner 

argues that it would have been obvious to a person of ordinary skill in the art 

to modify Berg’s teachings with certain teachings of Badinski and the BLE 

Specification. Id. at 19–21, 44–45, 57–58. Patent Owner argues that 

Petitioner does not demonstrate a motivation to combine the BLE 

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Specification’s teachings with Berg’s. Prelim. Resp. 25–28. We turn now

to a detailed discussion of that issue.

a) Petitioner’s Arguments

Before addressing any specific limitation of claim 11 or any specific 

modification of Berg based on the BLE Specification, the Petition argues 

that “[a person of ordinary skill in the art] would have been motivated to 

modify the primary references according to the teachings of the secondary 

references for several reasons common to all grounds.” Pet. 19. Petitioner 

explains that “[t]he Cited References are in the same field of endeavor as the 

’514 patent—portable wireless devices using the BLE communication 

protocol.” Id. Petitioner adds that “[t]he Cited References also use similar 

techniques to solve the same problems as the ’514 patent.” Id. at 20.

Subsequently, the Petition cites Berg when addressing 

limitation 11[f]. Id. at 55–58. Limitation 11[f] recites “the processor 

controls the first wireless communication antenna to emit a periodic beacon 

signal broadcasting the unique public identifier of the portable wireless 

device using BLE communications.” Ex. 1001, 41:51–54. Petitioner notes 

that “Berg does not expressly disclose that the wearable device emits a 

periodic beacon signal broadcasting the unique public identifier.” Pet. 55.

Petitioner argues that “this feature would be obvious in view of the 

teachings in the BLE Specification.” Id. Petitioner argues that the BLE 

Specification discloses using a “public device address” to uniquely identify a 

wireless device to proximate devices during a BLE advertising event. Id. 

Petitioner adds that “[t]he BLE Specification also discloses that a mobile 

device can use BLE to broadcast the public device address by emitting a 

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periodic beacon signal on an advertising event interval (including fixedlength ‘advInterval’ and pseudorandom-length ‘advDelay’).” Id.

Given Berg’s disclosure of using BLE with a wearable device, 

Petitioner argues that a person of ordinary skill in the art would have been 

motivated “to review and incorporate portions of the BLE Specification.” 

Id. at 57. Petitioner also argues that a person of ordinary skill in the art 

would recognize that the BLE Specification’s disclosure of periodically 

transmitting a public device address with a BLE beacon “dovetails with 

Berg’s teachings regarding compact mobile devices that use BLE to transmit 

unique identifiers for purposes of authentication with, for example, secured 

doors.” Id. Petitioner also contends that 

in view of the disclosures of Berg and the BLE Specification, a 

[person of ordinary skill in the art] would recognize as wellknown and obvious at the time of invention to use a BLE antenna 

to emit a periodic beacon signal broadcasting a unique public 

identifier of a portable wireless device to facilitate wireless 

communications with external devices while making efficient 

use of battery power. Ex-1012 at ¶125. A [person of ordinary 

skill in the art] would further recognize the advantage of using 

BLE advertising broadcasts because of its low power usage and 

the resulting ability to use a smaller and more portable wireless 

device. Id.

Id. at 57–58. Petitioner adds that

design objectives such as advances in access control technology, 

including device and communication protocols that evolve to 

offer more security, portability, and interoperability, like BLE as 

demonstrated by its codification as a wireless specification, 

would have favored combining Berg and the BLE Specification 

and would have motivated a POSITA to combine these 

references to achieve improvements and in battery efficiency and 

wireless interactions with access and payment portals.

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Id. at 58. Petitioner also argues that a person of ordinary skill in the 

art would have had a reasonable expectation of success. Id.

b) Patent Owner’s Arguments

Noting that Petitioner uses some of the same motivation arguments 

from Ground 2 in Ground 3, Patent Owner argues they equally fail to 

support Ground 3. Prelim. Resp. 25–26. As with Ground 2, Patent Owner 

argues that Petitioner relies heavily on arguments that, at most, might 

demonstrate that a person of ordinary skill in the art could have combined 

the references’ teachings, “not that a [person of ordinary skill in the art] 

would have been motivated to combine them.” Id. at 26. Patent Owner also 

reiterates that Petitioner’s suggestion that it would have been obvious to 

conserve power by adding a periodic advertisement to Berg’s mobile device 

“does not even make sense.” Id.

Patent Owner also disputes Petitioner’s argument that “advances in 

access control technology” would have motivated the proposed combination. 

Id. at 27. Among other things, Patent Owner explains that

the alleged advances include the evolution of communication 

protocols “to offer more security, portability, and 

interoperability.” [Pet. 58.] But adding a periodic beacon 

broadcast to Berg’s disclosures does not serve any security 

purpose, does not make the devices smaller or more portable, and 

requires the same modification to both transmitting and receiving 

devices and is thus at best neutral with respect to interoperability. 

Petitioner does not explain why doing so would increase any of 

these characteristics.

Id.

c) Analysis

Petitioner does not show sufficiently that a person of ordinary skill in 

the art would have been motivated in view of the BLE Specification to 

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modify Berg’s portable device to emit a periodic beacon signal. As 

discussed above in Section II.D.4.c, we find unpersuasive Petitioner’s vague, 

illogical suggestion that a person of ordinary skill in the art would have been 

motivated to add a periodic beacon signal to Berg’s portable device in order 

to conserve power and enable a small device. Pet. 57–58. Also, as with 

Ground 2, Petitioner relies heavily on arguments that might show the 

references’ teachings could have been combined, but do not explain why a 

person of ordinary skill in the art would have combined the references. 

These unavailing arguments include Petitioner’s assertions of similarities 

between the references and Petitioner allegation that the references’ 

teachings “dovetail[].” Id. at 19–21, 57–58.

Petitioner’s arguments about “design objectives such as advances in 

access control technology” also fail to show sufficiently that a person of 

ordinary skill in the art would have been motivated to modify Berg’s 

teachings in the proposed manner. Id. at 58. Petitioner references specific 

improvements that evolving protocols allegedly could provide, including 

“more security, portability, and interoperability.” Id. As Patent Owner 

argues, however, Petitioner does not explain persuasively how any of those 

potential improvements would result from the combination Petitioner 

proposes. Pet. 58; Prelim. Resp. 27–28.

Even if we assumed some general motivation existed for combining 

some of the references’ teachings, Petitioner does not demonstrate 

sufficiently that a person of ordinary skill in the art would have had a reason 

for specifically modifying Berg’s portable device to emit period beacon 

signals. Relevant to this specific modification, Petitioner and Dr. Almeroth 

state that “the BLE Specification also discloses that a mobile device can use 

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BLE to broadcast the public device address by emitting a periodic beacon 

signal on an advertising event interval.” Pet. 56 (citing Ex. 1009, 2223); Ex. 

1012 ¶ 124 (citing Ex. 1009, 2223). 

Petitioner and Dr. Almeroth do not support this assertion with 

persuasive evidence. They cite the BLE Specification’s disclosure at 

page 2223. Id. Page 2223 of the BLE Specification discloses how certain 

aspects of “advertising events” occur. Ex. 1009, 2223. But page 2223 of the 

BLE Specification does not disclose “a mobile device,” much less emitting a 

periodic beacon signal from “a mobile device.” Id. In spite of this, 

Petitioner and Dr. Almeroth simply state that it does, providing no 

persuasive explanation for their characterization of the cited passage. 

Pet. 56 (citing Ex. 1009, 2223); Ex. 1012 ¶ 124 (citing Ex. 1009, 2223).

Moreover, even if we agreed with Petitioner that the BLE 

Specification discloses “a mobile device . . . can . . . emit[] a periodic beacon 

signal,” Petitioner does not show why a person of ordinary skill in the art 

would have modified Berg’s portable device to do so. In sum, Petitioner has 

not provided sufficient rational underpinning for its conclusion of 

obviousness. Accordingly, Petitioner has not demonstrated a reasonable 

likelihood of prevailing on Ground 3.

F. GROUND 4 – ALLEGED OBVIOUSNESS OVER RAINA, YUEN, AND 

HULUSI

a) Overview of Raina

Raina discloses “a secure short-distance-based communication and 

access control system.” Ex. 1008 ¶ 18. Raina shows one such system in 

Figure 1, which is reproduced below.

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Figure 1 shows access control system 100 used for restricted area 101 at 

access control area 102. Id. ¶ 20. 

Access control area 102 may include sub-locations. Id. For example, 

access control area 102 may have multiple lanes 110 in which validation 

occurs. Id. Figure 1 shows lanes 110 may include lanes 110a and 110b.

System 100 includes mobile devices 130, beacons 140, and zone 

computers 110. Id. ¶ 22. “[M]obile devices 130 may include mobile 

devices 130a and 130b shown for users 131a and 131b respectively to gain 

entry to the restricted area 101.” Id. Additionally, 

mobile devices 130 may be any computer that a user may carry 

and that can run applications including the access control 

applications 132. Examples of the mobile devices 130 include 

mobile phones, tablets, wearable computers, such as GOOGLE 

glass or smart devices embedded into clothing, a smart watch, 

fitness tracker, or wireless enabled shoes, or some other type of

mobile computer.

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Id. ¶ 24.

“Beacons 140 are hardware that can broadcast beacon signals.” Id.

¶ 23. For instance, “beacons 140 may be Bluetooth, Bluetooth Low Energy, 

or near-field communication beacons, or Wi-Fi.” Id.

“[Z]one computers 150 validate the users 131 through their mobile 

devices 130.” Id. ¶ 25. For instance, a zone computer may serve to 

communicate with a mobile device to accept a fare payment. Id.

Raina provides a detailed discussion of system 100’s operation in 

connection with Figure 5, which is reproduced below.

Figure 5 shows details of a method that the access control system performs. 

Id. ¶¶ 9–10.

The method begins with “beacons 140a-d periodically broadcast[ing] 

their unique IDs” and mobile device 130a receiving the broadcasts in step A. 

Id. ¶ 46. Then, in step B, if mobile device 130a’s access control application 

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132a is not running already, and if mobile device 130a recognizes the 

received unique IDs, access control application 132a launches. Id. In 

step C, detection mode is used to determine whether mobile device 130a is 

in a lane. Id. If so, in step D, information from the beacons is used in 

activation mode to calculate a unique ID or IDs. Id.

In step E, “a message with the unique ID or IDs may be broadcasted 

or sent to a local Zone computer, e.g., Zone computer 150a, at step E. For 

example, a mobile device unique ID, which includes the calculated unique 

ID or IDs, is broadcasted by the mobile device 130a.” Id.

In step F, “zone computer 150a receives the broadcasted message with 

the mobile device unique ID from the mobile device 130a assuming it is 

within range.” Id. ¶ 47. Also, “zone computer 150a validates that the 

broadcasted message contains the unique ID or IDs related to the sublocation and determines whether the mobile device 130a is within the area of 

validation of the zone computer 150a.” Id.

In step G, if mobile device 130a is within the area of validation, “zone 

computer 150a initiates communication with the mobile device 130a using 

the unique ID or IDs as a reference.” Id. ¶ 48. For instance, zone computer 

150a may send mobile device 130a an acknowledgement message apprising 

mobile device 130a that zone computer 150a is prepared to commence 

validation. Id.

Step H involves mutual authentication. Id. ¶ 49. Raina explains that 

“[t]he mobile device 130a and the Zone computer 150a may exchange 

messages for authentication to establish identities of both sides. The mutual 

authentication might result in a generation of a key or set of keys that are 

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then used for further encryption, decryption, enciphering, deciphering, etc.” 

Id.

Following authentication, in step I, “zone computer 150a determines 

whether the mobile device 130a or its user 131a is validated. Validation 

may include exchanging messages with a backend server not shown and/or 

the mobile device 130a to get the information needed to perform validation.” 

Id. ¶ 50. Raina adds that

validation may vary depending on whether information for 

validation is stored locally or stored in a backend server. For 

example, for a “stored value' system, information for validation 

is stored locally on the mobile device in a secure manner. For 

example, information, such as user profile, balance amount, 

passes and concession information are stored securely on the 

mobile device. In a “credential systems, the information is stored 

on a backend server (e.g., the cloud), and the mobile device only 

stores credentials, such as user account number, and the 

information is retrieved from the backend server in real time for 

completing validation or enforcement of transactions.

Id. ¶ 52.

After step I, “validation results are returned to the mobile device 

130a” in step J. Id. ¶ 50. Then, in step K, if user 131a is validated, zone 

computer 150a transmits a signal to open the gate for lane 110a. Id.

b) Discussion

In asserting obviousness of claim 11 over Raina, Yuen, and Hulusi, 

Petitioner relies on Raina as a primary reference, while “rel[ying] on Yuen 

to provide the recited form factor and Hulusi to disclose the recited 

antennas.” Pet. 58–59. Petitioner argues that a person of ordinary skill in 

the art would have been motivated to modify Raina’s teachings with those of 

Yuen and Hulusi. Id. at 19–21, 61–62, 64–66.

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Patent Owner alleges, among other things, deficiencies in Petitioner’s 

arguments regarding limitation 11[e]. Prelim. Resp. 28–30. In particular, 

Patent Owner disputes whether Petitioner addresses persuasively limitation 

11[e]’s requirement that “the memory stores . . . [a] private identifier[] 

unique to the portable wireless device.” Ex. 1001, 41:49–50 (emphasis 

added); Prelim. Resp. 28–30. We turn now to a detailed discussion of that 

issue.

(1) Petitioner’s Arguments

Petitioner argues that Raina’s “‘information for validation’ is the 

private identifier as claimed.” Pet. 70. Petitioner explains that “[t]his 

information can include information such as ‘user profile, balance amount, 

passes and concession information.” Id. Regarding limitation 11[e]’s 

requirement that the private identifier is “unique to the portable wireless 

device,” Petitioner argues that

[a person of ordinary skill in the art] would recognize that 

because the information for validation is used to grant access and 

deduct a fare from a specific user’s account, and because the 

information is used to “establish[] the identity” of the mobile 

device (Ex-1008 at ¶[0054], the information must uniquely 

identify the device. Ex-1012 at ¶155. Accordingly, this 

information for validation is a “private identifier” unique to 

mobile device 130. Id.

Pet. 71.

(2) Patent Owner’s Arguments

Patent Owner argues that Raina’s validation information is not 

“unique to the portable device,” as required by limitation 11[e]. Prelim.

Resp. 28–30. Instead, Patent Owner argues, “the information and 

credentials disclosed in Raina are associated with the user — e.g., user 

profile, user account number, user ID — rather than the portable device.” 

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Id. at 29. Patent Owner contends that “Raina distinguishes the user from the 

mobile device.” Id. Citing Raina’s disclosure of many different types of 

computers that “mobile devices 130 may be,” Patent Owner argues that a 

given user would often have more than one such device. Id. at 30. Patent

Owner asserts that “[e]ach device would store the user’s profile or account 

information as credentials, and thus all of the user’s devices would have the 

same user identifier.” Id. Patent Owner also argues that, in many instances, 

information used for access “is not unique and does not constitute an 

identifier.” Id. Patent Owner explains that, “[f]or example, many users to 

an event may have the same concession information, rendering it 

nonunique.” Id.

(3) Analysis

Petitioner does not address sufficiently limitation 11[e]’s requirement 

for a “private . . . identifier[] unique to the portable wireless device.” 

Ex. 1001, 41:49–50 (emphasis added). To the extent Petitioner shows 

sufficiently that Raina teaches a private identifier, Petitioner does not show 

sufficiently that this private identifier is unique to the portable device. After 

asserting that Raina’s “‘information for validation’ is the private identifier as 

claimed” (Pet. 70), Petitioner advances two reasons that this information 

“must uniquely identify the device” (id. at 71).

First, Petitioner argues that “the information for validation is used to 

grant access and deduct a fare from a specific user’s account.” Id. At most,

this argument might show that the validation information is unique to the 

user whose account must be charged. It does not show that the information 

for validation must uniquely identify the portable device, or even be

uniquely stored on the portable device. Petitioner does not allege, much less 

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show, that Raina teaches limiting storage of a user’s information for 

validation to one portable device. As Patent Owner notes, Raina discloses 

that 

mobile devices 130 may be any computer that a user may carry 

and that can run applications including the access control 

applications 132. Examples of the mobile devices 130 include 

mobile phones, tablets, wearable computers, such as GOOGLE 

glass or smart devices embedded into clothing, a smart watch, 

fitness tracker, or wireless enabled shoes, or some other type of 

mobile computer.

Ex. 1008 ¶ 24. In view of Raina’s disclosure of many portable devices the 

user may employ, Petitioner’s argument about validating a specific user does

not show that the information for validation uniquely identifies the portable 

device.

The second reason Petitioner contends “the information must uniquely 

identify the device” is “because the information is used to ‘establish[] the 

identity’ of the mobile device.” Pet. 71. This argument Petitioner partially 

quotes and partially interprets Raina’s disclosure in paragraph 54, which 

states that

[t]he information related to user’s account may be stored inside 

a secure storage area inside the mobile device (like a secure 

element, a secure element micro secure digital card, a universal 

integrated circuit card, a secure area within the application 

processor, etc.). This may involve an additional authentication 

performed between the zone computer and the secure storage, 

establishing the identity of both sides, resulting which the 

information is shared by the secure storage with the zone 

computer via the validator mobile application.

Ex. 1008 ¶ 54. 

Petitioner does not show persuasively that Raina discloses its 

information for validation “is used to ‘establish[] the identity’ of the mobile 

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device.” Pet. 71. Instead, Raina discloses “an additional authentication 

performed between the zone computer and the secure storage, establishing 

the identity of both sides.” Ex. 1008 ¶ 54. This indicates that the 

“additional authentication,” not information for validation, “establish[es] the 

identity of both sides.” 

To the extent Petitioner believes that the “additional authentication”

uses information for validation when establishing identity, Petitioner does 

not provide a persuasive basis for such a position. Indeed, Raina discloses 

that “authentication” and “validation” refer to different processes, and 

Petitioner acknowledges this. For example, Petitioner explains that 

[a]fter the broadcasted “unique ID” of the mobile device is used 

to perform the authentication Steps C-E depicted in Figure 5, 

Raina discloses a validation Step I, in which “information for 

validation” is transmitted from local storage on the mobile device 

to the zone computer over an encrypted link for validation.

Pet. 70. Given that “authentication” differs from “validation,” there is no 

apparent reason for Petitioner to believe that the “additional authentication” 

discussed in Raina’s paragraph 54 would use “information for validation.” 

Although paragraph 54 does not indicate what information is used in the 

“additional authentication,” Petitioner does not provide a persuasive reason 

that it would include “information for validation.”

In sum, neither of Petitioner’s two reasons support its contention that 

the alleged private identifier of Raina, the “information for validation,” 

“must uniquely identify the device.” Accordingly, Petitioner does not 

demonstrate a reasonable likelihood of prevailing on Ground 4.

III. CONCLUSION

For the foregoing reasons, we determine that the information 

presented in the record does not establish there is a reasonable likelihood 

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that Petitioner would prevail with respect to at least one challenged claim of 

the patent ’514 patent. Accordingly, we do not institute an inter partes

review of claim 11.

IV. ORDER

For the reasons given, it is:

ORDERED that the Petition is denied; and

FURTHER ORDERED that no inter partes review is instituted.

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PETITIONER:

James Glass

jimglass@quinnemanuel.com

Richard Lowry

richardlwry@quinnemanuel.com

PATENT OWNER:

Christopher Higgins

0chptabdocket@orrick.com

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