NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

TARGET CORPORATION,

Appellant

v.

PROXICOM WIRELESS, LLC,

Cross-Appellant

______________________ 

2022-1282, 2022-1283, 2022-1338, 2022-1339

______________________ 

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2020-

00931, IPR2020-00933.

______________________ 

Decided: September 20, 2023

______________________ 

JAMES LAWRENCE DAVIS, JR., Ropes & Gray LLP, East 

Palo Alto, CA, argued for appellant. Also represented by 

JAMES RICHARD BATCHELDER; JOSEF B. SCHENKER, New 

York, NY.

 AARON HAND, Bunsow De Mory LLP, Redwood City, 

CA, argued for cross-appellant. Also represented by 

DENISE MARIE DE MORY. 

______________________ 

Case: 22-1282 Document: 41 Page: 1 Filed: 09/20/2023
2 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

Before LOURIE, TARANTO, and HUGHES, Circuit Judges.

Hughes, Circuit Judge. 

Target appeals decisions of the Patent Trial and Appeal Board determining that claims 37 and 43 of U.S. Patent No. 8,090,359 and claims 25, 26, 28, and 29 of U.S. 

Patent No. 8,374,592 are not unpatentable. Proxicom cross 

appeals the Board’s decisions that claims 1–5, 14–18, 27, 

31, 36, 42, 48, 49, and 52–55 of the ’359 patent are anticipated by and obvious over Perttila, and claims 19–23 of the 

’592 patent are obvious over Perttila in view of Insolia. For 

the lead appeal, we reverse the Board’s holding that claims

37 and 43 of the ’359 patent have not been shown to be unpatentable and vacate and remand the Board’s holding 

that claims 25–26 and 28–29 of the ’592 patent have not 

been shown to be unpatentable. For the cross-appeal, we 

affirm the Board’s determination that claims 1–5, 14–18, 

27, 31, 36, 42, 48, 49, and 52–55 of the ’359 patent are unpatentable. 

I 

A 

Proxicom owns the ’359 and ’592 patents, which share 

substantially similar specifications. They are directed to facilitating “the exchange of information and transactions between two entities associated with two wireless devices 

when the devices are in close proximity to each other” utilizing both short-range and a long-range wireless capabilities. ’359 patent at 2:59–62; ’592 patent at 2:61–64. The 

invention can be used when, for instance, two individuals 

in proximity wish to exchange information or a payment, 

such as for goods or services received at a flea market. Device-to-device communications can confirm that two devices are in proximity, and the server located remotely can

facilitate the exchange of information or carry out the financial transaction. The below figure illustrates an application of the patented technology.

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TARGET CORPORATION v. PROXICOM WIRELESS, LLC 3

’359 patent at Figure 2. 

In this figure, the first wireless device (mobile device) 

detects that it is in proximity to the second wireless device 

(broadcast device) via a short-range communication, such 

as Bluetooth, and then communicates with the central 

server via long-range wireless connection, such as the cellular network. Once the second wireless device is detected, 

the first wireless device receives a unique identifier from 

the second wireless device via a short-range communications protocol. The first wireless device then sends the 

unique identifier to a central server. The server determines 

what information regarding the second wireless device is 

available and transmits a description of the information to 

the user’s device. The user then has the option to download 

the information. 

The method illustrated in the above figure is claimed

in independent claim 1 of the ’359 patent, which is representative of the challenged claims. The disputed portion of 

the claim is highlighted below. 

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4 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

Claim 1: A method for a central server to exchange information between one or more wireless devices comprising the steps of:

the central server receiving second device identifier information from a first wireless device, the second 

device identifier information having been collected 

by the first wireless device from a second device 

and wherein said second device provides the second 

device identifier information to the first wireless 

device using short range communication without 

the use of wires from the second device to the first 

wireless device; 

said central server using the second device identifier 

information to determine one or more of an identity 

or related information concerning an entity or object 

located in proximity to the second device; and

subsequent to the step of the central server receiving 

the second device identifier information from the 

first wireless device, the central server taking further action to deliver information or a service to the 

first wireless device based at least in part upon (a) 

the second device identifier and (b) at least one of 

the following:

. . .

(iii) a current step in a multiple step process for an 

ongoing electronic commerce transaction. 

’359 patent at 23:35–63 (emphasis added). 

Claims 37 and 43 depend from claim 1 and require that 

“a list of goods” is transmitted to the first wireless device 

as part of an electronic commerce transaction. Claims 37 

and 43 read, 

Claim 37: The method of claim 1 wherein the further 

action taken by the central server comprises: 

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TARGET CORPORATION v. PROXICOM WIRELESS, LLC 5

delivering a list of goods to the first wireless device as 

a step in a process for an electronic commerce 

transaction. 

’359 patent at 27:56–59. 

Claim 43: The method of claim 1 wherein the information delivered to the first wireless device comprises: 

a list of goods or services available for selection from an 

entity associated with the second device identifier 

information as part of a step in an electronic commerce transaction.

’359 patent at 28:15–20. 

Of the disputed claims in the ’592 patent, claims 19 and 

25 are independent and recite many of the same or similar 

limitations. Claim 25 reads, 

Claim 25: A method for a server to exchange information between a first wireless device and a second 

wireless device, comprising the steps of:

. . .

said server using the identifier information to determine a name of an entity or object located in proximity to the second wireless device; . . . . 

’592 patent at 25:35–54 (emphasis added). 

B 

Perttila1 discloses a system for a server to provide an 

electronic coupon to a user’s mobile device in response to 

the user’s device interacting with a merchant-media arrangement. The merchant-media arrangement can be a 

billboard or a poster located in a store. When the user’s 

1 U.S. Patent Application Publication No. 

2004/0243519. 

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6 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

mobile device is within the proximity of merchant-media 

arrangement, the arrangement transmits to the user’s mobile device a merchant ID code via radio frequency identification (RFID) or Bluetooth. The mobile device then 

transmits a merchant-information-request signal to the 

server through a mobile network. The server extracts the 

mobile device ID and the merchant ID code from the request, and then generates an electronic coupon based on 

the merchant ID code and provides the user with an option 

to download the coupon. 

C 

Target filed two inter partes review petitions challenging the claims of the ’359 patent and the ’592 patent. In the 

first petition, Target challenged claims 1–5, 14–18, 27, 31, 

36, 37, 42, 43, 48, 49, and 52–55 of the ’359 patent. In the 

second petition, Target challenged claims 19–23, 25, 26, 28, 

and 29 of the ’592 patent. The IPR proceedings raised many 

of the same issues, and the Board issued similar final decisions in both IPRs. 

For the ’359 patent, the Board found claims 1–5, 14–

18, 27, 31, 36, 42, 48, 49, and 52–55 unpatentable as obvious and/or anticipated over Perttila, but found claims 37 

and 43 not unpatentable. For the ’592 patent, the Board 

found claims 19–23 of the ’592 patent unpatentable as obvious over Perttila in view of Insolia,2 but found claims 25, 

26, 28, and 29 not unpatentable over Perttila in view of Davis.3 

Target appeals the Board’s patentability conclusions 

for claims 37 and 43 of the ’359 patent and claims 25, 26, 

28, and 29 of the ’592 patent. Proxicom cross-appeals the

Board’s unpatentability conclusion for claims 1–5, 14–18, 

2 U.S. Patent No. 8,121,917. 

3 U.S. Patent Application Publication No. 

2010/0030638. 

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TARGET CORPORATION v. PROXICOM WIRELESS, LLC 7

27, 31, 36, 42, 48, 49, and 52–55 of the ’359 patent and 

claims 19–23 of the ’592 patent. 

II

We set aside the Board’s actions if they are “arbitrary,

capricious, an abuse of discretion, or otherwise not in accordance with law,” or “unsupported by substantial evidence.” 5 U.S.C. § 706(2). We review the Board’s legal 

decisions de novo and its factual determinations for substantial evidence. Arendi S.A.R.L. v. Google LLC, 882 F.3d 

1132, 1133 (Fed. Cir. 2018). Substantial evidence “means 

such relevant evidence as a reasonable mind might accept 

as adequate to support a conclusion.” Consol. Edison Co. v. 

N.L.R.B., 305 U.S. 197, 217 (1938). 

Claim construction and obviousness are both questions 

of law that depend on underlying findings of fact, which are 

reviewed for substantial evidence. Teva Pharms. USA, Inc. 

v. Sandoz, Inc., 574 U.S. 318, 325–28 (2015); In re Brandt, 

886 F.3d 1171, 1175 (Fed. Cir. 2018). “Anticipation is a 

question of fact, and a finding of anticipation requires that 

every limitation of the claim is present in a single prior art 

reference.” Ericsson Inc. v. Intell. Ventures I LLC, 890 F.3d 

1336, 1338 (Fed. Cir. 2018). 

III

On appeal, Target makes two primary arguments: 

(1) the Board erred by interpreting claims 37 and 43 of the 

’359 patent to require an unrecited “interaction” with the 

claimed “list of goods,” and (2) the Board legally erred in 

concluding that claim 25 of ’592 patent and dependent 

claims 26, 28, and 29 are unpatentable over Perttila in view 

of Davis, because as the Board itself acknowledged, the 

prior art disclosed all of the claim limitations at least some 

of the time. We agree with Target on both points. Thus, we 

reverse and hold that claims 37 and 43 are unpatentable 

over Perttila, vacate the Board’s decision on claim 25 and 

dependent claims 26, 28, and 29, and remand for the Board 

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8 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

to consider the subsequent limitations of the claims that 

were not addressed in its final written decision. 

A 

Claims 37 and 43 both require that “a list of goods” is 

transmitted to the first wireless device as part of an electronic commerce transaction. Target argued to the Board 

that Perttila’s disclosure of delivering a “restaurant menu” 

satisfies the recitation of “a list of goods” in these claims. 

Perttila reads in relevant part, “[i]n another application, 

the billboard may be promoting a food product, and the request to the remote server corresponds to a request for receiving electronic coupon information including, for 

example, a restaurant menu or a recipe involving that particular food or food type.” J.A. 1006 (¶ 26) (emphasis 

added). The Board rejected the argument because in the 

Board’s view, Target failed to explain how Perttila discloses the user interacting with the menu after it has been 

delivered. 

On appeal, Target argues that the Board erred by finding that the “list of goods” in claims 37 and 43 must be “interact[ed]” with as part of the e-commerce transaction. We 

agree, because the Board did not do so in claim 1 although 

they share the same limitations. Claim 1 recites, “the central server taking further action to deliver information or a 

service to the first wireless device based at least in part 

upon . . . a current step in a multiple step process for an 

ongoing electronic commerce transaction.” ’359 patent at 

23:50–63 (emphasis added). The Board concluded that in 

the context of claim 1, “Perttila explains that the electronic 

coupon is part of an electronic commerce transaction.” J.A. 

25. Notably, the Board did not find claim 1 to require the 

user to interact with that electronic coupon. And neither 

claim 37 nor 43 requires that the “list of goods” be interacted with as part of an e-commerce transaction. See in re 

Zletz, 893 F.2d 319, 322 (Fed. Cir. 1990) (“It was incorrect 

for the Board to read unwritten limitations into claims.”).

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TARGET CORPORATION v. PROXICOM WIRELESS, LLC 9

Proxicom did not argue to the Board that any of these 

claims require the user “interacting” with the claimed list 

of goods, and it does not do so here. Red Br. 48 (stating that 

by “interaction,” the Board merely meant “to explain what 

might rise to the level of meeting the claim—i.e., disclosure 

of a restaurant menu and an ensuing interaction in a multistep process.”). Instead, Proxicom argues that Proxicom’s 

“restaurant menu” did not involve a multi-step electronic 

commerce transaction. But Proxicom does not explain why 

we should reject the Board’s conclusion as to claim 1 nor 

does Proxicom explain why we should apply more stringent

interpretations to claims 37 and 43 than the interpretation 

applied to claim 1. 

Once we find that claims 37 and 43 do not require the 

user to “interact” with the “list of goods,” Perttila’s “restaurant menu” discloses the claim limitation—a “list of goods 

. . . as a step in a process for an electronic commerce transaction.” The Board found that Perttila’s electronic coupon 

is part of an electronic commerce transaction in its analysis 

of claim 1, and the restaurant menu, a list of food items,

delivered in the form of an electronic coupon, qualifies as a 

“list of goods.” 

We find that the Board erred by interpreting claims 37 

and 43 of the ’359 patent to require an unrecited “interaction” with the claimed “list of goods.” Under the proper interpretation, Perttila discloses all limitations of claims 27 

and 43. Thus, we reverse and hold that claims 37 and 43 

are unpatentable over Perttila. See Smith & Nephew, Inc. 

v. Rea, 721 F.3d 1371, 1380 (Fed. Cir. 2013) (holding that 

reversal is appropriate where “the facts are largely undisputed, and the Board’s decision . . . was mainly the result 

of the analytical errors”). 

B 

Target next argues that with respect to claim 25, the 

Board applied the wrong legal standard, causing the Board 

to improperly reject prior art disclosures that meet the 

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10 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

relevant claim limitations some of the time, but not all of 

the time. Claim 25 requires the server “to determine a 

name of an entity or object located in proximity to the second wireless device.” Target argued to the Board that when 

Perttila’s billboard is located “in the store itself” where the 

coupons are to be redeemed, this limitation is met. J.A. 

1426 (¶ 39) (Perttila discloses that for certain types of electronic coupons, such as “product offerings with price discounts,” the coupons are “provided to mobile users through 

tag or beacons located at the store itself.”). Target explained that in this embodiment, the server receives a merchant ID corresponding to the billboard; then sends a 

coupon that contains a name of the store or products located in proximity to the billboard. 

The Board found that Target’s assertions regarding 

product offerings within the store “rely on speculation,” 

and hence were insufficient to conclude that Perttila discloses all limitations of claim 25. J.A. 85. The Board explained that “while it may be likely that the advertised 

products are in the store, this is not necessarily the case. 

For example, the products may be out of stock, in which 

case [Target] acknowledges that the claim language is not 

satisfied” during those times. J.A. 72. Based on this rationale—that the claim limitation is met based on chance 

and speculation alone—the Board concluded that claim 25 

and its dependent claims had not been shown to be obvious 

over Perttila in view of Davis. J.A. 84–87. The Board did 

not analyze the subsequent limitations of claim 25 or its 

dependent claims. 

On appeal, Target argues that because there is no dispute that the recitation is met by Perttila at least some of 

the time, Perttila teaches that aspect of the claims. Blue 

Br. 30. Target mainly relies on our precedent Unwired 

Planet, LLC v. Google Inc., where we held that “combinations of prior art that sometimes meet the claim elements 

are sufficient to show obviousness.” 841 F.3d 995, 1002 

(Fed. Cir. 2016) (emphasis added). In Unwired Planet, the 

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TARGET CORPORATION v. PROXICOM WIRELESS, LLC 11

claim at issue recited “farther-over-nearer ordering,” which 

prioritizes preferred providers that are farther away over 

providers that are nearer in distance. Id. at 998. The prior 

art taught a prioritization scheme based on an alphabetical 

ordering, which will “often result in locations that are farther away being given a higher priority than locations that 

are nearer.” Id. at 1002. We held that the prior art taught 

the recited claim because “[i]t is enough that the combination would sometimes perform all the method steps.” Id. 

Similarly here, the Board acknowledged that Perttila’s 

disclosure met the determining recitation at least some of 

the times (i.e., when products are in stock). Specifically, it 

found that Perttila’s server sometimes provided e-coupons 

for products that are in the same store as the billboard. In 

such instances, the Board does not dispute that the coupon 

would identify the name of the store or products in that 

store located in proximity to the billboard, satisfying all of

claim 25’s determining recitation. Because there is no dispute that Perttila would perform claim 25’s determining 

recitation at least some of the time, we hold that Perttila 

teaches that aspect of the claims. See Hewlett-Packard Co. 

v. Mustek Sys. Inc., 340 F.3d 1314, 1326 (Fed. Cir. 2003)

(quoting Bell Commc'ns Rsch, Inc. v. Vitalink Commc'ns 

Corp., 55 F.3d 615, 622–623 (Fed. Cir. 1995)) (“Just as an 

‘accused product that sometimes, but not always, embodies 

a claimed method nonetheless infringes,’ a prior art product that sometimes, but not always, embodies a claimed 

method nonetheless teaches that aspect of the invention.”). 

Accordingly, we vacate the Board’s decision on claim 25 

and its dependent claims 26, 28, and 29 and remand for the 

Board to consider the subsequent limitations of the claims. 

IV

Finally, we consider Proxicom’s cross-appeal. Proxicom’s primary argument is that the Board committed legal 

error by implicitly adopting and applying a claim construction that permits the “entity” or “object” to be intangible 

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12 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

and without physical presence.4 Claims 1 and 14 of the ’359 

patent and claim 19 of the ’592 patent require the central 

server to determine or store “one or more of an identity or 

related information concerning an entity or object located 

in proximity to the second device.” ’359 patent at 23:45–49; 

25:35–38; ’592 patent at 24:63–65. The Board found that a 

construction of “object or entity” is immaterial to the outcome of this case. The Board then mapped the recited second device to the short-range transmitter (RFID tag) and 

the recited object to the billboard and the content promoted 

by billboard. 

Proxicom argues that “content promoted by the billboard” is not an object or entity with physical presence, but 

for the object to be located in proximity to another object, 

the claimed object must be physically present. We fail to 

see, and Proxicom does not explain, why a coupon that corresponds to “content promoted by the billboard” does not 

also correspond to the billboard itself. Moreover, the specification of the ’359 and ’592 patents recognize that the object may be intangible. It states, “the ‘object’ is intended to 

include a physical thing, such as a product that is being 

4 Target argues that Proxicom is collaterally estopped from raising these challenges. Appellant’s Response 

and Reply Br. 2–3. In a separate IPR proceeding, IPR2020-

00932, the Board determined that claims 9, 22, and 51 of 

the ’359 patent are unpatentable as anticipated and obvious over Perttila. Target Corp. v. Proxicom Wireless, LLC, 

No. 2020-00932, 2021 WL 5203113, at *16 (P.T.A.B. Nov. 

8, 2021). Proxicom raises the same issues in its cross-appeal that it lost on in that IPR. Because Proxicom did not 

appeal the Board’s decision in that proceeding, Target argues that Proxicom is bound by the Board’s findings and 

holdings on this appeal. While Target appears to be correct, 

we need not decide this issue given our conclusions on the 

merits. 

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TARGET CORPORATION v. PROXICOM WIRELESS, LLC 13

offered for sale and may include a tangible article or intangible such as an electronic music or video file or photograph.” ’359 patent at 8:30–33; ’592 patent at 8:32–35

(emphasis added). Thus, the Board did not legally err by 

mapping the recited object to include the content promoted 

by billboard. 

Proxicom next argues that Target shifted its mappings 

from its petition to reply, and the Board’s adoption of Target’s new mapping deprived Proxicom of due process. According to Proxicom, Target identified the “merchant 

media arrangement” as the second device in its petition, 

but later switched its position by arguing that the RFID 

tag is the second device. We disagree. The Board, in its institution decision, explicitly acknowledged that Perttila’s 

merchant-media arrangement includes both a billboard 

and a short-range communicator such as an “RFID tag” or 

“Bluetooth link.” J.A. 535–36 (“Perttila discloses that the 

merchant-media arrangement includes a poster or billboard. An RFID tag 38 is co-located at the merchant-media 

arrangement”) (internal citation and quotation omitted)

(emphasis added). 

Moreover, “[t]he critical question for compliance with 

the APA and due process is whether [Patent Owner] received ‘adequate notice of the issues that would be considered, and ultimately resolved, at that hearing.’” Genzyme 

Therapeutics Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 

1360, 1367 (Fed. Cir. 2016) (quoting Pub. Serv. Comm’n of 

Ky. v. FERC, 397 F.3d 1004, 1012 (D.C. Cir. 2005)). Proxicom does not dispute that it had notice and opportunity to 

address the allegedly “new” mapping. Red Br. 59 (stating

that these issues were raised at oral argument). Proxicom

indeed addressed Target’s “new” mapping in its sur-replies. 

See J.A. 698–706; J.A. 2735–43. Because Target’s mapping 

was consistent with the Board’s institution decision, and 

Proxicom had notice and opportunity to respond to Target’s 

mapping, the Board did not deprive Proxicom of due process. 

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14 TARGET CORPORATION v. PROXICOM WIRELESS, LLC

We have considered Proxicom’s remaining arguments 

and find them unpersuasive. For the reasons above, we affirm the Board’s determination that claims 1–5, 14–18, 27, 

31, 36, 42, 48, 49, and 52–55 of the ’359 patent and claims 

19–23 of the ’592 patent are unpatentable. 

AFFIRMED-IN-PART, REVERSED-IN-PART, 

VACATED-IN-PART, AND REMANDED

COSTS

Costs to appellant.

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