IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness finding affirmed in location-based services patent dispute affirmed, (May 16, 2025)

By Kevin M. Finson, J.D.

A PTAB obviousness determination was affirmed because the board’s findings were supported by substantial evidence and the patentee failed to provide evidence to support its arguments relying on objective indicia of obviousness.

A patentee failed to show any error in two Patent Trial and Appeal Board inter partes review rulings holding that challenged claims of two patents owned by BillJCo and directed to location-based services for mobile devices were invalid as obvious, the U.S. Court of Appeals for the Federal Circuit has held in a nonprecedential decision. The Board’s claim constructions were not erroneous and its findings on the teachings of the prior art were supported by substantial evidence (BillJCo, LLC v. Apple, Inc., No. 23-2189, 23-2190, (Fed. Cir., May 16, 2025)). In a separate decision issued concurrently, the Federal Circuit held that the PTAB properly found that the challenged claims of a third patent owned by BillJCo were invalid as obvious (BillJCo LLC v. Apple, Inc., No. 23-2188 (Fed. Cir., May 16, 2025)).

U.S. Patent Nos. ’267 and ’868. BillJCo, LLC (BillJCo) was the owner of U.S. Patents Nos. 8,639,267 (the ’267 patent) and 9,088,868 (the ’868 patent), which related to location-based services for mobile devices. Apple, Inc. (Apple) petitioned for inter partes review on the ground of obviousness under 35 U.S.C. § 103. The Patent Trial and Appeal Board (PTAB) instituted review and held that each of the challenged claims were unpatentable as obvious. BillJCo appealed.

Claim construction. In construing the term “privilege” in the ’267 patent the board had not adopted BillJCo’s request that the term be read as excluding preferences. The court noted that such negative limitations required support in the words of the claim or in express disclaimer, and no such support was present. In the ’868 patent, BillJCo challenged the board’s broad interpretation of “user specified location based event configuration,” arguing that it should be limited to “configuring privilege data.” The court found that the board had properly relied on the specification, which had plainly contemplated a broader use of that term.

Prior art teachings. BillJCo argued that certain limitations were not disclosed by the prior art references. The court found that the board’s findings on the teachings of the prior art were supported by substantial evidence in the form of the plain language of the prior art references, and by expert testimony.

Objective indicia of obviousness. BillJCo argued that the board erred in rejecting its claims of copying and commercial success. The court found that BillJCo’s evidence of copying was circumstantial and did not show that Apple duplicated features of the patentee’s work based on access to that work, as was required. As to commercial success, the court found that BillJCo had submitted no sales data, public statements, or other evidence of commercial success.

The Federal Circuit affirmed the Board’s findings of obviousness.

U.S. Patent No. ’839. Regarding BillJCo’s U.S. Patent No. 8,566,839 (the ’839 patent), the Federal Circuit ruled that the PTAB properly found all challenged claims unpatentable as obvious based on four separate obviousness grounds, each including a common reference, U.S. Patent App. Pub. No. 2008/0167106 (Lutnick). The evidence supported the Board’s constructions of the “object” limitation and the “user action” limitation and its findings that they were taught by Lutnick.

The case is No. 23-2188 and Nos. 23-2189, 23-2190.

Judge: Stoll, K.

Attorneys: Josheph Kuo and Courtland Collinson Merrill (Saul Ewing Arnstein & Lehr LLP) for BillJCo, LLC. Kevin John Post and James Lawrence Davis, Jr. (Ropes & Gray LLP) for Apple Inc.

Companies: BillJCo, LLC; Apple Inc.

Cases: Patent FedCirNews USPTO