IP Law Daily, PATENT—Fed. Cir.: PTAB’s obviousness finding affirmed in peer-to-peer networking patent dispute, (Mar 18, 2025)

By Kevin M. Finson, J.D.

Patent claims relating to mobile devices communicating location data without the use of a central server were properly found obvious because the PTAB did not err in claim construction and its findings were supported by substantial evidence.

In an inter partes review proceeding before the Patent Trial and Appeal Board, Apple properly showed the obviousness of challenged claims of a patent related to peer-to-peer networking, the U.S. Court of Appeals for the Federal Circuit has held. The patentee was unable to show any error in claim construction (BillJCo, LLC v. Apple Inc., No. 23-2348 (Fed. Cir. Mar. 14, 2025)).

BillJCo, LLC was the owner of U.S. Patent No. 8,761,804 (the ’804 patent), which related to “peer-to-peer location-based services for mobile data processing systems.” The patent explained that the prior art systems typically exchanged information through a central server, while the patent claimed a computer architecture that allowed mobile systems to exchange location-based data without a central server. Apple, Inc. petitioned for inter partes review of claims 1 and 10-12 on the ground of obviousness. The Patent Trial and Appeal Board (PTAB) instituted review and found the challenged claims unpatentable over a combination of two prior art references. One reference disclosed a system for providing information to users based on the user’s location, and the other, a system for using periodic data transmission to gather traffic information. BillJCo appealed.

Claim construction. BillJCo argued that the Board erred in its construction of the term “transmitting” to not preclude transmission via an intermediary, and in its construction of the term “beacon” as not requiring that the beacon attract attention to the sender. The Federal Circuit found that both constructions were supported by the plain language of the specification and claims, and that there was nothing in the patent to require the additional limitations offered by BillJCo.

Obviousness. BillJCo argued that the Board’s findings about the teachings of the prior art and objective indicia of non-obviousness were not supported by substantial evidence. The Federal Circuit found that the arguments as to the teachings of the prior art were largely premised on BillJCo’s failed claim construction arguments, and the Board’s findings as to copying and commercial success were well-founded in the record.

The Federal Circuit affirmed the decision of the Board.

The Case is No. 23-2348.

Judge: Lourie, A.

Attorneys: Joseph Kuo (Saul Ewing Arnstein & Lehr LLP) for BillJCo, LLC. James Lawrence Davis, Jr. (Ropes & Gray LLP) for Apple Inc.

Companies: BillJCo, LLC; Apple Inc.

Cases: Patent FedCirNews USPTO