Billjco, LLC v. Apple Inc.

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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BILLJCO, LLC,
Appellant
v.
APPLE INC.,
Appellee
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2023-2188
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. IPR2022-
00129.
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Decided: May 16, 2025
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COURTLAND C OLLINSON MERRILL , Saul Ewing Arnstein
& Lehr LLP, Minneapolis, MN, argued for appellant. Also
represented by J OSEPH K UO, BRIAN MICHALEK,, ELIZABETH
A. T HOMPSON, Chicago, IL; BRIAN L ANDRY , Boston, MA.
J AMES L AWRENCE D AVIS , J R., Ropes & Gray LLP, East
Palo Alto, CA, argued for appellee. Also represented by
J AMES RICHARD BATCHELDER , CHRISTOPHER M. BONNY ;
D OUGLAS H ALLWARD-D RIEMEIER , Washington, DC; BRIAN
L EBOW , CASSANDRA B. ROTH , New York, NY.
Case: 23-2188 Document: 56 Page: 1 Filed: 05/16/2025

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BILLJCO, LLC v. APPLE INC. 2
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Before CHEN, SCHALL , and STOLL , Circuit Judges.
CHEN, Circuit Judge.
Apple, Inc. (Apple) filed a petition for inter partes re-
view (IPR) alleging that claims 1–3, 8, 20–21, 23–27, 32,
44–45, and 47–48 of U.S. Patent No. 8,566,839 (’839 pa-
tent) are unpatentable under 35 U.S.C. § 103 based on four
separate obviousness grounds, each including a common
reference, Lutnick1. The Patent Trial and Appeal Board
(Board) instituted IPR and found all challenged claims un-
patentable on all asserted grounds. Apple Inc. v. BillJCo
LLC, No. IPR2022-00129, 2023 WL 5028724 (P.T.A.B. May
18, 2023) (Decision). The patent owner, BillJCo, LLC (Bill-
JCo), appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A). We affirm.
Claim 1 is representative. In relevant part, claim 1 re-
quires (1) “receiving, by [a] receiving data processing sys-
tem, an object, said object containing information and
instructions for presenting said information,” and (2) “a
condition for detecting a particular user action by a user of
said receiving data processing system.” ’839 patent at
claim 1. BillJCo argues that the Board implicitly and erro-
neously construed these limitations and that substantial
evidence does not support the Board’s findings.
First, with respect to the “object” limitation, BillJCo
misunderstands the Board’s decision. The Board did not
find this limitation satisfied by separate transmissions of
information and instructions for presenting that infor-
mation, as BillJCo argues. Rather, the Board agreed with
Apple’s theory that Lutnick taught a “single,” “‘self-
1 U.S. Patent App. Pub. No. 2008/0167106 (Lutnick).
Lutnick relates to managing the presentation of promo-
tions on “mobile gaming devices,” such as in a casino. See,
e.g., Lutnick Abstract, ¶¶ 183–84.
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BILLJCO, LLC v. APPLE INC. 3
contained’ object . . . including both the program or soft-
ware [i.e., instructions] and the promotions [i.e., infor-
mation].” Decision, 2023 WL 5028724, at *3 (citation
omitted). To the extent the Board implicitly construed “ob-
ject” as requiring a single object containing both infor-
mation and instructions, the Board merely used the
construction that BillJCo seeks.
The Board found the “object” limitation satisfied on two
alternative bases. The Board initially found that a skilled
artisan would understand that Lutnick teaches this limi-
tation. Id. at *4 (citing Lutnick ¶¶ 48, 93). BillJCo’s open-
ing brief, however, does not meaningfully challenge this
finding, and it does not challenge the portions of Lutnick
on which the Board relied; indeed, it does not even cite to
paragraphs 48 or 93 of Lutnick. See, e.g., SmithKline Bee-
cham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir.
2006) (explaining that a party forfeits undeveloped argu-
ments on appeal). The Board separately found that Apple
“present[ed] sufficient evidence that one skilled in the art
would have found it obvious to” transmit promotions and
instructions together, citing to certain portions of Apple’s
petition and the report of Apple’s expert, Dr. La Porta. De-
cision, 2023 WL 5028724, at *4. Apple’s petition argued,
for example, that “[t]ransmitting both a program and pro-
motions within a single, self-contained object, would have
involved a simple combination of known elements in known
ways to achieve a predictable result (i.e., a download pack-
age that includes both the program and the promotions).”
J.A. 137 (citing La Porta Decl. ¶ 89 (J.A. 1231)); see KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). BillJCo,
again, makes no argument to meaningfully challenge this
reasoning. Finally, the Board relied on several paragraphs
of Lutnick as teaching Lutnick’s mobile gaming device “re-
ceiving” the claimed object. See Decision, 2023 WL
5028724, at *3–4 (citing Lutnick ¶¶ 119, 128, 184, 290).
BillJCo’s arguments challenging only select portions of the
Board’s reasoning do not persuade us that the Board’s
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BILLJCO, LLC v. APPLE INC. 4
findings with respect to this limitation are not supported
by substantial evidence.
Second, BillJCo argues that the Board implicitly con-
strued the “user action” limitation as “something that may
result due to an action by a user.” Appellant’s Br. 16. We
disagree. The Board “simply compared the claim to prior
art.” Google LLC v. EcoFactor, Inc., 92 F.4th 1049, 1055
(Fed. Cir. 2024); see also Apple Inc. v. Uniloc 2017 LLC, 843
F. App’x 281, 286–87 (Fed. Cir. 2021) (“[W]e reject [appel-
lant’s] attempt to bootstrap its argument into one of claim
construction in order to receive de novo review.”). The
Board found this limitation satisfied by Lutnick’s disclo-
sure that “a promotion may be presented to a player if the
player has achieved a winning outcome,” which “indicates
that the promotion is triggered by the user’s action, not just
a response by the mobile gaming device.” Decision, 2023
WL 5028724, at *4 (quoting Lutnick ¶ 250). The Board rea-
sonably found that the player achieving a winning outcome
teaches the claimed “user action.”
Finally, the Board “reviewed [BillJCo’s] arguments and
evidence regarding objective evidence of non-obviousness
and . . . [did] not find them persuasive enough to outweigh
[Apple’s] evidence that the challenged claims would have
been obvious.” Id. at *6. For the same reasons explained
in a companion case also decided today by this panel with
respect to two other of BillJCo’s patents, we are unper-
suaded that substantial evidence does not support the
Board’s findings concerning BillJCo’s secondary considera-
tions evidence with respect to the ’839 patent. See BillJCo,
LLC v. Apple Inc., Nos. 23-2189, 23-2190, slip op. at 6–8
(Fed. Cir. May 16, 2025).
CONCLUSION
We have considered BillJCo’s remaining arguments
and find them unpersuasive. Accordingly, we affirm the
Board’s decision.
AFFIRMED
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