IPR2014-00199
`U.S. Patent 6,771,970
`
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`___________________
`
`
`LOCATIONET SYSTEMS, LTD.’S
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`U.S. Patent 6,771,970
`
`
`By: Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`___________________
`
`Case No. IPR2014-00199
`U.S. Patent 6,771,970
`___________________
`
`
`LOCATIONET SYSTEMS, LTD.’S
`PATENT OWNER RESPONSE
`
`
`
`
`
`
`
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`Introduction ..................................................................................................... 1
`
`II.
`
`Elliot Does Not Anticipate Independent Claim 18 ......................................... 2
`
`A.
`
`B.
`
`Technical Overview of the ‘970 Patent ................................................ 3
`
`Claim 18 Requires That Each Mobile Platform Location System
`
`Be Associated With A “Map Database” And A “Map Engine” .......... 6
`
`C.
`
`Elliot Does Not Disclose Each And Every Element As Set Forth In
`
`Claim 18 ............................................................................................... 9
`
`1.
`
`2.
`
`Elliot does not disclose the claimed “map database”............... 10
`
`Elliot does not disclose the claimed “map engine” .................. 13
`
`3.
`
`Elliot does not disclose “each one of said mobile platform
`location systems being associated with a map database and
`map engine” .............................................................................. 15
`III. Conclusion .................................................................................................... 16
`
`
`
`
`
`
`
`i
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`
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`
`
`EXHIBIT LIST
`
`Exhibit No. 2016:
`
`
`
`Exhibit No. 2017:
`
`
`
`Exhibit No. 2018:
`
`Exhibit No. 2019:
`
`Declaration of Dr. Narayan Mandayam in Support of
`Locationet Systems, Ltd.’s Patent Owner Response
`
`Definition of “database,” Dictionary of Computer Words,
`Houghton Mifflin Company (1998), p. 61
`
`Definition of “database,” Personal Computer Dictionary,
`Random House (2nd Ed. 1996), p. 126
`
`
`Definition of “engine,” Webster’s New World Dictionary of
`Computer Terms, Macmillan (5th ed. 1994), p. 208
`
`
`
`
`ii
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`
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`TABLE OF AUTHORITIES
`
`
`CASES
`Karsten Mfg. Corp. v. Cleveland Golf Co.,
`242 F.3d 1376 (Fed. Cir. 2001) ............................................................................ 2
`
`Page(s)
`
`Schering Corp. v. Geneva Pharm.,
`339 F.3d 1373 (Fed. Cir. 2003) ............................................................................ 2
`
`STATUTES
`
`35 U.S.C. § 102 ......................................................................................................... 2
`
`35 U.S.C. § 102(e) ..................................................................................................... 1
`
`35 U.S.C. § 316(a)(8) ................................................................................................ 1
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.120 .................................................................................................... 1
`
`
`
`iii
`
`
`
`IPR2014-00199
`U.S. Patent 6,771,970
`
`I.
`
`Introduction
`
`Pursuant to 35 U.S.C. § 316(a)(8) and 37 C.F.R. § 42.120, the Patent Owner
`
`hereby submits its Response to the Institution Decision (Paper 18) on May 9, 2014.
`
`On November 27, 2013, Wavemarket, Inc. d/b/a Location Labs (collectively
`
`“Petitioner”) filed a Petition1 to institute an inter partes review of claims 1-19 of U.S.
`
`Patent No. 6,771,970 (“the ‘970 patent”; Ex. 1001). On May 9, 2014, the Board
`
`instituted this inter partes review (“IPR”) proceeding of U.S. Patent No. 6,771,970 on
`
`only one ground proposed by Petitioner: anticipation under 35 U.S.C. § 102(e) of
`
`claim 18 by U.S. Patent No. 6,243,039 (“Elliot”; Ex. 1003). The Board denied all of
`
`the other grounds proposed by Petitioner for all of the other challenged claims. Paper
`
`18 at 29.
`
`Patent Owner will show that Petitioner’s argument has no merit. Elliot fails to
`
`disclose multiple elements expressly required by claim 18. As explained herein and in
`
`the accompanying declaration of Dr. Narayan Mandayam (Ex. 2016), Petitioner’s
`
`argument that Elliot anticipates claim 18 fails for three reasons. First, Elliot fails to
`
`disclose a “map database,” as required by claim 18. Second, Elliot fails to disclose a
`
`“map engine” for manipulating the map database, as required by claim 18. Third,
`
`
`1 The Petitioner subsequently filed a corrected Petition for Inter Partes Review on
`
`December 19, 2013 (Paper 6).
`
`
`
`1
`
`
`
`Elliot fails to disclose that each one of the mobile platform location systems is
`
`“associated with” a corresponding map database and map engine, as required by claim
`
`18.
`
`II. Elliot Does Not Anticipate Independent Claim 18
`To anticipate a claim under 35 U.S.C. § 102, a reference must disclose each and
`
`every limitation of the claim. See, e.g., Schering Corp. v. Geneva Pharm., 339 F.3d
`
`1373, 1377 (Fed. Cir. 2003) (citing Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d
`
`744, 747 (Fed. Cir. 1987); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
`
`1383 (Fed. Cir. 2001). Elliot does not anticipate claim 18 because Elliot fails to
`
`disclose “each one of said mobile platform location systems being associated with a
`
`map database and map engine for manipulating said map database.” Dr. Mandayam
`
`Declaration, Ex. 2016 at ¶ 26.
`
`As the Board summarized in its Decision, Petitioner’s argument is “based on
`
`the following descriptions in Elliot (Corrected Petition, Paper 6 at 31-33)”:
`
`(1) ‘web server 34 [] functions as a web interface for []
`central control system [20],’ (quoting Ex. 1003, col. 7, ll. 1–
`7);
`
`(2) ‘web server [34] with its associated files provides
`graphical maps capable of showing the current and historical
`locations of [] device [12].’ (quoting Ex. 1003, col, ll. 2–4);
`
`(3) ‘[m]any commercial software programs are available for
`producing and manipulating graphics and images, including
`road map graphics images. Such graphical map images may
`be displayed within a web page when a web browser runs a
`document,’ (quoting Ex. 1003, col. 9, ll. 17–27); and
`
`
`
`-2-
`
`
`
`(4) ‘[t]he ‘X’ mark for pointing to the current location of the
`child (i.e., the device) may be superimposed in the map
`image,’ (quoting Ex. 1003, col. 9, ll. 28–30).
`
`Paper 18 at 16. Other than these vague assertions, neither the Petition, nor the
`
`accompanying declaration of its expert, Scott Hotes, provide any specific explanation
`
`of how Elliot meets all of the limitations of claim 18. Indeed, none of these
`
`descriptions in Elliot disclose the claimed “map database,” “map engine,” or “each
`
`one of said mobile platform location systems being associated with a map database.”
`
`
`
`For the purposes of the Board’s Decision, the Board held that no explicit
`
`constructions for claim terms or phrases are necessary beyond their ordinary and
`
`customary meanings. Paper 18 at 6-7. Patent Owner submits that under the ordinary
`
`and customary meanings of the claim terms and phrases of claim 18, Elliot does not
`
`and cannot anticipate claim 18.
`
`A. Technical Overview of the ‘970 Patent
`The ‘970 patent is directed to a system and method for location tracking of
`
`mobile platforms. Ex. 1001, Abstract; col. 2, ll. 2-28; col. 3, ll. 4-24; Ex. 2016 at ¶ 16.
`
`The system architecture of the location tracking system described in the ‘970 patent
`
`requires a number of system elements associated with one another to achieve the
`
`specific operation and functionality disclosed therein. Ex. 2016 at ¶ 16. FIG. 1
`
`illustrates an exemplary schematic diagram of a system for tracking the locations of
`
`mobile platforms described by the ‘970 patent (Id.):
`
`
`
`-3-
`
`
`
`
`
`
`
`More specifically, FIG. 1 is a diagram that shows location tracking systems 11,
`
`12, 13 and 14 for tracking the locations of various mobile platforms, such as a mobile
`
`telephone 21, a car 22, a laptop computer 23, and a briefcase 24. Ex. 1001 at col. 3, l.
`
`44-col. 4, l. 5; Ex. 2016 at ¶ 16. The location tracking systems 11-14 communicate
`
`with a communication subsystem 3 of a location determination system 1. Ex. 1001 at
`
`col. 4, ll. 6-11; Ex. 2016 at ¶ 16. The location determination system 1 is linked to a
`
`map server 4 operating a map engine for accessing a map database 5. Ex. 1001 at col.
`
`4, ll. 15-17; FIGS. 1 and 3; Ex. 1016 at ¶ 16.
`
`A subscriber to the location determination system 1 equipped with a computer
`
`60 running an Internet browser can request the location of a specific mobile platform
`
`by selecting the mobile platform on the website 50. Ex. 1001 at col. 4, ll. 29-39; Ex.
`
`
`
`-4-
`
`
`
`2016 at ¶ 17. The request is passed from the website 50 to the location determination
`
`system 1, which accesses a database 2 to determine the appropriate location tracking
`
`system 11-14 for locating the subscriber-selected mobile platform. Ex. 1001 at col. 4,
`
`ll. 39-42; Ex. 2016 at ¶ 17. The communication subsystem 3 then formats the request
`
`and transmits it to the respective location tracking system 11-14 via the Internet 30.
`
`Ex. 1001 at col. 4, ll. 46-48; Ex. 2016 at ¶ 17.
`
`The respective location tracking system 11-14 receives the request, determines
`
`the location of the subscriber-selected mobile platform, and transmits the location
`
`information back to the communication subsystem 3. Ex. 1001 at col. 4, ll. 48-52; Ex.
`
`2016 at ¶ 18. The communication subsystem 3 associates the location information
`
`with the request and passes it to the location determination system 1. Ex. 1001 at col.
`
`4, ll. 52-55; Ex. 2016 at ¶ 18. The location determination system 1 then passes the
`
`location of the subscriber-selected mobile platform to the map server 4. Ex. 1001 at
`
`col. 4, ll. 55-56; Ex. 2016 at ¶ 18.
`
`The map server 4 incorporates data related to the determined location on the
`
`output map. Ex. 1001 at col. 5:13-18; Ex. 2016 at ¶ 19. The map server 4 obtains a
`
`map of the area in which the subscriber-selected mobile platform is located from the
`
`map database using the map engine, marks the position of the mobile platform on the
`
`map and passes it to the location determination system 1. Ex. 1001 at col. 4, ll. 56-59;
`
`see also col. 2, ll. 28-35; Ex. 2016 at ¶ 19. The map, including subscriber selected or
`
`
`
`-5-
`
`
`
`all related map and location data, showing the location of the mobile platform is then
`
`passed to the subscriber’s computer 60. Ex. 1001 at col. 4, ll. 60-61, col. 5, ll. 13-18;
`
`45-50; Ex. 2016 at ¶ 19.
`
`B. Claim 18 Requires That Each Mobile Platform Location System Be
`Associated With A “Map Database” And A “Map Engine”
`
`Claim 18 requires, among other things, that “each one of said mobile platform
`
`location systems being associated with a map database and map engine for
`
`manipulating said map database.” (emphasis added.) Ex. 2016 at ¶ 20. Claim 18
`
`reads:
`
`18. A system for location tracking of mobile platforms,
`each of which is equipped each with a tracking unit, each
`being adapted to determine the location of a respective
`mobile platform according to a property that is
`predetermined for each mobile platform; the system
`comprising:
`
`(a) a location server communicating through a user interface
`with at least one subscriber equipped with a browser; said
`communication having inputs that include at least the
`subscriber identity, the mobile platform identity and map
`information;
`
`(b) at least one mobile platform location system coupled to
`said location server for receiving the mobile platform
`identity and map information that pertain to mobile
`platforms associated with the respective mobile platform
`location system; each one of said mobile platform location
`systems being associated with a map database and map
`engine for manipulating said map database;
`
`(c) at least one remote tracking service communicating with
`said respective mobile platform location system for
`
`
`
`-6-
`
`
`
`receiving mobile platform identity and returning mobile
`platform location information;
`
`the at least one mobile platform location system being
`adapted to receive said mobile platform location information
`and access said map database for correlating map to said
`location information, so as to obtain correlated location
`information;
`
`said location server being adapted to receive the correlated
`location information and forward them to said browser.
`
`(emphasis added.)
`
`As described in the ‘970 patent, the map database 5 stores “maps formatted as
`
`at least one of the following: Raster Map in various scales, vector maps and air
`
`photo.” Ex. 1001 at col. 2, ll. 46-48; see also id. at col. 4, ll. 20-22; col. 5, ll. 3-5; Ex.
`
`2016 at ¶ 21. The map server 4 operates the map engine for, among other functions,
`
`accessing the map database and obtaining a map from the map database. Ex. 1001 at
`
`col. 4, ll. 16-17 (“a map server (4) operating a map engine for accessing a map
`
`database”); col. 4, ll. 55-58 (“[t]he location determination system (1) passes the
`
`location of the vehicle (22) to the map server (4) which obtains a map of the area in
`
`which the vehicle (22) is located using the map engine . . .”); Ex. 2016 at ¶ 21. In
`
`addition, the map server 4 functions to obtain data from the databases on a mobile
`
`platform location determined by the location determination system 1 and incorporate
`
`such data in the output map from the map database via the map engine. Ex. 1001 at
`
`col. 5, ll. 13-18 (“. . . all data on the location determined by the location determination
`
`system (1) that is available from the databases is obtained from the location data
`
`
`
`-7-
`
`
`
`server (120) by the map server (4) and incorporated in the output map.”); Ex. 2016 at
`
`¶ 21.
`
`Moreover, the map server 4 is capable of correlating between maps stored in the
`
`map database 5 and the positioning information received from the respective location
`
`tracking system 11-14. Ex. 1001 at col. 4, ll. 17-22; Ex. 2016 at ¶ 22. The map
`
`server 4 may support various types of maps, such as Raster maps in various scales,
`
`vector maps and air photographs. More specifically, the map server 4 can obtain a
`
`map in which the mobile platform is located from the map database, and mark the
`
`position of the mobile platform on the map. Ex. 1001 at col. 4, ll. 56-59; see also col.
`
`2, ll. 28-35; Ex. 2016 at ¶ 22.
`
`Furthermore, each mobile platform location system is associated with a map
`
`database 5 and map engine. See, e.g., Ex. 1001, FIGS. 1 and 3 (showing that the
`
`location determination system 1 is associated with the map database 5); col. 2, ll. 28-
`
`31 (“[t]he location determination system may communicate with a mapping system
`
`having at least one map database . . .”); Ex. 2016 at ¶ 23.
`
`As discussed below, Elliot does not anticipate claim 18 because Elliot fails to
`
`disclose: (1) a “map database”; (2) a “map engine” for manipulating the map database;
`
`and (3) each one of the mobile platform location systems being associated with a
`
`corresponding map database and map engine, as required by claim 18.
`
`
`
`-8-
`
`
`
`C. Elliot Does Not Disclose Each And Every Element As Set Forth In
`Claim 18
`
`Elliot describes a wireless communication system which tracks the current and
`
`historical locations of a device worn or carried by a person, and provides access to the
`
`data referencing these locations. Ex. 1003, col. 2, ll. 29-35; Ex. 2016 at ¶ 24.
`
`More specifically, to track the locations of a device 12 worn or carried by a
`
`person, the device 12 in Elliot is required to send a data signal to a central receiver-
`
`transmitter 16. Ex. 1003 at col. 5, ll. 13-31; Ex. 2016 at ¶ 25. The data signal
`
`transmitted by the device 12 generally includes the current GPS coordinates, current
`
`time, device identification code of the transmitting device, and an activation indicator.
`
`Ex. 1003 at col. 5, ll. 32-39; Ex. 2016 at ¶ 25. The centralized control system 20 that
`
`receives the data signal from the device 12 via a central receiver-transmitter 16 can
`
`then determine and track the location of the device 12. Ex. 1003 at col. 5, ll. 41-43;
`
`col. 2, ll. 55-59; Ex. 2016 at ¶ 25. Elliot discloses a web server 34 with its associated
`
`files providing graphical maps showing the current and historical locations of the
`
`device 12. Ex. 1003 at col. 3, ll. 2-4; Ex. 2016 at ¶ 25. An “X” mark for pointing to
`
`the location of the device 12 may be superimposed on the map image. Ex. 1003 at
`
`col. 9, ll. 28-30; Ex. 2016 at ¶ 25.
`
`The disclosure in Elliot is missing key elements of claim 18, namely: (1) a
`
`“map database”; (2) a “map engine” for manipulating the map database; and (3) each
`
`
`
`-9-
`
`
`
`one of the mobile platform location systems being associated with a corresponding
`
`map database and map engine. Ex. 2016 at ¶ 26.
`
`Elliot does not disclose the claimed “map database”
`
`1.
`While Petitioner does not specifically explain how Elliot meets the “map
`
`database” element of claim 18, all of the descriptions in Elliot relied upon by
`
`Petitioner fail to disclose the claimed “map database”. Petitioner generally points to:
`
`(1) “[a] web server with its associated files provides graphical maps capable of
`
`showing the current and historical locations of the device” (Paper 6 at 31; Paper 18 at
`
`16 (quoting Ex. 1003, col. 3, ll. 2-4)) and (2) “[m]any commercial software programs
`
`are available for producing and manipulating graphics and images including road map
`
`graphics images” (Paper 6 at 31-32; Paper 18 at 16 (quoting Ex. 1003, col. 9, ll. 17-
`
`27)). In other words, Petitioner argues that a general description of a web server that
`
`provides graphical maps and commercial software programs for producing and
`
`manipulating graphics images somehow disclose the claimed “map database”. Ex.
`
`2016 at ¶ 27. Indeed, neither of these general passages from Elliot describe the “map
`
`database” of claim 18. Id.
`
`The “web server” that provides graphical maps in Elliot does not and cannot
`
`describe a “map database”. See Paper 6 at 31; Paper 18 at 16 (quoting Ex. 1003, col.
`
`3, ll. 2-4); Ex. 2016 at ¶ 28. The terms “map” and “database” are commonly used
`
`terms. Ex. 2016 at ¶ 28. For instance, the ordinary and customary meaning of the
`
`
`
`-10-
`
`
`
`term map “database” as understood by a person of ordinary skill in the art as well as a
`
`layperson is a collection of map data that is organized so that it can easily be accessed,
`
`searched, managed, and updated. See Dictionary of Computer Words, Houghton
`
`Mifflin Company (1998), Ex. 2017 at 61 (database: “An organized collection of
`
`information that can be searched, retrieved, changed, and sorted using a collection of
`
`programs known as a database management system.”); Personal Computer Dictionary,
`
`Random House (2nd Ed. 1996), Ex. 2018 at 126 (database: “A collection of
`
`information organized in such a way that a computer program can quickly select
`
`desired pieces of data.”); Ex. 2016 at ¶ 28. The specification of the ‘970 patent is
`
`consistent with this ordinary and customary meaning of map “database”. See, e.g.,
`
`‘970 patent, Ex. 1001 at col. 4, ll. 15-22 (“correlating between maps stored in the
`
`database (5) and positioning information”); col. 5, ll. 45-50 (“street names derived
`
`from map databases”); col. 2, ll. 46-48 (“[t]he map database may include maps
`
`formatted as at least one of the following . . .”); Ex. 2016 at ¶ 28. Thus, the “web
`
`server” in Elliot fails to describe any data organization, management, or functionality
`
`required for a database. Ex. 2016 at ¶ 28. As such, the description of a “web server”
`
`in Elliot does not describe the claimed “map database” based on the ordinary and
`
`customary meaning of a “database”. Id.
`
`In addition, the “web server” that “provides” graphical maps in Elliot does not
`
`describe where such graphical maps come from—let alone that the graphical maps
`
`
`
`-11-
`
`
`
`come from a “map database,” as required by claim 18. Ex. 2016 at ¶ 29. The
`
`graphical maps, for example, could be downloaded by the “web server” from a
`
`different location, e.g., from a web page on the Internet. Id. There is simply no
`
`disclosure of the source of the graphical maps “provided” by the “web server”
`
`described in Elliot. Id. Nor does the “web server” in Elliot disclose that it “provides”
`
`anything other than graphical maps, including map data or information pertaining to
`
`the graphical maps such as street names. Ex. 1001, col. 5, ll. 45-50 (“. . . supply
`
`locations as coordinates, street names derived from map databases or other location
`
`data . . .”) (emphasis added); Ex. 2016 at ¶ 29.
`
`Petitioner’s reliance on the statement that “[m]any commercial software
`
`programs are available for producing and manipulating graphics and images including
`
`road map graphics images” further confirms that the location system in Elliot does not
`
`disclose a “map database.” See Paper 18 at 16; Ex. 2016 at ¶ 30. If the road map
`
`graphics images are “produced” using software programs, the map information
`
`necessarily is not contained or stored within a database, as required by claim 18. See
`
`Ex. 1001 at col. 4, ll. 15-20 (“The location determination system (1) is also linked to a
`
`map server (4) operating a map engine for accessing a map database (5). The map
`
`server (4) is capable of correlating between maps stored in the database (5) and
`
`positioning information received from the respective location tracking system (11-
`
`14)”) (emphasis added); Ex. 2016 at ¶ 30.
`
`
`
`-12-
`
`
`
`Elliot does not disclose the claimed “map engine”
`
`2.
`Similarly, Petitioner fails to explain how Elliot meets the “map engine” element
`
`of claim 18: “a map engine for manipulating said map database.” In support of its
`
`anticipation by Elliot argument, Petitioner generally relies on two passages: (1)
`
`“[m]any commercial software programs are available for producing and manipulating
`
`graphics and images including road map graphics images” (Paper 6 at 31-32; Paper 18
`
`at 16 (quoting Ex. 1003, col. 9, ll. 17-27)) and (2) “[t]he ‘X’ mark for pointing to the
`
`current location of the child (i.e., the device) may be superimposed in the map image.”
`
`(Paper 6 at 32; Paper 18 at 16 (quoting Ex. 1003, col. 9, ll. 28–30)); Ex. 2016 at ¶ 31.
`
`Thus, Petitioner contends that a suggestion of commercially available software
`
`programs for producing and manipulating graphics images and a description of
`
`superimposing a mark on a map image somehow disclose the claimed “map engine”.
`
`Ex. 2016 at ¶ 30. Indeed, neither of these general passages from Elliot describe the
`
`“map engine” of claim 18. Id.
`
`The term “engine” is a commonly used term in conjunction with databases. Ex.
`
`2016 at ¶ 32. For instance, the ordinary and customary meaning of the term map
`
`database “engine” as understood by a person of ordinary skill in the art and a
`
`layperson is a program or module for accessing, searching, managing, and updating
`
`the map database. Id.; see Webster’s New World Dictionary of Computer Terms,
`
`Macmillan (5th ed. 1994), Ex. 2019 at 208 (engine: “The portion of the program that
`
`
`
`-13-
`
`
`
`determines how the program manages and manipulates data. Another name for
`
`processor.”). Indeed, the specification of the ‘970 patent and the express language of
`
`claim 18 is consistent with this ordinary and customary meaning of map database
`
`“engine”. See Ex. 1001 at col. 4, ll. 16-17 (“a map server (4) operating a map engine
`
`for accessing a map database”); col. 4, ll. 55-58 (“[t]he location determination system
`
`(1) passes the location of the vehicle (22) to the map server (4) which obtains a map of
`
`the area in which the vehicle (22) is located using the map engine . . .”); claim 18 (“a
`
`map engine for manipulating said map database”); Ex. 2016 at ¶ 32.
`
`The description in Elliot suggesting commercially available software programs
`
`for producing and manipulating graphics images is inapposite to and does not disclose
`
`the claimed “map engine”. See Paper 18 at 16; Ex. 2016 at ¶ 33. There is simply no
`
`disclosure of the functions of a map database engine, such as accessing, searching,
`
`managing, and updating the map database. Id. Moreover, as discussed above, Elliot
`
`does not disclose a “map database”; therefore, it necessarily also does not disclose a
`
`“map engine for manipulating said map database,” as required by claim 18. Id.
`
`Likewise, while Elliot describes modifying a map image by superimposing a
`
`mark on the map image, it fails to disclose a map engine that functions to manipulate
`
`the “map database” as claimed. Ex. 2016 at ¶ 34. Merely superimposing or
`
`overlaying a “X” mark on a map image does not teach a person of ordinary skill in the
`
`art to use a program or module to access, search, manage, or update a map database.
`
`
`
`-14-
`
`
`
`Id. Thus, none of the descriptions in Elliot relied upon by Petitioner disclose the
`
`claimed “map engine”. Id.
`
`3.
`
`Elliot does not disclose “each one of said mobile platform
`location systems being associated with a map database and
`map engine”
`
`The system architecture of the ‘970 patent requires that each mobile platform
`
`location system be associated with a “map database” and a “map engine”. See Ex.
`
`1001, FIGS. 1 and 3 (showing that the location determination system 1 is associated
`
`with the map database 5); Ex. 2016 at ¶ 35. For example, the “map database” and
`
`“map engine” recited in claim 18 allow a system subscriber to customize a map by
`
`selecting which data to be incorporated on the map or the level of detail displayed on
`
`the map, such as street names, etc. Ex. 1003, col. 5, ll. 13-18 (“As an automatic
`
`procedure, or upon request of a subscriber, selected or all data on the location
`
`determined by the location determination system (1) that is available from the
`
`databases is obtained from the location data sever (120) by the map server (4) and
`
`incorporated in the output map.”); id. at col. 5, ll. 45-50 (discussing street names
`
`derived from map databases); Ex. 2016 at ¶ 35.
`
`The ‘970 patent’s specific system architecture, including the associated “map
`
`database” and “map engine,” also enables dynamic functions such as supplying
`
`navigation information, managing movement of resources, such as for route planning
`
`between multiple destinations, billing and/or advertising and emergency service
`
`
`
`-15-
`
`
`
`management. See Ex. 1001, col. 5, ll. 37-42, FIG. 3; Ex. 2016 at ¶ 36. Such dynamic
`
`functionality is achieved in the ‘970 patent using the mobile platform location systems
`
`associated with a corresponding “map database” and “map engine,” as required by
`
`claim 18. Ex. 2016 at ¶ 36. In contrast, as discussed above, the “web server 34” in
`
`Elliot fails to describe any associated “map database” or “map engine”. See Paper 18
`
`at 16; Ex. 1003, FIG. 3; Ex. 2016 at ¶ 36. Elliot simply teaches superimposing an “X”
`
`mark to depict the location of the tracked device on a static map image; therefore,
`
`Elliot fails to disclose each and every element as set forth in claim 18. Ex. 2016 at ¶
`
`36.
`
`III. Conclusion
`For at least the foregoing reasons, Patent Owner respectfully requests that
`
`Board to deny the proposed ground of rejection that Elliot anticipates independent
`
`claim 18.
`
`
`
`
`
`Dated: August 11, 2014
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`-16-
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 11th day of August, 2014, a true and correct copy of
`
`the foregoing Locationet Systems, Ltd.’s Patent Owner Response was served on the
`
`following counsel for Petitioner Wavemarket, Inc. d/b/a Location Labs via email and
`
`Federal Express Mail:
`
`
`
`
`mark.hogge@dentons.com
`scott.cummings@dentons.com
`
`
`
`
`
`Mark L. Hogge
`Scott W. Cummings
`Dentons US LLP
`1301 K Street, N.W., Suite 600
`Washington DC 20005
`Tel: (202)408-6400
`Fax: (202)408-6399
`
`Dated: August 11, 2014
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`
`
`
`
`-17-
`
`
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