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 IPR2014-00199
`Patent 6,771,970
`_____________________
`
`PETITIONER'S REPLY TO PATENT OWNER'S RESPONSE
`
`
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`WAVEMARKET, INC. D/B/A LOCATION LABS
`Petitioner
`
`v.
`
`LOCATIONET SYSTEMS, LTD.
`Patent Owner
`
`_____________________
`
`Case IPR2014-00199
`Patent 6,771,970
`_____________________
`
`PETITIONER'S REPLY TO PATENT OWNER'S RESPONSE
`
`
`
`Table of Contents
`
`Page
`INTRODUCTION.............................................................................................1
`I.
`II. ELLIOT ANTICIPATES EACH AND EVERY ELEMENT OF CLAIM 18 2
`A.
`Elliot Discloses the Claimed "Map Database"...............................................3
`B.
`Elliot Discloses a "Map Engine for Manipulating Said Map Database" .......8
`C.
`Elliot Discloses "Each One of Said Mobile Platform Location Systems
`Being Associated with a Map Database and Map Engine"..........................13
`III. DR. MANDAYAM IS NOT AN EXPERT IN MAPPING SOFTWARE OR
`MAPPING SYSTEMS ARCHITECTURE....................................................13
`IV. CONCLUSION ...............................................................................................14
`
`
`
`I.
`
`INTRODUCTION
`
`The Petition1 demonstrated that each and every element of claim 18 is
`
`disclosed by Elliot, and is thus anticipated. The Patent Owner ("PO") made no
`
`substantive challenge to the proposed grounds in its Preliminary Response, and the
`
`Board agreed that Petitioner made the requisite threshold showing that claim 18 is
`
`anticipated by Elliot.2 A careful reading of the PO's Response reveals that the
`
`actual grounds set forth in the Petition, as well as the actual rationale set forth in
`
`the Board's Decision, remain unchallenged. Instead, the PO's Response and
`
`Declaration of its expert recast the actual grounds asserted in the Petition and the
`
`Board's actual rationale into a reformulation that conveniently omits critical
`
`teachings and information alleged in the Petition. Furthermore, the PO improperly
`
`attempts to import limitations from dictionary definitions into the claim that not
`
`only go beyond the plain language of the claim 18, but also go beyond the scope
`
`1 Corrected Petition for Inter Partes Review of U.S. Patent No. 6,771,970 Pursuant
`
`to 35 U.S.C. §§ 311-312 and 37 C.F.R. §§ 42.100-106, 108 (December 19, 2013;
`
`Paper No. 5; "Petition").
`
`2 Decision - Institution of Inter Partes Review - 37 C.F.R. §42.108 (May 9, 2014;
`
`Paper No. 18; "Decision").
`
`1
`
`
`
`and content of anything that could be reasonably argued as encompassed by the
`
`disclosure of the '970 patent as a whole.
`
`Furthermore, the PO relies on the opinions of its expert, Dr. Mandayam,
`
`with respect to whether Elliot discloses a "map engine" or "map database."
`
`However, neither the PO nor Dr. Mandayam identify any support for the
`
`proposition that Dr. Mandayam is an expert in mapping software or mapping
`
`systems architecture. Therefore, to the extent his testimony on the subject is not
`
`entirely disregarded, it should be weighed in view of Dr. Mandayam's own
`
`admitted lack of knowledge in this area.
`
`II.
`
`ELLIOT ANTICIPATES EACH AND EVERY ELEMENT OF
`CLAIM 18
`The PO's arguments are limited to the following three limitations of claim 18:
`
`(i) "map database"; (ii) "map engine" for manipulating said map database ; and (iii)
`
`that each one of the mobile platform location system is "associated with" a
`
`corresponding map database and map engine.3 The disputed portion of Claim 18 is
`
`reproduced below.
`
`(b) at least one mobile platform location system coupled to said
`location server for receiving the mobile platform identity and map
`information that pertains to mobile platforms associated with the
`
`3 Locationet Systems Ltd.'s Patent Owner Response (August 11, 2014; Paper No.
`
`34; "PO Response"), pp. 1-2.
`
`2
`
`
`
`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;
`
`The PO does not dispute the fact that Elliot anticipates all other elements of
`
`claim 18.
`
`A.
`
`Elliot Discloses the Claimed "Map Database"
`
`With regard to this element of claim 18, the PO argues:
`
`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'. . .
`The 'web server' that provides graphical maps in Elliot does not and
`cannot describe a 'map database'. (PO Response, p. 10.)
`Nowhere does the Petition or the Board's Decision allege that the Web
`
`server disclosed by Elliott satisfies the claimed "map database." For example, the
`
`PO acknowledges that both the Petition and the Decision cite "[a] web server with
`
`its associated files provides graphical maps capable of showing the current and
`
`historical locations of the device" (emphasis added). Elliot, 3:2-4. The PO ignores
`
`the fact that this portion of the cited Elliot disclosure includes not only a server, but
`
`a collection of graphical map files as well. The PO's expert witness even
`
`acknowledges that Elliot discloses not only a server, but also a collection of
`
`graphical map files. Exhibit 1019; p. 40, ln. 18 - p. 41, ln. 3.
`
`3
`
`
`
`However, neither the PO nor its expert, explain why the collection of
`
`graphical map files fail to satisfy the claimed "map database." This is because
`
`the explicit disclosure of Elliot makes it crystal clear that the above-mentioned
`
`collection of graphical map files constitute the claimed "map database."
`
`Elliot is explicit that "graphical maps" or a "graphical display of a map" is a
`
`specific type of what Elliot more generally refers to as "location references."
`
`wherein said location reference recognizable to said first party is a
`graphical display of a map of an area surrounding the most current
`location of said portable device (Elliot, claim 10)
`The prior art systems provide neither a translation to more commonly
`recognized geographical location references, such as addresses,
`graphical maps and zip codes . . . (Elliot, 2:11-13)
`The "collection" of location references (i.e., maps) is explicitly in the form
`
`of a database:
`
`It receives the transmission from the device, and translates the GPS
`coordinates to a commonly recognized location reference. It stores
`location references in a database, and provides various means for a
`user (parent) to interface with the system to observe current and
`historical location data. (Elliot, 5:52-57; emphasis added)
`Next, a translation process 28 translates the GPS coordinates to a
`commonly recognized location reference. . . The translated data
`signals are stored as records in a translated record database 30.
`(Elliot, 6:36-37, 64-67; emphasis added)
`
`4
`
`
`
`The web server 34 provides a subscriber parent with the location data
`stored in the translated records database 30 in various formats which
`may include a graphical display embedded in a web page. The
`graphical map display may generally be transmitted to the subscriber
`parent's computer by incorporating a graphic source file for the map
`into an HTML page document as an inline graphics image element
`(Elliot, 7:6-13; emphasis added)
`
`Elliot, Fig. 3 (annotated).
`Thus, in light of at least the above-referenced disclosure of Elliot, and as
`
`further explained in the Declaration of Craig Rosenberg, Ph.D. ("Exhibit 1020";
`
`see, ¶¶ 12-26) one of ordinary skill in the art would clearly understand that the
`
`"associated files" that provides the source of graphical maps to the server constitute
`
`what Elliot expressly discloses as a map database (e.g. 30, Fig. 3). Not only does
`
`Elliot explicitly characterizes the collection of map files as a "database," it makes
`
`clear that the files contained in the database are organized in a way that makes
`
`them accessible. Exhibit 1020, ¶21. For instance, Elliot expressly discloses that
`
`5
`
`
`
`the server (34) can access the files contained in the database (30) and provide the
`
`graphical map files to a subscriber. See, e.g., Elliot, 7:1-13.
`
`The PO also makes the meritless argument that "[t]here is simply no
`
`disclosure of the source of the graphical maps 'provided' by the 'web server'
`
`described in Elliot." PO Response, p. 12. As explained above, this assertion is
`
`obviously false; the collection of graphical maps or map database (30) is the source
`
`of the maps provided by the server (34) in Elliot. To the extent that the PO
`
`contends that claim 18 requires identification of the origin or "source" of the maps
`
`contained within the map database (30), this is clearly not the case. Claim 18
`
`simply recites a "map database," without any requirement whatsoever as to the
`
`source or origin of the maps contained within the map database. Exhibit 1020, ¶¶
`
`19-20.
`
`As further noted in the Petition and the Decision, Elliot also discloses that
`
`"[m]any commercial software programs are available for producing and
`
`manipulating graphics and images, including road map graphics images." Elliot:
`
`9:17-19. Both the PO and its expert argue that this disclosure of Elliot "confirms
`
`that the location system in Elliot does not disclose a 'map database'." PO Response,
`
`p. 12. The argument appears to be based solely upon an unstated, and completely
`
`unsupported, strained interpretation of the word "producing." The PO and its
`
`expert appear to take the position that Elliot uses the term "producing" as meaning
`
`6
`
`
`
`that the commercial software programs actually draw the maps. This argument is
`
`compelling evidence of the PO and its expert's lack of understanding and
`
`knowledge of such mapping systems. Commercially available systems for
`
`providing graphical map information to an online requester/subscriber
`
`predominately serve map information stored in a database, they do not draw maps
`
`on demand. Exhibit 1020, ¶ 26. Contrary to the PO's assertions, the above
`
`quoted disclosure of Elliot reinforces the inescapable conclusion that the location
`
`determination system described therein includes a map database.
`
`It would be
`
`completely unfeasible and impractical to design a system that drew or rendered a
`
`requested map, and then served the map that it had just created to an online
`
`requester/subscriber. Id. Both the amount of computing resources necessary to
`
`operate such a system, as well as the delay times involved in drawing maps on-the-
`
`fly as they are requested, make clear that the PO and its expert's interpretation of
`
`the above quoted disclosure of Elliot is completely divorced from reality. Id.
`
`For at least the reasons explained above, the PO's arguments lack relevance
`
`because they take issue with positions never asserted in the Petition or the Decision,
`
`and are based on claim constructions that improperly import limitations into the
`
`claim. Furthermore, the argument that Elliot fails to disclose a "map database" is
`
`squarely at odds with the explicit disclosure of Elliot.
`
`7
`
`
`
`B.
`
`Elliot Discloses a "Map Engine for Manipulating Said Map
`Database"
`The PO and its expert incorrectly argue that "[p]etitioner 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'." PO Response, p. 13; Exhibit
`
`2016, ¶31. Again, the PO completely mischaracterizes the contents of the Petition
`
`as well as the Board's Decision. As accurately summarized by the Board in its
`
`Decision, and even acknowledged by the PO, the Petition cites to at least four
`
`different portions of the Elliot disclosure as satisfying the disputed portion of claim
`
`18: (1) "Web server 34 [] functions as a web interface for [] central control system
`
`[20] . . , (2) "Web server [34] with its associated files provides graphical maps
`
`capable of showing the current and historical locations of [] device [12]," . . . , (3)
`
`"[m]any commercial software programs are available for using and manipulating
`
`graphics and images, including road map graphics images. Such graphical map
`
`images may be displayed within a webpage when a web browser runs a
`
`document," . . . and (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." Decision, p. 16;
`
`PO Response, pp. 2-3.
`
`However, the PO's and its expert's strategy of framing the issue in a manner
`
`that selectively ignores facts that are contrary to its position, and improperly
`
`8
`
`
`
`imports limitations into the claims, must once again fail in light of the express
`
`disclosure of Elliot.
`
`The plain language of claim 18 of the '970 Patent simply requires a "map
`
`engine for manipulating said map database." With respect to the recited map
`
`engine, the specification mentions a "map engine" in only two instances:
`
`The location determination system (1) is also linked to a map server (4)
`operating a map engine for accessing a map database (5). ('970
`Patent, 4:15-17; emphasis added)
`The 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 . . . ('970
`Patent, 4:55-58; emphasis added)
`The specification contains no discussion of the term "manipulating" said
`
`map database. However, in light of the above, it must be presumed that accessing
`
`and/or obtaining a map from a map database reads on the claimed "manipulating"
`
`of the map database. To contend otherwise would exclude the only disclosed "map
`
`engine" from the scope of claim 18, and be inconsistent with the '970 Patent
`
`specification. Exhibit 1020, ¶¶ 27-29.
`
`By contrast, the PO's expert takes the position that the map engine of claim
`
`18 must be construed as not only "manipulating said map database," but as "a
`
`program or module for accessing, searching, managing and updating the map
`
`database." Exhibit 2016; ¶32 (emphasis added). Nowhere does claim 18, or
`
`9
`
`
`
`anywhere else in the specification of the '970 Patent, contain any suggestion or
`
`requirement whatsoever that the claimed "map engine for manipulating said map
`
`database" must be construed as a "program or module" providing the additional
`
`functionality of "searching, managing and updating the map database." The PO
`
`expert's strained construction is not even consistent with the dictionary definition
`
`cited by the PO in support of its construction.4 The PO's construction is nothing
`
`more than an attempt to import limitations into the claim that do not exist, and is in
`
`clear violation of the broadest reasonable interpretation standard.
`
`A comparison of the plain language of claim 18, interpreted consistently
`
`with the specification of the '970 patent, with the disclosure of Elliot leaves no
`
`doubt that Elliot discloses a "map engine for manipulating said database."
`
`As noted in both the Petition and the Decision, Elliot discloses "[a] web
`
`server with its associated files provides graphical maps capable of showing the
`
`current and historical locations of the device." Elliot, 3:2-4. The interaction
`
`between the web server (34) and its associated files is described by Elliot as
`
`follows:
`
`Different types of interfaces may be provided to the translated records
`30 to provide several advantages in the present invention. These
`
`4 Exhibit 2019: engine - The portion of a program that determines how the
`
`program manages and manipulates data. Another name for processor.
`
`10
`
`
`
`interfaces include a web server 34 which functions as a Web interface
`for the central control system to enable web access to the central
`control system; an operator service call center 36; and a VRU. The
`web server 34 provides a subscriber parent with the location data
`stored in the translated records database 30 in various formats
`which may include a graphical display embedded in a web page. The
`graphical map display may generally be transmitted to the subscriber
`parent's computer by incorporating a graphic source file for the map
`into an HTML page document as an inline graphics image element.
`(Elliot, 7:1-13; emphasis added)
`Thus, it is clear that Elliott discloses that the Web server (34) accesses and
`
`obtains graphical map files from the map database (30) and serves them to the
`
`subscriber. As alluded to above, accessing and obtaining map files from the map
`
`database reads on the recited "manipulating said map database" functionality
`
`associated with the map engine. This interpretation is entirely consistent with the
`
`disclosure of the functionality of the map engine contained in the '970 patent. Thus,
`
`the Web server (34) of Elliot that is disclosed as accessing and obtaining map files
`
`from the map database necessarily constitutes or includes a "map engine for
`
`manipulating said map database." Exhibit 1020, ¶¶ 32-34.
`
`As further noted in the Petition and Decision, "[m]any commercial software
`
`programs are available for producing and manipulating graphics and images,
`
`including roadmap graphics images. Such graphical map images may be displayed
`
`within a webpage. . ." (Elliott, 9:17-20;emphasis added). As would be readily
`
`11
`
`
`
`apparent to those of ordinary skill in the art, this portion of the Elliott disclosure
`
`refers to software used by the Web server 34 for producing a webpage containing a
`
`map. Elliot, Fig. 4; Exhibit 1020, ¶ 35. An even more fundamental principle is
`
`that a server necessarily performs such functionality through the execution of
`
`software. Id. Therefore, it would be readily apparent to those of ordinary skill in
`
`the art that the web server (34) functionality disclosed by Elliott of accessing and
`
`obtaining map files from the map database (30) necessarily involves the execution
`
`of software code by the server 34. Id. Therefore, although not required by the
`
`plain language of claim 18, or any reasonable interpretation of the specification of
`
`the '970 patent, even if the "map engine" were to be interpreted as requiring a
`
`program or module (i.e., code) the disclosure of Elliott still satisfies this additional
`
`unclaimed aspect of a "map engine."
`
`Finally, it must be noted that those persons of ordinary skill in the art
`
`understand that in order for a database to be functional there must be some means
`
`of accessing the stored data. Exhibit 1020, ¶ 31. Thus, just as a car needs an
`
`engine to be functional, a database also requires an "engine" for manipulating the
`
`database to be functional. Id. Elliot clearly discloses this commonplace
`
`architecture and interaction between web server (34) and map database (30).
`
`12
`
`
`
`C.
`
`Elliot Discloses "Each One of Said Mobile Platform Location
`Systems Being Associated with a Map Database and Map Engine"
`The only reason offered by the PO or its expert as to why Elliot fails to
`
`disclose the above quoted aspect of claim 18 is that Elliot fails to disclose a "map
`
`database" or "map engine." PO Response, pp. 15-16. The PO does not contend
`
`that Elliot fails to disclose at least one mobile platform location system. However,
`
`for at least the reasons explained above, Elliott does indeed disclose these aspects
`
`of claim 18. Thus, this argument is effectively rebutted for at least the same
`
`reasons previously noted herein.
`
`III. DR. MANDAYAM IS NOT AN EXPERT IN MAPPING SOFTWARE
`OR MAPPING SYSTEMS ARCHITECTURE
`
`The PO's expert witness, Dr. Narayan Mandayam, testifies solely on the
`
`subjects of map databases, map engines, their meaning to those of ordinary skill in
`
`the art, and their functionalities in location determination systems. However,
`
`neither Dr. Mandayam nor the PO identify any qualifications that demonstrate
`
`sufficient expertise in these technologies. Dr. Mandayam was specifically asked to
`
`identify relevant experience in these areas during his deposition. The only
`
`experience identified as demonstrating expertise in these areas was as a user of
`
`software that Dr. Mandayam neither designed, programmed, nor installed. Exhibit
`
`1019, p. 11, ln. 12 - p. 14, ln. 9. In fact, Dr. Mandayam could not even recall if he
`
`13
`
`
`
`used a map engine to retrieve a map from a map database as a user on this software.
`
`Exhibit 1019, p. 14, ln. 23 - p. 15, ln. 3.
`
`It is respectfully submitted that using third-party software in connection
`
`with a single project in New Jersey does not qualify Dr. Mandayam as an expert in
`
`the above-mentioned subject areas.
`
`By contrast, Petitioner's expert, Dr. Craig Rosenberg, is infinitely more
`
`familiar with mapping software, mapping systems and architecture, and their
`
`functionality in location determination systems. See, e.g., Exhibit 1020, ¶¶ 4-9.
`
`Therefore, to the extent Dr. Mandayam's direct testimony is not completely
`
`disregarded, the Board should weigh the expert testimony in this case appropriately
`
`in light of the disparity in qualifications between the two experts.
`
`IV. CONCLUSION
`
`The PO's misplaced arguments are entirely inadequate to displace the
`
`Board's initial finding that there is a substantial likelihood that claim 18 is
`
`anticipated by Elliott. This finding has only been reinforced by the PO's refusal to
`
`address the most relevant teachings of Elliott cited in both the Petition and
`
`Decision, as well as its inability to produce corroborating evidence in the form of
`
`testimony by an expert that is truly qualified to opine on the subjects of map
`
`14
`
`
`
`databases, map engines, and their functionalities within location determination
`
`systems.
`
`Dated: November 10, 2014
`
`Respectfully submitted,
`Dentons US LLP
`
`By: /Scott W. Cummings /
`
`Mark L. Hogge, Reg. No. 31,622
`Email: mark.hogge@dentons.com
`
`Scott W. Cummings, Reg. No. 41,567
`Email: scott.cummings@dentons.com
`
`Attorneys for Petitioner
`
`15
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing PETITIONER'S REPLY
`
`TO PATENT OWNER'S RESPONSE, PETITIONER'S UPDATED EXHIBIT
`
`LIST PURSUANT TO 37 C.F.R. § 42.63(e), and EXHIBITS 1019-1020, were
`
`served via FedEx Priority Overnight, in its entirety on Attorneys of record in
`
`IPR2014-00199.
`
`Thomas Engellenner
`
`Reza Mollaaghababa
`
`Pepper Hamilton LLP
`
`125 High Street
`
`Andy Chan
`
`Pepper Hamilton LLP
`
`333 Twin Dolphin Dr.
`
`Suite 400
`
`19th Floor, High Street Tower
`
`Redwood City, CA 94065
`
`Boston, MA 02110
`
`Dated: November 10, 2014
`
`By:
`
`/Nona Durham/_________
`
`Nona Durham
`Paralegal
`
`16
`
`
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