UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION and HTC AMERICA, INC.
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`Petitioners
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`v.
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`WIRELESS MOBILE DEVICES LLC and
`TELECOMMUNICATION SYSTEMS, INC.
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 7,321,826 B2
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`DECLARATION OF JAMES OLIVIER IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,321,826 B2
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`TABLE OF CONTENTS
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`INTRODUCTION AND SUMMARY OF OPINIONS ............................. 1
`I.
`II. QUALIFICATIONS AND EXPERIENCE ................................................ 4
`A.
`Education and Work Experience ...................................................... 4
`B. Compensation ..................................................................................... 6
`C. Documents and Other Materials Relied Upon ................................ 6
`III. STATEMENT OF LEGAL PRINCIPLES ................................................ 7
`A. Claim Construction ............................................................................ 7
`B. Anticipation ......................................................................................... 7
`C. Obviousness ......................................................................................... 7
`IV. LEVEL OF ORDINARY SKILL IN THE ART ....................................... 8
`V.
`TECHNOLOGY BACKGROUND OF CLAIMED SUBJECT
`MATTER OF 826 PATENT ........................................................................ 9
`VI. OVERVIEW OF THE 826 PATENT ....................................................... 13
`VII. LACK OF SUPPORT IN PROVISIONAL APPLICATION FOR
`ALL-SOFTWARE CLAIMS ..................................................................... 16
`VIII. IDENTIFICATION OF THE PRIOR ART AND SUMMARY OF
`OPINION ..................................................................................................... 21
`IX. CLAIMS CONSTRUCTION ..................................................................... 21
`A.
`“Mobile Device” ................................................................................ 22
`B.
`“Best categorical rating search” ..................................................... 23
`C.
`“Favorites rating search" ................................................................ 24
`D.
`“Average rating search” .................................................................. 24
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`HTC Exhibit 1008
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`K.
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`M.
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`E.
`F.
`G.
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`H.
`I.
`J.
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`“A user rating of the point of interest” .......................................... 25
`“A navigational device” ................................................................... 25
`“Means for retrieving, via a global positioning system, a
`real-time position information of a mobile device” ....................... 26
`“Means for receiving a search request” ......................................... 27
`“Means for causing the display of [an item]” ................................ 28
`“Means for receiving an input designating one of said
`plurality of search methods” ........................................................... 29
`“Means for retrieving, from a database, location
`information associated with at least one point of interest.” ......... 30
`“Means for determining a distance between the real-time
`position and a location of the at least one point of interest” ........ 31
`“Means for determining a time of arrival from the real-time
`position and the location of the at least one point of interest” ..... 32
`X. UNPATENTABILITY OF THE 826 PATENT CLAIMS ...................... 33
`A. Obradovich anticipates claims 1 and 11 , and renders claims
`2-4, 5 and 12-15 obvious when combined with Nanba, Devitt
`or Weiner ........................................................................................... 33
`i) Claims 1 and 11 are anticipated by Obradovich (Ground
`1 in the HTC IPR PETITION): ............................................ 34
`ii) Claims 2-3 and 12-13 are rendered obvious by
`Obradovich and Nanba (Ground 3 in the HTC IPR
`PETITION): ........................................................................... 36
`iii) Claims 4 and 14 are rendered obvious by Obradovich
`and Devitt (Ground 4 in the HTC IPR PETITION): ......... 39
`iv) Claims 5 and 15 are rendered obvious by Obradovich
`and Weiner (Ground 5 in the HTC IPR PETITION): ....... 41
`TABLE 1 ........................................................................................... 43
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`B. Ramaswamy anticipates claims 1-2 and 11-12, and renders
`obvious claims 3-5 and 13-15 when combined with Sato or
`Devitt .................................................................................................. 48
`i) Claims 1-2 and 11-12 are anticipated by Ramaswamy
`(Ground 2 in the HTC IPR PETITION): ............................ 49
`ii) Claims 3 and 13 are rendered obvious by Ramaswamy
`and Sato (Ground 6 in the HTC IPR PETITION): ............ 51
`iii) Claims 4-5 and 14-15 are rendered obvious by
`Ramaswamy and Devitt (Ground 7 in the HTC IPR
`PETITION): ........................................................................... 53
`TABLE 2 ........................................................................................... 55
`C. Additional Evidence by Vehicle Navigation Survey of
`Commercial Navigation Systems in April of 2000 and
`Further Comments on Obradovich and Ramaswamy ................. 62
`ATTACHMENTS A-E
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`I.
`INTRODUCTION AND SUMMARY OF OPINIONS
`1. My name is James Olivier, and I am currently an independent consultant
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`working on various technology areas including telecommunications and data
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`communications technology.
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`2.
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`I have been engaged by HTC Corporation and HTC America Inc.
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`(collectively “HTC”) to investigate and opine on claims 1-5 and 11-15 of U.
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`S. Patent No. 7,321,826 B2 entitled “POINT OF INTEREST SPATIAL
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`RATING SEARCH” (“the 826 Patent”) in HTC’s Petition for Inter Partes
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`Review of the 826 Patent (the “HTC IPR Petition”) which requests the
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`Patent Trial and Appeal Board (“PTAB”) to review and cancel claims 1-5
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`and 11-15 of the 826 Patent. I have also been engaged by HTC to investigate
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`and opine on the three other U.S. Patent Nos. 7,082,365 (“the 365 Patent),
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`8,014,939 (“ the 939 Patent”) and 8,301,371 (“the 371 Patent”) in IPR
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`proceedings which are related to, and share essentially the same
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`specification with, the 826 Patent.
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`3.
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`In simple terms, claims 1-5 and 11-15 of the 826 Patent attempt to claim
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`retrieving information associated to a point of interest, such as a restaurant
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`by retrieving the real-time position information of a mobile device, receiving
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`a search request, displaying multiple search methods, receiving the selection
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`of one of those search methods, retrieving location information regarding the
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`point of interest (“POI”) based on the selected search method, and
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`displaying the retrieved information. It is my opinion that the claims of the
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`826 Patent contain nothing novel and are either anticipated or obvious over
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`the prior art. The dependent claims merely add additional routine and
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`common features, such as determining a distance between the POI and
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`current location of the user, providing user ratings of the point of interest
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`and others that were well known at the time.
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`4.
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`At a high level, the 826 Patent seeks to claim different types of searches
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`being performed by use of a database for a navigational device. Performing
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`searches that involves the use of a database was a well-understood concept
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`and was even taught in undergraduate computer science classes since the
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`1980s. Performing a search which retrieves different elements from a
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`database, e.g., location information, ratings, favorites, and the like certainly
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`was well known at the time.
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`5.
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`Other claimed aspects of the 826 Patent, e.g., calculating the distance
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`between two points or estimating time of arrival knowing the distance
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`between two points and a velocity, were also well known at the time and can
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`be found in many basic science or physics textbooks at high school and
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`college levels.
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`HTC Exhibit 1008
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`6.
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`To support my opinions stated in this Declaration, I have further been asked
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`to provide an overview of the technology. In this Declaration, I will discuss
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`the technology related to the 826 Patent, including an overview of that
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`technology as it was known at the time of the earliest filing of the
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`application – August 16, 2001 – to which the 826 Patent claims priority.
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`7.
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`This Declaration is based on information currently available to me. To the
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`extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of
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`documents and information that may be produced, as well as testimony from
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`depositions that may not yet be taken.
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`8.
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`In forming my opinions, I have relied on the 826 Patent, the Exhibits to the
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`Petition for Inter Partes Review of the 826 Patent, and my own experience
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`and expertise of the relevant technologies and systems that were already in
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`use prior to, and within the timeframe of the earliest priority date of the
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`claimed subject matter in the 826 Patent – August 16, 2001.
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`9.
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`I have also read the provisional application no. 60/313,010 which is listed on
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`the face of the 826 Patent as a related patent application that was filed on
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`August 16, 2001. As I will discuss in more detail in this Declaration, it is my
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`opinion that some of the steps that are claimed in the 826 Patent, if viewed
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`based on the description in the provisional application, could be done by
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`hardware and not software at the relevant time. For example, the step
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`“retrieving, via a global positioning system, a real-time position information
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`of the mobile device, said real-time position information indicating a real-
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`time location of the mobile device” that is part of claim 1 of the 826 patent
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`could be accomplished with hardware only.
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`10. The subsequent sections of this Declaration will first provide my
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`qualifications and experience and then describe details of my analysis and
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`observations.
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`II. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
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`11.
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`I received my Master’s in Electrical Engineering in 1985 from The Ohio
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`State University. My main area of study was computer design and software
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`engineering and my thesis was entitled “A Navigation System for a Vehicle
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`with a Laser Rangefinder.” My thesis explored the determination of the best
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`route for a vehicle to travel based on differentiating criteria such as safety
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`and desirability of particular alternative paths.
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`12.
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`I received my Ph.D. in Electrical Engineering from The Ohio State
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`University in 1988. In addition to Electrical Engineering, I also studied and
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`minored in Computer Science, Microelectronics, Semiconductor Fabrication,
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`and Discrete Mathematics.
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`HTC Exhibit 1008
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`13.
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`I am the inventor of U.S. patent No. 8,334,775 issued Dec. 18, 2012 and
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`entitled “RFID-Based Asset Security and Tracking System, Apparatus and
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`Method.” This invention relates to RFID-based GPS tracking system to
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`provide control and security of assets. This system integrates a RFID based
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`detection system with a conventional GPS tracking system. The GPS
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`tracking system includes GPS receivers connected over a network to a
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`centrally based GPS monitoring system.
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`14.
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`I have a diverse background in telecommunications, data networking,
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`database system, GPS based systems, navigation systems, and fault tolerant
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`computing. After receiving my Ph.D. in Electrical Engineering in 1988, I
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`worked at the premier automotive research laboratory in the United States,
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`the General Motors Research Laboratories in Warren Michigan. It was here
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`that I was first exposed to Intelligent Transportation Systems (ITS) and
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`Advance Traveler Information Systems, (ATIS). These programs were spear
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`headed by the U.S. Government and aimed at providing a driver with
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`relevant information such as in-vehicle maps, Yellow Pages and other
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`information, over a decade before the 826 patent was filed. While at the GM
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`Research Labs, I also continued my research into the design of mobile
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`computer systems.
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`15. Since then, I have been involved in a number of data networking projects
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`dealing with mobile computing system, while working on products for
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`telephony and computer networking companies. For example, the cellular
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`switch I worked on at Samsung had a very large object oriented database
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`which I designed. The security function I was responsible for in the Navin
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`Network devices made use of an off-the-shelf database to retain security
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`keys for data sessions.
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`16. A copy of my resume is provided as Attachment A at the end of this
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`Declaration.
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`B. Compensation
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`17.
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`I am being compensated at the rate of $450.00 per hour for the services I am
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`providing in this case. The compensation is not contingent upon my
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`performance, the outcome of this inter partes review or any other
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`proceeding, or any issues involved in or related to this inter partes review.
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`C. Documents and Other Materials Relied Upon
`18. The documents that I rely on for the opinions expressed in this declaration
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`are the 826 Patent, patents related to 826 Patent and the prior art references
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`and information discussed in this Declaration, and any other references
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`specifically identified in this Declaration, in their entirety, even if only
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`portions of these documents or files are discussed here in an exemplary
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`fashion.
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`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
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`19.
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`I understand that, when construing claim terms, a claim subject to inter
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`partes review receives the "broadest reasonable construction in light of the
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`specification of the patent in which it appears." I further understand that the
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`broadest reasonable construction is the broadest reasonable interpretation of
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`the claim language, and that any term which lacks a definition in the
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`specification is also given a broad interpretation.
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`B. Anticipation
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`20.
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`I understand that in order for a patent claim to be valid, what is claimed must
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`be novel under 35 U.S.C. § 102. They have further advised that if each and
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`every element of a claim is disclosed in a single prior art reference, then the
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`claimed invention is anticipated, and the invention is not patentable. In order
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`for the invention to be anticipated, each element of the claimed invention
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`must be described or embodied, either expressly or inherently, in the single
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`prior art reference. In order for a reference to inherently disclose a claim
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`limitation, that limitation must necessarily be present in the reference. I also
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`understand that a prior art reference must be enabling in order to anticipate.
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`C. Obviousness
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`HTC Exhibit 1008
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`21.
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`I understand that obviousness under 35 U.S.C. § 103 as a basis for invalidity
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`is as follows. Where a prior art reference discloses less than all limitations of
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`a given patent claim, that patent claim is invalid if the differences between
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`the claimed subject matter and the prior art reference are such that the
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`claimed subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the relevant art.
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`Obviousness can be based on a single prior art reference or a combination of
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`references that either expressly or inherently, discloses all limitations of the
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`claimed invention.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`22.
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`It is my understanding that the claims and specification of a patent must be
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`read and construed through the eyes of a person of ordinary skill in the art at
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`the time of the priority date of the claims. I also understand that, to
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`determine the appropriate level of a person having ordinary skill in the art,
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`the following factors may be considered: a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; b)
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`the sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; c) the educational level of active workers in
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`the field; and d) the educational level of the inventor.
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`23. The relevant technologies to the 826 Patent are those used in mobile
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`electronics and client server systems.
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`24. Based on the above considerations and the factors, it is my opinion that a
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`person having ordinary skill in the art would have had a bachelor’s degree in
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`electrical engineering, computer science, or a related field, and a few years
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`of working experience in the area of software development relating to
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`database access in mobile computing. This description is approximate and
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`several years’ experience designing and/or developing and/or operating
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`networked computer systems could make up for a lower level of education.
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`Similarly, a higher level of education can make up for less working
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`experience.
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`V. TECHNOLOGY BACKGROUND OF CLAIMED SUBJECT
`MATTER OF 826 PATENT
`25.
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`I understand that, according to USPTO assignment records of the 826 Patent,
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`the 826 Patent is owned by Telecommunication Systems, Inc. Based on
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`information and belief, Wireless Mobile Devices LLC is the exclusive
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`licensee of the 826 Patent and owns substantial rights in this patent, which
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`enable Wireless Mobile Devices LLC to assert the 826 Patent against HTC
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`and other companies. Wireless Mobile Devices LLC and
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`Telecommunication Systems, Inc. are collectively referred to as “Patent
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`Owner” in this Declaration.
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`26. The technology area that relates to the subject matter of the 826 Patent was
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`an extremely crowed field in the mid to late 1990s. In 1991, the U.S.
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`Department of Transportation (USDOT) initiated a new program to address
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`the needs of the emerging Intelligent Transportation Systems (ITS) field
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`which included Advanced Traveler Information Systems, (ATIS) systems.
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`ATIS systems seek to provide the driver with relevant information. An
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`example of an ATIS system is found in the article “Emerging Requirements
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`for Digital Maps for In-Vehicle Pathfinding and Other Traveller Assistance”
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`by Marvin White from Vehicle Navigation and Information Systems
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`Conference, 1991 (Volume:2), provided as Attachment B at the end of this
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`Declaration. This article, which is one of numerous like articles, recognizes,
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`10 years before the priority date of the 826 patent, that applications such as
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`pathfinding, business listings ("Yellow Pages"), cartographically attractive
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`displays, integration with Global Positioning System (GPS) technology, and
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`communications with real-time traffic information services” are proliferating
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`due to the Advanced Traveler Information System (ATIS) technology.
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`27. With respect to providing yellow page and business listing capabilities, the
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`article in Attachment B describes the following statements, which illustrate
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`the subject matter of the claims in the 826 patent was well known more a
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`decade before the priority date of the 826 patent:
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`28.
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`In academia, there was also a push into research for Vehicle Navigation and
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`Information Systems, driven by the ITS initiative of the USDOT. In fact, an
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`annual conference was called “Vehicle Navigation and Information
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`Systems” was held from 1989 to 1996. In these conferences, R&D results
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`and commercial systems related to vehicle navigation were presented and
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`published as conference proceedings.
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`29.
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` By September 1998, this field was further developed and had various
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`commercially available systems. The U.S. Department of Transportation
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`commissioned a study to summarize the Field Operational Tests, FOTs, that
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`had taken place on a number of different commercially available systems.
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`The results were published by Booz –Allen and Hamilton in a publication
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`-11-
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`titled “Advanced Traveler Information Systems”, which is provided at the
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`end of this Declaration in Attachment C. This publication by Booz-Allen
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`summarizes operational tests of a number of en-route traveler information
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`systems that were deployed in 1998 or earlier. Table 1 at page 12 of this
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`report is reproduced below and shows a number of Commercial In Vehicle
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`Navigation Systems and their costs.
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`30.
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`In its Introduction Section, the Booz-Allen publication highlights some of
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`the features of these systems such as “static and real-time information on
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`traffic conditions, and schedules, road and weather conditions, special
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`events, and tourist information … sports scores, stock quotes, yellow pages
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`and current news.”
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`31. For example, the Booz-Allen study on page 5 describes that the Seattle
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`Wide-Area Information for Travelers (ATIS) project included an in-vehicle
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`system that included a GPS to determine the vehicle’s current location, and
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`to provide directions to a selected destination that was chosen from its
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`yellow page directory. The Booz-Allen publication, on page 8, further
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`describes the TavTek system that included in-vehicle route guidance and
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`yellow pages services.
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`32. The implementation and usage the yellow page capability in the navigation
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`systems allowed such systems to obtain information about restaurants and
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`other businesses in a particular geographical area, which are related to the
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`subject matter of claims 1 and 11 of the 826 Patent.
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`33. The above mentioned Government-funded programs and reports, along with
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`numerous conference presentations and publications, and a multitude of
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`commercially available systems show that, prior to 2001, the subject matter
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`of the 826 Patent and its claims were well known.
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`34. The specific prior art patents that are discussed later in this Declaration
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`provide specific examples of many prior art publications that establish that
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`the claims of the 826 Patent are either anticipated or are obvious, and
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`therefore should not have been allowed to be patented.
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`VI. OVERVIEW OF THE 826 Patent
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`35. The 826 Patent and U.S. Patent Nos. 7,082,365 (“the 365 Patent), 8,014,939
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`(“the 939 Patent”) and 8,301,371 (“the 371 Patent”) share the same Abstract,
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`the same Drawing Sheets, the same Field of Invention and Background of
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`the Invention statements and the same Detailed Description. The claims of
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`the 826 Patent, however, are different from the claims of the three other
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`patents.
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`36. The 826 Patent describes methods for searching and retrieving location
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`information associated with points of interest. Figure 1 shows a typical
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`navigational device in a vehicle. The navigation device can be a stand-alone
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`device or connected to a base station via a wireless link. When the device is
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`the standalone type, the database accessed is a local database, Local
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`Database and Application Rating Search Engine (LDARSE). When the
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`device is the on-line type, the wireless connection to the base station is then
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`connected to an Online Database and Application Rating Server Search
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`Engine (ODARSSE).
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`37. The 826 Patent also describes an in vehicle navigation device that searches
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`spatially within a given search zone and retrieves information associated
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`with one or more points of interests. This search can be done using a number
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`of different search methods and criteria, such as based on the distance with
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`respect to the current real-time position of the user and search methods
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`-14-
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`HTC Exhibit 1008
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`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
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`based on different flavors of POI ratings (e.g., best categorical search,
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`average rating search, etc.). The search is conducted by use of a database
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`containing details on the points of interest.
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`38. The 826 Patent further describes that its navigational system can have both
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`local and on-line database capabilities. So, for example, the navigational
`
`device may attempt to connect to the on-line database first, and if no
`
`connection is available, try the locally stored database.
`
`39.
`
`In the example that is provided in Figures 3 and 4 of the 826 Patent, when a
`
`user initiates a search for a point of interest such as a restaurant, the system
`
`determines the user’s current location using a Global Positioning system
`
`(GPS) or another position determining system. The system then displays a
`
`variety of search methods available to the user, such as Best Categorical
`
`Rating Search, Personal-Favorites Rating Search, Aggregate Average Rating
`
`Search, or Similar User-Rating Search. The user then selects a search
`
`method, and the system then displays, various categories of POIs, such as
`
`restaurants, banks, airports, hotels, and sub-categories, such as type of
`
`restaurants: Asian, BBQ, French, as well as search options based on distance
`
`(e.g., within a certain radius from current location, within a zip code, area
`
`code, city, etc.).
`
`-15-
`
`
`
`HTC Exhibit 1008
`
`

`

`
`
`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
`
`40. Once the appropriate search criteria is selected by the user, the system uses
`
`the local (LDARSE) or the on-line (ODARSSE) databases to conduct a
`
`search and provide the search results to the user. The search results include,
`
`for example, a sorted listing of the POIs providing information such as the
`
`POI name, phone number, professional critic's review, individual user's
`
`reviews, and a link to initiate a `door-to-door` driving directions. The user
`
`can then select a particular POI, get driving directions to the POI, add the
`
`POI to a favorite lost, or add reviews for POIs.
`
`41. The 826 patent contains 15 claims. I understand that only Claims 1-5 and
`
`11-15 are being challenged in the HTC IPR Petition. Claims 1 and 11 are
`
`independent claims while claims 4-5 and 12-15 are dependent claims. Claim
`
`1 is a claim directed to a machine-readable medium while claim 11 recite
`
`same features by using means-plus-function claim limitations. The
`
`independent claims require retrieving real-time position information vain a
`
`GPS system, receiving a search request, displaying a plurality of search
`
`methods, receiving an input designating one to the search methods,
`
`retrieving location information about points of interest from a database, and
`
`displaying the results on a display.
`
`VII. LACK OF SUPPORT IN PROVISIONAL APPLICATION FOR ALL-
`SOFTWARE CLAIMS
`
`-16-
`
`
`
`HTC Exhibit 1008
`
`

`

`
`
`42.
`
`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
`
`I understand that the 826 Patent claims priority to the 365 Patent, which
`
`claims priority to the provisional application number 60/313,010, which was
`
`filed on August 16, 2001.
`
`43. This provisional application describes essentially the same subject matter
`
`that is reproduced in the DETAILED DESCRIPTION OF THE
`
`EMBODIMENTS” and figures of the 826 Patent. The provisional
`
`application, however, does not include any claims.
`
`44. The preamble of Claim 1 of the 826 Patent recites a machine-readable
`
`medium containing executable programming instructions for causing a
`
`processor of a mobile device to perform a method. Such a method is then
`
`described as having 6 steps. These steps essentially require: 1) retrieving, via
`
`a GPS, real-time position information of the mobile device, 2) receiving a
`
`search request, 3) displaying a plurality of search methods, 4) receiving an
`
`input designating one of the search methods, 5) retrieving from a database
`
`location information associated with a point of interest, and 6) displaying the
`
`retrieved information on the display.
`
`45.
`
`It is my opinion that claim 1 requires that all 6 steps to be implemented as
`
`software that is executed by a processor of a mobile device.
`
`46.
`
`It is further my opinion that a person of ordinary skill in the art, after reading
`
`the provisional application number 60/313,010, would have understood that,
`
`-17-
`
`
`
`HTC Exhibit 1008
`
`

`

`
`
`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
`
`in the absence of claim 1 preamble, not all 6 steps of claim 1 are needed to
`
`be implemented in software. That is, this provisional application does not
`
`include any specific description that requires a purely software
`
`implementation of all the steps for its search methods.
`
`47. For one, while the description in the provisional application includes many
`
`references to a memory (e.g., 20:2-3; Fig. 2), such a memory is described as
`
`providing a storage space for current position information (20:21-22; 25:12-
`
`14), the search criteria (21:14-15; 21:18-24; 22:6-8; 23:21-22), the search
`
`response or POI information (8:18-23; 9:5-6; 22:13-14; 23:22-23; 26:21-23;
`
`34:22-23; 35:20-23; 38:7-9), personal ratings, notes or preferences (9:15-16;
`
`9:23; 13:4-7; 22:1; 32:24 to 33:1; 33:22-24; 36:15-21; 37:13). But the
`
`provisional does not specifically describe using the memory for storing
`
`executable programming instructions.
`
`48. Additionally, the provisional application describes using certain hardware-
`
`based solutions. For example, on page 2, line 6, this provisional application
`
`describes that the systems that existed at that time often used a GPS device
`
`that is integrated into a handheld device. Also, on page 29, lines 13-17, this
`
`provisional application describes using such a GPS system to periodically
`
`verify the device has reached its destination. Figure 2 and page 20, lines 1-2
`
`of the provisional application describe a GPS system that is clearly separated
`
`-18-
`
`
`
`HTC Exhibit 1008
`
`

`

`
`
`Declaration of James Olivier, Ph.D.
`Inter Partes Review of U. S. Patent No. 7,321,826 B2
`
`from the depicted processor 200. There are also other sections of this
`
`provisional application that describe the use of such a GPS system (e.g.,
`
`page 12, line 14; page 20, line 18; page 25, lines 9-10; page 27, line 1).
`
`49.
`
`It is my opinion that a person of ordinary skill at the time of the invention
`
`would have understood that at least the step of “retrieving, via a global
`
`positioning system, a real-time position information of the mobile device,
`
`said real-time position information indicating a real-time location of the
`
`mobile device” could have been done in hardware, such as by using the GPS
`
`system that is described in the provisional application.
`
`50. The use of a hardware GPS system for determining the current location of a
`
`mobile device was well known in the industry pri