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` IPR2016-00123, Paper No. 21
` IPR2016-00146, Paper No. 21
`IPR2016-00177, Paper No. 21
`February 21, 2017
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`trials@uspto.gov
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`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.,
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
`____________
`
`Held: February 7, 2017
`____________
`
`
`Before MICHAEL R. ZECHER, KEVIN W. CHERRY, and
`JASON J. CHUNG, Administrative Patent Judges.
`
`
`
`The above-entitled matter came on for hearing on Tuesday,
`February 7, 2017, commencing at 1:01 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
`
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`(No counsel present.)
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`CLIFFORD A. ULRICH, ESQUIRE
`Andrews, Kurth, Kenyon, LLP
`One Broadway
`New York, New York 10004-1007
`
`and
`
`CHARLES HAWKINS, ESQUIRE
`Volkswagen Group of America, Inc.
`
`
`
`
`
`
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`
`
`
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE ZECHER: We are on the record. This is an
`oral argument for Cases IPR2016-00123, 00146 and 00177.
`Today we have a unique oral argument. We just have the
`petitioner here with us.
`I wanted to get a few things on the record given that we
`did have a call yesterday and kind of briefly discussed this, but
`one of the concerns that the panel had was a potential appearance
`of an improper ex parte communication. I believe we pointed the
`attorneys of both petitioner and patent owner to the trial practice
`guide, which clearly indicates that the prohibition against ex parte
`communications does not come into play in this context where
`one party, the patent owner, chooses not to participate in the
`hearing. We did receive an e-mail from the patent owner last
`night, as we instructed them to send to us, that indicated they
`were waiving their right to participate in this hearing.
`So now that that's made of record, based on our oral
`argument order that we revised, petitioner is going to have
`45 minutes to discuss these three cases. I'm just going to start the
`timer at 45 minutes. You can handle them how you see fit and
`we'll go from there. So petitioner, when you come up, can you
`please introduce yourself for the record.
`MR. ULRICH: Cliff Ulrich from Andrews Kurth
`Kenyon for petitioner, Volkswagen Group of America, Inc. I
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`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`have copies of our demonstratives that we filed, if I can give you
`copies if you would like.
`JUDGE ZECHER: Absolutely.
`MR. ULRICH: May I?
`JUDGE ZECHER: Please approach.
`MR. ULRICH: So the way I would like to proceed is
`first on IPR2016-00123 which is patent number 8,719,037, then
`move on to IPR2016-00177 which is patent number 8,781,839,
`then finally IPR2016-00146 which is U.S. patent number
`8,719,038.
`So all three patents belong to the same patent family
`and claim priority back to June of 1999. The specifications are
`basically the same. There are some differences in some recent
`abstracts, some typographical corrections, but by and large they
`are the same. And all three more or less relate to transportation
`devices that include functionalities such as network
`communication, voice recognition and also some display features
`as well.
`
`As described in all of these patents, the hardware
`features are conventional, the software features are conventional
`and all the functionality is basically conventional.
`So our IPRs, petitions, we included a declaration by our
`expert, Scott Andrews, who is a EE, BS and MS, 35 years
`experience in automotive technology. The petitions, of course,
`describe scope and content of the prior art, explain why all of the
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`challenged claims are obvious. And Mr. Andrews also describes
`the scope and content of that prior art, also explains why the
`claims are obvious in light of that prior art.
`Now, in the institution decision the Board sided with
`Volkswagen Group of America on basically all of the issues
`except for one claim construction issue. And that's the
`construction of display device means, the '037 patent. We, in our
`petition, said that this was a means-plus-function claim. The
`Board disagreed. But at the end of the day, it's not really an issue
`that matters.
`The only claim construction issue were the
`means-plus-function elements of claim 77 of the '037 patent, and
`we laid out our structural analysis of those elements in the
`petitions. For all of the other claim terms, our petition took the
`position that broadest reasonable interpretation, of course,
`applies.
`
`In response to the institution decisions, West View filed
`patent owner responses that only contained attorney argument.
`There was no expert testimony. They didn't depose our witness.
`So Mr. Andrews' testimony remains unrebutted.
`The patent owner responses more or less repeat the
`arguments that West View made, that the patent owner made in
`its preliminary response, as the Board found all of those
`arguments to be unpersuasive. And West View's patent owner
`responses contain no argument that would compel a different
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`result. In our replies, of course, we set forth why we think those
`arguments are without merit and fail to establish why the claims
`are not patentable in view of the prior art.
`So if we start with the --
`JUDGE CHERRY: I did have one question about the
`underlying District Court litigation. Can you let us know what
`the status of that is?
`MR. ULRICH: Sure. The status is that all claims that
`are in these proceedings -- there were some other claims have
`been disclaimed, as you might recall. All of those claims stand
`unpatentable under Section 101. As I recall, the West View, the
`patent owner appealed, and the appeal, I believe, has been
`briefed. Oral argument has not occurred. The Federal Circuit has
`not ruled on their appeal.
`JUDGE CHERRY: Okay.
`MR. ULRICH: So now if we move on to our slide
`deck, and the bound copies that I gave you are a little bit out of
`order. They are in proceeding order. Not the order I'll present.
`So if we start with the '037 patent, there are four claims
`at issue, 22, 42, 75 and 77. Twenty-two, 42 and 77 are
`independent. And claim 75 is dependent, which depends from
`claim 48 and a number of intervening claims, 71, 72 and 73.
`So if we go to slide 5, this is the first independent claim.
`And basically what that claims, it is a relatively lengthy claim.
`It's a somewhat lengthy claim, but what it's really directed at is an
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`apparatus that has speech digitization, performs a network search
`based on the digitized speech and then displays content of the
`search results. Slide 6, again, claims the same basic apparatus as
`claim 22 but embellishes a bit its details on what is displayed,
`specifically navigation information, map, directions as well as
`graphics that show the surroundings of the organization or entity
`that's searched for.
`Slide 8, this is sort of the chain of dependencies of
`claim 75. Basically, again, the same apparatus as claim 22
`through the intervening dependent claims adds a flush-mounted
`display, video cameras and that the apparatus has a voice
`communication device, for example, a cell phone.
`Finally, claim 77 claims, again, the same basic
`apparatus as claim 22 except that it adds that a map and/or
`directions are displayed with a line or an arrow showing travel
`directions.
`Slide 13, the prior art that we are relying upon in our
`petition the first is Ito which is patent number 6,249,740. And
`that describes the voice control navigation system having display
`and also utilizes voice recognition.
`Slide 14, Lind, which is the article entitled The Network
`Vehicle, that also describes a navigation and display system that's
`wirelessly connected to the Internet and includes a voice
`recognition system that accesses virtually all of the vehicle's
`features, including, for example, requesting travel directions.
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`Finally, slide 16, Hseih, which is patent number
`5,574,443, and that describes a vehicle having video cameras as
`well as a display that's located in the vehicle.
`So there are two grounds of unpatentability, both for
`obviousness. Claims 22, 42 and 77 are obvious in view of the
`combination of Ito and Lind. And claim 75 is obvious in view of
`the combination of Ito, Lind and Hseih.
`So if we move to slide 23, patent owner had some
`argument that certain claim limitations of claims 22, 42 and 48
`should be interpreted under 35 USC at 6 paragraph as
`means-plus-function limitations as set forth in our petition as well
`as our petitioner reply. That analysis should not apply to claims
`22, 42 and 48 primarily for two reasons. One, they don't use the
`words "means," which is of course a trigger for 112(6) paragraph,
`and also for the reason that the software limitations, as they are
`claimed, describe adequate structure.
`JUDGE ZECHER: Counsel, did you understand patent
`owner to actually present a construction under 112(6) under any
`terms?
`
`MR. ULRICH: That's the interesting part of their
`response. While they say the claims should be interpreted under
`112(6), they don't, in fact, set forth what that construction ought
`to be. And in fact, they don't even explain why, if construed
`under 112(6), it would even make a difference.
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`JUDGE ZECHER: I find this kind of tactic interesting,
`because to me the burden of persuasion is on you to demonstrate
`unpatentability. You've come forth and said that the claims get
`their ordinary and customary meaning. Patent owner is now
`arguing that these claims should be treated as
`means-plus-function claims interpreted under 112(6). We all
`know that's a rebuttable presumption. "Means for" is not present
`in the claim and they need to rebut that and demonstrate to us
`why it would be. In this case what you are telling me is they
`haven't demonstrated why these claims should be treated or
`governed by 112(6).
`MR. ULRICH: Exactly. Right. That's our position is
`that number one, they haven't rebutted that presumption. And
`again, the bottom line is even if they did, the outcome remains the
`same.
`
`JUDGE ZECHER: I have one question about a case
`you cited us in your reply brief. It's the Apple Inc. v. Motorola
`case. The cite is 757 F.3D 1286. You've indicated to some
`extent it was really a presumption by Williamson. So what
`premise are you standing on, again, with that case?
`MR. ULRICH: So the Williamson case stands for the
`proposition that a claim does that not include the magic language
`"means for", while it's a presumption and a rebuttable
`presumption, what Williamson said is that it's no longer a strong
`presumption. It's still a rebuttable presumption, but it's no longer
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
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`a strong presumption either way. In the Apple case that we cited,
`even though it was pre Williamson and the strong presumption
`still applied at that time, in the Apple case we were citing that for
`the proposition that software claims, computer -- claims that
`recite computer programs, computer steps, computer functionality
`are reciting adequate structure and should not be treated under
`112(6). So the presumption and the strength of the presumption
`is sort of irrelevant as it pertains to the Apple analysis.
`JUDGE ZECHER: Is that to the extent that the
`functions are on a computer-readable medium that's non-
`transitory? So in other words, it's a concrete thing we can hold in
`our hands? I'm trying to wrap my head around that.
`MR. ULRICH: My understanding of Apple is that's
`exactly the case, that software steps, software programs recited in
`the claim don't trigger 112(6) and recite adequate structure.
`JUDGE ZECHER: These claims at issue aren't
`computer-readable medium claims, correct?
`MR. ULRICH: Well, they are not computer-readable
`medium claims per se, except that they do recite -- and I'll move
`over to the slide if I can find the claim. So here if we look at
`claim 48, for example, claim 48 recites computerized logic that's
`configured to perform certain functions when executed. I believe
`the other claims have similar limitations, and as I read the Apple
`case, that that type of recitation of computer functionality would
`be nonfunctional.
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`JUDGE ZECHER: Would you view these claims as a
`hybrid claim? In other words, they appear to claim an apparatus
`and then to some extent they are defined by their functions.
`MR. ULRICH: I think in terms of the hybrid claim, of
`course, functional claiming is permissible. And the way I read
`and understand hybrid claims would be that you literally would
`include affirmative active verb steps for performing a method in
`an apparatus. And I think the most recent case on hybrid claims,
`I think it was the IPXL case that talked about -- that found certain
`claims unpatentable as hybrid claims because they define steps
`that the user is taking with the apparatus. And then it becomes
`indefinite as to whether or not it's the use or it's the apparatus. So
`I think I would not characterize these for the purposes of this
`proceeding as hybrid claims.
`So I think I was on to slide 27. There's some dispute in
`the papers as to whether or not the prior art describes a wireless
`network interface. Ito and Lind both describe network interface
`as wireless network interfaces. Ito -- I keep losing the screen. Ito
`describes a transmitting and receiving section that interfaces
`wirelessly with the network. Lind has a high bandwidth
`communication via an antenna. It also discloses accessing the
`Internet via a wireless modem.
`There was some dispute for claim 77 or some
`discussion in our filings about whether the wireless network
`interface means that's recited in claim 77 should be treated under
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`112(6) or not. We took the position that it does not apply, 112(6)
`does not apply because there's no function recited in that
`limitation. Of course wireless network interface connotes
`adequate structure.
`In West View's -- patent owner's patent owner response
`they argued that the wireless network interface is some bandwidth
`requirements, but none of those requirements are either set forth
`in the specification or in the claims. So to the extent their
`arguments are applying to network interface, they are arguing the
`claimed subject matter.
`If I could move to slide 34, again, there's some
`discussion in the papers about digitizing speech. Ito, the excerpt
`here, Ito discloses a voice recognition system for inputting the
`destination where a user intends to navigate and utilizes a voice
`recognition system in order to accomplish that input.
`Slide 35, Lind has an advanced speech recognition
`systems, the Via Voice IBM system that allows, according to
`Lind, the user basically control of the entire vehicle, including
`requesting travel directions and traffic updates from the web.
`And we have our admission, and this comes from the
`underlying District Court litigation, that all speech recognition
`systems inherently digitize the speaker's analog voice. It is our
`position that Lind's voice recognition and Ito's voice recognition
`systems, based on this admission as well as the understanding of
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`the prior art that the speaker's voice is digitized by both of those
`systems.
`The patent owner has made some argument about which
`components and what components, where the components are
`that do the speech digitizing. But again, none of those limitations
`are set forth in the claim such that they are more or less
`irrelevant.
`JUDGE CHERRY: I wondered what your thoughts
`were on that digitized speech. Do you see that they are arguing
`that -- I mean, I struggled with what they were trying to get at.
`Do you understand it as they are saying that you had to identify
`particular components that matched their components in their
`system that digitized the speech?
`MR. ULRICH: Well, I think I had the same reaction
`that you had, which is trying to really understand what the
`argument is. The claims talk about acquiring digitized speech
`and then using that digitized speech in order to perform a network
`search in one form or another. And where or if the voice is
`recognized or speech is recognized is really outside of the scope
`of the claim. And trying to understand what their real argument
`was, was rather difficult. And being faced with their own
`admission that the voice recognition system such as those in the
`prior art that we cited, Ito and Lind, find it hard waiting for them
`to get around a), their admission; b), the disclosure of the prior
`art, and it looked like to me nothing more than a smoke screen in
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`order to compel some other result than finding that those features
`are indeed in the prior art.
`JUDGE ZECHER: Did the specification of '037 patent
`explain how it recognized the speech?
`MR. ULRICH: So the only disclosure in the '037 patent
`as well as the others, they have what's called a speech recognition
`module, has a microphone, and it has a DSP and for digitizing
`speech. And that is the extent of the disclosure.
`JUDGE ZECHER: You said a microphone and a DSP
`being a digital signal processor?
`MR. ULRICH: Right. Which does tie into my next
`slide, which is 48, which again goes to the same basic limitation
`of digitizing speech, but in claim 77 it's as a computerized logic
`means. And again, looking to the spec, it's the -- we say it's a
`speech recognition module. It takes an analog signal from a
`microphone and converts it to a digital format by way of the DSP
`and a compression algorithm.
`In terms of the obviousness argument on slide 50, our
`petition sets forth an adequate rationale for combining the prior
`art in the manner set forth in the petition. Lind, for example,
`talks about per activity tools, convenience, safety, entertainment.
`Ito, on the other hand, talks about a communication system by
`which you can carry out navigation in a satisfactory manner and
`also simplifying the structure of the navigation apparatus. The
`concerns are basically the same that the '037 patent is purporting
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`to address, obtaining and displaying information, allowing
`occupants to use time efficiently and also to obtain needed
`information.
`If we move to slide 55, this is in our petition as well,
`where the industry was moving toward the convergence of
`automobiles, Internet connectivity, speech recognition,
`navigation, and if you look at the list of companies that were
`working in this area, it's the laundry list of the who's who in
`automotive electronics. We have a Volkswagen Infotainment car
`from '96, the Connected Car PC from 1997 and then from 1998
`we have Daimler, Microsoft and Visteon all working on similar
`systems.
`JUDGE CHERRY: So you are kind of making a
`secondary considerations of obviousness of simultaneous
`invention?
`MR. ULRICH: It's really just evidence of obviousness
`of what the industry was doing at the time.
`JUDGE CHERRY: Or reflective of the state of the art.
`MR. ULRICH: That's another way to put it, yes, thank
`you. So the last point I would like to raise on '037 is on slide 61,
`and it's the dependent claim 75. It talks about a communication
`apparatus enabling voice communication by a passenger with a
`remote station. West View, patent owner, has conflated the
`simplicity of the argument which is that the prior art, for example,
`Lind, includes the cell phone, also includes a speakerphone
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
`
`allowing for hands-free communication, and the passenger or
`driver or user can use that very cell phone to dial up a remote
`station and communicate with that remote station by voice.
`So that's all I had for '037. If there are any questions, I
`can take those or move on to the next one.
`JUDGE ZECHER: Go ahead.
`MR. ULRICH: Thank you. So now we are on the '839
`patent. If you bear with me for one moment, I'll pull that up on
`the screen. Here we have two independent claims, claims 1 and
`35, and about seven or eight dependent claims that depend from
`claim 1. If I move and find my mouse, here we are, slide 5,
`similar to the '037 patent, claim 1 of the '839 patent describes a
`computerized apparatus speech digitization, identifies location
`based on digitized speech and then displays a graphical or a
`visual location of the location as well as its immediate
`surroundings.
`Moving to slide 8, independent claim 35, even though
`very lengthy, describes the same basic apparatus except that it
`adds that the display shows directions within a building and also
`that it has an interface compliant with the IEEE 802.11 standard,
`although the claim doesn't specify what that interface does.
`There's quite a bit of overlap in the prior art. Just
`quickly, Ito again, describes a voice control navigation system as
`a display and uses voice recognition. On slide 13, different piece
`of prior art, Ezaki, it's U.S. patent number 6,201,544. And that
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`describes a navigation system that, among other things, displays
`floors within a building on which the target location is located.
`Slide 14, Hollenberg, which is U.S. patent number
`6,091,956, and that describes a mobile computer system that
`provides directions even when the user is located within the
`building.
`And as you can see from some of the figures, it shows
`navigation by arrows, also the direction of travel, the floor plan of
`the area surrounding the current location as well as items of
`interest that are the near or proximate to the mobile computer.
`And then slide 16, we have Hseih again describing
`cameras in the display located in the vehicle. So there are two
`grounds of unpatentability, two grounds of invalidity. The first
`that applies to both claims 1 and 35 is the combination,
`obviousness in view of the combination of Ito, Ezaki and
`Hollenberg. And then there's one dependent claim, claim 29, that
`the ground of invalidity is obviousness in view of Ito, Ezaki,
`Hollenberg and Hseih.
`The issues in this IPR are similar to those in the '037
`which is, very briefly, West View, patent owner's argument that
`112(6) paragraph should apply to these claims, claims 1 and 35.
`We disagree for the same reasons that we discussed with respect
`to '037.
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`Moving to slide 21, these claims, again, have a wireless
`interface similar, not verbatim identical to the wireless network
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`interface that was claimed in '037, but the same arguments for
`this limitation that we discussed from '037 apply here.
`Slide 27, getting back to the discussion of digitized
`speech, again, Ito has an input -- they call it an input section that
`uses voice recognition to search for destinations, facilities,
`telephone numbers, address routes and the like. And again, we
`look at the admission that the patent owner made that all speech
`recognition systems inherently digitize the speaker's analog voice.
`Moving on to slide 31, the claims describe identifying a
`location inside of a building that's associated with an organization
`or entity that the user is trying to locate. And we rely on Ezaki
`that shows, for example, in a multistory building the location by
`floor as to where the target location is located.
`Very quickly, moving along here to slide 61 --
`JUDGE ZECHER: Let me ask you one question about
`the identification of the location associated with an organization.
`I understood patent owner to argue that you cannot construe that
`as a floor simply because, according to them, there was reported
`disparaging language in the specification, particularly the
`summary of the invention, which would preclude us reading it as
`a floor.
`
`MR. ULRICH: I think their argument is a good point. I
`don't think their discussion in the background disparages floor
`location or location by floor number from the location. What
`they are distinguishing in the specification is precise location and
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`floor number, but yet they are not claiming precise location. To
`me that would be the difference. They are using a broad phrase,
`identify a location. Not identify a precise location. Not
`distinguishing the claims between the floor or anywhere else.
`They are claiming a location within a building.
`JUDGE ZECHER: Do you think the Ezaki discloses a
`precise location?
`MR. ULRICH: Well, that's a good question. And
`precision or precise location does have some amount of flexibility
`or some amount of breadth such that it's hard to imagine a precise
`location would necessarily exclude a location on a particular
`floor.
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`So for claim 35, there's a limitation that describes an
`arrow showing the path or the user to follow inside of a building
`or structure. I'm on slide 61. Ito shows the user's route albeit on
`the street, again, with an arrow or highlighting. The arrow, I
`believe, is the letters MB. And Hollenberg also is showing
`direction of travel with an arrow. It's a little hard to discern, but I
`believe it's the indicator 6A or 6B that is showing the direction of
`travel by an arrow.
`Then very briefly on the reasons to combine, all of the
`prior art are concerned with navigation systems and describe the
`functionality associated with navigation more or less in the same
`manner as in the '839 patent. And again, looking at the industry
`activity discussed before pre-filing 96 through 98, the entire
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
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`industry was working on this type of Internet connectivity,
`navigation functionality, display functionality.
`JUDGE CHERRY: So do you see the motivation as
`under KSR kind of like the market pressure design?
`MR. ULRICH: Well, the market pressure would be
`among those, but also the other rationale of just improving a
`known device in a conventional way to achieve no unexpected
`results.
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`If there are no other questions on '839, I will move on to
`'038. There are four claims here at issue, 5, 12, 54 and 66.
`Fifty-four and 66 are independent; 5 and 12 are dependent.
`These claims are a little bit different from the '038 and
`the '839 in that they claim a user dialogue or a dialogue between
`the system and the user in order to fine tune and improve search
`results. So these claims talk about prompting a user for an input
`and prompting a user for a subsequent input in order to improve
`the search results.
`The prior art, if I move to slide 13, in the prior art we
`have quite a bit of overlap. We have a Lind network vehicle,
`which again is a navigation system that uses speech recognition
`as well as text-to-speech. Slide 14, Ito again, describes a voice
`control navigation system. The new prior art not present in the
`other two is Class. It's a Daimler-Benz patent, patent number
`6,249,740. And that uses what is called disambiguation in a
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`Case IPR2016-00123 (Patent 8,719,037 B2)
`Case IPR2016-00146 (Patent 8,719,038 B1)
`Case IPR2016-00177 (Patent 8,781,839 B1)
`
`voice navigation system to help overcome noise in a car, also
`improve accuracy of searching.
`Slide 16, again, we talk about Ezaki providing map
`information showing location on a particular floor in a building.
`And a new piece of prior art, Fujiwara, which is a European
`patent number 0,829,704, that uses a vehicle navigation system
`using the Internet to receive and display advertising information
`such as vacancy information of a hotel or a parking lot, weather
`information or sales information at a local store.
`There are three rounds of claims 54 and 66 are obvious
`in view of Lind, Ito and Class. Claim 5, a dependent claim, is
`obvious in view of Lind, Ito, Class and Ezaki. And claim 12 is
`obvious in view of Lind, Ito, Class and Fujiwara.
`The focus of patent owner's argument, this is slide 25,
`relates to the name of an entity or an organization and it focuses
`on Class. In Class there are a number of different types of
`destinations that are searched for mentioned by Class. You have
`a city, state, a region, area, street, special destination such as a
`railroad, an airport, downtown. And at least some of those would
`fall under the umbrella of an organization or entity
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