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 IPR2016-00146
`Patent 8,719,038
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`VOLKSWAGEN GROUP OF AMERICA, INC.
`Petitioner,
`
`v.
`
`WEST VIEW RESEARCH, LLC,
`Patent Owner.
`___________________
`
`Case IPR2016-00146
`Patent 8,719,038
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`Case IPR2016-00146
`Patent 8,719,038
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`TABLE OF CONTENTS
`
`I.
`
`Introduction ......................................................................................................... 1
`
`II. Overview of the ’038 Patent ................................................................................ 2
`
`III. Patent Owner’s Response to Petitioner’s Statement of Facts ........................... 19
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`A. Petitioner’s Characterization of the Invention................................................ 20
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`IV. Patent Owner Has Statutorily Disclaimed Claims 1, 4, 16, and 22 .................. 21
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`V. Petitioner Has Failed to Meet Its Burden of Showing a “Reasonable
`Likelihood” That Any Challenged Claim of the ’038 Patent is Unpatentable Due to
`Obviousness. ............................................................................................................ 22
`
`A. Petitioner Has Failed to Provide Claim Constructions for Several Key Terms,
`Hence the Petition is Fatally Deficient. ................................................................ 22
`
`B. Petitioner Has Assumed “Broadest Reasonable” Claim Constructions for
`Several Key Terms that are Unreasonable, Hence the Petition is Fatally
`Deficient. ............................................................................................................... 35
`
`C. Petitioner’s Proposed Combination of the References Fail to Teach Each and
`Every Element of Independent Claims 1, 54, and 66 and Dependent Claims 5 and
`12 ........................................................................................................................ 38
`
`D. Petitioner’s Proposed Reasons for Combining the Teachings of the
`References Rely on Impermissible Hindsight, Hence Petitioner’s Obviousness
`Analysis is Defective. ........................................................................................... 43
`
`VI. Conclusion ......................................................................................................... 46
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`EXHIBIT LIST
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`Exhibit 2001
`
`Ulrich Hackenberg’s biographical information
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`Exhibit 2002
`
`Hackenberg explains VW’s new infotainment architecture
`
`Exhibit 2003
`
`U.S. Patent No. 5,539,775 to Tuttle et al.
`
`Exhibit 2004
`
`U.S. Patent No. 5,629,981 to Nerlikar
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`Exhibit 2005
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`U.S. Patent No. 8,311,834 to Gazdzinski
`
`Exhibit 2006
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`U.S. Patent No. 8,301,456 to Gazdzinski
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`Exhibit 2007
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`Statutory Disclaimer of Claims 1, 4, 16, and 22 of U.S. Patent
`No. 8,719,038 in compliance with 35 U.S.C. § 253(a)
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`CASES
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`TABLE OF AUTHORITIES
`
`Sony Computer Entm’t Am. Inc. v. Dudas,
`2006 WL 1472462 (E.D.Va. 2006) ............................................................... 20
`
`Blackberry Corp. v. MobileMedia Ideas, LLC,
`IPR2013-00036, Paper 65 (Mar. 7, 2014) ..................................................... 22
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..................................................... 23
`
`Power Integrations v. Fairchild Semiconductor,
`711 F.3d 1348 (Fed. Cir. 2013) ..................................................................... 23
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359 (Fed. Cir. 2004) ........................ 23
`
`In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ......................................................... 24
`
`Ericsson Inc. et al. v. Intellectual Ventures II LLC,
`IPR2014-01170, Paper 9 (Feb. 17, 2015) ................................................ 28, 29
`
`Williamson v. Citrix Online, LLC, 792 F.3d 1339,
`115 USPQ2d 1105 (Fed. Cir. 2015) (en banc) .............................................. 29
`
`Watts v. XL Systems, Inc., 232 F.3d 877 (Fed. Cir. 2000) ....................................... 29
`
`Personalized Media Communications, LLC v. International Trade Commission,
`161 F. 3d 696 (Fed. Cir. 1998) ...................................................................... 29
`
`Pride Solutions, LLC v. Not Dead Yet Manufacturing, Inc.,
`IPR2013-00627, Paper 14 (Mar. 17, 2014) ............................................. 33, 34
`
`TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008) ............................... 33
`
`In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) (en banc) .............................. 34
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009) ............. 34
`
`See Retractable Technologies v. Becton, Dickinson and Company,
`653 F.3d 1296 (Fed. Cir. 2011) ..................................................................... 37
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`In re McLaughlin, 443 F.2d 1392 (CCPA 1971) ..................................................... 43
`
`Grain Processing Corp. v. American Maize-Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ....................................................................... 43
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) ................................................ 43
`
`In re Dembiczak, 175 F.3d 994 (Fed. Cir. 1999) ..................................................... 44
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc.,
`688 F.3d 1342 (Fed. Cir. 2012) ..................................................................... 44
`
`
`
`STATUTES
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`35 U.S.C. § 112, ¶ 6 ................................................................................................. 28
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`35 U.S.C. § 253(a) ................................................................................................... 20
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`35 U.S.C. § 314(a) ................................................................................................... 21
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`
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`RULES AND REGULATIONS
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`37 C.F.R. § 42.104(b)(3) ........................................................................ 22, 28, 33, 34
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`37 C.F.R. § 42.108(c) ............................................................................................... 21
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ........ 21, 35
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`MPEP § 2111 ......................................................................................... 23, 24, 28, 35
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`MPEP § 2181 ........................................................................................................... 29
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`I.
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`Introduction
`Volkswagen Group Of America, Inc. (“Petitioner”) has filed an inter partes
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`review (“IPR”) petition against U.S. Patent 8,719,038 (the “’038 Patent”) owned
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`by West View Research, LLC (“Patent Owner”). Petitioner has also filed IPR
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`petitions against seven other patents owned by Patent Owner. The other petitions,
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`which involve a computerized information system like the system described in the
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`’038 Patent, were filed in IPR2015-01941 (Patent 8,065,156), IPR2016-00123
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`(Patent 8,719,037), IPR2016-00124 (Patent 8,706,504), IPR2016-00125 (Patent
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`8,290,778),
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`IPR2016-00137
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`(Patent 8,682,673),
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`IPR2016-00156
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`(Patent
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`8,296,146), and IPR2016-00177 (Patent 8,781,839).
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`Petitioner challenges the patentability of Claims 1, 4, 5, 12, 16, 22, 54, and
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`66 of the ’038 Patent solely on the basis of obviousness. However, Petitioner fails
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`to propose reasonable interpretations for a number of material claim limitations
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`and fails to set forth a prima facie case of obviousness for any of the challenged
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`claims. Accordingly, Petitioner has failed to meet its burden of showing a
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`“reasonable likelihood” that any challenged claim of the ’038 Patent is
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`unpatentable due to obviousness. Thus, Patent Owner respectfully requests that the
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`Patent Trial and Appeal Board (“Board”) deny the petition and decline to institute
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`IPR of the ’038 Patent.
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`1
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`II. Overview of the ’038 Patent
`inter alia, 1 an
`The ’038 Patent discloses,
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`improved computerized
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`information system for adaptively and rapidly providing user-specific and other
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`information to users within a mobile transport apparatus (e.g., a land-mobile
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`shuttle or other such vehicle) within a contracted period of time, including for use
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`on their personnel electronic device or PED, such as e.g., after leaving the vehicle.
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`Ex. 1001 at Abstract, 2:42-51, 11:64-12:5. Generally, users of such transport
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`vehicles need a means to intuitively (and quickly) converge on information
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`enabling them to, for instance, find an entity (e.g., business) of interest. Id. at 2:52-
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`65.
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`Problematically, such users may have neither (i) any pre-existing familiarity
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`of how the information system of the vehicle operates (having never been in the
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`vehicle before); nor (ii) any pre-existing familiarity of where the desired entity is
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`located (including relative to their current location or the transport vehicle itself).
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`Id. at 2:52-58.
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` 1
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` The ’038 Patent is one of twenty-five (25) currently issued U.S. Patents claiming
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`priority from the common 09/330,101 parent application filed on June 10, 1999.
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`2
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`Information pertinent to the user’s activities after egress from the vehicle
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`may include e.g., directions to a local restaurant or transportation facility, weather
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`information for their locale, etc. Id. at 2:42-51.
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`Moreover, such users
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`require a degree of
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`individual,
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`repeatable
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`“personalization”, such that their identity (and preselected preferences) can be
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`applied to information they obtain each different time they enter the same (or
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`different) transportation modality. Id. at 4:5, 13:34-36, 21:11-21:43. Hence, certain
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`preferences should be applied to that individual user regardless of the particular
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`platform they select for transport (e.g., one of several available elevator cars in a
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`building, a different vehicle they happen to use on a given day, etc.), also known as
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`“platform agnosticism”.
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`FIG. 1 of the ’038 Patent, an annotated version of which is reproduced
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`below, shows one exemplary embodiment of the computerized information system,
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`which includes, inter alia, a central processing unit (e.g., microprocessor), digital
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`graphics co-processor, digital signal processor (DSP) and associated speech
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`processing (digitization/recognition) computer programs, a capacitive touch screen
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`input and display device, an entity database (not shown), a speech synthesis
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`module, a high-speed data interface to e.g., a user portable device or PED, and a
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`high-speed network interface (see e.g., FIG. 3 reproduced and annotated below,
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`3
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`showing one embodiment of a wireless interface using an IEEE Std. 802.11 (aka
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`“Wi-Fi”) wireless interface). Id. at 9:18-10:22.
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`The apparatus of FIG. 1 is an embodiment of a specific architecture
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`optimized for speed, utilizing only then (circa mid-1999) recently available state-
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`of-the-art technologies including use of data compression (e.g., code-excited linear
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`prediction, or CELP) to, inter alia, reduce wireless data bandwidth requirements,
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`Hidden Markov Modeling (HMM)-based speech recognition, at least four digital
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`processors (a DSP, a separate graphics co-processor, a CPU/microprocessor, as
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`well as a microcontroller), direct memory access (DMA) for the CPU which
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`expedites data accesses to/from RAM, a (then) very high-bandwidth wireless
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`interface (i.e., IEEE Std. 802.11) to enable rapid wireless transmission or receipt of
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`large data structures such as image files, and a capacitive touch-screen input and
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`display device with supporting iconic-based software (and pre-grouped topical
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`areas of information) to enable rapid user intuition/assimilation for ease of use. Id.
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`at 3:56-63, 7:40-56, 8:31-9:11, 11:66-12:3.
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`Patent Owner notes anecdotally in passing that the technology of the ’038
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`Patent is now largely ubiquitous; numerous modern “smartphones”, tablet
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`computers, and in fact vehicles have now (more than 16 years later) whole-sale
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`adopted such an architecture, and specifically the foregoing combination of user
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`interface elements (e.g., icon-based capacitive touch screen and speech input),
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`processing elements, and wireless
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`technologies. Dr. Ulrich Hackenberg,
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`responsible for the technical development of all of Volkswagen Group Brands (of
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`which Petitioner is one)2, recently stated the following:
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`The use of touch screens on smartphone has really been an
`overwhelming success; we will consistently use them in our vehicles
`as well. …Volkswagen is currently working on integration that allows
`the use of safe, familiar controls during driving.
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`Ex. 2002 at 3 (emphasis added).
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` 2
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` “Since July 1, 2013, he has been a member of the Board of Management of AUDI
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`AG with responsibility for Audi’s Technical Development. In addition, he is also
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`responsible for the technical development of all the Volkswagen Group’s brands.”
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`Ex. 2001 at 2.
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`Interaction by touch is …mainly impressive because it is easy to learn
`and offers direct, immediate interaction with the elements that are
`presented. Moreover, the customer is accustomed to touch controls in
`other areas. At Volkswagen, we are clearly relying on touch as a
`cross-segment, brand-shaping element for the control of information
`and communication systems in our vehicles.
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`Id. at 2 (emphasis added). The reader need only pick up their smartphone and
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`invoke the resident “maps” program via the touchscreen and say “Starbucks” or the
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`like to attest to this ubiquity.
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`FIG. 15 of the ’038 Patent (reproduced and annotated below) illustrates one
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`exemplary embodiment of a wireless interface useful as part of the computerized
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`system of FIG. 1 for e.g., “automatic personalization” of the aforementioned
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`functions when the user is proximate to or within the vehicle.
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`Further, the ’038 Patent incorporates by reference U.S. Patent No. 5,539,775
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`(Ex. 2003), which discloses a method and system in which a pseudo noise (PN)
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`sequence is generated for use within a wireless interface, and U.S. Patent No.
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`5,629,981 (Ex. 2004), which discloses a method and system in which authorizes
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`and maintains information security across a wireless interface, such as that shown
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`in FIG. 15. Ex. 1001 at 19:46-59; Ex. 2003 at 3:18-25; Ex. 2004 at 6:9-19.
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`
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`The exemplary computerized information system disclosed in the ’038
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`Patent improves upon previous vehicular information systems (circa mid-1999) by,
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`inter alia, providing a completely intuitive user interface which permits greatly
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`simplified input to the system when the user is within the transport apparatus (e.g.,
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`via a simple spoken name, or touch on a touch screen correlating to a limited
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`number of prescribed categories of information). Ex. 1001 at 9:37-11:36, FIG. 4.
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`The ’038 Patent technology allows the user to converge on the desired entity from
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`multiple possibilities in a short period of time due to its simplified user interface,
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`and spatially orient themselves relative to the transport apparatus and the desired
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`entity or organization using intuitive and localized imagery, so that the user can
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`merely utilize the image to find the entity (and not have to remember complicated
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`lists of directions, addresses, etc.). Id. at 2:32-65, 9:37-11:36, FIG. 4, FIG. 5. The
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`heavily hierarchical menu structures of prior art systems, e.g., first activate the
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`system, then select or say the top-level function (e.g., “navigation”), then select or
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`say the sub-function (e.g., “restaurants”), then enter a geographic region (e.g.,
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`“San Diego, CA”), then enter a street name or address (e.g., “Broadway”), etc.,
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`were completely obviated in the ’038 Patent, since such paradigms were
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`incompatible with, inter alia, having to converge on an entity location or other
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`desired information within “only seconds”. Id. at 11:66-12:3.
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`The ’038 Patent provides the foregoing features in the exemplary
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`embodiment with a specific user interface and voice protocol algorithm (see e.g.,
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`FIG. 4, reproduced and annotated below) which obviates the user from having to
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`have any prior knowledge of how to operate the system (e.g., the user need not
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`have ever used the system before, since it is completely intuitive how to operate it),
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`and need only know a name or part of a name of the desired entity for which they
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`seek to obtain information. Id. at 9:60-63. The algorithm includes specific
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`protocols for each of (i) audio interchange with the user (e.g., speech), (ii) tactile
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`interchange with the user (e.g., touch screen), and (iii) combinations of (i) and (ii).
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`Id. at 9:38-10:37.
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`In the “voice prompt” branch (left side of FIG. 4 flowchart), the user is
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`prompted through a series of audible prompts to enter information (which may be
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`entered via speech of the user or the exemplary touch screen) until they converge
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`on a particular desired match from results obtained from a database (which may be
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`a single match, or several possible matches). Id. at 10:22-10:31. Once the desired
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`“match” is identified by the information system, the appropriate graphic or image
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`is automatically selected for retrieval (e.g., from a networked server) and displayed
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`to the user to provide spatial orientation and a graphic representation of directions.
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`Id. at 10:18-11:22, 11:14-12:27. The provided image or graphic is highly localized,
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`so as to immediately spatially orient the user to their local surroundings, including
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`in the exemplary embodiment the image or graphic rendering at least a portion
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`indoors to a building or structure. Id. at 11:14-12:27.
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`Moreover, with regard to enabling the user to find the desired information
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`(e.g., directions or a map to a local restaurant) and easily “take it with them” after
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`egress from the transport apparatus on their portable device, such functionality
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`obviates the user having to establish a separate wireless or other connection to a
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`network via the portable device. Id. at 12:43-13:36. Users within transport
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`apparatus (and/or less capable portable devices such as the exemplary Palm Pilot
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`devices prevalent circa 1999) may not have an ability, or time, to establish a
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`separate wired or wireless connection. Id. at 11:42-45. The exemplary embodiment
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`of the ’038 Patent information system solves that issue by providing a vehicle-
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`indigenous interface such that desired data can be conveniently transferred to
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`portable devices via e.g., preset “one touch” touch-screen or application software
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`commands. Id. at 12:56-13:36, FIG. 7.
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`FIG. 7 of the ’038 Patent (reproduced and annotated below) illustrates one
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`exemplary embodiment of the information system of FIG. 1, configured with the
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`capacitive touch screen input and display device and the high-speed data interface
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`(e.g., Unniversal Seerial Bus pprotocol viaa a multi-ppin connecttor). Id. at
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`12:62-13:
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`3. In
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`the illusstrated exaample, touuch-sensitivve functionns correspponding too a pluralitty of
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`“pre-designated” iinformatioon types (e..g., weatheer, directorry for a buiilding, etc.
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`) are
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`s the
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`shown,
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`so as to ennable “one touch” seaarch and d
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`ownload ccapability ffor the userr. Id.
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`at 13:166-14:25.
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`Applicaation softwware residennt on the uuser’s portaable devicee may alsoo be used a
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`basis off both (i) iinstigation
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`of a searcch of the rremote dat
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`abase(s) vvia the netwwork
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`interface and the
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`informatioon system,
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`and/or (ii
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`) downloaad of desireed informaation
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`to the portable devvice. Id. at
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`12:56-66.
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`FFIGS. 6a annd 6b of thhe ’038 Paatent furtheer illustratee examplees of such ““one
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`touch” iinformation selectionn available to users o
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`f the informmation sysstem.
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`ed in the ’m disclosetion systemd informatThe commputerized
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`038 Patennt specificaation
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`further
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`improves
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`upon prrevious (mmid-1999 aand prior)) vehiculaar informaation
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`systemss by providding a nummber of otheer features
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`, includingg inter aliaa:
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`integrateed use off short-rannge wireleess technoology (e.gg., RFID)
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`and
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`associateed protoccols
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`for
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`authentication of uusers (Ex.
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`Ex. 20066);
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`automattic wireleess
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`identtification
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`and
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`1001 at 199:17-21:433; see alsoo Ex. 20055 and
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`same display) of
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`secondaryy content tto a user
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`(e.g., a usser selectinng a
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`given toopical cateegory via
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`or other
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`input willl be
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`automatiically pressented withh contextuually relevvant “seconndary” conntent
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`13
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`(ii)
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`automatiic “contexxt” determmination, seelection, aand presenntation (onn the
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`Case IPPR2016-00146
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`Patent 88,719,038
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`such as
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`advertisin
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`g, in addittion to thee requestedd “primaryy” informattion)
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`(Ex. 10001 at Abstrract, 16:52--18:10, 21
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`(iii)
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`ual-band,
`integrateed use of vvarious vis
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`in data
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`communnication wwith the
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`:44-25:56, FIGS. 18aa-18d); andd
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`infra-red, aand/or ultrrasonic sennsors
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`informatioon systemm that ennable
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`monitoriing of areaas externall to the veehicle (andd display oof such datta on
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`the displlay device)), such as ffor securityty purposess (Id. at 166:52-18:10
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`also Id. at FIG. 13 (reproducced and annnotated bellow)).
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` this IPRR are
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`the ’038 PPatent thaat remain aat issue in
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`claims of The chaallenged c
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`reproduuced beloww for referennce:
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`Patent 8,719,038
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`1. Computer readable apparatus configured to aid a user in
`locating an organization or entity, the apparatus comprising a storage
`medium having a computer program configured to run on a
`processor, the program configured to, when executed on the
`processor:
`obtain a representation of a first speech input from the user, the
`first speech input relating to a name of a desired organization or
`entity;
`cause use of at least a speech recognition algorithm to process
`the representation to identify at least one word or phrase therein;
`use at least the identified at least one word or phrase to identify
`a plurality of possible matches for the name;
`cause the user to be prompted to enter a subsequent input in
`order to aid in identification of one of the plurality of possible
`matches which best correlates to the desired organization or entity;
`receive data relating to the subsequent user input;
`based at least in part on the data, determine which of the
`plurality of possible matches is the one that best correlates;
`determine a location associated with the one of the possible
`matches that best correlates; and
`select and cause presentation of a visual representation of the
`location, as well as at least an immediate surroundings thereof, on a
`display viewable by the user, the visual representation further
`comprising visual representations of one or more other organizations
`or entities proximate to the location.
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`15
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`Patent 8,719,038
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`4. The apparatus of claim 1, wherein the prompt for the
`subsequent user input comprises a display of a listing of the plurality
`of possible matches on a touch-screen input and display device, such
`that the user can select one of the plurality of possible matches via a
`touch of the appropriate region of the touch-screen device.
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`5. The apparatus of claim 4, wherein the location comprises a
`location within a building, the one or more other organizations or
`entities proximate to the location are disposed within the building, the
`building further comprising a plurality of floors and at least one
`elevator capable of accessing the plurality of floors, and the location
`and the one or more other organizations or entities are disposed on at
`least a common floor.
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`12. The apparatus of claim 1, wherein the display comprises a
`capacitive touch-screen input and display device configured to
`generate a plurality of soft function keys thereon, the soft function
`keys each having at least one function associated therewith, and the
`computer program is further configured to, based at least in part on a
`user's selection of at least one of the soft function keys, enable
`selection of advertising content relating at least in part to the function
`associated with the selected at least one soft function key, and cause
`display the selected content on the display device.
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`54. Smart computerized apparatus capable of interactive
`information exchange with a human user, the apparatus comprising:
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`a microphone;
`one or more processors;
`a capacitive touch-screen input and display device;
`speech synthesis apparatus and at least one speaker in signal
`communication therewith;
`the computerized
`to cause
`input apparatus configured
`apparatus to enter a mode whereby a user can speak a name of an
`entity
`into a microphone
`in signal communication with
`the
`computerized apparatus, the entity being an entity to which the user
`wishes to navigate; and
`at least one computer program operative to run on the one or
`more processors and configured to engage the user in an interactive
`audible interchange, the interchange comprising:
`digitization of
`the user's speech received via
`microphone to produce a digital representation thereof;
`causation of use of the digitized representation to identify
`a plurality of entities which match at least a portion of the
`name;
`causation of generation of an audible communication to
`the user via the speech synthesis apparatus in order to at least
`inform the user of the identification of the plurality of matches;
`receipt of a subsequent speech input, the subsequent
`speech input comprising at least one additional piece of
`information;
`digitization of the subsequent speech input to produce a
`digital representation thereof;
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`the
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`Case IPR2016-00146
`Patent 8,719,038
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`the digital
`least
`causation of utilization of at
`representation of the subsequent input to identify one of the
`plurality of entities which correlates to the entity to which the
`user wishes to navigate, and a location associated with the
`entity; and
`causation of provision of a graphical representation of
`the location, including at least the immediate surroundings
`thereof, and at least one other entity geographically proximate
`to the entity.
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`66. Smart computerized apparatus capable of interactive
`information exchange with a human user, the apparatus comprising:
`a microphone;
`one or more processors;
`a capacitive touch-screen input and display device;
`speech synthesis apparatus and at least one speaker in signal
`communication therewith;
`the computerized
`to cause
`input apparatus configured
`apparatus to enter a mode whereby a user can speak a name of an
`entity
`into a microphone
`in signal communication with
`the
`computerized apparatus, the entity being an entity to which the user
`wishes to navigate; and
`at least one computer program operative to run on the one or
`more processors and configured to engage the user in an interactive
`audible interchange, the interchange comprising:
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`18
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`Patent 8,719,038
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`the
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`the user's speech received via
`digitization of
`microphone to produce a digital representation thereof;
`causation of evaluation of the digitized representation to
`determine an appropriate subsequent audible communication to
`be provided to the user via the speech synthesis apparatus in
`order to at least inform the user of the results;
`causation of generation of the subsequent audible
`communication;
`receipt of a subsequent user input, the subsequent user
`input comprising at least one additional piece of information
`useful in identification of the entity;
`causation of utilization of the at least the at least one
`piece of information of the subsequent input to identify one of a
`plurality of entities, the one entity which best correlates to the
`entity to which the user wishes to navigate, and a location
`associated with the one entity; and
`causation of provision of a graphical representation of
`the location, including at least the immediate surroundings
`thereof, and at least one other entity geographically proximate
`to the one entity.
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`Id. at 26:7-35, 26:48-61, 27:23-32, 31:35-32:7, 33:9-34:19.
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`III. Patent Owner’s Response to Petitioner’s Statement of Facts
`Patent Owner first provides the following responses to various statements set
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`forth by Petitioner in Section III.A of the Petition.
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`Petitioner’s Characterization of the Invention
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`A.
`Petitioner characterizes the invention as follows:
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`The ’038 patent describes an elevator information system that allows
`a user to verbally initiate a query of a database.
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`Pet. at 3. However, the foregoing characterization of the invention is incomplete,
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`and has substantive omissions so as to be misleading. Specifically, the ’038 Patent
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`specification states:
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`The present invention relates to the field of personnel transport
`apparatus, and specifically to elevators and similar devices for
`transporting people from one location to another which incorporate
`various information technologies.
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`Ex. 1001 at 2:25-28.
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` It is noted that while the system and methods of the invention
`disclosed herein are described primarily with respect to an elevator
`car, certain aspects of the invention may be useful in other
`applications, including, without limitation, other types of personnel
`transport devices such as trams or shuttles…
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`Id. at 6:60-64. Hence, the specification as originally filed clearly contemplated
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`application of the various aspects of the invention(s) to, inter alia, other types of
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`transport apparatus and transport devices.
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`Patent 8,719,038
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`IV. Patent Owner Has Statutorily Disclaimed Claims 1, 4, 16, and 22
`Next, Patent Owner notes that as indicated in Ex. 2007, a Statutory
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`Disclaimer has been filed with the USPTO with respect to the ’038 Patent,
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`statutorily disclaiming Claims 1, 4, 16, and 22 of the ’038 Patent under 35 U.S.C. §
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`253(a). Hence, Claims 2, 3, 5-15, 17-21, and 23-68 of the ’038 Patent remain in
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`force.
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`While the Board’s decision on institution would be based on the remaining
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`challenged Claims 5, 12, 54 and 66 (see Sony Computer Entm’t Am. Inc. v. Dudas,
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`2006 WL 1472462 (E.D.Va. 2006)), Patent Owner notes that statutorily disclaimed
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`Claim 1 is an independent Claim subject to the Petition, and challenged Claims 5
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`and 12 depend either directly or indirectly thereon (and accordingly its limitations
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`are necessarily imported into each claim depending therefrom). Hence, the analysis
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`of Claim 1 is warranted for proper understanding of Claims 5 and 12, and Patent
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`Owner provides such analysis herein.
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`Patent Owner further notes that the Statutory Disclaimer with respect to
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`Claims 1, 4, 16, and 22 of the ’038 Patent does not constitute an admission
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`or acquiescence by Patent Owner with regard to any aspect of the Petition. Rather,
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`Patent Owner disagrees with Petitioner’s arguments set forth in the Petition, and
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`makes the present disclaimer of Claims 1, 4, 16, and 22 without prejudice to Patent
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`Owner’s ability
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`to
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`rebut such arguments
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`(including characterizing and
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`distinguishing the prior art referen
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