Filed By: Vivek Ganti (vg@hkw-law.com) Reg. No. 71,368; and
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`Sharad K. Bijanki (sb@hkw-law.com) Reg. No. 73,400
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA
`Petitioner,
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`v.
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`PERDIEM CO., LLC.
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`Patent Owner
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`_________________
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`Case IPR2016-01061
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`U.S. Patent 8,223,012
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`_________________
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`PETITIONER’S REPLY
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`i
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`Sharad K. Bijanki (sb@hkw-law.com) Reg. No. 73,400
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA
`Petitioner,
`
`v.
`
`PERDIEM CO., LLC.
`
`Patent Owner
`
`_________________
`
`Case IPR2016-01061
`
`U.S. Patent 8,223,012
`
`_________________
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`PETITIONER’S REPLY
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`i
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`TABLE OF CONTENTS
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`I. Claim Construction .............................................................................................. 1
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`A. The broad view: the administrator and first user may be the same person ... 2
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`B.
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`The narrow view: the administrator and first user are mutually exclusive ... 4
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`II.
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`Fast Anticipates the Challenged Claims ........................................................... 4
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`A.
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`Patent Owner mischaracterizes the teachings of Fast (Ex. 1003) ................. 4
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`B.
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`Fast anticipates independent claim 1 and dependent claims 2-6 .................. 6
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`1. A Notification Scheme Number is an IAC specified by a first user: ............ 6
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`2. A “user type” is an IAC specified by a first user .......................................... 7
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`C.
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`Fast anticipates independent claim 18 and dependent claims 19 and
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` 22-24 ....................................................................................................................10
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`D.
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`Fast anticipates independent claim 7 and dependent claims 8-13. .............11
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`III. Fast and Haney render the Challenged Claims obvious .................................12
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`A. The teachings of Haney, when combined with Fast, render the challenged
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`claims obvious ......................................................................................................12
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`B. A POSITA would be motivated to combine the teachings of Fast with the
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`teachings of Haney ................................................................................................13
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`ii
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`C.
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`Patent Owner’s licensing evidence does not amount to a secondary
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`consideration to rebut the obviousness case .........................................................16
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`IV. Conclusion ......................................................................................................20
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`V. Certification of Compliance ...........................................................................20
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`iii
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`TABLE OF AUTHORITIES
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`CASE LAW
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`Federal Circuit Court of Appeals
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`In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) ............................... 17
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`In re Blaise Laurent Mouttet, No. 2011-1451 (Fed. Cir. June 26, 2012) ......... 14
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`In re Etter, 756 F.2d 852 (Fed. Cir. 1985) (en banc) ....................................... 14
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`In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) ....................................................... 14
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`Novartis AG v. Torrent Pharmaceuticals, Case No. 2016-1352 (Fed. Cir.
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` April 12, 2017 .............................................................................................. 17
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`
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`USPTO, Patent Trial and Appeal Board
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`CaptionCall, LLC v. Ultratec Inc., IPR2013-00545, paper 67, pp.7-8 (PTAB,
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` December 1, 2015) ....................................................................................... 14
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`
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.64 .............................................................................................. 19
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`37 C.F.R. § 42.65 .............................................................................................. 9, 15
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`EXHIBIT LIST1
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`Ex. 1001 U.S. Patent No. 8,223,012 (“’012 Patent”)
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`Ex. 1002
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`The file history of the ’012 Patent
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`Ex. 1003 U.S. Patent No. 7,327,258 (“Fast”)
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`Ex. 1004 U.S. Provisional Patent App. No. 60/542,208 (“Fast Provisional”)
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`Ex. 1005 U.S. Patent No. 7,353,034 (“Haney”)
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`Ex. 1006 Discrete Wireless’s Marcus GPS Fleet Management Application
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`Product Brochure (“Marcus”)
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`Ex. 1007 U.S. Patent App. No. 14/629,336, Response to Non-Final Office
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`Action (Feb. 11, 2016)
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`Ex. 1008
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`Success Stories in Fleet Tracking (Sept. 1, 2005)
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`Ex. 1009
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`Supporting Declaration of Dr. Stephen Heppe
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`Ex. 1010 Declaration of Vivek Ganti, Esq.
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`Ex. 1011 Declaration of William Steckel
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`Ex. 1012 Declaration of Steven. G. Hill
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`Ex. 1013 Declaration of Michael Femal
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`Ex. 1014 Declaration of Dr. Heppe filed in IPR2016-01064
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`Ex. 1015
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`Infringement Complaints Filed by Patent Owner
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`1 Newly filed exhibits in bold.
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`
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`v
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`The Board instituted trial on all claims and all grounds which include claims
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`1-13, 18, 19, 22-24 of the ’012 Patent. (Inst. Dec., paper 11, pp. 1-2). Patent
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`Owner filed its Corrected Patent Owner Response (POR, paper 36) addressing only
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`independent claims 1, 7, and 18. Petitioner submits the following Reply
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`demonstrating that the challenged claims are anticipated and rendered obvious by a
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`preponderance of the evidence.
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`I. Claim Construction
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`Claim 1 requires “an administrator” and “a first user.” The issue is whether
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`these two entities can be the same under BRI. Patent Owner’s entire argument for
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`patentability stems from interpretation that these must be separate. (POR, p.7,
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`stating that “this first user is expressly distinguished from the overarching
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`‘administrator.’”). Patent Owner asserts the following:
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`The users themselves (as opposed to the administrator) are given the
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`power to specify an “information access code” that in turn specifies
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`what other users will be allowed access to location information. This
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`flexibility and user control is a hallmark of the invention, which the
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`specification discusses again and again and which is claimed in every
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`claim at issue in this IPR.
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`(POR, p.1).
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`
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`Petitioner disagrees. Under the BRI standard, there is no reason why an
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`administrator should be precluded from being a “first user.” In practice, system
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`administrators are often participants (users) as well. Patent Owner has pointed to
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`
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`1
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`nothing in the drawings, specification or prosecution history mandating a narrower
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`construction. As shown herein, the intrinsic evidence of the ‘012 Patent
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`contradicts the Patent Owner’s stated view. Under this broader interpretation of
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`the claim, Patent Owner concedes that its claims are invalid.
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`Having said that, and fully expecting that Patent Owner would take the
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`narrower view in a failing attempt to protect the patentability of these overbroad
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`claims, the original Petition crafted arguments assuming that the “administrator”
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`authorizes a separate “first user.” For example, Argument 1 of the Petition
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`assumes the Retailer is the administrator who authorizes a Subscriber as the first
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`user. (Petition, p.16). Next, Argument 2 shows a Subscriber as the administrator
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`who authorizes an organization’s manager as the first user. (Petition, p.24). The
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`Board instituted trial on these arguments without a need to consider the broader
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`view of the claims where an administrator and first user may be the same entity.
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`Regardless of how the Board resolves the claim construction question, the
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`Petition demonstrates the invalidity of these claims.
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`A. The broad view: the administrator and first user may be the same
`person
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`The intrinsic evidence supports this broad view. For example, the
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`specification states: “The mother sets an object location information access code such
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`that only the mother, specifically, a PDA or other computing device used by the
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`mother, has authorized access to the object location information of the vehicle 202.”
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`2
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`(Ex. 1001, 9:23-26). Here the mother is an administrator who authorizes herself as a
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`first user by setting her own information access code.
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`Next, the claims of the ’012 Patent state “a second user identification code that
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`is different from the first identification code.” Similarly, in the related patent, U.S.
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`Pat. No. 8,149,113, which shares the same specification as the ’012 Patent, the
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`patentee included claim limitations stating “a second user that is different from the
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`first user” and “a third user that is different from the first and second users.” (See
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`Claim 31 of 8,149,113). No such limitations exist in the claims of the ’012 Patent
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`where the patentee is expressly differentiating the administrator from the first user.
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` In addition, the Board, reading the same specification in a related IPR
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`preliminarily concluded that “an ‘administrator’ and an ‘authorized user,’ construed
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`according to their broadest reasonable interpretation, are not mutually exclusive.”
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`(IPR2016-01063, institution decision, paper 20, p.10). For these reasons, “an
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`administrator” and “a first user” are not mutually exclusive under BRI.
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`Assuming this to be the case, Patent Owner’s patentability arguments
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`collapse. Specifically, Fast discloses a super administrator as discussed in the POR
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`who creates User types (which Patent Owner tacitly admits discloses information
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`access codes). Patent Owner surmises that the only difference between Fast and
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`the challenged claims is the suspect allegation that Fast is a pre-fixed hierarchical
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`system where a super administrator controls the system, and where users cannot.
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`3
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`(POR, pp.1-2). Of course, if the super administrator (or any other administrator for
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`that matter) authorizes himself as a user, there is no patentable distinction between
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`Fast and the challenged claims.
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`B. The narrow view: the administrator and first user are mutually
`exclusive
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`The Petition analyzed the claims under the interpretation that the
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`administrator and first user are mutually exclusive. The Board instituted review
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`according to that analysis. The remainder of this Reply demonstrates why the
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`challenged claims are unpatentable under this narrower view.
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`II. Fast Anticipates the Challenged Claims
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`A. Patent Owner mischaracterizes the teachings of Fast (Ex. 1003)
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`Patent Owner’s reading of Fast boils down to a single assertion “Fast teaches
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`a pre-fixed hierarchical system where the administrator – not the user – is in
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`control of conveying location information.” (POR, pp.1-2). In other words, Patent
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`Owner alleges that Fast is a rigid hierarchy unlike the ’012 Patent which is
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`supposedly “flexible.” This “lack of flexibility” argument misses the mark. At the
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`very outset, Fast states: “The system includes resellers, retailers, users and
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`subscribers in a flexible relationship to enhance the ease in the system operation.”
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`(Ex. 1003, Abstract (emphasis added)).
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`In a related IPR, Dr. Heppe explains that Fast’s system “is flexible, and
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`allows the creation of an unlimited number of users, each with a specified level of
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`4
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`access privilege.” (Ex. 1014, ¶30). In addition, a subscriber’s portal allows a user
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`to “add, delete, and update system users, and assign an access level indicating
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`which functionality that user will be restricted from using. 42:14-52; FIG. 16-1, R.
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`504, 505c, 512, and 514; FIG. 16-2, 530, 532, and 534.” (Id., citing Ex. 1003).
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`Dr. Heppe identified Fast’s flexibility in crafting groups of users with different
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`access levels:
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`(Id., ¶¶45-46). Here, Parents AX and AY, under a subscriber account, may track
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`their children (dependents A1X and A1Y) by assigning guardians to those
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`children. (Id.). The POR’s patentability arguments unravel with a showing that
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`Fast teaches the opposite of a “pre-fixed hierarchical system.”
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`5
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`B. Fast anticipates independent claim 1 and dependent claims 2-6
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`Claim 1 states:
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`A method for conveying user location information, comprising:
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`interfacing with an administrator that authorizes a first user
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`associated with a first user identification code to access an object
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`location information from a location information source associated with
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`a second user identification code that is different from the first
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`identification code; and
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`conveying the object location information to a third user based
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`on an information access code specified by said first user, said
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`information access code being associated with a third user identification
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`code that is different from the first and second user identification codes.
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`Patent Owner argues that claim 1 is patentable because Fast does not
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`disclose the emphasized language above. (POR, p.10). Patent Owner specifically
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`argues that only a top-level administrator (i.e. Super Administrator) can specify an
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`information access code (IAC), not a first user (i.e. any other user). Yet Fast
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`identifies numerous system participants with administrative rights and performing
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`administrative functions other than the Super Administrator. The Petition presents
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`separate ways of showing how Fast teaches a conveyance based on an “access
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`code specified by said first user” who is not a super administrator.
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`1.
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`A Notification Scheme Number is an IAC specified by a first user:
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`In one way, Fast teaches an administrator (retailer) who authorizes a first user
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`(subscriber) that conveys location information of a second user (a dependent) to a
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`6
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`third user (a guardian). (Petition, pp.16-24). Fast discloses an IAC (e.g., notification
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`scheme number) that is specified by the first user (e.g., subscriber). (Id., p.23 citing to
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`Ex. 1003, 35:43-46, 35:65-67, 36:1-6, and Ex. 1009, ¶¶66-69). The Board instituted
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`trial based, at least in part, on this argument. (Inst. Dec., paper 21, p.10 stating
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`“Insofar as an access code for that notification scheme, Fast discloses that the user
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`selects ‘suitable entities . . . from a list of available entities,’ one of which includes ‘a
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`guardian.’”).
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`The POR lacks any discussion relating to Petitioner’s “notification scheme”
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`argument. Patent Owner’s decision to not respond to this argument constitutes an
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`outright waiver of this issue. (Scheduling Order, paper 22, p.3; see also In re:
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`Nuvasive, Inc., Case No. 15-1670 at *6 (Fed. Cir. 2016). As such, the Patent Owner
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`should not be permitted to address this issue in any further proceedings such as the
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`final hearing on this matter.
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`2.
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`A “user type” is an IAC specified by a first user
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` The Petition separately shows how Fast’s “User type” teaches an AIC
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`specified by the subscriber (as opposed to it being specified by an administrator such
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`as the retailer or super administrator). (Petition, p.15 stating “Fast describes a variety
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`of subscriber functions, depending on the particular user’s level of access privilege,
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`such as managing scenarios and managing user types (id., p.22, FIG. 16-2, boxes
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`518 and 530)”). As Patent Owner correctly notes, the Board also instituted trial
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`based on mapping Fast’s “User type” onto the claimed information access code.
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`7
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`(POR, p.13 citing to the institution decision, p.8). Unlike the “notification scheme
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`number” argument presented above, Patent Owner addressed this point in its POR.
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`Patent Owner asserts that only the Super Administrator can create user
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`types. (POR, pp.15-16; see also id., p.12 stating “users other than the Super
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`Administrator cannot define User types.”). This interpretation of Fast is flawed.
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`Fast teaches a subscriber portal, shown in FIGS. 16-1 and 16-2, that allows a
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`subscriber to “manage user types” (item 530), “add/update/delete system users”
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`(item 532), and “assign access levels to system users” (item 534).” (Ex. 1003,
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`FIGS. 16-1 and 16-2; 42:14-16).
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`Contrary to what Patent Owner believes, super administrators are not the
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`only individuals who control users and user types. The super administrator uses an
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`“Administrator Module” of FIG. 13 (Ex. 1003, 2:33-34 and FIG. 13, item 363).
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`This is different than Subscribers who use their own portals (id. at FIG.16, 42:14-
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`16) that also allow adding/updating new users and managing user types through
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`assignment of different access levels for different users. (Id., 2:33-34; id., FIG. 14-
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`2, items 412, 413, and 416; id., FIG. 16-2, items 530, 532, and 534).
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`Patent Owner cites two pieces of evidence to support its selective reading of
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`Fast. First, Patent Owner relies on the following statement in Fast: “User types
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`363 as specified by the Super Administrator using the administration manager
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`367.” (POR, p.10 citing to Ex. 1003, 37:59-61). This statement does not preclude
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`8
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`other users such as subscribers from further managing user types. In fact, the
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`opposite is true. (Ex. 1003, at FIG. 16-2, item 530). Patent Owner’s limited
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`reading of Fast is at odds with the intrinsic evidence.
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`Second, Patent Owner cites to its expert Dr. Schonfeld, who concludes that
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`“Users other than the Super Administrator cannot define User types.” (Schonfeld
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`Decl., filed as Ex. 2011, ¶19). This conclusory statement cites to no authority and
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`flatly contradicts, inter alia, the subscriber portal of FIG. 16-2. (See Ex. 1003, at
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`FIG. 16-2, item 530). Dr. Schonfeld mistakenly refers to FIG. 14 as applying to all
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`users including subscribers. (See Schonfeld Decl., ¶19). He also refers to the
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`following statement in Fast: “Each User type other than the Super Administrator
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`has specific restrictions on access to the various functions within the Guardian
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`Administration Module” (Id., citing Ex. 1003, 37:61-64). However, this statement
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`says nothing about precluding other users from adding user types. Dr. Schonfeld’s
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`opinion should be given no weight because it contradicts the teachings of Fast as a
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`whole. In addition, he failed to disclose the underlying facts on which his opinion
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`is based. (37 C.F.R. §42.65). As such, his opinion is entitled to no weight.
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`For these reasons, User types are not “hard-wired into Fast’s system by the
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`Super Administrator,” (POR, p.12), as Patent Owner suggests. (See Ex. 1003,
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`42:47-48 stating “The managing of User types 530 includes adding, deleting and
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`9
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`updating system Users 532” which is part of FIG. 16’s subscriber portal
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`functionality).
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`As shown, Fast anticipates claim 1 regardless of the Board’s construction.
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`Moreover, Patent Owner presented no separate arguments for dependent claims 2-
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`6. Those claims are anticipated for reasons stated in the Petition.
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`C. Fast anticipates independent claim 18 and dependent claims 19 and 22-
`24
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`Patent Owner states that “claim 18 is substantially identical to claim 1” and
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`then presents no arguments separate from those presented in claim 1. (POR, p.8).
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`Again, Patent Owner’s assertion is that the “first user is expressly distinguished
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`from the overarching ‘administrator.’” (POR, p.7). Patent Owner clings to this
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`assertion – “overarching” is never used in any claim, in the written description, or
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`in any figure − as the premise of its Fast-related arguments. However, claim 18
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`does not recite an “administrator.” Thus, Patent Owner’s arguments relating to
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`claim 1 do not apply to claim 18.
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`To elaborate further, Patent Owner contends that Fast does not disclose
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`“providing an interface to a first computing device associated with the first user to .
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`. . . define an information package access code” and “conveying the information
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`package . . . . . based on said information package access code” in claim 18. (POR,
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`pp.15-16). This conclusion is flawed. Patent Owner does not account for the
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`portal of FIG. 16 which shows how a first user (e.g., a subscriber or a user
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`10
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`authorized by a subscriber) uses an interface to set scenarios and manage User
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`Types to ultimately convey information. (Ex. 1003, FIG. 16-2, items 518, 520, and
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`530).
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`Fast anticipates claim 18 for the reasons discussed above. Moreover, Patent
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`Owner presented no separate arguments for dependent claims 19 and 22-24. All of
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`these claims are anticipated for reasons stated in the Petition.
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`D. Fast anticipates independent claim 7 and dependent claims 8-13.
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`Patent Owner states that “claim 7 is a bit different in terms of verbiage, but
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`recites a similar concept” and then presents no arguments separate from those
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`presented in claim 1. (POR, pp.8-9). Unlike claim 1, claim 7 claims an
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`“administrator system,” not an administrator. In addition, claim 7 does not claim a
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`“first user.” As was the case with respect to claim 18, this suspect argument that
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`the “first user is expressly distinguished from the overarching ‘administrator’”
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`does not apply to claim 7. Claim 7 states “an information access code that
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`specifies a user group” and “wherein an object location information provided by
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`the location information source is conveyed based on the information access code.”
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`Patent Owner believes that a “first user” is implied based on the claim language
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`that “an information access code that specifies a user group.” (See POR, p.9).
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`However, nothing in claim 7 requires a user to specify an IAC. Again, Patent
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`11
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`Owner’s arguments relating to claim 1 do not apply to claim 7, which does not
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`recite the salient limitations at issue in the analysis of claim 1 invalidity.
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`Fast anticipates claim 7 for the reasons discussed in the Petition. Patent
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`Owner’s assertions to the contrary confuse the limitations of claim 1 with those of
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`claim 7. Moreover, Patent Owner presented no separate arguments for dependent
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`claims 9-13. Those claims are also anticipated for reasons stated in the Petition.
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`III. Fast and Haney render the Challenged Claims obvious
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`A. The teachings of Haney, when combined with Fast, render the
`challenged claims obvious
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`Patent Owner believes Haney is limited to “two-way” information sharing
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`where two parties are granted mutual access to each other’s location. (POR, p.17).
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`Based on this assertion, Patent Owner concludes that “Haney fails to disclose the
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`’012 claim elements that give users unfettered flexibility to determine which users
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`to convey location information to.” (POR, p.18).
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`First, Petitioner respectfully disagrees that Haney precludes one-way
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`information sharing. Haney explains how it is advantageous to use a
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`“unidirectional” location information sharing environment in the context of setting
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`up a “corporate supervision” network:
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`Corporations that wish to monitor the locations of their employees can
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`use the system of the invention by using a corporate passcode. . . . In
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`one embodiment, the location information sharing is unidirectional
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`from employees to supervisor but each employee can see the location
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`12
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`of other employees on their phones but not the location of the
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`supervisor.
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`(Ex. 1005, 17:55-18:1). In this respect, Haney discloses a flexible corporate
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`structure of supervisors and employees having unidirectional access to location
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`information.
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`Patent Owner believes that it is entitled to a monopoly over certain location
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`systems because the ’012 Patent was the first to differentiate between the users and
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`the administrator. (POR, p.1 stating “This flexibility and user control is a hallmark
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`of the invention[.]”). However, Haney shows that differentiating between
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`supervisors and employees in a unilateral location information sharing
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`environment is an obvious concept prior to the time of invention.
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`Second, Petitioner disagrees that the claims-at-issue are limited to only a
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`“one-way” or “non-mutual” sharing of information under the BRI standard. Just
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`because claim 1 claims an “administrator” along with a first, second, and third user
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`does not preclude “two-way” information sharing. Patent Owner offers no claim
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`construction analysis to suggest such a narrowing view of the claims under BRI.
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`B. A POSITA would be motivated to combine the teachings of Fast with
`the teachings of Haney
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`Petitioner articulates the motivation to combine in its Petition at pages 45-
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`46. In opposition, Patent Owner relies on Dr. Schonfeld, who testifies that a
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`POSITA would not have been motivated or even could be able to combine these
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`13
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`systems, due to their fundamentally different ways of arranging and conveying
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`information. (POR, p.20 citing Schonfeld Decl., ¶24). Dr. Schonfeld does not draw
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`any conclusion of non-obviousness but rather limits his opinion on whether a
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`POSITA would be motivated to physically combine Fast’s system with Haney’s
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`system. Specifically, Dr. Schonfeld’s analysis focused on the degree of difficulty
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`of adding software code that implements “an array of simple lists” to the software
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`code of Fast. (Schonfeld Decl., ¶22). He concluded that it would require
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`completely re-writing Fast’s software code. (Id., ¶23). For the following reasons,
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`Dr. Schonfeld’s opinions should be given no weight.
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`First, his opinions are irrelevant when considering a correct obviousness
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`analysis. A correct obviousness analysis focuses on whether a POSITA would
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`have sufficient motivation to combine different teachings to arrive at the claimed
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`invention. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). However, “[i]t
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`is well-established that a determination of obviousness based on teachings from
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`multiple references does not require an actual, physical substitution of elements.”
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`In re Blaise Laurent Mouttet, No. 2011-1451, at *15 (Fed. Cir. June 26, 2012)
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`(emphasis added); see also CaptionCall, LLC v. Ultratec Inc., IPR2013-00545,
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`paper 67, pp.7-8 (PTAB, December 1, 2015); see also In re Etter, 756 F.2d 852,
`
`859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be
`
`incorporated in Ambrosio are basically irrelevant, the criterion being not whether
`
`
`
`14
`
`
`
`the references could be physically combined but whether the claimed inventions
`
`are rendered obvious by the teachings of the prior art as a whole.”).
`
`Here, Dr. Schonfeld testifies that physically combining the two systems
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`“would necessitate a complete rewriting of the system’s software.” (Schonfeld
`
`Decl., ¶23). This analysis is irrelevant to the issue-at-hand which focuses on
`
`combining the location sharing concepts taught in Fast and Haney. If anything,
`
`Dr. Schonfeld’s testimony suggests that the two systems can be combined when
`
`starting from scratch. Certainly, their relevant teachings are not incompatible,
`
`structurally or otherwise.
`
`Second, Dr. Schonfeld’s opinion that Fast is “a predefined hierarchical
`
`system” contradicts the prior art, as well as Dr. Heppe’s analysis of flexible
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`subscriber accounts (Ex. 1014, ¶¶45-46). Fast explains that a subscriber has the
`
`flexibility to create different users and user relationships using the subscriber’s
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`portal. (Ex. 1003, 42:14-52; id., FIG. 16-2, 530, 532, and 534; Ex. 1014, ¶30). This
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`is not “predefined” as Dr. Schonfeld contends. His opinions should be afforded no
`
`weight given that they contradict the record evidence.
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`Third, Dr. Schonfeld’s conclusion that Fast is limited to “a predefined
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`hierarchical system” relies on no evidence or authority. Dr. Schonfeld does not
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`indicate if he analyzed any code such as the commercial implementation of Fast.
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`(See Ex. 1008). His characterization of Fast’s “code” should be rejected under 37
`
`
`
`15
`
`
`
`C.F.R. §42.65(a), which requires an expert to disclose the underlying facts or data
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`on which the opinion is based.
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`Fourth, Dr. Schonfeld’s opinions consider ways that Fast and Haney’s code
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`may be implemented, but fail to consider other potential implementations. For
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`example, Dr. Schonfeld states that “predefined hierarchical information structures
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`may be organized in a dynamic nested tree structure” but fails to consider other
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`possible implementations of predefined hierarchical information structures.
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`(Schonfeld Decl., ¶22 (emphasis added)). The same deficiency appears in Dr.
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`Schonfeld’s analysis of Haney. (Id.). There, he testifies that Haney “could consist
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`of an array of simple lists” but fails to consider other implementations of Haney
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`when opining on his physical combination of Fast and Haney. (Id. (emphasis
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`added)). Thus, in addition to lacking merit, his analysis is incomplete.
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`The Petition and supporting testimony of Dr. Heppe sets forth a sufficient
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`rationale to combine the teachings and concepts disclosed in Fast and Haney in a
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`manner proving obviousness of the challenged claims. Other than Dr. Schonfeld’s
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`conclusory and incorrect assertions, the POR presents no counter to the Petitioner’s
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`motivation to combine.
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`C. Patent Owner’s licensing evidence does not amount to a secondary
`consideration to rebut the obviousness case
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`Patent Owner appears to have extracted several licenses through its “sue and
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`settle” strategy. (See Whitehurst Decl., filed as Ex. 2012, ¶2). All licensees were
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`
`
`16
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`
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`sued by Patent Owner who asserted multiple patents including the ‘012 Patent.
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`(See Ex. 1015, a collection of complaints filed by Patent Owner against the
`
`licensees). Patent Owner believes that its settlement licenses amount to a showing
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`of “industry respect for the invention,” a secondary consideration of non-
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`obviousness. (POR. pp.20-21). Petitioner disagrees.
`
`To establish a secondary consideration, a patent owner must show a nexus
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`“between the evidence and the merits of the claimed invention.” Novartis AG v.
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`Torrent Pharmaceuticals, Case No. 2016-1352, at pp.24-25 (Fed. Cir. April 12,
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`2017). Specifically, the identified secondary consideration must be directed to
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`what was not known in the prior art. (Id.). In this case, Patent Owner alleges that
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`“flexibility and user control is a hallmark of the invention” (POR, p.1), but offers
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`no evidence that a license was taken specifically for this reason. In any event, this
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`Reply shows that flexibility and user control are known in the prior art. (See, e.g.,
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`Ex. 1003, Abstract).
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`In addition, the law distinguishes between licenses extracted from litigation
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`and licenses due to the merits of the invention. See In re Antor Media Corp., 689
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`F.3d 1282, 1293-94 (Fed. Cir. 2012) (“Antor”). In Antor, the Federal Circuit held:
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`Antor, beyond alleging the existence of a number of licenses, has not
`
`asserted any nexus between the merits of the invention and the
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`licenses themselves. See In re GPAC Inc., 57 F.3d 1573, 1580
`
`(Fed.Cir.1995). Antor merely lists the licensees and their respective
`
`
`
`17
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`
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`sales revenue. The licenses themselves are not even part of the record.
`
`Antor provides no evidence showing that the licensing program was
`
`successful either because of the merits of the claimed invention or
`
`because they were entered into as business decisions to avoid
`
`litigation, because of prior business relationships, or for other
`
`economic reasons. The Board was thus correct in holding that the
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`existence of those licenses is, on its own, insufficient to overcome the
`
`prima facie case of obviousness.
`
`(Id.). The instant case is no different. Patent Owner has not 1) shown any reason
`
`why a license was taken other than to avoid litigation as a pure business decision,
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`2) made any license part of the record, and 3) identified a nexus between the merits
`
`of the invention reflected in any claim of the ’012 Patent (as opposed to numerous
`
`other patents licensed in the same settlement agreements) and the licenses
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`themselves.
`
`
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`In fact, some of the licensees’ activity demonstrate no respect for the
`
`invention. GPS North America, the Petitioner in the instant proceeding, continues
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`to maintain that this patent is invalid. Similarly, Geotab Inc., Navman Wireless,
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`and Teletrac, Inc., were initially listed as petitioners in the instant proceeding
`
`believing that the challenged claims are invalid. These parties were eventually
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`terminated from the proceeding because of settlement, but they never
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`acknowledged the validity of the claims of the ’012 Patent, only the tremendous
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`nuisance associated with litigating a case through trial involving numerous patents.
`
`
`
`18
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`
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`The only evidence on this matter is the Whitehurst Declaration. But this
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`evidence should be given no weight because it lacks the specific terms of the
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`licenses at-issue, including any discussion of the patents and patent applications
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`licensed, the amount paid, whether validity of any patent was acknowledged, the
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`costs of litigating as an alternative to settlement, and any specific terms creating a
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`nexus between settlement and any claim of the ’012 Patent.
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`Furthermore, Petitioner requested that Patent Owner provide the licenses
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`pursuant to Fed. R. Evid.
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