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 IPR2016-01064
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`U.S. Patent 9,003,499
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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 IPR2016-01064
`
`U.S. Patent 9,003,499
`
`_________________
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`PETITIONER’S REPLY
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`i
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`TABLE OF CONTENTS
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`II. Claims 1, 3–6, 8, 11, 12, and 16–20 Are Anticipated by Fast ........................... 3
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`A. Fast discloses limitation [k] .......................................................................... 3
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`B. Fast discloses limitation [l] ........................................................................... 9
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`C. Fast discloses limitation [m] ....................................................................... 12
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`III. Claims 1, 3–6, 8, 11, 12, and 16–20 Are Rendered Obvious by Fast and
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` Zou............................................................................................................. 14
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`A. The allegedly patentable distinctions over Fast are obvious in view of
`Zou ................................................................................................................... 14
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`B. A POSITA would be motivated to combine Fast and Zou .......................... 17
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`C. Patent Owner’s licensing evidence does not amount to a secondary
`consideration to rebut the obviousness case ...................................................... 20
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`IV. Conclusion .................................................................................................. 24
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`V. Certification of Compliance ........................................................................ 24
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`ii
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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) ...............................21
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`Bell Communications v. Vitalink Communications Corp., 55 F.3d 615
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` (Fed. Cir 1995) ...........................................................................................2
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`In re Blaise Laurent Mouttet, No. 2011-1451 (Fed. Cir. June 26, 2012) ..........18
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`In re Etter, 756 F.2d 852 (Fed. Cir. 1985) (en banc) .......................................19
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`In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) .........................................18
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`Novartis AG v. Torrent Pharmaceuticals, Case No. 2016-1352 (Fed. Cir.
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` April 12, 2017 ............................................................................................21
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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) .....................................................................................18
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`
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.64(b) .......................................................................................23
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`37 C.F.R. § 42.65(a) .......................................................................................20
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`iii
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`EXHIBIT LIST1
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`Ex. 1001 U.S. Patent No. 9,003,499 (“’499 Patent”)
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`Ex. 1002
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`The file history of the ’499 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 Pub. No. US 2005/0156715 (“Zou”)
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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
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`Success Stories in Fleet Tracking (Sept. 1, 2005)
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`Ex. 1008 U.S. Patent No. 7,949,608 (“Li”)
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`Ex. 1009
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`Software as a Service Article (“SaaS Article”)
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`Ex. 1010 Declaration of Dr. Stephen Heppe
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`Ex. 1011 Declaration of Vivek Ganti, Esq.
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`Ex. 1012 Declaration of William Steckel
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`Ex. 1013 Declaration of Steven G. Hill
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`Ex. 1014 Declaration of Michael Femal
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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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`iv
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`The Board instituted trial on all claims and all grounds which include claims
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`1, 3–6, 8, 11, 12, and 16–20 of the ’499 Patent. (Inst. Dec., paper 20, p. 40). Patent
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`Owner filed its Corrected Patent Owner Response (POR, p.34) addressing only
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`three claim limitations which are found in independent claims 1 and 19. Petitioner
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`submits the following Reply demonstrating that the challenged claims are
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`anticipated and rendered obvious by a preponderance of the evidence.
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`I.
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`The Claim Scope of the ’499 Patent
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`The parties’ dispute over claim scope boils down to the term “associating”
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`as it appears below in limitations [k] and [l]:
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`- “access control codes associated with the plurality of authorized user
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`identification codes [AUICs]”
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`- “event information access codes [EIACs] that are associated with the
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`plurality of authorized user identification codes”
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`Neither party proposed an express construction for the term “associated,” but given
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`the patentability arguments raised in the POR, a discussion is warranted.
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`The specification of the ’499 Patent describes both the active “associate”
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`(see Ex. 1001, 13:19-20, “the administrator can associate individual users with one
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`or more of the defined groups” (emphasis added)) as well as the passive
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`“associated” (id., 8:30-33, “an icon 202 that indicates the location of a car
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`equipped or somehow associated with a source of location information” (emphasis
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`1
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`
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`added)). The claims use “associated” and therefore encompass a passive
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`association under the BRI standard. Cf. Bell Communications v. Vitalink
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`Communications Corp., 55 F.3d 615, 621–22 (Fed. Cir 1995) (faulting the district
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`court for interpreting claim term “associating” to cover only explicit, and not
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`implicit, association). Yet in this proceeding, Patent Owner now seeks to read into
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`the claims an actor (network administrator) who specifies the association between
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`two things. In other words, according to Patent Owner, an access code associated
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`with a user ID actually means an actor specifying or assigning an access to a user
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`having a user ID.
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`For example, Patent Owner argues that “in limitation 1(l), a user cannot
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`access the E-ISE (highlighted in red) unless it has an EIAC, which is specified by
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`the authorized user.” (POR, p.11). Nothing in limitation [l] requires the EIAC to
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`be specified by another entity, much less an authorized user. Rather, the EIAC is
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`merely “associated” with a plurality of AUICs. Similarly, Patent Owner argues
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`that “in limitation 1(k), a user cannot access the first-ISE (highlighted in blue)
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`unless it has a first level access code (i.e., an AUIC).” (Id., p.11). Patent Owner
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`goes as far as to say that the access code “is assigned to the user by the network
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`administrator, so that the user can access the first-ISE.” (Id., 23). However, an
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`access code being “associated” with a user identification code does not mean that
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`someone or something such as a network administrator necessarily assigned the
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`2
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`access code to the user. Consequently, limitation [k] does not require any specific
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`entity to access the first-ISE, but rather explains that the access control codes are
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`merely associated with a plurality of AUICs.
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`In sum, Patent Owner’s attempt to narrow the claim scope violates the BRI
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`standard. Patent Owner should not be permitted to now rewrite its claims to avoid
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`the prior art. The claims at issue require nothing more than the passive
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`“association” being claimed. Furthermore, the POR improperly interprets that
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`access codes associated with AUICs necessarily means access codes that are
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`assigned to the AUICs. As discussed below, even under Patent Owner’s
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`unreasonably narrow reading of its own claims, the prior art still invalidates the
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`challenged claims.
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`II. Claims 1, 3–6, 8, 11, 12, and 16–20 Are Anticipated by Fast
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`Patent Owner argues that Fast does not anticipate claims 1, 3–6, 8, 11, 12,
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`and 16–20 because limitations [k], [l], and [m] are allegedly absent in Fast. These
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`three limitations appear in independent claims 1 and 19. The following explains
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`how Fast discloses limitations [k], [l], and [m].
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`A. Fast discloses limitation [k]
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`Limitation [k], as it appears in claim 1, states:
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`wherein access to said first information sharing environment is
`controlled under the first level of access control based on access
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`3
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`control codes associated with the plurality of authorized user
`identification codes[.]
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`(Ex. 1001, claim 1) (emphasis added). Limitation [k] is directed to the first-ISE
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`access being controlled based on access control codes. In addition, these access
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`control codes are associated with the plurality of authorized user identification
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`codes. Patent Owner misreads limitation [k] by asserting that access to the first-
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`ISE is based on an “authorized user identification code” instead of the “access
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`control codes.” (POR, p. 18). Specifically, Patent Owner argues that “[t]he first
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`level access control code is an ‘authorized user identification code’ (AUIC).” (Id.,
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`p.4). Under BRI, an access control code is not necessarily the same as an AUIC.
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`Patent Owner’s arguments are therefore built on top of a flawed premise.
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`As the Petition demonstrates, Fast discloses this specific limitation in two
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`ways: (1) the first-ISE is a subscriber-level ISE; and (2) the first-ISE is a
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`wholesaler-level ISE (or Retail-level ISE). (Petition, pp.18-19). These two ways
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`are briefly discussed below.
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`Subscriber-level ISE – The Petition demonstrates how a subscriber is a
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`network administrator that authorizes different users such as guardians or GMMS
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`operators to manage aspects of the subscriber’s functionality. (Petition, pp.18-21;
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`Ex. 1010, ¶¶44-47; Ex. 1003, 42:48-50). The POR is silent with respect to this
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`4
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`analysis. The following shows how Fast discloses limitation [k] where a
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`subscriber serves as the network administrator.
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`Fast discloses that access to said first ISE (e.g., subscriber’s environment) is
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`controlled under the first level of access control (e.g., the subscriber’s user type)
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`based on access control codes (e.g., the subscriber’s ID or password) associated
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`with the plurality of authorized user identification codes (e.g., Guardian IDs). As
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`explained in the Petition, “The subscriber may assign a user with an access level
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`equivalent to the subscriber, or may restrict access to certain features, such as in
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`the case of guardians. (Ex. 1010, ¶¶48, 98).” (Petition, p.27; see also id., p.33).
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`In Fast, the subscriber’s login User ID/password is associated with the
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`authorized Guardian’s ID because a subscriber must log into the subscriber portal
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`using his User ID/password (Ex. 1003, FIG. 16-1, item 504) before the subscriber
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`can manage and assign guardians (id., FIG. 16-2, items 526 and 527). Here, Fast
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`uses a “guardian manager” to allow a subscriber to create “an unlimited number of
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`guardians” and assign them user IDs such as phone numbers, email addresses,
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`etc.). (Id., 20:57-62). Thus, a subscriber ID/password is associated with Guardian
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`IDs of the guardians created by the subscriber.
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`Even applying Patent Owner’s attempt to unreasonably restrict the scope of
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`its claims in violation of BRI, Fast still anticipates. As discussed, Patent Owner
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`narrowly reads limitation [k] to require controlling an authorized user’s access to
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`5
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`the first-ISE based on AUICs. Fast discloses this by allowing subscribers (e.g.,
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`administrators) to assign (not just associate) guardians to the subscriber portal’s
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`functionality. (Ex. 1010, ¶48; Ex. 1003, 42:48-52, 43:1-11, FIG. 16-2). Fast’s
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`Guardian’s ID teaches the claimed first level access control code and the AUIC by
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`implementing Patent Owner’s suggestion that “[t]he first level access control code
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`is an ‘authorized user identification code’ (AUIC).” (POR, p.4).
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`Wholesaler-level ISE – Wholesalers function as network administrators
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`who control a first ISE, namely, the wholesale-level ISE. (See Ex. 1003, FIG. 22).
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`Wholesalers create and manage subscriber accounts within the first ISE. (Id., FIG.
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`14, items 414 and 416 showing a wholesaler portal to manage subscriber accounts
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`and add/delete subscribers). As discussed in the Petition and Institution Decision,
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`these subscriber accounts make up different event-ISEs that are configured within
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`the first ISE (e.g., wholesale level ISE). (Petition, p.26; Institution Decision,
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`pp.23-24; see also Ex. 1003, FIG. 22).
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`
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`Turning to limitation [k], Fast teaches that access to the first-ISE (e.g.,
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`wholesaler environment) is controlled under the first level of access control (e.g.,
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`the wholesaler’s user type) based on access control codes (e.g., the IDs or
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`password associated with the wholesaler user type). (Petition, p.30; Institution
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`Decision, p.28; Ex. 1003, FIG. 14-1, items 405a-c). In other words, a wholesaler
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`gains access via the portal of FIG. 14 based on submitting an ID or password. (Ex.
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`6
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`1003, FIG. 14-1). The IDs or passwords of the wholesalers are the claimed “access
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`control codes.” Petitioner notes that limitation [k] does not specify a particular
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`entity (administrator or authorized user) who accesses the first-ISE, but instead,
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`states only that such access is controlled by access control codes.
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`
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`Fast also teaches that the wholesaler’s access control codes are associated
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`with the plurality of AUICs, such as subscriber ID codes (Ex. 1010, ¶126 stating
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`“This access control code is associated with the plurality of subscriber User IDs
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`(‘authorized user identification codes’), among other User IDs.”). First, in FIG. 22
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`of Fast, each subscriber corresponds to a respective wholesaler, demonstrating that
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`the two IDs are associated. (Ex. 1003, FIG. 22). Second, through the wholesaler
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`portal of FIG. 14, wholesalers provide access control codes (e.g., user ID,
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`password) so that they can update a subscriber or access the subscriber’s portal.
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`(Id., 38:46-54). Again, this shows an association between the wholesaler’s
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`ID/password and the subscriber’s ID. Third, Dr. Schonfeld explains that such
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`tiered relationships may be stored as “hierarchical information structures [that]
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`may be organized in a dynamic nested tree structure[.]” (Schonfeld Decl., filed as
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`Ex. 2011, ¶22). This shows a relationship encoded as a data structure. These three
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`reasons show a direct association between the wholesalers’ access control codes
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`(e.g., user ID, password) and the subscriber IDs of the authorized subscribers.
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`Patent Owner counters by arguing that:
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`7
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`If Petitioners were to argue instead that the AUIC are the IDs or
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`password associated with the subscribers, then this argument also
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`fails. As explained above, in Fast, the authorized access is determined
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`by a predefined user type, not a user-specific code. All of the
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`subscribers in Fast are treated the same based on the user type.
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`(POR, p.19). To clarify, Petitioner equates access control codes to a wholesaler’s
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`user ID/password and equates the AUIC to the subscriber’s ID. As discussed
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`above, the wholesaler’s user ID/password and the subscriber’s ID are associated
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`when wholesalers log into their own portal (FIG. 14) to then manage subscribers
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`using their subscriber IDs.
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`Patent Owner also incorrectly concludes that “[a]ll of the subscribers in Fast
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`are treated the same based on the user type.” Patent Owner confuses “user types”
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`with specific users. Using the portal of FIG. 14, a wholesaler can create any
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`number of subscribers under the wholesaler’s account. (Ex. 1003, FIG. 22, FIG.
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`14-2, item 416; id., 38:46-54). Even though all subscribers have the same “user
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`type,” each subscriber will be assigned different levels of access such that each
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`subscriber can access his own account but not the account of other subscribers.
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`(See Ex. 1010, ¶¶45-47; Ex. 1003, 18:25-37). Because each subscriber has access
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`to only his own account, each subscriber is uniquely defined and protected.
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`8
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`Ultimately, Fast’s disclosure is the same, if not more detailed, than the
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`disclosure than the ’499 Patent, as it relates to limitation [k] (as well as other
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`limitations). For example, the ’499 Patent states:
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`In one embodiment, one or more administrators may be given
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`privileges to configure the information-sharing environment. Such
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`configuration could include specifying authorized users of the
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`environment and their access privileges, etc.
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`(Ex. 1001, 5:39-42). No additional details are provided beyond this with respect to
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`limitation [k]. As discussed, Fast explains how wholesalers are administrators that
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`create and authorize subscribers to access their own subscriber accounts. (Ex.
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`1003, FIG. 14-2, item 416). Fast also explains how subscribers are administrators
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`who authorize guardians by creating/managing them (Id., FIG. 16-2, items 526,
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`527, and 534). Assuming that a POSITA understands that the ’499 Patent’s
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`specification supports the limitation in question, then the POSITA would also
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`understand that Fast discloses the very same limitation because, at a minimum,
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`Fast mirrors the relevant portions of the specification. For these reasons, Fast
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`discloses limitation [k] regardless of how narrowly the claims are construed.
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`B. Fast discloses limitation [l]
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`Limitation [l], as it appears in claim 1, states:
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`wherein access to said event information sharing environments is
`controlled under the second level of access control to access the
`plurality of specified event conditions independent of each other
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`9
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`based on a corresponding plurality of event information access codes
`that are associated with the plurality of authorized user identification
`codes
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`Fast discloses this limitation by teaching how subscribers (or guardians
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`authorized by the subscriber) build “scenarios” and select “notification schemes”
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`to notify suitable entities when a scenario is triggered. (See Petition, pp.31-32). In
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`response, Patent Owner argues that “the authorized user has to be someone with
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`the capability to access and configure the E-ISE, not merely the recipients of a
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`notification scheme.” (POR, p.20).
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`Patent Owner’s argument overlooks the fact the recipients of the notification
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`scheme are not arbitrary recipients, but instead the “subscriber” and any guardian
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`authorized by the subscriber. (Ex. 1003, 35:49-50 stating “Suitable entities may
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`include the database, the incident queue, a subscriber, a guardian . . .” (emphasis
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`added)). As discussed above, when the administrator is a wholesaler, the
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`authorized user is a subscriber. And, when the administrator is a subscriber, the
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`authorized user is a guardian.
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`Next, Fast teaches an event-ISE by describing a level of control for
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`subscribers based on the subscriber user type. (See Petition, p.31). When a
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`wholesaler (e.g., network administrator) creates a subscriber, which has a
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`subscriber user type, the wholesaler grants that user the right to access the scenario
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`manager and create event-based scenarios. For example, when a subscriber logs
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`10
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`into the subscriber portal of FIG. 16-1, Fast explains that the system “determine[s]
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`level of authorized access based on User type” (Ex. 1003, FIG. 16-1, item 512),
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`and assuming the subscriber has a certain level of authorized access, the subscriber
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`may build scenarios (Id., FIG. 16-2, items 518 and 520).
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`In response, Patent Owner argues that “[t]he subscriber user type, on the
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`other hand, is a predefined user type that is not specified by the user.” (POR,
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`pp.20-21). Patent Owner’s argument misses the mark. While the subscriber user
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`type is associated with certain levels of access, it is up to the wholesaler whether to
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`create a user with that particular user type. (Ex. 1003, FIG. 14-2, item 416). To
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`elaborate further, an individual person may be given any user type (e.g., subscriber,
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`guardian, Organization Manager, operator, administrator, reseller, etc.), each user
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`type having its own level of authorized access. (Id., FIG. 14-1, items 408 and 409;
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`id., FIG. 16-1, items 512 and 514). Thus, when a wholesaler wants to make a
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`particular individual a subscriber (e.g., a person having a subscriber user type), the
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`wholesaler creates a subscriber (as opposed to creating a user with a different user
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`type). The wholesaler can make a person a subscriber (id., FIG. 14-2, item 416) or
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`can make a person some other system user (id., item 412). Contrary to Patent
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`Owner’s characterization of Fast, Fast permits numerous user types creating “a
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`flexible relationship to enhance the ease in the system operation.” (Ex. 1003,
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`Abstract).
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`11
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` Lastly, the Petition explains how Fast teaches an event-ISE by describing a
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`notification scheme number. (Petition, p.32). In response, Patent Owner argues:
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`But this argument also fails because the notification scheme name is
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`merely a shorthand for the event itself. It has nothing to do with
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`whether the event has occurred, and it certainly is not used to control
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`whether a subscriber can access this information
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`(POR, p.21). Patent Owner is wrong. Patent Owner confuses a scenario
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`with a notification scheme.
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`
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`When building a scenario in Fast (shown in FIGS. 11-1 and 11-2), the user
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`selects a notification scheme to be part of the scenario. (Ex. 1003, FIG. 11-1, item
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`278 “select a notification scheme”). The notification scheme number is not a
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`shorthand for the event, but rather a shorthand for those entities who will be
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`notified in response to the occurrence of an event. (Id., 36:36-38 stating “The
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`notification scheme 276 (see also 276 in FIG. 11) specifies what messages are sent
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`to what entities using what notification methods.”). Contrary to Patent Owner’s
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`contention, when the notification scheme identifies the subscriber as a recipient
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`(id., 35:49-50), the notification scheme number is used to control whether a
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`subscriber can access location information.
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`For these reasons, Fast discloses limitation [l].
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`C. Fast discloses limitation [m]
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`Limitation [m], as it appears in claim 1, states:
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`12
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`
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`an administrator system in communication with said one or
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`more computer servers adapted to configure a corresponding
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`plurality of access privileges for the plurality of authorized
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`users that specify the specified event conditions based on the
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`plurality of event information access codes, wherein
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`conveyance of the plurality of event information is managed
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`based on the plurality of access privileges.
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`
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`Fast discloses an administrator system by describing a device that presents
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`the “subscriber portal.” (See Petition, p.32). The subscriber portal is accessible to
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`both wholesalers (See Ex. 1003, FIG. 14-1, item 418 “access subscriber portal”), as
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`well the subscriber/subscriber’s guardians (id., FIGS. 16-1 and 16-2). Fast
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`discloses “authorized users” by describing the creation, control, and management
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`of “guardians.” (See Petition, p.19; Ex. 1003, 42:48-52, FIG. 16-2, item 534; Ex.
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`1010, ¶¶48, 98). Fast also teaches a Guardian Manager. A subscriber can make a
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`guardian an authorized user who may manage the subscriber’s scenarios (Ex. 1003,
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`43:1-11; see also id., FIG. 16-1, items 512 and 514 showing a guardian user type
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`having access to the scenario manager in FIG. 16-2, item 518; Ex. 1010, ¶149).
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`Moreover, Patent Owner utterly ignores Petitioner’s analysis which mapped
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`the claimed “authorized user” to a guardian. For that reason alone, the POR fails
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`to rebut the Petitioner’s showing that Fast discloses limitation [m].
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`13
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`Instead, Patent Owner focuses solely on “subscribers” by arguing that “in
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`Fast, all of the subscribers are treated the same based on the user type. Therefore, it
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`is not possible to authorize a subset of the subscribers.” (POR, pp.21-22). That is
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`also incorrect. Dr. Heppe’s exemplary configuration (Ex. 1010, ¶¶45-46) shows
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`how a first subscriber of account A1 can create scenarios for dependents “Alex”
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`and “Amy” but cannot create scenarios for dependents “Bob” and “Beth” who are
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`associated with a different subscriber’s account, B1. In addition, Fast explains that
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`“The portal is accessible via the Internet and is restricted, using password
`
`protection, to users that are authorized by the system administrators.” (Ex. 1003,
`
`16:9-11). Therefore, a first subscriber cannot log into a second subscriber’s
`
`account and create scenarios to track the second subscriber’s dependents.
`
`Therefore, each subscriber has unique privileges to manage only his own account,
`
`where such privileges are defined when a Wholesaler creates a subscriber. (See
`
`id., FIG. 14-2, item 416). For these reasons, Fast discloses limitation [m].
`
`III. Claims 1, 3–6, 8, 11, 12, and 16–20 Are Rendered Obvious by Fast
`and Zou
`
`A. The allegedly patentable distinctions over Fast are obvious in view of
`Zou
`
`14
`
`
`
`
`
`
`
`
`
`Patent Owner falsely asserts that Fast is not anticipatory because it uses a
`
`“predetermined hierarchical structure” that does not meet the limitations of [k], [l],
`
`and [m].
`
`Attempting to distinguish Fast from these three limitations, Patent Owner
`
`further asserts that “there are no access codes for authorizing some of the
`
`subscribers to configure ISEs[]” (POR, p.17), and that one cannot authorize “Fast’s
`
`subscribers to access and configure the ISEs, as recited in the challenged claims.”
`
`(Id., p.18). Setting aside the fact that Patent Owner is wrong about Fast’s
`
`teachings, these concepts are obvious in view of Zou.
`
`Zou describes creating a first ISE (e.g., location sharing of multiple fleets) to
`
`configure a plurality of event ISEs (e.g., geofence alerts for a specific
`
`fleets/vehicles). (Petition, p.48). Zou describes a flexible hierarchy of users
`
`having different privileges to:
`
`- “Add/edit Fleets” which adds new fleets (expanding the first ISE)
`
`- “Add users to Fleets” which authorizes new users for one or more fleets
`
`- “Edit Permissions” which allows a user to set authority levels for the
`
`users who can view the fleet group
`
`(Ex. 1005, ¶0192). Zou explains that a user’s permissions are encoded into a user
`
`profile. (Id., ¶0152 explaining how a user profile may not allow the user access to
`
`a particular feature; see also id., ¶0211). Users having higher administrator
`
`
`
`15
`
`
`
`privileges can edit the profiles of other users. (Id., ¶0192). Dr. Heppe explains that
`
`the data stored in Zou’s profiles equates to “access control codes” (Ex. 1010,
`
`¶123), because Zou’s users are authorized to gain access to certain functionality
`
`based on a user ID. (Ex. 1005, ¶0193). When users are created, they are assigned a
`
`user ID such as a “user name,” “first name,” “last name,” “email address.” (See id.,
`
`FIG. 18b). For these reasons and the reasons stated in the Petition, Zou discloses
`
`limitations [k], [l], and [m].
`
`Patent Owner incorrectly suggests that Zou does not teach (1) an AUIC and
`
`(2) an EIAC. As an initial matter, the POR confuses “AUIC” with “access code.”
`
`(POR, p.23). Echoing the same infirmity, Dr. Schonfeld concludes that:
`
`there is no teaching or suggestion in Zou of an authorized user
`
`identification code. To the contrary, it appears that any ‘permissions’
`
`in Zou are pre-defined, and not user-specific.
`
`(Schonfeld Decl., ¶25). Dr. Schonfeld’s opinion that Zou’s “permissions” are not
`
`“user-specific” flatly contradicts Zou’s teachings that one user can “edit
`
`permission profiles for existing users.” (Ex. 1005, ¶0192). In addition, Petitioner
`
`cites to Zou’s user ID (id., FIG. 18b) as the authorized user identification code
`
`(AUIC), not Zou’s permissions. Zou’s user ID is associated with, but different
`
`from, the authority levels stored in a user’s permission profile. (See Petition, p.50).
`
`Patent Owner provides no response to this argument.
`
`
`
`16
`
`
`
`Patent Owner argues that while “the ability to create geofences may be
`
`relevant to the ‘second level of administrator privilege’ in limitation 1(f), it does
`
`not teach the EIAC claimed in limitations 1(l) and 1(m).” (POR, p.24). Patent
`
`Owner misconstrues Petitioner’s invalidity argument by conflating the second level
`
`of administrator privilege with access to geofence functionality.
`
`Zou teaches at least two levels of administrator privileges: those users who
`
`can edit other users (e.g., creating users or editing their profiles) and those users
`
`who cannot. (See Ex. 1005, ¶0192). As discussed in the Petition, Zou describes a
`
`fleet manager (first level) who creates and sets privileges for other users (second
`
`level). (Petition, p.47). Some of these created users have access to geofence
`
`functionality, while others do not. (Ex. 1005, ¶0205 stating “The exemplary
`
`telemetry system allows the user to create and view current GeoFences; however,
`
`the user's user profile may not allow the user to create GeoFences.”). In this
`
`respect, Zou’s disclosure of how some users at the second level are given access to
`
`geofence functionality teaches the EIAC claimed in limitations [l] and [m]. This
`
`teaching is additive to Zou’s disclosure of a Fleet Manager who also creates users
`
`(e.g., a flexible hierarchical structure).
`
`For these reasons, Zou combined with Fast renders the challenged claims
`
`obvious.
`
`B. A POSITA would be motivated to combine Fast and Zou
`
`
`
`
`
`17
`
`
`
`Fast’s system may be optimized for fleet tracking applications by using the
`
`teachings of Zou. (See Petition, p.43). In opposition, Patent Owner relies on Dr.
`
`Schonfeld, who testifies that a POSITA would not have been motivated or even
`
`able to combine these systems, due to their fundamentally different ways of
`
`arranging and conveying information. (POR, p.25 citing Schonfeld Decl., ¶¶23-
`
`24). Dr. Schonfeld does not draw any conclusion of non-obviousness but rather
`
`limits his opinion on whether a POSITA would be motivated to physically
`
`combine Fast with Zou. Specifically, Dr. Schonfeld’s analysis focused on the
`
`degree of difficulty of adding software code that implements “simple lists” to the
`
`software code of Fast. (Schonfeld Decl., ¶23). He concluded that it would require
`
`completely re-writing Fast’s software code. (Id.). For the following reasons, Dr.
`
`Schonfeld’s opinions should be given no weight.
`
`First, his opinions are irrelevant when considering a correct obviousness
`
`analysis. A correct obviousness analysis focuses on whether a POSITA would
`
`have sufficient motivation to combine different teachings to arrive at the claimed
`
`invention. See In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). However, “[i]t
`
`is well-established that a determination of obviousness based on teachings from
`
`multiple references does not require an actual, physical substitution of elements.”
`
`In Re Blaise Laurent Mouttet, No. 2011-1451, at *15 (Fed. Cir. June 26, 2012)
`
`(emphasis added); see also CaptionCall, LLC v. Ultratec Inc., IPR2013-00545,
`
`
`
`18
`
`
`
`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
`
`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 testified that physically combining the two systems
`
`“would necessitate a complete rewriting of the system’s software.” (Schonfeld
`
`Decl., ¶23). This analysis is irrelevant to the issue-at-hand, to wit, combining the
`
`location sharing concepts taught in Fast and Zou. If anything, Dr. Schonfeld’s
`
`testimony suggests that the two references can be combined when starting from
`
`scratch. (Id., ¶24). Certainly, their relevant teachings are not incompatible,
`
`structurally or otherwise.
`
`Second, Dr. Schonfeld’s opinion that Fast is “a predefined hierarchical
`
`system” contradicts the intrinsic record as well as Dr. Heppe’s analysis of flexible
`
`subscriber accounts (Ex. 1010, ¶30). Fast explains that a subscriber has the
`
`flexibility to create different users and user relationships using the subscriber’s
`
`portal.
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