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
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA
`Petitioner,
`
`v.
`
`PERDIEM CO., LLC.
`
`Patent Owner
`
`_________________
`
`Case IPR2016-01278
`
`U.S. Patent 9,071,931
`
`_________________
`
`PETITIONER’S REPLY
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`
`i
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`TABLE OF CONTENTS
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`I. Fast Anticipates the Challenged Claims .............................................................. 1
`
`A.
`
`B.
`
`Fast Discloses the “Group” Feature .............................................................. 1
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`Fast Discloses the “Server” Feature .............................................................. 3
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`1. Fast’s threshold monitoring while in “tracking mode” discloses the server
`feature .................................................................................................................. 3
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`2. Patent Owner misreads Fast’s use of the word “manually” .......................... 4
`
`3. Fast’s usage of the word “system” does not suggest that humans perform
`threshold monitoring ............................................................................................ 7
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`4. Patent Owner applies an unreasonably strict standard for anticipation ........ 8
`
`C.
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`Fast Anticipates Claims 23 and 24 ................................................................ 9
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`1. Claim 23 ........................................................................................................ 9
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`2. Claim 24 ......................................................................................................10
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`II.
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`Fast and Phillips Render the Challenged Claims Obvious .............................11
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`A.
`
`B.
`
`C.
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`Phillips is Prior art .......................................................................................11
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`The Claimed “Server” Feature is Obvious ..................................................14
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`The Claimed “Group” Feature is Obvious ..................................................15
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`III. Fast, Phillips, and Zou Render the Challenged Claims Obvious ...................17
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`A. The Claimed “Group” Feature is Obvious ..................................................17
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`B. A POSITA would be Motivated to Combine Fast and Zou ........................18
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`IV. Claims 23 and 24 are Obvious........................................................................21
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`Patent Owner’s Licensing Evidence Does Not Amount to a Secondary
`C.
`Consideration to Rebut the Obviousness Case .....................................................22
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`V. Conclusion ......................................................................................................25
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`VI. Certification of Compliance ...........................................................................25
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`ii
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`TABLE OF AUTHORITIES
`
`CASE LAW
`
`Federal Circuit Court of Appeals
`
`In re Antor Media Corp., 689 F.3d 1282, 1293-94 (Fed. Cir. 2012) ................ 23
`
`In re Blaise Laurent Mouttet, No. 2011-1451 (Fed. Cir. June 26, 2012) ......... 19
`
`In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) ............................... 19
`
`In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006) .......................................... 19
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376
`
` (Fed. Cir. 2015) ........................................................................................... 8
`
`Novartis AG v. Torrent Pharmaceuticals, Case No. 2016-1352 (Fed.
`
` Cir. April 12, 2017) ..................................................................................... 23
`
`
`
`
`
`USPTO, Patent Trial and Appeal Board
`
`CaptionCall, LLC v. Ultratec Inc., IPR2013-00545, paper 67 ......................... 19
`
`Cisco Systems, Inc. v. C-Cation Technologies, LLC, IPR2014-00454,
`
` paper 12 ..................................................................................................... 11
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`
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`FEDERAL REGULATIONS
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`37 C.F.R. § 42.6(a)(3) ....................................................................................... 11
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`37 CFR §42.64(b) ............................................................................................. 24
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`37 C.F.R. §42.65(a) ........................................................................................... 21
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`iii
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`EXHIBIT LIST1
`
`Ex. 1001 U.S. Patent No. 9,071,931 (“’931 Patent”)
`Ex. 1002
`The file history of the ’931 Patent
`Ex. 1003 U.S. Patent No. 7,327,258 (“Fast”)
`Ex. 1004 U.S. Provisional Patent App. No. 60/542,208 (“Fast Provisional”)
`Ex. 1005 U.S. Patent Pub. No. 2005/0156715 (“Zou”)
`Ex. 1006 Discrete Wireless’s Marcus GPS Fleet Management Application
`Product Brochure (“Marcus”)
`Ex. 1007 U.S. Patent No. 7,848,765 (“Phillips”)
`Ex. 1008 U.S. Pat. Pub. No. 2005/0171692 (“Hamblen”)
`Ex. 1009 U.S. Patent No. 7,949,608 (“Li”)
`Ex. 1010
`Software as a Service Article (“SaaS Article”)
`Ex. 1011
`Supporting Declaration of Dr. Stephen Heppe
`Ex. 1012
`Examiner Interview Summary of June 13, 2016 for U.S. App. No
`14/629,347
`PC Magazine article from 2004 titled “Location Location Location”
`Ex. 1013
`uLocate Documentation
`Ex. 1014
`Ex. 1015 Deposition Transcript of Alan Phillips
`Ex. 1016
`Success Stories in Fleet Tracking (“Troppito”)
`Ex. 1017 Deposition Transcript of Robert Babayi
`Ex. 1018
`Perdiem letter regarding the prior art
`Ex. 1019 Declaration of Vivek Ganti, Esq.
`Ex. 1020
`PTAB email correspondence
`Ex. 1021
`Litigation Deposition Transcript of Mr. Diem
`Ex. 1022 Objections and Responses to 30(B)(6) Deposition Notice
`Ex. 1023 Declaration of John Morgan
`Ex. 1024 Declaration of William Steckel
`Ex. 1025 Declaration of Steven G. Hill
`Ex. 1026 Declaration of Michael Femal
`Ex. 1027
`Infringement Complaints Filed by Patent Owner
`Ex. 1028 Deposition Transcript of Darrell Diem
`
`
`1 Newly Filed exhibits in Bold
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`
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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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`1–7, 12–16, 20, and 22–26 of the ’931 Patent. (Inst. Dec., paper 22, p.30). Patent
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`Owner filed its Patent Owner Response (POR) addressing only independent claim
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`1 and dependent claims 23 and 24. Petitioner submits this Reply.
`
`I. Fast Anticipates the Challenged Claims
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`Patent Owner alleges two patentable distinctions between claim 1 and Fast:
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`1) The group feature – tracking a group of devices per scenario instead of
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`tracking a single device; and
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`2) The server feature – monitoring for events at the server instead of at the
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`mobile device.
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`(POR, p.16). Fast discloses these two features for the following reasons.
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`A. Fast Discloses the “Group” Feature
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`As stated in the POR, claim 1 is directed to “tracking groups of mobile
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`devices.” (POR, p.1). The concept of “group” tracking is expressed in several
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`claim limitations. The Parties refer to this as the “group” feature.
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`Patent Owner argues that Fast does not disclose tracking a “group,” while
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`conceding that Fast discloses tracking a single device. (POR, p.1 stating “Fast
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`only discloses tracking a single beacon per scenario, not a group of beacons”).
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`Patent Owner simply overlooks additional teachings of Fast directed to the “group”
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`feature.
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`
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`1
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`

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`Fast teaches that “a zone can be assigned to one or more dependents.” (Ex.
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`1003, 20:65) (emphasis added). The inquiry ends here. Fast’s Zone Manager is
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`designed to apply a single zone to a group of dependents, just like the claimed
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`“group” feature. Overlooking Fast’s Zone Manager, Patent Owner argues that
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`“Fig. 11-1 explicitly refers to selecting a single beacon to monitor according to a
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`scenario.” (POR. p.19). But this analysis misses the mark.
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`Fast teaches defining a scenario, naming it, and then saving it so that the
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`identical scenario can be applied to other beacons, hence group tracking. (Ex.
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`1003, 36:1-6). To apply the same scenario to a group of beacons, a user interface
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`prompts a user to select a predefined scenario for each item in the group. (Id.,
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`35:16-22; FIG. 11-1, items 255, 261 and 294).
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`Fast also provides a detailed technical description of implementing the
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`claimed “group” feature by describing a beacon controller interface (BCI) that
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`interfaces with multiple beacons. (Ex. 1003, FIG. 4). FIG. 12 also shows how
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`multiple beacons send information to a scenario monitor. (Ex. 1003, FIG. 12,
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`36:12-16). This is consistent with Fast’s teaching of supplying “multiple beacons
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`per subscriber.” (Ex. 1003, 24:56-65). Simply put, the “group” feature is not
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`novel. It is also telling that Dr. Schonfeld, who was hired to rebut the Petition,
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`does not testify in support of Patent Owner on this issue. For these reasons above
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`and the reasons stated in the Petition, Fast discloses the “group” feature.
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`
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`2
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`B. Fast Discloses the “Server” Feature
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`Claim 1 is directed to “one or more servers configured to” perform various
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`claimed operations. Per the claims, the server determines the zone-based event.
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`(See Claim 1, limitation 1(n)). Patent Owner asserts that the server-side processing
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`is a patentable distinction over the prior art. Patent Owner previously made this
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`argument in the preliminary response, but the Board found it unpersuasive.
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`(Institution Decision, p.27). Now, Patent Owner cites to Dr. Schonfeld, who
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`merely repeats the very points that the Board already considered and rejected. For
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`at least the following reasons, the Board should maintain its initial findings.
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`1.
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`Fast’s threshold monitoring while in “tracking mode” discloses the
`server feature
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`Threshold monitoring refers to “such features as zone monitoring and speed
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`monitoring.” (Ex. 1003, 27:46-49). Fast explains how the “Beacon Manager
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`[BM] is providing, illustratively, threshold monitoring.” (Id., 31:1-3) (emphasis
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`added). The parties agree that the BM is server-side software. (POR, p.25,
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`referring to the BM as “BM server software”). The BMs are grouped together as
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`plug and play devices that are part of the beacon controller interface (BCI). (Id.,
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`see also id., 27:1-8). The BCI works directly with the Scenario Monitor (Ex. 1003,
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`47:4-6 stating “Signals flow in both directions between the Scenario Monitor and
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`the Beacon Controller Interface 610”).
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`
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`3
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`

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`
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`Fast’s “Tracking Mode” refers to a beacon that forwards its location
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`information to the BM. (Ex. 1003, 23:59-62; see also Ex. 1011, ¶176). By
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`performing threshold monitoring in “tracking mode,” Fast discloses the server
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`feature of the claims. (Ex. 1011, ¶154, ¶184).
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`2.
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`Patent Owner misreads Fast’s use of the word “manually”
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`Patent Owner avers that Fast performs threshold calculations via human
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`activity not by servers. (POR, p.20 citing to Ex. 1003, 26:54-57). This argument
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`hinges on the word “manually” which appears in Fast, as shown below:
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`While the locate points come into the system, the BM inspects each point to
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`manually determine if the beacon is still within the prescribed
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`zone or not.
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`(1003, 26:54-57 (emphasis added). Taking this quote out of context, Patent Owner
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`argues that “Fast also discloses an alternative embodiment in which human
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`operators ‘manually’ perform threshold monitoring through an interface to Fast’s
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`Beacon Manager”. (POR, p.8). This conclusion contradicts the teachings of Fast
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`for five reasons.
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`
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`First, Fast explicitly teaches that the BM software component performs the
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`calculations:
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`the Beacon Manager begins real-time inspection 187 of all incoming
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`data from the Beacon. Inspecting this data and comparing it to the
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`threshold allows the Beacon Manager to provide threshold
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`monitoring while the Beacon is in tracking mode.
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`
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`4
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`(Ex. 1003, 31:35-39) (emphasis added). This quote shows that data inspection and
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`comparison is part of threshold monitoring provided by the BM. Nothing above
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`suggests that humans are tasked with the burden of comparing every location data
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`to a zone. (See Ex. 1003, 17:25-27 “The application servers 26 perform the
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`calculations, computations or functions requested by the web servers 25.”). Patent
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`Owner’s analysis conveniently overlooks this part of Fast.
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`
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`Second, the purpose of threshold monitoring is to provide an alert upon a
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`threshold breach. Fast states that “[m]any other messages, such as threshold
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`breaches or alerts, will also include location information.” (Ex. 1003, 45:27-29).
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`An alert follows from a determination of a threshold breach. The flaw in Patent
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`Owner’s logic is that if a human mentally performs the threshold monitoring, that
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`means that the human also generates the alert. But this contradicts Fast who
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`explains how a “Notification Manager” module provides “messaging tools for
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`sending event driven alerts. (Ex. 1003, 21:5-7).
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`
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`Third, Fast explains how some beacons determine location using a “special
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`server” called Position Determining Equipment (PDE). (Id., 5:17-25 stating
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`“[w]hen a PDE is used as a component of the location technology, the GMMS may
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`communicate with the PDE rather than the Beacon itself to determine the Beacon's
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`location”; see also 46:12-15). Because these beacons do not calculate location,
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`5
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`these beacons cannot perform threshold monitoring. Thus, Fast teaches GMMS
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`servers and the PDE that perform threshold monitoring.
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`Fourth, Dr. Heppe’s deposition testimony in related litigation (Ex. 2002)
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`demonstrates that the word “manually” refers to server activity, not human
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`activity, when taken in context.2 When asked about the “manually” language, Dr.
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`Heppe explained that it does not refer to human activity, but rather a “low level
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`point-by-point analysis” made by the BM. (Ex. 2002, 156:6-13). In his general
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`experience, Dr. Heppe was unaware of using “manually” to refer to software
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`execution. (Id., 156:14-20). But, taken in context, he opined that “what Fast was
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`trying to do here was distinguish between two levels of processing complexity
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`within the software comprising the beacon manager.” (Id., 161:6-10).
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`
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`Fifth, Fast explains that threshold monitoring is optional and Patent Owner
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`limits its analysis to the examples where threshold monitoring is not applied. For
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`instance, in Example 3 of Fast, (Ex. 1003, 26:25-39), the police can track a car
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`after it is stolen by observing “locate points.” (Ex. 1003, 26:34-39; see also id.,
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`27:24-25). In this case, there is no threshold monitoring with respect to a zone.
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`2 The POR cites to Dr. Heppe’s testimony but excludes the relevant passages
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`discussed herein.
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`6
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`The POR mischaracterizes this example above (Example 3) as performing
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`threshold monitoring. (POR, p.10).
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`Petitioner, on the other hand, relies on Fast’s disclosure of applying
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`“tracking mode” combined with “threshold monitoring.” (compare Ex. 1003,
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`27:23-33 “Beacon Manager Tracking Feature” with 27:46-58 “Beacon Threshold
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`Monitoring Feature”). When applying threshold monitoring in tracking mode, Fast
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`states that a BM (server –side software) can also inspect and compare this data as
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`part of a threshold monitoring feature. (Id., 31:24-29). This latter teaching
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`discloses the claimed server feature. The POR conflates and confuses Fast’s
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`teachings of tracking mode and threshold monitoring.
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`3.
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`Fast’s usage of the word “system” does not suggest that humans
`perform threshold monitoring
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`Patent Owner argues that Petitioner has not met a preponderance of the
`
`evidence because Fast’s usage of the word “system” ambiguously includes humans
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`and/or software components. (POR, p.24 citing to Ex. 1003 27:49-54). But, as
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`discussed above, Fast expressly teaches that the BM performs the threshold
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`monitoring:
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`- “Inspecting this data and comparing it to the threshold allows the
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`Beacon Manager to provide threshold monitoring while the Beacon is
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`in tracking mode.” (Ex. 1003, 31:35-39).
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`7
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`- “In this way, the Beacon Manager is providing, illustratively,
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`threshold monitoring while the Beacon itself is in the tracking
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`mode.” (Ex. 1003, 30:67-31:3).
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`Therefore, again, Patent Owner is wrong.
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`4.
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`Patent Owner applies an unreasonably strict standard for anticipation
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`Patent Owner complains that “the two Fast passages that the Institution
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`Decision cites for this point (8:59-63 and 26:7-12) say nothing about threshold
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`monitoring being performed by servers.” (POR, p.22). To argue patentability,
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`Patent Owner neglects to consider how a POSITA would understand the concepts
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`expressed by the words used in these portions of the Fast disclosure.
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`A reference is anticipatory even if it does not expressly spell out all the
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`limitations arranged or combined as in the claim, as long as a person of skill in the
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`art, reading the reference, would at once envisage the claimed arrangement or
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`combination. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381
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`(Fed. Cir. 2015) (quoting In re Petering, 49 CCPA 993, 301 F.2d 676, 681 (1962)).
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`In this case, Fast teaches both server-side processing (e.g., threshold monitoring in
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`the BM) and client-side processing (e.g., threshold monitoring in beacon).
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`Petitioner should be permitted to rely on all aspects of Fast even if examples use
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`the beacon to perform threshold monitoring. This is true because a POSITA would
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`understand that Fast’s non-limiting examples of beacon-processing would equally
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`apply to server-side processing. (See Ex. 1011, ¶64). Therefore, the examples of
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`8
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`

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`Fast that illustrate threshold monitoring in a beacon are still relevant to explain
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`how threshold monitoring works in general. For these reasons, Fast discloses the
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`“server” feature.
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`C. Fast Anticipates Claims 23 and 24
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`1. Claim 23
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`Claim 23 states “the first level administrative privileges are checked
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`when a mobile device is added to the group.” As stated in the Petition, Fast
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`discloses this limitation by explaining that a user must log into the
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`subscriber portal to add a beacon. (Ex. 1003, FIG. 16-2, elements 523,
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`518)). During login, the level administrative privileges are checked. (Id.,
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`5:28-30, FIG. 16-1, items 505c and 512). Dr. Heppe explains that logging
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`into the subscriber portal to add a mobile device is part of the same
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`“session” when a user interacts with the GMMS. (Ex. 1011, ¶230).
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`Therefore, checking the privileges at login also means that the privileges are
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`checked when the user adds a mobile device as part of the same login
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`session.
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`Patent Owner counters by arguing that checking privileges at login
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`necessarily precludes checking privileges when adding a mobile device
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`because “Logging in” and “adding a mobile device to a group” are allegedly
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`different events. But, Fast teaches otherwise. Fast discloses that logging
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`
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`9
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`into the subscriber portal to add a mobile device to the group is the same
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`event, the event being a single interactive session with the subscriber portal.
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`(See, Ex. 1011, ¶230).
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`Patent Owner argues that the “plain terms of the limitation” preclude
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`“logging in” and “adding a mobile device” being part of the same
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`overarching event. (POR, pp.26-27). Patent Owner fails to identify
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`anything in the specification to support this proposition.3 Patent Owner’s
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`attempt to narrow the claims runs contrary to the BRI standard of claim
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`construction. For these reasons, the Petition has shown by a preponderance
`
`of the evidence that Fast anticipates claim 23.
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`2.
`
`Claim 24
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`Claim 24 states “the second level administrative privileges are
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`checked when setting a zone, an event, or an alert for the group.” Patent
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`Owner applies the same analysis of claim 23 to claim 24. Again, Patent
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`Owner’s narrow reading of claim 24 violates BRI and fails to draw support
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`from the specification.
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`Fast explains that a user logs in to set a zone, an event, or an alert for
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`the group. For example, FIGS. 16-1 and 16-2 show how a user logs into the
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`subscriber portal (items 505c and 512) to access the scenario manager (item
`
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`3 Petitioner submits that claims 23 and 24 are not supported by the specification.
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`10
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`520). Using the scenario manager, the user can set a zone, an event, or an
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`alert. (Ex. 1003, FIG. 11-1, item 258, 260, and 278). Dr. Heppe explains
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`that logging in to set a zone, an event, or an alert for the group is part of the
`
`same user session. (Ex. 1011, ¶233). Therefore, checking privileges when a
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`user logs in also means the privileges are checked when a user logs in and
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`then sets a zone, an event, or an alert for the group. (Id.). For these reasons,
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`the Petition has shown by a preponderance of the evidence that Fast
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`anticipates claim 24.
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`II. Fast and Phillips Render the Challenged Claims Obvious
`
`A. Phillips is Prior art
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`Having failed its first time, Patent Owner submits a second inventor
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`declaration of Mr. Diem (Ex. 2009) in an attempt to antedate Phillips. Rather than
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`sufficiently explaining the argument for prior conception, the POR presents no
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`analysis at all. It only cites to Ex. 2009 in its entirety twice, and asks the Board to
`
`make the case for prior conception. The Board has repeatedly held that such
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`briefing amounts to an improper incorporation by reference. (See, e.g., 37 C.F.R. §
`
`42.6(a)(3); see also IPR2014-00454, paper 12, p.10). Accordingly, Patent
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`Owner’s second attempt to swear behind Phillips should be rejected. The Board
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`should give no weight to Ex. 2009 because it has been improperly incorporated by
`
`
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`11
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`reference. (See id.). On its merits, Ex. 2009 fails to cure all the problems the
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`Board identified in Patent Owner’s first attempt to show prior conception.
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`First, there is no claim-by-claim analysis in Ex. 2009, which the Board
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`expressly identified as a fatal defect in the first declaration. (Institution Decision,
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`pp. 19-20). Mr. Diem generally declares he developed code relating to groups,
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`access codes, geofence zones and identification codes. (Ex. 2009, ¶6). But he
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`does not cite to any claim language, nor does he provide correlation of every claim
`
`limitation to specific dated code in support of his declaration.
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`Second, Ex. 2009 fails to provide corroborating evidence of “one or more
`
`servers configured . . . to compare the IDs and location information with the
`
`group’s zone and event to determine whether to send the group’s alert.” Mr. Diem
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`submitted five pieces of source code in his declaration, Exhibits A, C, E, F, and G.
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`On cross, he admitted that none of these discloses code for performing a
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`calculation of a zone event, much less, a server-side zone calculation. (Ex. 1028,
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`68:22-70:3). Mr. Diem also submitted Exhibit B, a user manual. But when asked
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`whether “there is a reference to zone or geofences in Exhibit B,” he stated that
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`“this particular manual does not have it.” (Id., 38:7-9).
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`Mr. Diem testified that this “compare” limitation is present in the marketing
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`brochure of Exhibit D, when read in combination with the other exhibits. (Id.,
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`38:7-17). Ex. D demonstrates that “zones” are ultimately sent to personal digital
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`
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`12
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`

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`assistant (PDA). Mr. Diem acknowledged that Exhibit D demonstrates that the
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`PDA client device 1) receives the zone, 2) has the location data, and 3) has
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`application software. The presence of these three in the client show that zone-based
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`calculations take place in the client, not the server. Acknowledging that this
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`undermines Patent Owner’s case, Mr. Diem bootstraps Ex. D to Ex. A to allege
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`that the server stores the zone. (Ex. 2009, ¶9). But Mr. Diem’s testimony in 2017
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`about what “could be uploaded to a server in [his] system,” (Ex. 2009, ¶6) does not
`
`establish what Mr. Diem actually conceived circa 2005. More problematic is the
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`fact that Mr. Diem maintained his 2004/2005 code (see Ex. 2009 at Ex. I) and still
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`did not produce a single piece of code showing a server-side zone calculation.
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`In addition, Patent Owner contends that email notification servers in Ex. E-G
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`support a server-side comparison (Ex. 2009, ¶10) while Patent Owner also argues
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`that the prior art’s more expansive disclosure of sending zone based alerts via
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`email (See Ex. 1003, 35:46-52) does not. Patent Owner cannot have it both ways.
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`Third, Mr. Diem’s declaration does not offer any corroborating evidence that
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`he conceived the concept of applying a first and second level of administrative
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`privilege, as required by claim 1.
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`Fourth, the only reference to a “group” in Ex. 2009 is the variable in Exhibit
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`A. However, Mr. Diem’s declaration does not explain how a single variable called
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`13
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`“group” shows “a request to set a zone for the group,” “a request to set an event for
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`the group,” and “a request to set an alert for the group,” as required by claim 1.
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`Fifth, despite being warned, Patent Owner again fails to explain a diligent
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`reduction to practice. (See Institution Decision, pp.22). Mr. Diem submits Exhibit
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`I to suggest that he “continued to implement and commercialize” his system. (Ex.
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`2009, ¶13). Exhibit I allegedly shows computer files being updated throughout
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`May 2005 and December 2005. There is nothing in the record that ties these
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`computer files to the claim limitations of the ’931 Patent. There are a dozen
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`patent applications allegedly claiming different aspects of Mr. Diem’s provisional
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`patent application. So, when Mr. Diem ambiguously declares that Exhibit I shows
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`that he worked on “his system,” there is no corroborating evidence that he
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`diligently reduced to practice the specific limitations of the system described in the
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`claims of the ’931 Patent. Additionally, Mr. Diem produced no source code that
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`practices the “compare” limitation, (Ex. 1028, 68:22-70:3).
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`For these reasons, Patent Owner has not met its burden of showing prior
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`conception or diligent reduction to practice. Consequently, Phillips is prior art.
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`B. The Claimed “Server” Feature is Obvious
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`Phillips teaches the “server” feature by describing a server that monitors for
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`zone-based events. (Petition, p.15 citing to Phillip’s server-side Geofencing
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`application). In addition, the Petition explains how the industry began to move
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`towards Software as a Service (SaaS), which would motivate a POSITA to
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`implement server-side processing instead of client-side processing. (Petition,
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`pp.15-18).
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`In response Patent Owner fails to rebut that:
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`1) Phillips teaches the claimed “server” feature; and
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`2) it would be obvious to combine Phillips’s server feature with Fast.
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`In fact, Patent Owner admits that Fast “could refer to the BM server software
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`performing threshold monitoring.” (POR, p.25). To this end, Patent Owner
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`concedes that the “server” feature is obvious in light of Fast and Phillips.
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`C. The Claimed “Group” Feature is Obvious
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`Phillips teaches interfaces that
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`display a “map or a menu or provide
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`an overview of the locations of all
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`the users in a defined group.” (Ex.
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`1007, 4:65-67 and 6:1-2).
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`Additionally, FIG. 32 shows how to
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`set a geofence where Alan and Frank are “phones assigned to this geofence.” (Id.,
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`FIG. 32, a portion of which is shown to the right). Based on these teachings,
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`Phillips teaches the claimed “group” feature. (Ex. 1011, ¶186).
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`Still, Patent Owner maintains that Phillips “tracks mobile devices on a
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`device-by device basis, not a group basis.” (POR, p.30). Patent Owner argues that
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`Alan, Frank, and Geoff’s phones are allegedly linked to separate events with
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`separate lists of alert recipients. (POR, p.14). This flatly contradicts Phillips,
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`which shows a “notifications” button underneath the group of phones assigned to
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`the geofence. Dr. Heppe also explained that FIG. 32 shows that the locations of
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`the phones in the group are intended to be compared to the defined geofence in
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`order to generate an alert. (Ex. 1011, ¶186). His opinions are supported by
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`Phillips, which describes handling “locations of all the users in a defined group.”
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`(Ex. 1007, 4:65-67 and 6:1-2).
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`Dr. Schonfeld, who parrots the POR, asserts that events are tracked on a per
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`phone basis not a group basis because FIG. 36 does not have any row containing
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`more than one tracked phone. (POR, p.15 and Ex. 2010, p.16). While Dr.
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`Schonfeld and Patent Owner focus on FIG. 36, they ignore Phillips’s express
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`teaching of group alerts. For example, Phillips explains:
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`the tracking may comprise . . . tracking personnel such as sales
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`people, social workers, home health care workers . . . . For example, a
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`geofence may be established around a particular location, so that an
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`alert is sent if a person exits the area of the geofence, such as if a
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`home health care worker leaves a scene, a worker enters a hazardous
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`area . . .
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`(Ex. 1007, 19:5-13). The foregoing passage explains that a group of workers (e.g.,
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`personnel) are tracked so that when a worker leaves a zone, an alert is sent. (Id.).
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`Dr. Schonfeld also suggests that FIG. 36 limits FIG. 32 because each of the
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`three users tracked in FIG. 32 associate separate alerts. This analysis improperly
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`assumes that the alerts of FIG. 36 necessarily extend from the geofence example of
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`FIG. 32. Frank is tracked with respect to the “ulocate office” geofence in FIG. 32
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`and he tracked with respect to the “Frank’s Home” geofence in FIG. 36. Thus,
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`FIGS. 32 and 36 are independently illustrative rather than limiting each other. For
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`these reasons, Phillips discloses the claimed “group” feature.
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`It addition, a POSITA would be motivated to combine this teaching with
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`Fast when implementing fleet tracking. Dr. Heppe explains that a POSITA using
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`Fast’s disclosure to implement location tracking for fleets would consider
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`Phillips’s teachings of group geofences and alerts. (Ex. 1011, ¶139). Patent
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`Owner does not rebut the evidence regarding combining Fast with Phillips. Thus,
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`the claimed “group” feature is obvious.
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`III.
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` Fast, Phillips, and Zou Render the Challenged Claims Obvious
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`A. The Claimed “Group” Feature is Obvious
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`Zou teaches using interfaces to set up group tracking for fleets of vehicles.
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`(Ex. 1003, FIG. 13, ¶0206, ¶0210; Ex. 1011, ¶¶142-43 describing fleets lists and
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`geofences for fleets). Zou teaches handling a group of vehicles:
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`Using GeoFences, the exemplary system will record each time the
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`vehicle(s) enters or exits the boundaries of the GeoFence. These
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`‘events’ can also, e.g., trigger the system to send alerts to provider
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`pagers or email[.]
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`(Ex. 1005, ¶204). Such vehicles are grouped into fleets by fleet location such as
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`“Eastern, Western, Southern, and Northern” or by function such as “Service fleet
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`and a Delivery fleet.” (Id., ¶190).
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`Patent Owner argues that in Zou “[e]ach remote telemetry device is attached
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`to a single tracked vehicle, meaning that it can only perform threshold monitoring
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`for that single vehicle — not a group of vehicles.” (POR, p.12). This argument
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`misses the mark. Zou describes a Network Operations Center (NOC) that includes
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`“a presentation server that executes a number of applications in support of fleet and
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`asset management.” (Ex. 1005, ¶009).
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`Petitioner relies on Fast and Phillips (not Zou) for server-size threshold
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`monitoring. But that does not mean that Zou does not teach the concept of
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`tracking a group with respect to geofence-based alerts, as Patent Owner contends.
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`As just discussed, Zou shows that group tracking is obvious, particularly in the
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`context of fleet management.
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`B. A POSITA would be Motivated to Combine Fast and Zou
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`
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`Fast’s system may be optimized for fleet tracking applications by using
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`Zou’s teachings. (Petition, p.56). Dr. Schonfeld states that a POSITA would not
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`have been motivated or even able to combine these systems, due to their
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`fundamentally different ways of arranging and conveying information. (POR, p.31
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`citing Ex. 2010/ Schonfeld Decl. at ¶¶30-31). However, Dr. Schonfeld does not
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`draw 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 with Zou. Specifically,
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`Dr. Schonfeld’s analysis focused on the degree of difficulty of adding software
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`code