UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`International Business Machines Corporation
`Petitioner,
`
`v.
`
`EnvisionIT, LLC
`Patent Owner
`
`Patent No. 8,438,221
`
`
`Title: BROADCAST ALERTING MESSAGE AGGREGATOR/GATEWAY
`SYSTEM AND METHOD
`
`
`Inter Partes Review No. IPR2017-01247
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,438,221
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`LIST OF EXHIBITS ................................................................................................. V
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES ............................................................................. 3
`
`A.
`
`B.
`
`C.
`
`D.
`
`Real Parties in Interest (37 C.F.R. § 42.8(b)(1)) ................................... 3
`
`Related Matters (37 C.F.R. § 42.8(b)(2)) .............................................. 4
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)) ........................... 5
`
`Service Information (37 C.F.R. § 42.8(b)(4)) ....................................... 5
`
`III. CERTIFICATION OF GROUNDS FOR STANDING .................................. 5
`
`IV. FEES ................................................................................................................ 6
`
`V.
`
`SUMMARY OF THE ’221 PATENT AND PROSECUTION HISTORY .... 6
`
`A.
`
`B.
`
`C.
`
`The Claims of the ’221 Patent ............................................................... 6
`
`Specification of the ’221 Patent ............................................................ 8
`
`Prosecution History of the ’221 Patent ............................................... 10
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11
`
`VII. BACKGROUND ON PUBLIC MESSAGE BROADCASTING ................. 11
`
`A.
`
`B.
`
`The Emergency Alert System ............................................................. 13
`
`The Push For An Updated And Improved Emergency Broadcasting
`Warning System .................................................................................. 17
`
`C.
`
`Technological Advances In Geographic Based Messaging ................ 26
`
`VIII. OVERVIEW OF CHALLENGE AND PRECISE RELIEF REQUESTED . 30
`
`IX. CLAIM CONSTRUCTION .......................................................................... 37
`
`
`
`i
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`

`

`
`
`X. GROUND 1: CLAIM 19 IS OBVIOUS OVER FCC 1994, NSTC, AND
`CAP 0.5 .......................................................................................................... 38
`
`A.
`
`B.
`
`C.
`
`Scope and Content of the Prior Art ..................................................... 38
`
`Level of Ordinary Skill in the Art ....................................................... 39
`
`Differences Between the Claim and the Prior Art and Conclusion of
`Obviousness ......................................................................................... 39
`
`D.
`
`Lack of Secondary Considerations ...................................................... 49
`
`XI. GROUNDS 2 AND 3: CLAIM 19 IS ANTICIPATED BY REIGER OR
`OBVIOUS OVER REIGER AND NSTC ..................................................... 50
`
`A. Anticipation by Reiger: Ground 2 ....................................................... 50
`
`B.
`
`Obviousness over Reiger and NSTC: Ground 3 ................................ 55
`
`XII. CONCLUSION .............................................................................................. 57
`
`CERTIFICATE OF WORD COUNT ...................................................................... 58
`
`
`
`ii
`
`

`

`
`
`TABLE OF AUTHORITIES
`
`
`
`
`
`Cases
`Agrizap, Inc. v. Woodstream Corp.,
`520 F.3d 1337 (Fed. Cir. 2008) ........................................................................... 42
`AM General LLC v. UUSI, LLC,
`IPR2016-01049, Paper 14 (P.T.A.B. Nov. 7, 2016) ..........................................4, 6
`Asyst Techs., Inc. v. Emtrak, Inc.,
`544 F.3d 1310 (Fed. Cir. 2008) ..................................................................... 42, 56
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) ............................................................................ 50
`Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131 (2016) ......................................................................................... 38
`Muniauction, Inc. v. Thomson Corp.,
`532 F.3d 1318 (Fed. Cir. 2008) ............................................................................ 42
`Western Union Co. v. MoneyGram Payment Sys., Inc.,
`626 F.3d 1361 (Fed. Cir. 2010) ............................................................................ 49
`Zoll Lifecor Corp. v. Philips Elects. N. Am. Corp.,
`IPR2013-00606, Paper 13 (P.T.A.B. Mar. 20, 2014) ............................................ 3
`Statutes
`35 U.S.C. § 102(b) ................................................................................ 32, 33, 35, 37
`35 U.S.C. § 314(a) ................................................................................................... 37
`35 U.S.C. § 315(b) ..................................................................................................... 6
`35 U.S.C. §§ 311–319 ................................................................................................ 1
`47 U.S.C. § 303(r) .................................................................................................... 32
`Rules
`37 C.F.R. § 42 ............................................................................................................ 1
`37 C.F.R. § 42.100(b) .............................................................................................. 38
`37 C.F.R. § 42.104(a) ................................................................................................. 5
`37 C.F.R. § 42.8(b)(1) ................................................................................................ 3
`37 C.F.R. § 42.8(b)(2) ................................................................................................ 4
`iii
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`
`
`

`

`
`
`
`
`37 C.F.R. § 42.8(b)(3) ................................................................................................ 5
`37 CPR. § 42.8(b)(3) .............................................................................................. ..5
`37 C.F.R. § 42.8(b)(4) ................................................................................................ 5
`37 CPR. § 42.8(b)(4) .............................................................................................. ..5
`37 C.F.R. §42.24(a)(1) ............................................................................................. 58
`37 CPR. §42.24(a)(1) ........................................................................................... ..58
`47 C.F.R. § 11 .......................................................................................................... 13
`47 CPR. § 11 ........................................................................................................ ..13
`47 C.F.R. § 11.31(d) ................................................................................................ 15
`47 C.F.R.§11.31(d) .............................................................................................. ..15
`
`
`
`iv
`
`iV
`
`

`

`
`
`LIST OF EXHIBITS
`
`Exhibit No. Description
`
`Ex. 1001
`
`U.S. Patent No. 8,438,221
`
`Ex. 1002
`
`File History of U.S. Patent No. 8,438,221
`
`Ex. 1003
`
`Declaration of Art Botterell
`
`Ex. 1004
`
`Curriculum Vitae of Art Botterell
`
`Ex. 1005
`
`Declaration of Rajeev Surati, Ph.D.
`
`Ex. 1006
`
`Curriculum Vitae of Rajeev Surati, Ph.D.
`
`Ex. 1007
`
`Ex. 1008
`
`Common Alert Protocol (v 0.5a) – Alert Message Data Dictionary
`(draft June 20, 2002) (“CAP 0.5”)
`
`Partnership for Public Warning Report: Developing A Unified All-
`Hazard Public Warning System, dated November 25, 2002 (“PPW
`Report”)
`
`Ex. 1009
`
`U.S. Patent Application Publication No. 2002/0103892 (“Reiger”)
`
`Ex. 1010
`
`Ex. 1011
`
`REPORT AND ORDER AND FURTHER NOTICE OF PROPOSED
`RULE MAKING (FCC Report No. 94-288) (“FCC 1994”)
`
`Emergency Alert System, 65 Fed. Reg. 21,657 (April 24, 2000) (to be
`codified at 47 C.F.R. pt. 11)
`
`Ex. 1012
`
`U.S. Patent No. 5,995,553 (“Crandall”)
`
`Ex. 1013
`
`National Science and Technology Council, Working Group on Natural
`Disaster Information Systems, Subcommittee on Natural Disaster
`Reduction, "Effective Disaster Warnings," November 2000 (“NSTC”)
`
`Ex. 1014
`
`Peter L. Ward, Effective Disaster Warning: A National Tragedy,
`Natural Hazards Observer, July 2001, Vol. XXV, No. 6, pp. 3-4
`
`v
`
`

`

`
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Comments posted on www.incident.com
`(https://web.archive.org/web/20050308044329/http://www.incident.co
`m/pipermail/cap-interop.mbox/cap-interop.mbox)
`
`Guillaume Peersman and Srba Cvetkovic, The Global System for
`Mobile Communications Short Message Service, IEEE Personal
`Communications, June 2000,Vol. 7, No. 3, pp. 15-25 (“Peersman”)
`
`United States’ Return of Service of Rule 14 Notice to IBM, filed May
`6, 2016, CellCast Technologies, LLC, and Envisionit, LLC v. United
`States, No. 15-cv-01307C
`
`United States’ Unopposed Motion to Notice Third Party, filed March 4,
`2016, CellCast Technologies, LLC, and Envisionit, LLC v. United
`States, No. 15-cv-01307C
`
`Tomasz Imielinski and Julio C. Navas, GPS-Based Geographic
`Addressing, Routing, and Resource Discovery, Communications of the
`ACM, April 1999, Vol. 24, No. 4, pp. 86-92
`
`Arianne Aryanpur, AOL to Start Issuing ‘Amber Alerts’ on Web, LA
`Times, October 1, 2002,
`http://articles.latimes.com/2002/oct/01/nation/na-amber1
`
`Common Alerting Protocol (CAP) Working Documents,
`http://web.archive.org/web/20020702222623/http://www.incident.com/
`cap/docs.html
`
`Patent Owner’s Preliminary Response to Petition for Inter Partes
`Review of U.S. Patent No. 8,438,221, filed February 7, 2017,
`Department of Justice v. EnvisionIT, LLC, Trial No.: IPR2017-00160
`
`Extensible Markup Language (XML), W3C Working Draft November
`14, 1996, http://www.w3.org/pub/WWW/TR/WD-xml-961114.html
`
`Roger L. Freeman, Fundamentals of Telecommunications, Wiley Series
`in Telecommunications and Signal Processing (John G. Proakis ed.,
`1999)
`
`Ex. 1025
`
`Gunnar Heine & Holger Sagkob, GPRS Gateway to Third Generation
`Mobile Networks, Mobile Communications Series (2003)
`
`vi
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`International Business Machines Corporation (“IBM” or “Petitioner”)
`
`petitions for inter partes review (“IPR”) under 35 U.S.C. §§ 311–319 and 37
`
`C.F.R. § 42 et seq. of claim 19 of U.S. Patent No. 8,438,221 (“the ʼ221 patent,” Ex.
`
`1001).
`
`Claim 19 of the ’221 patent is directed to a method of public service
`
`broadcast messaging to a geographically defined broadcast target area. Systems
`
`using that method, however, were used and described in the prior art years before
`
`the earliest purported filing date of the ’221 patent. For example, the federal
`
`government required TV, radio, and cable stations to participate in the Emergency
`
`Alert System, which, just as the system recited in claim 19, transmitted messages
`
`to people within a geographically defined area.
`
`Claim 19 recites steps necessary to transmit a broadcast message, including
`
`“receiving over an input interface a broadcast request including a broadcast agent
`
`identification, a geographically defined broadcast target area, and a broadcast
`
`message” and “verifying ... an authority of the originating broadcast agent to send
`
`the broadcast message to the broadcast target area.” These steps were part of the
`
`original Emergency Alert System and are described in the prior art. Moreover,
`
`with the development of new technologies, the federal government modernized the
`
`Emergency Alert System with updates to the interface used to receive a broadcast
`
`
`
`1
`
`

`

`
`
`message request, the broadcast message transmission network, the way
`
`geographically defined areas were targeted, and the way an agent’s authority to
`
`send a broadcast message was verified. All of these changes are recorded in the
`
`prior art and were included in all updates of the Emergency Alert System.
`
`During prosecution of the application that led to the ’221 patent, the Patent
`
`Owner argued that, unlike prior systems, the disclosed system sends messages to
`
`anonymous recipients within a target area without first ascertaining their identities.
`
`However, contrary to Patent Owner’s arguments, some prior systems provided
`
`geographically targeted broadcasting to anonymous people with no pre-message
`
`identification required. For example, the Emergency Alert System described in
`
`Federal Communications Commission’s documents transmitted broadcast
`
`messages through radio stations to all listeners within its transmission range. Other
`
`prior-art systems, including internet-based systems, also provided that
`
`functionality. Further, the prior art describes using cellular broadcasts—the same
`
`network exemplified in the ’221 patent—to deliver messages to a geographically
`
`defined audience. None of these prior-art examples required pre-message
`
`identification but rather allowed anonymous people to receive messages.
`
`Therefore, as explained more fully below, claim 19 is anticipated by at least one
`
`broadcast message system described in prior art printed publications and is obvious
`
`over prior art printed publications that describe the Emergency Alert System.
`
`2
`
`

`

`
`
`None of the prior art presented in this Petition was before the examiner
`
`during prosecution of the application that led to the ’221 patent. This Petition is
`
`supported by the expert declarations of Mr. Art Botterell and Dr. Rajeev Surati.
`
`II. MANDATORY NOTICES
`A. Real Parties in Interest (37 C.F.R. § 42.8(b)(1))
`The real party in interest is IBM.
`
`IBM is a third-party defendant in a co-pending patent litigation in the United
`
`States Court of Federal Claims filed by Patent Owner and CellCast Technologies,
`
`LLC against the United States. IBM joined the case after being served with a Rule
`
`14 notice on or about April 11, 2016. The United States has filed its own petition
`
`for inter partes review of the ’221 patent (IPR2017-00160) in which IBM has no
`
`interest, and the United States is not a real party in interest in this proceeding.
`
`Neither the United States nor its representatives participated in any way in
`
`the preparation of this Petition and its supporting documents. The United States
`
`did not fund the preparation of this Petition in any way, directly or indirectly. The
`
`United States had and continues to have no opportunity to control this proceeding.
`
`Therefore, the United States is not a real party in interest in this proceeding. See,
`
`e.g., Zoll Lifecor Corp. v. Philips Elects. N. Am. Corp., IPR2013-00606, Paper 13
`
`at 9, (P.T.A.B. Mar. 20, 2014) (“Factors for determining actual control or the
`
`opportunity to control include existence of a financially controlling interest in the
`
`3
`
`

`

`
`
`petitioner…Additional relevant factors include: the non-party’s relationship with
`
`the petitioner; the non-party’s relationship to the petition itself, including the
`
`nature and/or degree of involvement in the filing; and the nature of the entity filing
`
`the petition…The evidence as a whole must show that the non-party possessed
`
`effective control from a practical standpoint.”)
`
`In this case, both IBM and the United States have an interest in the
`
`patentability of the ’221 patent. However, the test for real party in interest is
`
`whether the non-party has control over the IPR. Here, the government does not
`
`have control over the IPR, as explained. Further, any obligation that IBM may
`
`have to indemnify the United States for patent infringement (see Ex. 1018 (Motion
`
`to Notice Third Party) at 3) does not give rise to a privity or other relationship that
`
`would cause the United States to be a real party in interest in the instant
`
`proceeding. See AM General LLC v. UUSI, LLC, IPR2016-01049, Paper 14 at 5-6
`
`(P.T.A.B. Nov. 7, 2016).
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`The ’221 patent is at issue in CellCast Techs., LLC and EnvisionIT, LLC v.
`
`The United States and IBM, No. 15-1307, pending in the United States Court of
`
`Federal Claims. The following U.S. patents, related to the ’221 patent, are also at
`
`issue in that case: Nos. 9,136,954 (“the ’954 patent”); 7,693,938 (“the ’938
`
`patent”); 8,103,719 (“the ’719 patent”); and 8,438,212 (“the ’212 patent”).
`
`4
`
`

`

`
`
`The ’221 patent is at issue in IPR2017-00160. This IPR was filed by the
`
`United States, a third party, and raises unpatentability arguments that are different
`
`than those presented in this Petition. The ’954 patent is at issue in IPR2017-00180;
`
`the ’938 patent is at issue in IPR2017-00183; the ’719 patent is at issue in
`
`IPR2017-00186; and the ’212 patent is at issue in IPR2017-00185. Petitioner has
`
`no involvement in any of these IPRs.
`
`Concurrently with this Petition, Petitioner is filing petitions for IPR of the
`
`’954 patent, the ’938 patent, the ’719 patent, and the ’212 patent.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`Lead counsel is Mark J. Abate, Reg. No. 32,527. Backup counsel are Calvin
`
`E. Wingfield (to seek pro hac vice admission) and Sarah Fink, Reg. No. 64,886.
`
`Counsel are with Goodwin Procter LLP at 620 Eighth Avenue, New York, NY
`
`10018-1405. Email contact for counsel is mabate@goodwinlaw.com,
`
`cwingfield@goodwinlaw.com, and sfink@goodwinlaw.com.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`D.
`Please direct all correspondence to counsel at the contact information above.
`
`Petitioner consents to service by electronic mail at mabate@goodwinlaw.com,
`
`cwingfield@goodwinlaw.com, and sfink@goodwinlaw.com.
`
`III. CERTIFICATION OF GROUNDS FOR STANDING
`Petitioner certifies pursuant to 37 C.F.R. § 42.104(a) that the patent for
`
`which review is sought is available for inter partes review and that Petitioner is not
`
`5
`
`

`

`
`
`barred or estopped from requesting an inter partes review challenging the patent
`
`claims on the grounds identified in this petition. Petitioner was served with a
`
`Notice to IBM to Appear in CellCast Techs., LLC and EnvisionIT, LLC v. The
`
`United States and IBM, No. 15-1307 on April 11, 2016. (See Ex. 1017 (United
`
`States’ Return of Service of Rule 14 Notice to IBM).) This Notice, however, is not
`
`a “complaint alleging infringement of the patent,” such as is required to trigger the
`
`one year statutory bar under 35 U.S.C. § 315(b). See AM General IPR2016-01049,
`
`Paper 14 at 3-9.
`
`IV. FEES
`The Commissioner is hereby authorized to charge all fees due in connection
`
`with this matter to Attorney Deposit Account 506989.
`
`V.
`
`SUMMARY OF THE ’221 PATENT AND PROSECUTION HISTORY
`
`The ’221 patent (Ex. 1001) issued on May 7, 2013, from Application Ser.
`
`No. 13/311,448 (“the ’448 application”), which was filed on Dec. 5, 2011. The
`
`’448 application claims priority to Provisional Application No. 60/544,739 (“the
`
`’739 application”), filed on February 13, 2004. For purposes of this proceeding
`
`only, Petitioner assumes that the ’221 patent is entitled to this claim of priority.
`
`A. The Claims of the ’221 Patent
`The ’221 patent has 20 claims. Only claim 19 is challenged in this Petition.
`
`Claim 19 may be divided into five elements as follows:
`
`6
`
`

`

`
`
`Element
`Element 1 –
`Preamble:
`
`Element 2 –
`Receiving
`Element
`
`Element 3 –
`Storing Element
`Element 4 –
`Verifying
`Element
`
`Element 5 –
`Transmitting
`Element
`
`Claim Language
`A method of public service broadcast
`messaging to a broadcast target area, the
`method comprising:
`receiving over an input interface a broadcast
`request
`including
`a
`broadcast
`agent
`identification, a geographically defined
`broadcast
`target area, and a broadcast
`message from one of a plurality of coupled
`broadcast agent message origination systems;
`storing a geographically defined broadcast
`message jurisdiction for a broadcast agent;
`verifying an authority of the broadcast agent
`identification including an authority of the
`originating broadcast agent
`to send
`the
`broadcast message to the broadcast target
`area by comparing the stored geographically
`defined broadcast message jurisdiction for
`the originating broadcast agent with the
`broadcast target area associated with the
`broadcast message in the broadcast request;
`and
`transmitting the broadcast message over an
`output interface to one or more coupled
`broadcast message networks providing
`broadcast message alerting service to at least
`
`7
`
`

`

`
`
`
`
`a portion of the broadcast target area.
`
`Specification of the ’221 Patent
`
`B.
`The specification discloses “message broadcast systems and in particular
`
`location-specific message broadcasting aggregator and gateways.” (Ex. 1001 (’221
`
`patent) at 1:19-22.) The Background section discusses prior-art public warning
`
`systems and other broadcast messaging systems, and explains that existing public
`
`warning systems had various limitations. (Id. at 1:25-59.) Specifically, the
`
`specification criticizes “SMS” or “short message service,” which sent text
`
`messages to individual cell phones, because of its inability to send many messages
`
`simultaneously due to network congestion. (Id. at 1:50-67.) Further, SMS
`
`messaging “is not location based and does not send messages to intended recipients
`
`located within a defined geographic location.” (Id. at 3:58-64.) The specification
`
`says that some phones include “cell broadcasting” capabilities, but services have
`
`“not been developed which effectively utilize the technology.” (Id. at 3:65-4:7.)
`
`The specification describes a “public service message location broadcasting
`
`system” or “PLBS.” (Id., passim.) The PLBS “receives emergency or public
`
`service messaging and identification of the target broadcast area from public
`
`service or government entities” and broadcasts that message to “all compatible
`
`telecommunication receiving devices in, or entering, an [sic] predefined at-risk
`
`geographic location or area.” (Id. at 5:60-67; 6:5-7.) Messages could include, for
`
`8
`
`

`

`
`
`example, missing child alerts, severe weather warnings, and flood warnings. (Id. at
`
`6:11-13.) The patent states that the PLBS is “unlike other emergency messaging
`
`services that require the recipient’s identity, a predetermined fixed delivery
`
`location, and usually the payment of a service fee,” in that it reaches an “unlimited
`
`number of people in real time, with no pre-event subscriber action required.” (Id.
`
`at 6:17-23.) PLBS achieves this by using “cell-broadcast SMS (C-BSMS)
`
`technology to provide a message or alert to a single cell geographic location, a
`
`neighborhood, a city, or an entire nation with minimal impact to the hosting
`
`telecommunication networks.” (Id. at 6:24-28.)
`
`The PLBS includes functions and steps to verify that a Broadcast Agent (i.e.,
`
`someone sending a message over the system) is “authorized to send the requested
`
`broadcast messages to the defined broadcast target area…prior to transmittal.” (Id.
`
`at 6:35-44.) This verification may be accomplished by, for example, pre-defining
`
`the area that a particular Broadcast Agent has “authority to cover,” locking that
`
`area/agent profile in a “Footprint Library,” and checking the profile against a
`
`message which includes information on the Broadcast Agent, the text of the
`
`message, and a geographically defined target area. (Id. at 8:55-9:3; 14:8-13.)
`
`The PLBS provides an interface to the Broadcast Agent to ensure “simple
`
`and timely definition of the broadcast target area, the message and the
`
`authentication of the Broadcast Agent.” (Id. at 6:43-52.) For example, a Broadcast
`
`9
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`

`

`
`
`Agent may define a target area for a broadcast by “drawing shapes or indicating
`
`the areas on a map.” (Id. at 16:63-66.) The PLBS also stores past messages and
`
`may retrieve those for retransmission or for “offline statistics and account
`
`administration.” (Id. at 9:60-61; 12:25-33.)
`
`Prosecution History of the ’221 Patent
`
`C.
`During prosecution, the ’448 application was subjected to one examiner
`
`rejection due to obviousness over a combination of references that disclose
`
`broadcast messaging systems. (Prosecution History of the ’221 patent (Ex. 1002)
`
`at 697 of 796.) The Patent Owner argued that the claims were different from the
`
`references cited by the examiner by arguing that, inter alia, the cited references (1)
`
`used SMS broadcasting, (2) broadcasted only a signal, and not a message, (3) did
`
`not teach a verification step, and (4) required ascertaining the identity of people
`
`who will receive the message before broadcasting—all properties specifically
`
`excluded from the then-pending claims, according to Patent Owner.
`
`The Patent Owner explained that the verification process “includes a
`
`comparison of a stored geographically defined broadcast message jurisdiction for
`
`the broadcast agent that originated the message against the target area for the
`
`particular message.” (Id. at 752 of 796.) Further, “each agent is preauthorized for
`
`sending messages only to his/her geographic area.” (Id.) According to the Patent
`
`Owner, “[n]one of the references or the combination of [the cited prior art] disclose
`
`10
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`

`

`
`
`storing of a geographically defined broadcast message jurisdiction for an agent and
`
`then comparing the such stored agent jurisdiction to the target area of each
`
`message to ensure that that [sic] each message is being originated by an agent
`
`whom [sic] has authority to transmit and broadcast a message to the intended target
`
`area for the message.” (Id.)
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART
`The ’221 patent is directed to a system of and method for location-based
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`broadcasting. Accordingly, a person of ordinary skill in the art (“POSA”) to whom
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`the ’221 patent is directed would have the following qualifications: Either a
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`bachelor’s degree in computer science, engineering, or a related field with some
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`practical experience designing, developing, or maintaining broadcast messaging
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`systems such as emergency alerting systems; or significant practical experience
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`designing, developing, or maintaining broadcast messaging systems, such as
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`emergency alerting systems. This person would have access to and/or collaborate,
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`as needed, with individuals in other areas, such as computer or software
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`programming, cellular network technology, and public alert or warning systems.
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`(Ex. 1005 (Surati Dec.) at ¶ 26; Ex. 1003 (Botterell Dec.) at ¶ 25.)
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`VII. BACKGROUND ON PUBLIC MESSAGE BROADCASTING
`Delivering various types of messages to the public is an important function
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`of government and business. Types of messages may include warnings and
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`instructions regarding danger or things to avoid, for example, warnings of flood or
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`approaching treacherous weather conditions, instructions to remain inside due to
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`poor air quality, and suggestions to commute by mass transit or to use an alternate
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`route due to bad traffic conditions. Messages may also be business or leisure
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`related, such as advertisements for businesses and announcements of a county fair.
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`Simple message systems include a siren that announces an approaching tornado, a
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`traffic report on a local radio station, or an advertisement on an electronic
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`billboard.
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`The types of messages mentioned above concern a population within a
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`specific geographic area: the area that will be affected by the flood, the area with
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`the poor air quality, the area surrounding the heavy traffic conditions, the area
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`whose population may patronize a particular store, and the area surrounding a
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`county fair. Many of these messages are also time-sensitive. Because of this,
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`public broadcast messaging systems aim to disseminate messages to particular
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`areas and during particular timeframes.
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`Broadcast messaging systems have developed to take advantage of
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`technology to allow for greater detail in messages, more precise geographic
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`targeting, and speed. (Ex. 1006 (Surati Dec.) at ¶ 33.) For example, the United
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`States first implemented an Emergency Broadcast System (“EBS”) in 1963, which
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`included a two-tone alerting signal to be broadcast over radio stations. (Ex. 1010
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`(FCC 19941) at ¶ 4.) The original EBS using radio only was limited because it did
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`not include text in the broadcast message. (Id.) The EBS evolved, and by 1994, it
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`was an analog transmission system that allowed the broadcasting of a tone and a
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`text-based message, and included many types of broadcasters such as radio
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`stations, television stations, cable stations, and news company wire services. (Id.
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`at ¶¶ 7, 8.)
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`A. The Emergency Alert System
`In 1994 the Federal Communications Commission (“FCC”) retired the EBS
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`and created the Emergency Alert System (“EAS”), as described in FCC 1994. (Ex.
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`1010 (FCC 1994) at ¶ 30.) The protocols and requirements of EAS are codified in
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`47 C.F.R. § 11, the first version of which is included in FCC 1994. (Id. at 77 of
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`119.) Some reasons given by the FCC for the switch from the EBS to the EAS
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`were that the EBS was dependent upon human operators and therefore subject to
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`operator error (id. at ¶ 13) and that the analog equipment used by EBS was
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`incompatible with digital modern communications systems (id. at ¶ 23). The FCC
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`also noted the need for messages to be broadcast by more than one transmission
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`system, a need that may be met most easily with digital communications. (Id. at ¶
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`25.)
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`1 REPORT AND ORDER AND FURTHER NOTICE OF PROPOSED RULE
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`MAKING (FCC Report No. 94-288) (“FCC 1994”)
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`The EAS includes radio, television, and cable stations as required broadcast
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`transmission participants, and allows voluntary participation by satellite
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`communications systems, the National Weather Service, personal pagers, and
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`“other technologies.” (Id. at ¶¶ 40-76.) With respect to “other technologies,” FCC
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`1994 specifies utility companies, HDTV, telephone carriers, and cellular carriers.
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`(Id. at ¶¶ 73, 74.) FCC 1994 states that “we intend to expand the [National
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`Emergency Action Notification] to include other technologies as they become
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`viable in order to reach audiences not connected to cable systems.”2 (Id. at ¶ 130.)
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`An EAS message has four parts, consisting of EAS codes which are
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`predefined and catalogued by the FCC: (1) a digital header, (2) an attention signal,
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`(3) an audio or text message, and (4) an End of Message code. (Id. at ¶ 79, 85 of
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`119.) The EAS codes are predefined to identify the broadcast agent (i.e., the
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`person that sent the message), the nature of the emergency, the location of the
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`emergency, and the valid time period of the emergency. (Id. at ¶ 79.) According
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`to FCC 1994, the “new digital EAS codes will allow system participants to relay
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`2 The National Emergency Activity Notification (“EAN”) is the use of the EAS
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`system for a national emergency. (Ex. 1010 (FCC 1994) at ¶ 130.) Participants
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`are required to broadcast any of these alerts under Federal law. (Id. at ¶¶ 40-65.)
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`State and local participation is governed by state and local laws.
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`EAS alerts to narrowly targeted audiences.” (Id. at ¶ 94; see also, id. at ¶ 22 (“a
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`small geographic area could be alerted without affecting other areas”).)
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`The digital header comprises a preamble, an originator code, an event code,
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`up to 31 location codes, the valid time period of the message, and a call sign or
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`other identification of the broadcaster. (Id. at 85-87 of 119.) Five originator
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`codes, which give the type of entity originating the message are defined:
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`emergency action notification network (“EAN,” indicating a federal government
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`message), primary entry point system (“PEP,” comprised of 37 key broadcasting
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`stations), National Weather Service (“WXR”), civil authorities (“CIV”), and
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`broadcast station or cable system (“EAS”). (Id. at 87 of 119.)
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`The event codes describe the type of event, for example, tornado watch
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`(“TOA”), winter storm warning (“WSW”), and hurricane watch (“HLS”). (Id. at
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`87-88 of 119.)
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`The location codes, or Federal Information Processing System (“FIPS”)
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`codes, are defined in 47 C.F.R. § 11.31(d). (Id. at 89 of 119.) The location codes
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`for a message may specify a “whole state, a whole county, or a portion