Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: Mar. 19, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUIZ FOOD PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-02016
`Patent 8,275,358 B1
`____________
`
`Before MEREDITH C. PETRAVICK, TREVOR M. JEFFERSON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
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`
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`
`
`
`
` Paper 7
`
`
`
` Entered: Mar. 19, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RUIZ FOOD PRODUCTS, INC.,
`Petitioner,
`
`v.
`
`MACROPOINT LLC,
`Patent Owner.
`_______________
`
`Case IPR2017-02016
`Patent 8,275,358 B1
`____________
`
`Before MEREDITH C. PETRAVICK, TREVOR M. JEFFERSON, and
`NATHAN A. ENGELS, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-02016
`Patent 8,275,358 B1
`
`I.
`
`INTRODUCTION
`A. Background
`Ruiz Food Products, Inc. (“Petitioner”)1 filed a Petition (Paper 2,
`“Pet.”) requesting inter partes review of claims 1–30 of U.S. Patent No.
`8,275,358 B2 (Ex. 1001, “the ’358 patent”). MacroPoint LLC. (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have
`jurisdiction under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under
`35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . .
`there is a reasonable likelihood that the petitioner would prevail with respect
`to at least 1 of the claims challenged in the petition.” For the reasons that
`follow, we institute an inter partes review as to all challenged claims of the
`’358 patent.
`
`B. Related Proceeding
`The parties identify one pending district court case: MacroPoint, LLC
`v. Ruiz Food Prods., Inc., 6:16-cv-01133 (E.D. TX). Pet. 3; Paper 5, 1. Ruiz
`Food Products, Inc. filed a related Petition for Inter Partes Review regarding
`U.S. Patent No. 9,429,659 in IPR2017-02018. Pet. 3; Paper 5, 1.
`
`C. The ʼ358 Patent (Ex. 1001)
`The ’358 patent is directed to systems and methods for providing
`notification to and receiving consent from a user whose mobile device's
`location is to be obtained. Ex. 1001, 1:9–11. Figure 1, below, provides an
`exemplary system for providing user notification and receiving user consent
`to obtain location information of a mobile associated with a user. Id. at 3:1–
`3.
`
`
`1 The Petition identifies FourKites, Inc. as a real party in interest. Pet. 3.
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`Figure 1 of the ’358 patent depicts system 100 for providing user
`notification and receiving a user’s consent to obtain location information of
`mobile device 110. Id. at 3:56–68. Communications interface 120, which
`can be associated with a telephone number, may participate in telephone
`calls with mobile device 110. Id. at 3:61–67; 4:1–2. During the telephone
`call, validation logic 130 identifies mobile device 110 by an identifier that is
`received from and associated with mobile device 110. Id. at 4:3–26. The
`’358 patent specification states that:
`In one embodiment, where the communications interface 120 is
`associated with a toll free number as discussed above, the
`validation logic 130 is configured to identify the mobile device
`110 at least in part by obtaining the telephone number associated
`with the mobile device 110 via automatic number identification
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`(ANI). In other embodiments, the identifier is an identifier other
`than a telephone number.
`Id. at 4:11–18.
`System 100 in Figure 1 transmits an automated voice message to
`mobile device 110, which can either have an automated voice message
`notifying the user that the user’s consent would “result in location
`information of the mobile device 110 being disclosed” or have an automated
`voice message directing the user to a web address location for notification
`that the user’s consent would “result in location information of the mobile
`device 110 being disclosed.” Id. at 4:27–40.
`After the automated voice message is transmitted to mobile device
`110, communications interface 120 receives data from mobile device 110
`that indicates whether the user has provided consent to sharing the location
`information of mobile device 110. Id. at 4:44–50. For example, mobile
`device 110 can transmit data indicating that the user provided consent by, for
`example, pressing a button or speaking a particular word or phrase. Id. at
`4:51–5:4.
`Upon receiving data indicating user consent for obtaining the location
`information of the mobile device 110, the communications interface 120
`transmits a request for the location information of the mobile device 110 to a
`location information provider 150. The request includes the mobile device’s
`identifier, and location provider 150 can be any party that has access to that
`mobile device’s location information. Id. at 5:13–32. Once communications
`interface 120 receives the location information, it then communicates the
`location information to obtaining party 160. Id. at 5:33–35.
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`
`D. Illustrative Claims
`Petitioner challenges claims 1–30 of the ’358 patent, with claims 1,
`13, and 19 independent. Claim 1 is illustrative and reproduced below:
`1. A computer implemented method for receiving consent
`from a user of a mobile device to obtaining location information
`of the mobile device, the method comprising:
`participating in a telephone call with the mobile device;
`within the telephone call, identifying the mobile device at
`least in part by obtaining an identifier associated with the mobile
`device;
`transmitting to the mobile device during the telephone call
`an automated voice message communicating to the user of the
`mobile device at least one of:
`a notice including information indicating that consenting
`to the obtaining of the location information of the mobile device
`would result in the location information of the mobile device
`being disclosed, and
`a location at which to find the notice, wherein the location
`at which to find the notice is represented by a web address
`corresponding to a website where, during the telephone call, the
`user can find the notice indicating to the user that consenting to
`the obtaining of the location information of the mobile device
`would result in the location information of the mobile device
`being disclosed; and
`receiving from the mobile device during the telephone call
`a signal including data indicating consent for obtaining the
`location information of the mobile device.
`Ex. 1001, 15:18–44.
`
`E. The Alleged Grounds of Unpatentability
`The information presented in the Petition sets forth the grounds of
`unpatentability of claims 1–30 of the ’358 patent as follows (see Pet. 7):
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`Reference(s)
`Poulin2
`Poulin and Karp3
`
`Basis
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1, 3–13, 15–19, and 21–30
`2, 14, and 20
`
`II. DISCUSSION
`A. Claim Interpretation
`We interpret claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard). In applying a broadest reasonable
`construction, claim terms generally are given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy,
`however, need to be construed, and only to the extent necessary to resolve
`the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999).
`Petitioner avers that the terms of the challenged claims should be
`given their “plain and ordinary meaning, and that no constructions are
`needed to resolve the controversy.” Pet. 7 (quotations omitted). Patent
`Owner does not contest Petitioner’s construction statement. Prelim. Resp.
`
`
`2 U.S. Pub. No. 2002/0115453 A1, published Aug. 22, 2002 (Ex. 1005,
`“Poulin”).
`3 U.S. Patent No. 6,591,242 B1, filed Apr. 15, 1999, issued July 8, 2003 (Ex.
`1006, “Karp”).
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`17. For purposes of this Decision, we conclude that the terms of the
`challenged claims do not require express interpretation.
`
`B. Legal Standard
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness4. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see also
`Translogic, 504 F.3d at 1259, 1262 (quoting KSR, 550 U.S. at 418).
`Petitioner states that
`a [person of ordinary skill in the art] was typically a person who
`had at least a bachelor’s degree in electrical engineering,
`computer engineering, computer science, or a related discipline,
`and at least two to three years of relevant experience in the fields
`of
`location/navigation and
`telecommunications, such as
`experience with mobile networks and devices. Additional
`education might substitute for some of the experience and
`
`
`4 The record contains no objective evidence of nonobviousness.
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`substantial experience might substitute for some of the
`educational background. Ex. 1002 at ¶¶33-35.
`Pet. 16 (citing Ex. 1002 ¶¶ 33–35). For the purposes of the Preliminary
`Response, Patent Owner accepts Petitioner’s characterization of a person
`having ordinary skill in the art. Prelim. Resp. 17. We adopt this
`characterization as well for purposes of this Decision. On the record before
`us, we also note that the level of ordinary skill in the art is reflected by the
`prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re
`Oelrich, 579 F.2d 86, 91 (CCPA 1978).
`
`C. Cited References
`1. Poulin (Ex. 1005)
`Poulin is a published patent application entitled “Method and System
`for Location Based Wireless Communication Services” and is directed to
`providing registered subscribers with location-based services such as
`navigation, messaging, business, entertainment, and meeting information.
`Ex. 1005 at Abstract. Poulin describes a location based service center
`(LBSC) 100 and a plurality of wireless devices 102–104. Id. at ¶ 50, Fig. 4.
`LBSC 100 comprises a processing system coupled to an interface system.
`Id. at ¶ 35. The LBSC 100 is connected to wireless network 400, short
`message service center (SMSC) 403 and location finding equipment (LFE)
`402. Id. at ¶ 51. SMSC 403 could be a conventional device that allows
`short text messages to be exchanged between wireless devices 102–104 and
`other networks or network elements, such as LBSC 100. Id. at ¶ 53.
`In Poulin subscribers control whether to disclose their location and/or
`status through their profile “that defines permission on when, where, and
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`how other authorized subscribers (members of the group) may obtain an
`individual subscriber’s own location and status information,” thus granting
`or denying permission. Id. at ¶ 23. The communication service also allows
`a subscriber to override rules associated with the subscriber’s profile by
`permitting the subscriber to “globally turn ON or turn OFF permission to be
`located and statused.” Id. at ¶ 24.
`Figure 6, below, illustrates the Poulin system from a wireless device.
`
`
`
`
`Figure 6 depicts a call received in service manager 304 (part of the LBSC)
`from wireless device 102, over wireless network 400, with the call
`connecting to service manager 304. Id. at ¶ 65, FIG 6. Responsive to
`receiving the call, service manager 304 identifies calling device 102 to
`determine if device 102 is known or registered with LBSC 100. Id. at ¶ 65.
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`If service manager 304 determines that device 102 is not registered with
`LBSC 100, a profile request message is sent to the mobile device 102, using
`a voice message provided using interactive voice response unit (IVR) 309 or
`short text message using SMSC 403. Id. Responsive to the profile
`information request message, the profile information is provided to service
`manager 304 using wireless device 102. The profile information might be
`an abbreviated profile received for the purpose of registering device 102,
`and the subscriber would be prompted to provide additional profile
`information via an Internet registration process. Id. at ¶ 66.
`A profile defines permissions for obtaining a subscriber’s location and
`status information. For example, permission may be granted according to a
`time of day, day of the week, e.g. Monday–Friday from 4:00 PM–1:00 AM
`or always. Permission may also be granted within a specified geography,
`e.g. city, county, country or arbitrary subscriber defined area. Id. at ¶ 23.
`Poulin describes various location based services for subscribers. Id. at ¶ 29.
`After a pre-determined period of time, service manager 304 provides a
`service deactivation message to wireless device 102. Based on the
`subscriber’s response, service manager 304 processes the response from
`wireless device 102 to deactivate or continue providing the service. If the
`service is deactivated, no additional information is provided to wireless
`device 102. Id. at ¶ 73.
`
`2. Karp (Ex. 1006)
`Karp is titled “Visit Verification Method and System” and is directed
`to a system and method for tracking clients as they visit different locations.
`Ex. 1006, Abstract. The system of Karp discloses a public switched
`telephone network (PSTN) for interfacing computer 120 with wireless phone
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`112 and/or standard plain old telephone service (POTS) phone 114. Ex.
`1006 at Fig. 1. Karp discloses that an “ANI is used to identify the calling
`telephone” and that the ANI can be used in place of a client identifier, and
`utilized by a system to determine a phone number of a phone used to make
`an incoming call prior to the call being answered. Id. at 1:31; 7:36–54;
`7:66–8:8.
`
`D. Obviousness based on Poulin
`Petitioner asserts that claims 1, 3–13, 15–19, and 21–30 of the ’358
`patent would have been obvious over Poulin. Pet. 16–54. Petitioner
`provides citations to the Declaration of Mr. Scott Andrew Denning (Ex.
`1002) and the Poulin reference in support of its contention that Poulin
`renders the challenged claims obvious. Id. (citing Ex. 1002, Ex. 1005). For
`the reasons explained below, we are persuaded that Petitioner has
`demonstrated a reasonable likelihood of prevailing on this asserted ground.
`1. Analysis
`Claim 1 recites a computer-implemented method for receiving consent
`from a user of a mobile device to obtaining location information of the
`mobile device, involving a telephone call with the mobile device using an
`automated voice message communicating with the mobile user. Petitioner
`cites the location based service center and service manager 304 that
`communicates during a telephone call with the wireless device via the IVR
`as teaching these claim limitations. Pet. 17–19 (citing Ex. 1005, ¶¶ 22–23,
`46, 65, 66, 68, 69, 73, Figs. 6, 7, Ex. 1002 ¶¶ 52–60, 62, 71–75). Petitioner
`argues that the IVR along with the service manager in Poulin during a voice
`call may provide notice and obtain permission to share location information
`
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`Patent 8,275,358 B1
`as required in claim 1. Pet. 20–23 (citing Ex. 1005 ¶¶ 9, 22, 23, 46, 73; Ex.
`1002 ¶¶ 70–76).
`Patent Owner argues that Poulin does not teach the “notice” limitation
`of claim 1. Prelim. Resp. 19–20. Specifically, Patent Owner argues that
`Petitioner offers nothing but speculation and conclusory reasoning that a
`person of ordinary skill in the art would have modified Poulin to provide
`notice as recited in claim 1. Id. Claim 1 requires transmitting “a notice
`including information indicating that consenting to the obtaining of the
`location information of the mobile device would result in the location
`information of the mobile device being disclosed.” According to Patent
`Owner, because Poulin already contains a complete system that obtains a
`user’s consent to share location information, Petitioner offers no reasoning
`for why a person of ordinary skill in the art would modify Poulin to provide
`notice to a user, apart from using the ’358 invention and hindsight reasoning
`to justify the modification. Id. at 21–22; (citing Square, Inc. v. Cooper,
`IPR2014-00158, slip op. at 30 (PTAB May 15, 2014) (Paper 10); Purdue
`Pharma L.P. v. Depomed, Inc., 643 F. App’x 960, 966 (Fed. Cir. 2016)(non-
`precedential). Patent Owner contends that:
`Petitioner’s arguments suffer from the same flaws as those in
`Square and Purdue. Neither petitioner nor Mr. Denning identify
`any reason—apart from the identified problem solved by the
`technology of the ’358 patent—why a POSITA would have been
`motivated to modify Poulin in order to obtain consent from a user
`to disclose location information in the manner claimed. Poulin
`already provides a means for obtaining consent. Petitioner’s
`conclusory argument is nothing but an attempt to use the
`invention of the ’358 patent to justify modifying Poulin to arrive
`at claim 1 of the ’358 patent. This is classic, impermissible
`hindsight.
`Prelim. Resp. 22.
`
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`Petitioner argues that the ’358 patent background admits that it was
`well known at the time of the invention to provide notice and obtain consent
`to location based services and relies on industry guidelines for the notice and
`consent process. Pet. 8 (citing Ex. 1001, 1:52–2:3; Ex. 1002 ¶¶ 45–46; Ex.
`1008, 1). Specifically, Petitioner argues that Poulin teaches the “notice
`including information indicating that consenting to the obtaining of the
`location information . . . being disclosed” limitation because “Poulin teaches
`that the service manager 304 can transmit, via the interface system 105, a
`voice message to the wireless devices, 102-104, using the IVR 309 to obtain
`subscriber profile information.” Pet. 19–20 (citing Ex. 1005 ¶¶ 23, 41, 42,
`46; Ex. 1002 ¶¶ 64–69). Petitioner argues that it would have been obvious
`for a person skilled in the art to include notice by asking permission as
`“Poulin allows the user to ‘define[] permission on when, where, and how
`other authorized subscribers (members of the group) may obtain an
`individual subscriber’s own location and status information.’” Pet. 20
`(quoting Ex. 1005 ¶ 23; citing Ex. 1002 ¶ 66). Petitioner further argues that
`Poulin’s teaching that a message can be sent after a pre-determined period of
`time with text to deactivate or continue location services via user input puts
`the subscriber on notice that the system collects location data to share with
`others in accordance with the subscriber profile. Pet. 20 (citing Ex. 1002
`¶¶ 72–75).
`Based on the record before us, we are persuaded by Petitioner’s
`argument and evidence that Poulin teaches the “notice limitation” of claim 1.
`We disagree with Patent Owner as we do not find Petitioner’s argument to
`be based on the nature of the problem or impermissible hindsight reasoning
`to modify Poulin as Patent Owner alleges. Instead, Petitioner’s evidence and
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`argument support that Poulin teaches that a user maintains a profile that
`defines permissions and during registration may use automated voice
`interaction to set the profile. Pet. 20–21.
`Petitioner argues that Poulin teaches that IVR interaction could be
`related to registration with the location service of Poulin, which would
`include granting permission and exchanging information on how a
`subscriber’s data is to be used. Id. (citing Ex. 1002 ¶¶ 66–68). Thus, we do
`not agree with Patent Owner’s argument that modification of Poulin relies
`on hindsight or lacks a persuasive reason for the modification of Poulin. We
`do not find Petitioner’s reasoning circular, but instead supported by the
`teachings of Poulin under specified circumstances using the IVR during
`service registration. Id. On the present record, Petitioner has presented
`sufficient persuasive evidence to demonstrate a likelihood of success in
`showing that Poulin’s features could be modified based on the existing
`registration process. Id. (citing Ex. 1005 ¶¶ 2, 22, 23, 67; Ex. 1002 ¶¶ 66–
`68).
`
`With respect to dependent claim 3, Petitioner argues that Poulin
`discloses the periodic transmission of an automated voice indicating that the
`location information is being disclosed, because Poulin provides a service
`deactivation message after a pre-determined period of time via service
`manager 304, allowing the subscriber to continue the Poulin location service
`or sign off. Pet. 23–24 (citing Ex. 1005 ¶¶ 746, 3; Ex. 1002 ¶¶ 77–78).
`Petitioner argues that this message and response could be handled by the
`IVR of Poulin. Pet. 24.
`Patent Owner argues that Poulin does not teach “periodically
`transmitting an automated voice message communicating to the user via the
`
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`mobile device a notification message indicating that the location information
`of the mobile device is currently being disclosed.” Prelim. Resp. 23–26.
`Patent Owner contends
`Petitioner’s argument to the contrary misreads Poulin and
`conflates the activation/deactivation of a subscriber with the
`performance of the underlying location tracking. While Poulin
`teaches a message to the user offering to continue or deactivate
`the service, Poulin does not teach providing any notice to a user
`that she is “currently being tracked.”
`Prelim. Resp. 24 (emphasis omitted).
`The parties disagree as to whether the message to deactivate or
`continue the location based services disclosed in Poulin, reads on the claim 3
`limitation for periodic user notification that their location is currently being
`disclosed via automated voice message communication. See Pet. 23–24;
`Prelim. Resp. 24–27. On the present record, we disagree with Patent
`Owner’s contention. Patent Owner argues that notification to continue or
`discontinue the services of Poulin is not the same as notification that one’s
`location information is “currently being disclosed.” Prelim. Resp. 25. The
`record supports and Patent Owner cites that the services in Poulin are
`“generally directed to a location based wireless application that determines
`the location of subscribers and shares location and information with other
`subscribers.” Prelim. Resp. 24 (citing Pet. 14). At this stage, we agree with
`Petitioner that predetermined messaging to continue or end the Poulin
`services encompasses notification regarding present location-based services
`after they have been enabled. Patent Owner’s arguments based on alternate
`scenarios where location of a user may not be actively shared (Prelim. Resp.
`26), does not render Petitioner’s argument and evidence insufficient to
`demonstrate the limitations of dependent claim 3.
`
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`Claim 8 recites the method of claim 6 comprising “communicating the
`location information of the mobile device to a freight service provider.”
`Petitioner argues that Poulin teaches the elements of claim 8 because Poulin
`discloses employers tracking the location of employees during work.
`Petitioner argues that “it would be obvious to a POSITA that one common
`employment context is tracking freight by a freight service” and that it
`would be a technique applicable forfreight service. Pet. 31; Ex. 1002
`¶¶ 105–106; Ex. 1005 ¶ 6; see also Ex. 1007 ¶¶ 249–251 (discussing
`location based systems for truck and fleet tracking).
`On the present record, we are not persuaded by Patent Owner’s
`argument that “tracking freight carried by a vehicle carrying a mobile
`device” is sufficiently different from the employer and employee tracking
`disclosed in Poulin. Prelim. Resp. 27–28. Patent Owner’s arguments
`distinguishing employees from trucking vehicles and distinguishing those
`elements from freight are not supported, at this stage, by persuasive
`argument and evidence. Id. We do not find Petitioner’s argument and
`evidence conclusory on whether a person of ordinary skill in the art would
`understand employment tracking as disclosed in Poulin is applicable to
`“tracking freight by a freight service” or that it would be a technique
`applicable from known freight service applications. Pet. 31; Ex. 1002
`¶¶ 105–106; Ex. 1005 ¶ 6; see also Ex. 1007 ¶¶ 249–251. Based on the
`record before us, we find that Petitioner has demonstrated a likelihood of
`success in showing that Poulin teaches the limitations of dependent claim 8.
`Claim 10 requires receiving a signal from the mobile indicating
`revocation of consent to obtain location information for the mobile device.
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`Claim 12 requires that a user’s revocation of consent from claim 10 is
`temporary and revoked and reinstated as recited in the claims.
`Petitioner argues that Poulin teaches claim 10 because Poulin
`discloses a predetermined time to obtain a user’s deactivation of the Poulin
`service by interacting with the Poulin system during the time to shut off or
`continue the location services. Pet. 34–35 (citing Ex. 1005 ¶¶ 31, 63, 73;
`Ex. 1002 ¶¶ 114–117). With respect to claim 12, Petitioner argues that
`Poulin teaches that the data from a subscriber may include specific times for
`activation of the Poulin location service. Pet. 36–37. Poulin states that “for
`example, permission may be granted according to a time of day, day of the
`week, e.g., Monday-Friday from 4:00 PM–1:00 AM or always.” Ex. 1005
`¶ 23; see Pet. 36–37; Ex. 1002 ¶¶ 122–123. Petitioner argues that this
`combination of features provides support for the temporary revocation of
`consent as required in claim 12.
`Patent Owner argues that Poulin’s feature to turn off permissions is
`different from the temporary revocation required in claim 12 which requires
`receiving a signal to revoke from the mobile, where the signal includes the
`time period of revocation, and restarting upon the end of the time period.
`Prelim. Resp. 29–30. Patent Owner states that “[a]lthough Poulin generally
`addresses ways of turning off permissions, these disclosures do not,
`separately or together, teach the elements of claim 12.” Id. at 32.
`Based on the record before us, we disagree with Patent Owner.
`Petitioner has provided sufficient argument and evidence on this limited
`record that Poulin teaches granting permission on a scheduled basis, which
`includes deactivated periods (revoked permission) for location services.
`Ex. 1005 ¶ 23; Pet. 36–37; Ex. 1002 ¶¶ 122–123. Petitioner’s evidence
`
`17
`
`
`
`IPR2017-02016
`Patent 8,275,358 B1
`supports that a person of ordinary skill in the art would understand that
`during registration with the Poulin service permissions, such as the time
`periods could be set. Pet. 34 (citing Ex. 1005 ¶¶ 31, 73; Ex. 1002 ¶¶ 114–
`117). On the present record, Petitioner provides sufficient evidence and
`argument that demonstrates a likelihood that Poulin teaches the limitations
`of dependent claims 10 and 12.
`With respect to dependent claims 4–7, 9 and 11, Petitioner has
`provided sufficient evidence and argument, including citations to the
`reference and declarant testimony, that Poulin teaches the limitations of
`these claims. Pet. 24–33, 35–36 (citing Ex. 1002 ¶¶ 79–82, 84–104, 108–
`113, 118–121). Claims 19 and 21–30 are system claims related to the
`method claims of claims 1 and 3–12. See, e.g., Prelim. Resp. 23 n.1 (noting
`claim 19 is the system equivalent of method claim 1). Thus, with respect to
`claims 19 and 21–30, Petitioner relies on the related arguments and evidence
`presented for claims 1 and 3–12. Pet. 45–54. Patent Owner does not argue
`claims 19 and 21–30 separately, and instead relies on arguments presented
`for the claims 1 and 3–12 addressed above. See Prelim. Resp. 23 n.1, 26 n.4,
`29 n.3.
`Based on the record before us, Petitioner has demonstrated a
`likelihood of showing that Poulin teaches the limitations of claims 4–7, 9,
`11, 19, and 21–30.
`For independent claim 13, Petitioner argues that Poulin teaches the
`claim limitations as part of the messaging to deactivate the Poulin location
`services. Pet. 37–44. Petitioner provides citations to Poulin and testimony
`in support of its contentions. Id. (citing Ex. 1002 ¶¶ 107–108, 124–139).
`
`18
`
`
`
`IPR2017-02016
`Patent 8,275,358 B1
`Patent Owner argues that Poulin does not disclose “communicating to
`the user . . . that consent to obtain the location information is revocable” as
`recited in claim 13. Prelim. Resp. 32–33. Patent Owner argues that Poulin’s
`revocation or turning off of services and user profile set up are different
`procedures and do not include receipt of a signal indicating revocation of
`consent. Id. at 32–34 (citing Ex. 1005 ¶¶ 23–24, 73). Patent Owner asserts
`that Petitioner has also offered no motivation to disassemble Poulin’s
`processes from disparate portions of the subscriber’s process and reassemble
`them to obtain the limitations of claim 13. Pet. 34–35. Patent Owner argues
`there is no express or inherent reason to modify Poulin as Petitioner suggests
`as Poulin already achieves the stated result. Pet. 35–36 (citing Square, Inc.,
`IPR2014-00158, slip op. at 30).
`On the present record, we find Petitioner’s arguments and evidence
`sufficient and disagree with Patent Owner. We do not find that Petitioner’s
`argument combines disparate features, but instead addresses Poulin’s
`teachings that may use IVR for communication with the mobile user during
`the process of continuing location services. That is, Petitioner’s argument
`and evidence, on the present record, support a finding that the IVR system of
`Poulin in combination with the periodic deactivation messages and
`registration controls in Poulin teach the limitations of claim 13. Pet. 37–42.
`Petitioner further argues that it would be obvious to include automated voice
`instructions for pre-determined deactivation process telephone call to
`activate or deactivate the location based Poulin system. Id. On the present
`record, Petitioner’s argument draws upon Poulin’s existing deactivation
`process, with information exchanged via the IVR regarding the applicable
`options and permissions. Id. We do not agree that Petitioner has provided
`
`19
`
`
`
`IPR2017-02016
`Patent 8,275,358 B1
`no reason to modify Poulin on the present record. See Pet. 9–10, 37–42. At
`this stage, Petitioner’s evidence and argument sufficiently show that Poulin
`teaches the limitations of claim 13 based on the telephone call to deactivate
`the Poulin process. Similarly, we determine that Petitioner presents
`sufficient evidence and argument, on this record, that Poulin teaches the
`limitations of dependent claims 15–18. Pet. 42–44.
`Based on the present record, we find that Petitioner has demonstrated
`a reasonable likelihood of prevailing on its assertion that Poulin teaches the
`limitations of claims 1, 3–13, 15–19, and 21–30 of the ’358 patent.
`
`E. Obviousness based Poulin and Karp
`Petitioner asserts that claims 2, 14, and 20 of the ’358 patent would
`have been obvious over Poulin and Karp. Pet. 54–57. For the reasons
`explained below, we are persuaded that Petitioner has demonstrated a
`reasonable likelihood of prevailing on this asserted ground.
`1. Analysis
`As discussed above, Petitioner argues that the independent claims 1
`and 19 would have been obvious over Poulin. Pet. 1–22, 45–4
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