`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLER DIVISION
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`MACROPOINT, LLC,
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`Plaintiff,
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`v.
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`RUIZ FOOD PRODUCTS, INC.,
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`Defendant.
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`Civil Action No: 6:16-cv-1133-RWS-KNM
`
`JURY TRIAL DEMANDED
`
`EXPERT REPORT OF DR. STEPHEN B. HEPPE
`
`
`
`
`
`MACROPOINT EX. 2004
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ...........................................................................................................1
`
`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE .........................................1
`
`III.
`
`COMPENSATION AND PRIOR TESTIMONY .............................................................4
`
`IV. MATERIALS CONSIDERED .........................................................................................4
`
`V.
`
`SUMMARY OF OPINIONS ...........................................................................................4
`
`VI.
`
`LEGAL STANDARDS ...................................................................................................6
`
`A.
`
`B.
`
`C.
`
`D.
`
`Invalidity Due to Anticipation ..............................................................................6
`
`Invalidity Due to Obviousness .............................................................................7
`
`The Level of Ordinary Skill in the Art ..................................................................8
`
`Claim Construction ..............................................................................................9
`
`VII. BACKGROUND OF THE TECHNOLOGY ................................................................. 12
`
`A.
`
`B.
`
`C.
`
`Location Determination and Tracking ................................................................ 12
`
`Privacy Concerns ............................................................................................... 17
`
`IVR Technology ................................................................................................ 20
`
`VIII. THE PATENTS-IN-SUIT GENERALLY ..................................................................... 21
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`IX.
`
`THE ’358 PATENT AND ITS PROSECUTION HISTORY .......................................... 22
`
`X.
`
`THE ’659 PATENT AND ITS PROSECUTION HISTORY .......................................... 24
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`XI.
`
`PRIOR ART REFERENCES ......................................................................................... 26
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Alessio ............................................................................................................... 27
`
`CTIA Guidelines ................................................................................................ 28
`
`Enterprise ........................................................................................................... 29
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`Kore Locate ....................................................................................................... 29
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`PM Demo .......................................................................................................... 30
`
`
`
`i
`
`

`

`
`
`F.
`
`G.
`
`H.
`
`TechnoCom White Paper ................................................................................... 30
`
`Thomas .............................................................................................................. 31
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`Zhao .................................................................................................................. 32
`
`XII. THE ASSERTED CLAIMS OF THE ’358 PATENT ARE ANTICIPATED
`AND/OR OBVIOUS ..................................................................................................... 32
`
`A.
`
`The asserted claims of the ’358 patent are anticipated by CTIA Guidelines,
`or would be rendered obvious over CTIA Guidelines. ........................................ 32
`
`(i)
`
`Claim 1................................................................................................... 33
`
`(ii)
`
`Claim 4................................................................................................... 37
`
`(iii) Claim 19 ................................................................................................. 38
`
`(iv)
`
`Claim 22 ................................................................................................. 43
`
`B.
`
`The asserted claims of the ’358 patent are anticipated by TechnoCom
`White Paper, or are obvious over TechnoCom White Paper................................ 43
`
`(i)
`
`Claim 1................................................................................................... 43
`
`(ii)
`
`Claim 4................................................................................................... 46
`
`(iii) Claim 19 ................................................................................................. 46
`
`(iv)
`
`Claim 22 ................................................................................................. 46
`
`C.
`
`The asserted claims of the ’358 patent are anticipated by Enterprise, or are
`obvious over Enterprise. ..................................................................................... 46
`
`(i)
`
`Claim 1................................................................................................... 47
`
`(ii)
`
`Claim 4................................................................................................... 48
`
`(iii) Claim 19 ................................................................................................. 49
`
`(iv)
`
`Claim 22 ................................................................................................. 49
`
`D.
`
`The asserted claims of the ’358 patent are obvious over PM Demo. ................... 49
`
`(i)
`
`Claim 1................................................................................................... 49
`
`(ii)
`
`Claim 4................................................................................................... 53
`
`(iii) Claim 19 ................................................................................................. 53
`
`
`
`ii
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`

`

`
`
`(iv)
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`Claim 22 ................................................................................................. 55
`
`E.
`
`The asserted claims of the ’358 patent are obvious over TechnoCom
`White Paper in view of CTIA Guidelines or Enterprise. ..................................... 56
`
`XIII. THE ASSERTED CLAIMS OF THE ’659 PATENT ARE ANTICIPATED
`AND/OR OBVIOUS ..................................................................................................... 58
`
`A.
`
`The asserted independent claims of the ’659 patent are anticipated by
`Thomas, or would be rendered obvious over Thomas, or obvious over
`Thomas in light of Zhao or Kore Locate ............................................................. 58
`
`(i)
`
`Claim 2................................................................................................... 58
`
`(ii)
`
`Claim 12 ................................................................................................. 71
`
`(iii) Claim 23 ................................................................................................. 74
`
`B.
`
`The Asserted Dependent Claims of the ’659 patent are Anticipated By or
`Obvious Over Thomas or Are Obvious Over Thomas In View of Alessio,
`CTIA Guidelines, KoreLocate, Zhao, or TechnoCom White Paper ..................... 78
`
`(i)
`
`Asserted Dependent Claims 3 and 24 ...................................................... 78
`
`(ii)
`
`Asserted Dependent Claims 4, 13, and 25 ............................................... 79
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`(iii) Asserted Dependent Claims 5 and 17 ...................................................... 82
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`(iv) Asserted Dependent Claims 6, 18, and 27 ............................................... 83
`
`(v)
`
`Asserted Dependent Claims 7, 22, and 28 ............................................... 85
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`(vi) Asserted Dependent Claims 8, 19, 20, and 21 ......................................... 87
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`(vii) Asserted Dependent Claims 9, 14, and 29 ............................................... 89
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`(viii) Asserted Dependent Claims 10, 15, and 30 ............................................. 91
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`(ix) Asserted Dependent Claims 11 and 16 .................................................... 92
`
`/ OBJECTIVE INDICIA OF NON-
`XIV. SECONDARY CONSIDERATIONS
`OBVIOUSNESS ........................................................................................................... 93
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`XV. CONCLUSION ............................................................................................................. 95
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`
`
`
`
`iii
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`

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`
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`I.
`
`INTRODUCTION
`
`1.
`
`My name is Stephen B. Heppe. I have been retained in this matter on behalf of
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`Ruiz Food Products, Inc. (“Ruiz”) to provide my analysis and opinions regarding the validity of
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`certain claims of U.S. Patent Nos. 8,275,358 (the “’358 patent”) and 9,429,659 (the “’659
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`patent”) (the “patents-in-suit”). I understand that Plaintiff Macropoint, LLC (“MacroPoint” or
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`“Plaintiff”) asserts that Ruiz infringes claims 1, 4, 19, and 22 of the ’358 patent, and claims 2-25
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`and 27-30 of the ’659 patent (the “asserted claims”).
`
`2.
`
`I expect to testify at trial regarding the matters set forth in this report, if asked
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`about those matters by the Court or the parties’ attorneys. I may also testify in response to
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`opinions expressed by experts retained on behalf of Plaintiff.
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`3.
`
`I reserve the right to supplement my report in light of any additional fact
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`discovery, opinions by Plaintiff’s experts, and/or trial testimony. I also reserve the right to
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`provide rebuttal opinions and testimony in response to Plaintiff’s experts, and rebuttal testimony
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`in response to any of Plaintiff’s witnesses. Further, I reserve the right to use animations,
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`demonstratives, enlargements of actual exhibits, and other information to illustrate my opinions.
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`II.
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`QUALIFICATIONS AND PROFESSIONAL EXPERIENCE
`
`4.
`
`Exhibit A.
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`5.
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`My qualifications are set forth in my curriculum vitae, which is attached as
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`I have approximately 40 years of experience in electrical engineering with
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`particular
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`focus on
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`computer-to-computer
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`communication
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`and networking,
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`radio
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`communications (terrestrial and satellite), position reporting and surveillance, and the Global
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`Positioning System (“GPS”).
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`6.
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`I hold a Bachelor’s of Science degree in Electrical Engineering and Computer
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`Science from Princeton University (1977) and Master’s and Doctor of Science degrees (1982 and
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`
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`1
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`

`

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`
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`1989, respectively) in Electrical Engineering, specializing in communications, from George
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`Washington University, Washington, D.C. At the doctoral level, my minors were operations
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`research and electrophysics.
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`7.
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`While employed at Stanford Telecommunications, ADSI, Insitu, and Telenergy, I
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`worked on (among other things) numerous position reporting and surveillance systems for land
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`vehicles, aircraft, and spacecraft. This work included position determining systems such as GPS,
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`Loran, inertial navigation systems, and radar. This work also included position reporting
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`methods such as radio links without encryption or spreading, as well as direct-sequence and
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`frequency-hopped radio links and cellular communications, and operational paradigms including
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`“contract-based” reporting (where an agreement exists to share position information),
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`uncooperative (such as radar), and automatic broadcast.
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`8.
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`For example, while at Stanford Telecommunications, I worked on the forerunner
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`of the radar-based system currently used by commercial aircraft to provide separation assurance
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`and collision avoidance (TCAS), as well as GPS-based (and hybrid GPS/INS) position
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`determination and reporting via contract-based and broadcast modes of communication, both for
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`aircraft in flight and on the airport surface. I also led a team that evaluated a dozen such systems
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`(then-operational as well as a few deemed to be theoretically feasible) for enhanced safety on the
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`airport surface. I also worked on an early effort to provide GPS-based fleet tracking and
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`management for first responders (e.g., police cars, fire trucks, ambulance vehicles).
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`9.
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`While at ADSI, I helped develop a system (and the international standards for the
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`system) for contract-based and broadcast reporting of aircraft position using a cellular
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`communication concept among aircraft and ground stations.
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`
`
`2
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`

`

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`10. While at Insitu, I developed a position determination system for an unmanned
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`aircraft (a “drone”) that achieved 1 cm accuracy relative to its base station, and reported aircraft
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`position (and other data) over a frequency-hopped radio communication link as well as a spread-
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`spectrum satellite communication link.
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`11.
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`I have developed satellite systems and earth station designs, as well as terrestrial
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`radio and cellular communication systems, for the FAA, the Department of Defense, NASA,
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`other US Government agencies, and commercial entities. This work included link budget
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`analysis in benign and degraded environments, design for fixed and mobile earth stations,
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`reliability assessments, switching and routing designs, and the associated command and control
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`subsystems for these communication systems. I have also supported commercial satcom systems
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`such as Globalstar and Iridium in terms of frequency planning, earth station coordination, and
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`spectrum sharing studies.
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`12.
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`I teach seminars on communications engineering, GPS and DGPS, and their
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`interrelationship. This includes methods and systems for supporting GPS-based and network-
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`based position determination by cellular telephones, and position reporting either for emergency
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`use (E911) or non-emergency use (such as social networking, fleet tracking, and personal
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`navigation).
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`13.
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`I have tested and evaluated a server-based fleet tracking and management system
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`(marketed by Discrete Wireless, Inc.) that relied on GPS-enabled in-vehicle units and cellular
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`communications (Mobitex or GPRS).
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`14.
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`In relation to patent litigation where I have served as an expert witness, I have
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`analyzed patented and real-world systems for permission-based location sharing able to support
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`social networking and business usage (e.g., Black Hills v. Samsung; PerDiem v. GPSlogic).
`
`
`
`3
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`

`

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`
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`III. COMPENSATION AND PRIOR TESTIMONY
`
`15.
`
`I am being compensated for my work on this case at the rate of $350 per hour,
`
`plus expenses. My compensation has not influenced my view on any of these matters and does
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`not depend in any way on the outcome of this case.
`
`16.
`
`In the last four years, I have testified by deposition or at trial/hearing in the
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`following cases:
`
`• STM v. EMC, N16C-04-096 PRW CCLD (Del.);
`• Chamberlain v. TTI, ITC Investigation No. 337-TA-1016;
`• Centrak (PO) v. Sonitor, 14-cv-183 (Del.) (RCA);
`• PerDiem (PO) v. Teletrac et al. (15-cv-00730), and multiple IPRs;
`• Emerson Electric Co. et al. v. SIPC LLC et al., 15-cv-00319 (N.D. Ga.), and
`multiple IPRs;
`•
`ICON Health & Fitness v. Polar Electro OY, 11-cv-00167 (Utah);
`• Stegman v. MasTec,13-014877 (Broward County);
`• Black Hills v. Samsung, et al., ITC Investigation No. 337-TA-882; and
`•
`Intellectual Ventures I LLC et al. v. AT&T Mobility LLC, et. al., 12-cv-00193.
`
`IV. MATERIALS CONSIDERED
`
`17.
`
`I have reviewed and considered the claims, specification, and file histories of the
`
`patents-in-suit in forming my opinions, as well as the documents identified on the list of all
`
`materials considered in this action, attached as Exhibit B.
`
`V.
`
`SUMMARY OF OPINIONS
`
`18.
`
`Ruiz asked me to consider and to form opinions about whether the asserted claims
`
`of the patents-in-suit are invalid as anticipated and/or obvious to a person of ordinary skill in the
`
`art (a “POSITA”) at the time of the alleged invention.
`
`19.
`
`It is my opinion that the asserted claims of the patents-in-suit are anticipated by
`
`and/or are obvious over certain prior art references, singularly. It is also my opinion that the
`
`asserted claims are obvious over certain prior art references in view of additional references.
`
`
`
`4
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`

`

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`
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`20.
`
`In other words, it is my opinion that several prior art references I discuss below
`
`teach each and every limitation or element, explicitly or inherently, of the asserted claims of the
`
`patents-in-suit. Specifically, it is my opinion that the following references anticipate the ’358
`
`patent: CTIA Guidelines, Enterprise, and TechnoCom White Paper. Likewise, it is my opinion
`
`that the Thomas reference anticipates the ’659 patent.
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`21.
`
`Alternatively, given the state of the art and knowledge a POSITA would possess
`
`at the time of the invention, the disclosures of several of these references, each alone, would lead
`
`a POSITA to the claimed inventions as a whole of the patents-in-suit, rendering the claims
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`obvious.
`
`22. Moreover, a POSITA would be motivated to combine certain of the references
`
`with a reasonable expectation of success to meet the claimed limitations. This is based on the
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`fact that the references are in the same field, seek the same objectives and goals, are in several
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`instances from the same company, and in other instances even reference each other. Therefore,
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`in my opinion, for the reasons stated below, the asserted claims of the patents-in-suit are
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`rendered obvious by the prior art.
`
`23.
`
`The state of technology at the priority date of the ’358 patent included the well-
`
`known solution to privacy concerns of providing notice and obtaining consent to location based
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`services. Moreover, the utilization of automated interactive voice response (“IVR”) to provide
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`information and receive signals within a telephone call was established by the time of the alleged
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`invention. These concepts, as discussed in relation to the prior art below, show that the alleged
`
`invention of implementing a notice and consent process within a telephone call, as claimed in the
`
`’358 patent, would have been obvious to one of skill in the art.
`
`
`
`5
`
`

`

`
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`
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`24.
`
`Similarly, the concept of a server-based system for monitoring locations of
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`vehicles and freight was well-known at the time of the priority date of the ’659 patent. These
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`known server-based systems could, e.g., receive requests for location information, generate
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`queries for such information, accommodate privacy concerns, and deliver location information if
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`authorized to do so. Thus, the alleged inventions as claimed in the asserted claims of the ’659
`
`patent, would have been obvious to one of skill in the art.
`
`VI.
`
`LEGAL STANDARDS
`
`25.
`
` I have been instructed by counsel to apply certain legal standards to my analysis.
`
`A summary of these legal standards that I have applied is given below.
`
`26.
`
`I also understand, from discussions with counsel, that a person is not entitled to a
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`patent unless the claimed invention is both new and useful, and not anticipated or obvious in
`
`view of the prior art.
`
`A.
`
`27.
`
`Invalidity Due to Anticipation
`
`Counsel has explained to me that a claimed invention is anticipated if each and
`
`every element of a claim is found, either expressly or inherently described, in a single prior art
`
`reference. Counsel has explained to me that the fact that a certain result or characteristic may
`
`occur or be present in the prior art is not sufficient to establish the inherency of that result or
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`characteristic. Rather, I understand that a result or characteristic must necessarily flow from the
`
`teachings of the applied prior art to be inherent in that prior art reference.
`
`28.
`
`That being said, counsel explained to me that an anticipatory reference does not
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`need to duplicate word for word what is in the asserted claims. Rather, anticipation can occur
`
`when a claimed limitation is inherently or otherwise implicit in the prior art reference.
`
`
`
`6
`
`

`

`
`
`
`
`B.
`
`29.
`
`Invalidity Due to Obviousness
`
`Counsel has explained to me that a claimed invention is obvious, even though it is
`
`not identically disclosed in a prior art reference, if the subject matter of the claimed invention as
`
`a whole would have been obvious at the time the invention was made to a POSITA in which the
`
`claimed invention pertains.
`
`30.
`
`I also understand that in assessing the validity of a United States Patent, the
`
`analysis involves two essential steps: 1. Construing the terms in the patent claims so as to
`
`understand what a POSITA would understand them to mean; and 2. Thereafter, one may assess
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`the validity of the claims by paring a patent claim to the “prior art.”
`
`31.
`
`In determining whether the asserted claims of the patents-in-suit would have been
`
`obvious in view of the prior art, I have considered: (1) the scope and content of the prior art, (2)
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`differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the
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`pertinent art.
`
`32.
`
`In determining the differences between the prior art and the claims at issue, I
`
`understand that the question of obviousness is not whether the differences themselves would
`
`have been obvious, but whether the claimed invention as a whole would have been obvious.
`
`33.
`
`It is also my understanding that a patent claim with several elements is not
`
`obvious just by showing that each element on its own was independently known in the prior art.
`
`Rather, I considered whether the prior art references described herein would have prompted a
`
`POSITA to combine the elements or concepts in the same way as the alleged invention that is
`
`claimed.
`
`34.
`
`I understand that Plaintiff or its experts may assert various “secondary
`
`considerations of non-obviousness,” also called “objective indicia of non-obviousness.” Counsel
`
`has explained to me that such secondary considerations or objective indicia of non-obviousness
`
`
`
`7
`
`

`

`
`
`
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`may include things such as: (1) commercial success; (2) long-felt need; (3) failure of others; (4)
`
`skepticism in the industry; (5) praise in the industry; (6) teaching away by others; (7) recognition
`
`of a problem; and (8) copying by others.
`
`35.
`
`It is my understanding that in order to establish a secondary consideration, the
`
`evidence must show a nexus between that secondary consideration and the claimed invention.
`
`C.
`
`36.
`
`The Level of Ordinary Skill in the Art
`
`Counsel has explained to me that the determination of whether a claimed
`
`invention is obvious or not is made from the perspective of a POSITA to which the claimed
`
`invention pertains. This POSITA is a hypothetical person presumed to have known all relevant
`
`art at the time the invention was made.
`
`37.
`
`The field of the invention(s) of the ’358 and ’659 patents include generally
`
`position determination, remote determination of location (e.g., network-based as opposed to
`
`handset-based determination methods), information transfer across cellular networks, client-
`
`server systems (specifically, those client-server systems adapted to manage location information
`
`of multiple tracked objects), and access control/privacy protection systems and methods. These
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`fields are usually taught at the undergraduate and graduate level of standard electrical
`
`engineering and computer science degree programs, and also in the context of industry
`
`experience for specific applications and systems.
`
`38.
`
`Accordingly, I believe that a POSITA at the time of the invention would have had
`
`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, telecommunications, and client/server systems, such as experience with
`
`mobile networks and devices. Additional education might be a substitute for some experience,
`
`and substantial experience might substitute for less educational background.
`
`
`
`8
`
`

`

`
`
`
`
`39.
`
`I understand that Plaintiff may contend that they level of ordinary skill in the art is
`
`different. If it does so, I reserve the right to supplement my opinions to address any different
`
`understanding of the level of ordinary skill in the art.
`
`D.
`
`40.
`
`Claim Construction
`
`I understand that the parties have submitted their proposed constructions for
`
`disputed claim terms and phrases in the patents-in-suit.
`
`41.
`
`I have performed my invalidity analysis of the claims utilizing both parties’
`
`interpretations thereof.
`
`42.
`
`I understand that the following claim phrases are in dispute for the ’358 patent,
`
`and I list both Plaintiff and Defendant’s respective positions, pursuant to the Joint Claim
`
`Construction Chart filed with the Court (D.I. 63):
`
`Claim
`Disputed
`Term / Phrase
`within the telephone
`call, identifying the
`mobile device
`(claim 1)
`receiving from the
`mobile device during
`the telephone call a
`signal including data
`indicating consent for
`obtaining the location
`information of the
`mobile device
`(claim 1)
`
`communications
`interface
`(claim 19)
`
`’358 Patent
`Plaintiff’s Position
`
`“identifying the mobile device after
`the telephone connection with the
`mobile device is initiated and
`before the communication ends”
`“before the end of the telephone
`call, receiving from the mobile
`device one or more electrical or
`optical signals, analog or digital
`signals, data, one or more computer
`or processor instructions, messages,
`a bit or bit stream, or other means
`that can be received, transmitted or
`detected that signifies that consent
`to obtain the location information
`of the mobile device was granted”
`No construction is required.
`
`
`This claim term is not a
`means-plus-function term governed
`by 35 U.S.C. § 112(f). To the extent
`an identification of function and
`
`
`
`9
`
`Defendant’s Position
`
`No construction necessary;
`plain and ordinary meaning
`
`No construction necessary;
`plain and ordinary meaning
`
`To the extent the claims reciting
`this limitation are not invalid
`under 35 U.S.C. § 101, it should
`be construed as follows:
`
`
`112, ¶ 6; Indefinite
`
`

`

`
`
`
`
`Claim
`Disputed
`Term / Phrase
`
`’358 Patent
`Plaintiff’s Position
`
`Defendant’s Position
`
`corresponding structure is required:
`
`Function: participate in a telephone
`call with a mobile device
`
`Structure: a card; hardware,
`firmware, software or combinations
`of each, a “logic,” a software
`controlled microprocessor, discrete
`logic like an application specific
`integrated circuit (ASIC), a
`programmed logic device, or a
`memory device containing
`instructions
`To the extent a construction is
`required, this term should be
`construed as “hardware, firmware,
`software or combinations of each
`that performs or causes a validation
`action to be performed”
`
`
`This claim term is not a means-
`plus-function term governed by 35
`U.S.C. § 112(f). To the extent an
`identification of function and
`corresponding structure is required:
`
`
`Function: identifying a mobile
`device
`
`Structure: hardware, firmware,
`software or combinations of each, a
`“logic,” a software controlled
`microprocessor, discrete logic like
`an application specific integrated
`circuit (ASIC), a programmed
`logic device, a memory device
`containing instructions
`To the extent a construction is
`required, this term should be
`construed as “hardware, firmware,
`software or
`combinations of each that performs
`
`
`
`Function: participating in and
`transmitting and receiving
`during a telephone call
`according to an undisclosed
`algorithm
`
`Structure: no corresponding
`algorithm, structure, material,
`or acts disclosed for performing
`recited functions
`
`To the extent the claims
`reciting this limitation are not
`invalid under 35 U.S.C. § 101,
`it should be construed as
`follows:
`
`
`112, ¶ 6; Indefinite
`
`
`Function: identifying a mobile
`device according to an
`undisclosed algorithm
`
`
`Structure: no corresponding
`algorithm, structure, material,
`or acts disclosed for performing
`recited functions
`
`To the extent the claims reciting
`this limitation are not invalid
`under 35 U.S.C. § 101, it should
`be construed as follows:
`
`
`Validation logic
`(Claim 19)
`
`notification logic
`(claim 19)
`
`
`
`10
`
`

`

`
`
`
`
`Claim
`Disputed
`Term / Phrase
`
`’358 Patent
`Plaintiff’s Position
`
`Defendant’s Position
`
`112, ¶ 6; Indefinite
`
`Function: communicating an
`automatic voice message during
`a telephone call according to an
`undisclosed algorithm
`
`Structure: no corresponding
`algorithm, structure, material,
`or acts disclosed for performing
`recited functions
`
`or causes a notification action to be
`performed”
`
`
`This claim term is not a means-
`plus-function term governed by 35
`U.S.C.
`§ 112(f). To the extent an
`identification of function and
`corresponding structure is required:
`
`Function: communicating
`information
`
`
`Structure: hardware, firmware,
`software or combinations of each, a
`“logic,” a software controlled
`microprocessor, discrete logic like
`an application specific integrated
`circuit (ASIC), a programmed
`logic device, a memory device
`containing instructions
`
`
`
`43.
`
`I also understand that the following claim terms / phrases are in dispute for the
`
`’659 patent, and I have listed the parties’ respective positions, pursuant to the Joint Claim
`
`Construction Chart filed with the Court (D.I. 63):
`
`Claim
`Disputed
`Term / Phrase
`receive a signal that
`indicates that consent
`was given to
`transmission of
`location information
`
`receive an indication
`that consent to
`
`’659 Patent
`Plaintiff’s Position
`
`receive one or more electrical or
`optical signals, analog or digital
`signals, data, one or more computer
`or processor instructions, messages,
`a bit or bit stream, or other means
`that can be received, transmitted or
`detected that indicates that consent
`to send location information was
`given
`Plain and ordinary meaning of
`“receive a sign or piece of
`
`
`
`11
`
`Defendant’s Position
`
`No construction necessary;
`plain and ordinary meaning
`
`No construction necessary;
`plain and ordinary meaning
`
`

`

`
`
`
`
`’659 Patent
`Plaintiff’s Position
`
`Defendant’s Position
`
`information that consent to sending
`location information has been
`given”
`
`Claim
`Disputed
`Term / Phrase
`transmission of
`location information
`has been given
`
`
`
`VII. BACKGROUND OF THE TECHNOLOGY
`
`A.
`
`44.
`
`Location Determination and Tracking
`
`The prior art reference entitled, “Mobile Phone Location Determination and its
`
`Impact on Intelligent Transportation Systems” (“Zhao”), provides an overview of location
`
`determination technologies for, for example, mobile (cellular) phones and wideband PCS devices
`
`as of March 2000. See Zhao, labeled RUIZ-006391-6400, and attached as Exhibit C.
`
`45.
`
`At that time, as reported by Zhao, the FCC had mandated that, by October 1,
`
`2001, Public Safety Access Point (PSAP) attendants of wireless communication networks must
`
`be able to learn a 911 caller’s phone number and location. Zhao, Ex. C, RUIZ-006391. The
`
`FCC had mandated particular location accuracy performance requirements for so-called
`
`“handset-based” techniques as well as so-called “network-based” techniques. Id.
`
`46. While performance levels for these two approaches to location determination
`
`were different, a POSITA would have understood that either approach could be used to satisfy
`
`the FCC mandate. Thus, neither handset-based methods, nor network-based methods, could be
`
`considered novel with respect to location determination of a mobile device such as a mobile
`
`phone.
`
`47.
`
`Zhao mentions GPS as a typical satellite-based location technique, but also notes
`
`that, for cellular networks, “it is natural to utilize the signals of the network to determine the
`
`mobile phone location or to assist the location determination.” Zhao, Ex. C, RUIZ-006391. This
`
`
`
`12
`
`

`

`
`
`
`
`is further evidence that a POSITA would have easily recognized network-based location
`
`techniques as present in the prior art.
`
`48.
`
`There are numerous ways to determine the location of an object such as a mobile
`
`phone. Generally speaking, “handset-based” methods rely on a navigation receiver (such as GPS
`
`receiver) integrated with the cell phone.1 GPS relies on timing measurements, performed by the
`
`receiver, on signals emitted from (typically) four or more GPS satellites. Therefore, GPS can be
`
`considered a “Time of Arrival” (“TOA”) technique.
`
`49. Many of today’s cell phones also support so-called “Advanced Forward Link
`
`Trilateration” (“AFLT”), where the cell phone makes measurements of the time delay on control
`
`signals emitted by several near