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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
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`RUIZ FOOD PRODUCTS, INC.,
`
`Petitioner,
`
`v.
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`MACROPOINT LLC,
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`Patent Owner.
`
`__________
`
`Case IPR2017-02016
`U.S. Patent No. 8,275,358 B1
`__________
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
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`
`
`TABLE OF CONTENTS
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`IPR2017-02016
`U.S. Patent No. 8,275,358
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`EXHIBIT LIST ......................................................................................................... ii
`I.
`INTRODUCTION ........................................................................................... 1
`II.
`OVERVIEW OF U.S. PATENT NO. 8,275,358 (Ex. 1001) .......................... 2
`A. Summary of the ’358 Patent .................................................................... 2
`SUMMARY OF INSTITUTED GROUNDS FOR REVIEW ........................ 6
`III.
`IV. SUMMARY OF THE CITED REFERENCES ............................................... 6
`A. Poulin (Ex. 1002) .................................................................................... 7
`B. Karp (Ex. 1006) ..................................................................................... 11
`CLAIM CONSTRUCTION .......................................................................... 15
`V.
`VI. THE PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) .......... 15
`VII. PETITIONER HAS THE BURDEN OF PRESENTING EVIDENCE
`AND ARGUMENT SHOWING A REASONABLE LIKLIHOOD OF
`SUCCESS ON THE CHALLENGED CLAIMS .......................................... 16
`VIII. CONTINGENT MOTION TO AMEND ...................................................... 17
`IX. PETITIONER FAILED TO MEET ITS BURDENS OF
`ESTABLISHING THAT THE CLAIMS OF THE ’358 PATENT
`ARE OBVIOUS. ............................................................................................ 18
`A. Ground 1: Poulin does not disclose the “notice” element of
`independent claims 1 and 19 and it would not have been obvious
`to a POSITA to modify Poulin. ............................................................. 18
`B. Ground 2: Claims 2 and 20 are not rendered obvious by Poulin in
`view of Karp. ......................................................................................... 24
`CONCLUSION .............................................................................................. 25
`
`
`X.
`
`
` i
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`
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`Exhibit Number
`2001
`2002
`2003
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`2004
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`2005
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`IPR2017-02016
`U.S. Patent No. 8,275,358
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`EXHIBIT LIST
`
`
`Description
`Expert Declaration of David Hilliard Williams
`David Hilliard Williams CV
`Ruiz Food Products, Inc.’s Initial Invalidity Contentions,
`Civil Action 6:16-cv-1133
`Expert Report of Dr. Stephen B. Heppe dated January
`25, 2017, Civil Action 6:16-cv-1133
`
`Ruiz Food Products, Inc.’s Final Election of Asserted
`Prior Art, Civil Action 6:16-cv-1133
`
` ii
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`
`
`I.
`
`
`INTRODUCTION
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`IPR2017-02016
`U.S. Patent No. 8,275,358
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`Petitioner acknowledges that Poulin fails to disclose every limitation of any
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`claim of the ’358 patent, despite both offering solutions to similar problems—
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`getting authorization from a mobile user to track and share her location
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`information with others. However, rather than offering a secondary reference or
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`other evidence of the art at the time, Petitioner attempts to inject the missing
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`limitations with bald, unexplained conclusions from its expert that it would have
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`been “obvious” to modify Poulin to achieve the claims of the ’358 patent.
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`But Petitioner’s arguments, and Mr. Denning’s assertions, are nothing more
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`than improper hindsight bias, fallaciously using a problem and solution identified
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`in the ’358 patent as the basis for concluding that it is obvious in retrospect. But §
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`103 does not work that way and, even under the relaxed rubric of KSR, hindsight
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`bias is impermissible and “obviousness cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 418 (2007) (quoting In
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`re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006)).
`
` 1
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`
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`II. OVERVIEW OF U.S. PATENT NO. 8,275,358 (Ex. 1001)
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`IPR2017-02016
`U.S. Patent No. 8,275,358
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`A.
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`Summary of the ’358 Patent
`
`The ’358 patent is directed to systems and methods for providing
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`notification to and receiving consent from a user whose mobile device’s location is
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`to be obtained. Ex. 1001 at 1:9-11.
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`FIG. 1 of the ’358 patent (right)
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`illustrates an exemplary system 100 for
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`providing user notification and
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`receiving user consent to obtaining
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`location information of a mobile device
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`110 of the user. The system 100
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`includes a communications interface
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`120 configured for communication with the mobile device 110. Id. at FIG. 1. The
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`communications interface 120 is configured to participate in telephone calls with
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`the mobile device 110. Id. at 1:56-62.
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`Validation logic 130 is configured to identify the mobile device 110 at least
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`in part by obtaining an identifier associated with the mobile device 110. This
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`ensures that the right party, the user, is notified that location information of the
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`mobile device 110 will be used and that the right party, the user, consents to the
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`disclosure of the location information. Id. at 4:3-10.
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` 2
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`The system 100 further includes a notification logic 140 that is configured to
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`communicate a signal including data representing an automated voice message. In
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`one embodiment, the automated voice message provides a notice to the mobile
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`device 110 user that includes information indicating to the user that consenting to
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`the obtaining of the location information of the mobile device 110 would result in
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`the location information of the mobile device 110 being disclosed. Id. at 4:27-35.
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`The location information provider 150 may be a wireless service provider.
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`The location information provider 150 instead may be a third party that receives
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`the location information from the wireless service provider. In addition, the
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`location information provider 150 may be a party other than the wireless service
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`provider or a third party. Id. at 5:22-28.
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`The communications interface 120 may be configured to communicate the
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`location information to the obtaining party 160 by transmitting the location
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`information of the mobile device to the obtaining party 160 through computer
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`communication. Id. at 5:43-47.
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` 3
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`
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`Utilizing the exemplary system, the ’358 patent further describes a method
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`U.S. Patent No. 8,275,358
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`for obtaining consent of the mobile device 110 user to obtain her location
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`information. Id. at FIG. 2 (right). At 210,
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`the method 200 includes participating in
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`a telephone call with the mobile device.
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`The user of the mobile device may
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`initiate or receive the telephone call. At
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`220, the method 200 includes identifying
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`the mobile device at least in part by obtaining an identifier associated with the
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`mobile device. The identifier may be, for example, a telephone number associated
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`with the mobile device. Id. at 7:62-8:3.
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`At 230, the method 200 includes transmitting to the mobile device a signal
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`including data representing an automated voice message. The automated voice
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`message communicates to the user of the mobile device at least one of: (a) a notice
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`including information indicating that consenting to the obtaining of the location
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`information of the mobile device would result in the location information of the
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`mobile device being disclosed, or (b) a location at which to find the notice. Id. at
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`8:17-24.
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` 4
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`At 240, the method 200 includes receiving from the user via the mobile
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`device consent for obtaining the location information of the mobile device. Id. at
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`8:25-27.
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`In some embodiments, when a user consents to the disclosure of the location
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`information of the mobile device 110, the system may be further configured to
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`periodically generate and communicate a reminder notification message reminding
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`the user that the location information of the mobile device 110 is currently being
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`disclosed. Id. at 6:64-67.
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`The ’358 patent further describes a method for the mobile device 110 user to
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`revoke consent for obtaining the location
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`information of the mobile device 110. Id.
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`at FIG. 3 (right). For example, at 310, the
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`method 300 includes participating in a
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`telephone call with the mobile device. In
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`one embodiment, the user of the mobile
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`device initiates the telephone call. Id. at
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`8:58-63.
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`At 320, the method 300 includes identifying the mobile device at least in
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`part by obtaining an identifier associated with the mobile device. The identifier
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`may be a telephone number associated with the mobile device. Id. at 8:64-9:1.
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` 5
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`At 330, the method 300 includes communicating to the user via an
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`automated voice message transmitted to the mobile device information indicating
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`that consent to obtain the location information is revocable via the mobile device.
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`Id. at 9:8-11.
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`At 340, the method 300 includes receiving from the mobile device
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`revocation of the consent to obtain the location information of the mobile device.
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`Id. at 9:8-11.
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`III. SUMMARY OF INSTITUTED GROUNDS FOR REVIEW
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`For the Board’s convenience, below is a summary of the grounds that were
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`instituted in this proceeding:
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`Ground 1: Obviousness under 35 U.S.C. § 103 of claims 1, 3-13, 15-19,
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`and 21-30 over Poulin; and
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`Ground 2: Obviousness under 35 U.S.C. § 103 of claims 2, 14 and 20 over
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`Poulin and Karp.
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`IV. SUMMARY OF THE CITED REFERENCES
`
`Petitioner relies on U.S. Patent Publication No. 2002/0115453 (Ex. 1002,
`
`“Poulin”) and U.S. Patent No. 6,591,242 (Ex. 21006, “Karp”).
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` 6
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`A.
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`Poulin (Ex. 1002)
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`U.S. Patent No. 8,275,358
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`Poulin is entitled “Method and System for Location Based Wireless
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`Communication Services” and is directed to providing registered subscribers with
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`location-based services such as navigation, messaging, business, entertainment and
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`meeting information. Ex. 1002 at Abstract.
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`Poulin describes a location based
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`service center (LBSC) 100 and a plurality of
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`wireless devices 102-104. Id. at [0050];
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`FIG. 4 (right). The LBSC 100 comprises a
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`processing system coupled to an interface
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`system. Id. at [0035]. The LBSC 100 is
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`connected to the wireless network 400, the short message service center (SMSC)
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`403 and the LFE 402. Id. at [0051]. The SMSC 403 could be a conventional device
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`that allows short text messages to be exchanged between the wireless devices 102-
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`104 and other networks or network elements such as the LBSC 100. Id. at [0053].
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`The wireless devices 102-104 could be any wireless devices configured to
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`exchange information over a wireless network, including conventional wireless
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`telephones, personal data assistants, and notebook computers. Id. at [0039].
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`The wireless communication network 400 could be a conventional wireless
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`network that provides wireless communication services. Some examples of the
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` 7
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`wireless communication services include personal communications service,
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`microwave multipoint distribution service, millimeter wave service, code division
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`multiple access service, and time division multiple access service. Id. at [0052].
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`The Internet user device 405 could be any device configured to connect and
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`exchange information over the Internet 401. Some examples of the Internet user
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`device 405 include without limitation, a desktop computer, a notebook computer,
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`and a personal data assistant. The connection from the LBSC 100 to the Internet
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`user device 405 is over the Internet 401 using an Internet browser and Internet
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`service provider. Id. at [0053].
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`Figure 6, below, illustrates the Poulin system from a wireless device. A call
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`is received in the LBSC 100 from a wireless device, e.g. 102, over the wireless
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`network 400 and place to the service manager 304. Id. at FIG 6. Responsive to
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`receiving the call, the service manager 304 identifies the calling device 102 to
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`determine if the device 102 is known or registered with the LBSC 100. Id. at
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`[0065].
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`If the service manager 304 determines that the device 102 is not registered
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`with the LBSC 100, a profile request message is sent to the mobile device 102. It
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`could be a voice message provided using the IVR 309 or could be a short text
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`message using the SMSC 403. Responsive to the profile information request
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`message, the profile information is provided to the service manager 304 using the
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`wireless device 102. The profile information might be an abbreviated profile
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`received for the purpose of registering the device 102, and the subscriber would be
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`prompted to provide additional profile information via the Internet registration
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`process of FIG. 5 at a later date. Id. at [0066].
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` 9
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`The profile defines permission on when, where, and how other authorized
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`IPR2017-02016
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`subscribers may obtain an individual subscriber’s own location and status
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`information. For example, permission may be granted according to a time of day,
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`day of the week, e.g. Monday-Friday from 4:00 PM-1:00 AM or always.
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`Permission may also be granted within a specified geography, e.g. city, county,
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`country or arbitrary subscriber defined area. Id. at [0023]. As an override to
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`existing rules contained in the subscriber’s profile, the communication service also
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`permits the subscriber to globally turn ON or turn OFF permission to be located
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`and serviced. Id. at [0024].
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`Once a subscriber is activated, Poulin describes various located-based
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`services that can be offered:
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`The present service is designed to provide fun finding meeting areas
`and venues where subscribers can spontaneously meet, or plan to
`meet, with other subscribers. The service may also serve as an
`introductory meeting service for subscribers interested in a casual date
`or impromptu meeting. Subscribers use their wireless devices such as
`telephones, personal data assistants, and notebook computers to obtain
`the service area information, venue information, and subscriber
`information. Active subscribers may also communicate with other
`active subscribers using their wireless devices by sending short
`messages or placing voice calls. It should be noted that the contact
`information for other active subscribers is provided as part of the
`subscriber information, which subscribers have consented too, so that
`subscribers can feel comfortable sending a short message or placing a
`voice call to other active subscribers, which they may not previously
`have known. Advantageously, the present service provides subscribers
`with access to information on villages that they are located in or
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`proximately located too as well as events, attractions and other
`subscribers located in or near the same village.
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`Id. at [0029]. Poulin also describes a procedure for a subscriber to deactivate her
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`subscription. After a pre-determined period of time, the service manager 304
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`provides a service deactivation message to the device 102. Depending on the
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`subscriber’s response, the service manager 304 processes the response from the
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`wireless device 102 to deactivate or continue providing the service. If the service is
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`deactivated and no additional information is provided to the device 102. Id. at
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`[0073].
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`B. Karp (Ex. 1006)
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`Karp is entitled “Visit Verification Method and System” and is directed to a
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`system and method for tracking clients as they visit different locations. Ex. 1006 at
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`Abstract. Karp is more fully described below in Figure 1 and the accompanying
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`description, but Petitioner relies on Karp solely for the narrow proposition that a
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`POSITA would know that a mobile telephone could be identified using its
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`automatic number identification. Petition 15, 55.
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` 11
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`The system of Karp includes a public switched telephone network (PSTN)
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`for interfacing a computer 120 with wireless phone 112 and/or a standard plain old
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`telephone service (POTS) phone 114. Ex. 1006 at FIG 1. The PSTN includes wired
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`segments 118A and wireless segments 118B. The wired segment includes central
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`offices 130A-B connected over a digital backbone 124C, such as the integrated
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`services digital network (ISDN). Central office 130B is connected by modem link
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`132 to computer 120. Central office 130A is connected by analog subscriber line
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`124A to fixed phone 114 located at call site 150A. The wireless segment 118B
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`includes a plurality of cells 128A-B each represented by a transceiver. Each of the
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`cells is connected by a wired/wireless link 124B to central office 130A.
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`Communications between cellular phone 112 at call site 150B and computer 120
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`are made across both wired and wireless segments of the PSTN. Either the fixed or
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` 12
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`wireless phone may provide an identification device. Biometric input device 116 is
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`shown connected to fixed phone 114. Ex. 1006 at 3:40-59.
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`The computer 120 includes a timer 138 and a storage device 136. The
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`storage device includes reports 122, databases 134, and program code 146 for
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`implementing processes 140. The databases may include employee biological
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`parameters, geographic data, and payroll information. Id. at 3:60-65.
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`The computer implements processes 140 for determining on the basis of
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`information from a packet 144 received from the client: who called, when they
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`called, where they called from, what they did when they were at the location, and
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`how long they were at the location. Caller/clients 11A-B have their respective
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`unique biometric parameters 142A-B. Each of the clients has a unique biometric
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`parameter that include, for example: voice print, finger print, or iris print. Id. at
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`3:66-4:7.
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`Biometric input device 116 allows a client to enter biometric parameters
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`other than voice. For instance, the identification device can be used to
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`electronically transmit information concerning the client’s fingerprints and/or iris
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`print. The identification devices can be included directly on the phones 112-114 or
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`included in a base station included at the recipient’s location. The identification
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`device can also be carried by the clients 11A-B and include an interface which
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`allows the identification device to communicate with the PSTN 118. Id. at 4:8-17.
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` 13
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`In operation, the caller/clients 110A/B place a call upon arrival at the
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`respective call sites 150A-B. The call site may be the home of a person who is
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`homebound or receiving a visit from a nurse, or it may be a job site for a sales call,
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`repair or for delivery of goods. Accordingly, the recipient can be an individual
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`such as a patient, or a business such as a vendor, when the client arrives at the site,
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`they call a number corresponding to computer 120. The computer answers the call
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`and receives the packets 144 from the client. Id. at 4:18-28.
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`The packets 144 contains information concerning the location of the clients
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`110A-B, the identity of the clients, whether the client 110 is arriving at or
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`departing from the location and what tasks were performed during the time the
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`client spent at the location. The system can be customized to provide additional
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`information as desired by employers of the clients, or by the system administrators.
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`The computer processes 140 combine the information in the packets with databases
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`134 to produce reports 122. Id. at 4:29-37.
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`The reports 122 may list the activity of the client by location, by recipient,
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`by type of activity, and by duration of activity. The reports may also list which of
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`clients 110A-B were expected to but did not show up at, or spend the proper
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`amount of time at a job site. Alternately, the reports may list the work site address,
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`each employee’s name, number, employment category, treatment type, etc. The
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`reports 22 can be printed or transmitted to a remote location. The reports may
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` 14
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`include payroll reports. Alternately, the reports may be invoices to the recipient of
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`the client’s services. The reports 122 may be supplied to the client’s employer so
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`the employer can track the deliveries of the client 110 or the amount of time the
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`client 110 spends with particular recipients. The employer can use the reports for
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`payroll and/or for billing purposes. For instance, the recipient can be charged based
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`on the amount of time the client spent with the recipient or based on the number of
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`tasks the client performed while visiting the recipient. Id. at 4:38-59.
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`V. CLAIM CONSTRUCTION
`
`Claims are to be given their broadest reasonable construction in light of the
`
`specification as would be read by a POSITA. Only those terms that are in
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`controversy need be expressly construed, and then only to the extent necessary to
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`resolve the controversy. At this time, it appears that no terms require express
`
`interpretation.
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`VI. THE PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`
`Petitioner states that a POSITA would have been “a person having at least a
`
`bachelor’s degree in electrical engineering, computer engineering, computer
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`science, or a related discipline, and two to three years of relevant experience in the
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`fields of location/navigation and telecommunications, such as experience with
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`mobile networks and devices. Additional education might substitute for some for
`
` 15
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`
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`the experience and substantial experience might substitute for some of the
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`educational background.” Petition 16. Patent Owner accepts this characterization
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`of a POSITA.
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`VII. PETITIONER HAS THE BURDEN OF PRESENTING EVIDENCE
`AND ARGUMENT SHOWING A REASONABLE LIKLIHOOD OF
`SUCCESS ON THE CHALLENGED CLAIMS
`
`As set forth by the Supreme Court, the question of obviousness is resolved
`
`on the basis of underlying factual determinations including (1) the scope and
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`content of the prior art, (2) any differences between the claimed subject matter and
`
`the prior art, (3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1,
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`17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 399 (2007) (“While the sequence of these questions might be reordered in any
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`particular case, the [Graham] factors define the controlling inquiry.”) An
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`obviousness analysis should take into account the knowledge, creativity, and
`
`common sense that an ordinarily skilled artisan would have brought to bear when
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`considering combinations or modifications. Randall Mfg. v. Rea, 733 F.3d 1355,
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`1362 (Fed. Cir. 2013). The Petition’s evidence must also address every limitation
`
`of every challenged claim.
`
`“It is of the utmost importance that petitioners in the IPR proceedings adhere
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`to the requirement that the initial petition identify ‘with particularity’ the ‘evidence
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`that supports the grounds for the challenge to each claim’.” Intelligent Bio-Systems,
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`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1362, 1369 (Fed. Cir. 2016); 35 U.S.C. §
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`312(a)(3). “All arguments for the relief requested in a motion must be made in the
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`motion.” Intelligent Bio-Systems, 821 F.3d at 1369 (declining to consider new
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`obviousness arguments, new reasons to combine, and new evidence not presented
`
`in petition); 37 C.F.R. § 42.23(b).
`
`Moreover, it is well settled that “rejections on obviousness cannot be
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`sustained by mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
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`Cir. 2006)).
`
`As set forth below, Petitioner has not established obviousness with respect to
`
`independent claims 1 or 19 on Grounds 1 or 2, and the Board should uphold the
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`validity of those claims and their dependents.
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`VIII. CONTINGENT MOTION TO AMEND
`
`Patent Owner has concurrently filed a contingent Motion to Amend
`
`requesting consideration of proposed substitute claims in the event that the Board
`
`finds claim 1 and/or 19 invalid. Thus, these two claims are the only claims
`
`specifically discussed in this Response. Patent Owner also has chosen to not
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` 17
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`specifically respond to the Grounds regarding claims 13–18, but has proposed
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`substitute claims in the event the Board finds Petitioner to have met its burden with
`
`respect to claim 1.
`
`IX. PETITIONER FAILED TO MEET ITS BURDENS OF
`ESTABLISHING THAT THE CLAIMS OF THE ’358 PATENT ARE
`OBVIOUS.
`
`A. Ground 1: Poulin does not disclose the “notice” element of
`independent claims 1 and 19 and it would not have been obvious
`to a POSITA to modify Poulin.
`
`Claim 1 includes 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.” This step
`
`is not disclosed in Poulin. Claim 1 states:
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`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:
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`participating in a telephone call with the mobile device;
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`within the telephone call, identifying the mobile device at least
`in part by obtaining an identifier associated with the mobile device;
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`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
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`
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`device would result in the location information of the mobile
`device being disclosed, and
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` a
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` 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
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`receiving from the mobile device during the telephone call a
`signal including data indicating consent for obtaining the location
`information of the mobile device.
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`Similarly, claim 19 is the system claim corresponding to claim 1, and
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`contains similar elements:
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`19. A system for receiving user consent to obtaining location
`information of a mobile device, the system comprising:
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` communications interface configured to participate in a
`telephone call with the mobile device;
`
` a
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` a
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` validation logic configured to, within the telephone call,
`identify the mobile device at least in part by obtaining an identifier
`associated with the mobile device; and
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` a
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` notification logic configured to communicate during the
`telephone call an automated voice message including at least one of:
`
`
`a notice including information indicating to the user of
`the mobile device 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
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` location at which to find the notice, wherein the
`location at which to find the notice is represented by a web
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`address corresponding to a website where, during the telephone
`call, the user of the mobile device can find the notice including
`information indicating to the user of the mobile device 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;
`
`wherein the communications interface is configured to transmit
`during the telephone call the automated voice message to the mobile
`device, and
`
`wherein the communications interface is further configured to,
`during the telephone call, receive from the mobile device data
`indicating the user consent for obtaining the location information of
`the mobile device.
`
` Because the substance of the highlighted “notice” elements are effectively
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`the same in both claims, the arguments are combined.
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`Petitioner acknowledges that Poulin does not provide this requisite “notice”
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`to the user during the telephone call, but argues that it would have been obvious to
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`modify Poulin to provide the claimed notice. Petition 21. However, Petitioner’s
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`argument is based on nothing but conclusory assertions from its expert. Id.; Ex.
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`1002 at ¶¶ 65-69.
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`Petitioner and Mr. Denning offer two rationales for why a POSITA allegedly
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`would have been motivated to modify Poulin. First, because the user in Poulin is
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`on notice that location information would be disclosed to others, they argue it
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`would have been obvious to provide the user with a notice of such disclosure. Ex.
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`1002 at ¶¶ 66, 67. Second, they argue that it would have been obvious to modify
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`
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`Poulin to add a notice if one had wanted to add such a notice. Ex. 1002 at ¶¶ 65,
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`66, 68.
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`But the former argument is based on nothing but conclusory speculation,
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`while the latter proves too much––it is always “obvious” to add a feature that one
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`already wants to add. The real question is whether or why a POSITA would want
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`to add such a notice to Poulin––beyond simply wanting to invalidate claims in the
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`’358 patent. Of course, motivation to modify is the key inquiry here, not the ease
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`of that modification: “[t]he issue is not whether a skilled artisan could [modify the
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`prior art in the way proposed by the petitioner] or whether it would have been
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`trivial to do so. The issue is whether a skilled artisan would have been motivated to
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`do so….” TRW Automotive U.S. LLC v. Magna Electronics, Inc., IPR2014-01355,
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`Paper No. 21, Final Written Decision at 15-16 (PTAB Nov. 19, 2015) (citing KSR,
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`550 U.S. at 418).
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`Poulin is already a complete method and system for obtaining permission
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`from a user for location-based services, and Petitioner does not explain how or
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`why a POSITA would have felt any need, desire, motivation, or reason to modify
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`Poulin. See KSR, 550 U.S. at 418. Poulin can be used to obtain consent for the
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`disclosure of a user’s location without any modification or changes whatsoever.
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`Williams Decl., ¶¶ 58–62. Therefore, there is no inherent reason to modify Poulin,
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`and Petitioner and its expert cannot articulate any proper reason to modify Poulin.
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` 21
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`In fact, gratuitously adding such a notice is not obvious because it is not desirable–
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`–it makes the process and the telephone call longer and more complicated. Id. at
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`¶ 61. The user is less likely to remain on the call and to take the desire action if
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`required to first listen to an automated voice message that is unnecessary under
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`Poulin. Id. at ¶¶ 60–61.
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`The Board has previously rejected proffered motivation to modify arguments
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`the cited prior art reference already contained the desired solution or goal:
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`In that regard, Petitioner proffers two such reasons for combining
`Gillig with Pitroda and with Hennige. First, Petitioner contends
`modifying the Gillig telephone to incorporate credit card account
`information in light of Pitroda or Hennige would “allow credit card
`users to avoid having to carry multiple credit cards.” Second,
`Petitioner contends the combination would “allow users of the
`telephone to have access to these cards when making long distance
`phone calls, or making purchases over the phone.” We are not
`persuaded. In particular, we agree with Patent Owner that Pitroda and
`Hennige already allow credit card users to avoid having to carry
`multiple credit cards, and Pitroda and Hennige already provide access
`to credit cards for purposes of making telephone calls or purchases
`over the phone. Petitioner’s proffered reasons for modifying Gillig to
`include credit