`
`
`
`
`
`
`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
`U.S. Patent No. 8,275,358 B1
`__________
`
`
`PATENT OWNER’S RESPONSE
`PURSUANT TO 37 C.F.R. § 42.120
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`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
`
`
`
`
`
`Exhibit Number
`2001
`2002
`2003
`
`2004
`
`2005
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`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
`
`
`
`I.
`
`
`INTRODUCTION
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`Petitioner acknowledges that Poulin fails to disclose every limitation of any
`
`claim of the ’358 patent, despite both offering solutions to similar problems—
`
`getting authorization from a mobile user to track and share her location
`
`information with others. However, rather than offering a secondary reference or
`
`other evidence of the art at the time, Petitioner attempts to inject the missing
`
`limitations with bald, unexplained conclusions from its expert that it would have
`
`been “obvious” to modify Poulin to achieve the claims of the ’358 patent.
`
`But Petitioner’s arguments, and Mr. Denning’s assertions, are nothing more
`
`than improper hindsight bias, fallaciously using a problem and solution identified
`
`in the ’358 patent as the basis for concluding that it is obvious in retrospect. But §
`
`103 does not work that way and, even under the relaxed rubric of KSR, hindsight
`
`bias is impermissible and “obviousness cannot be sustained by mere conclusory
`
`statements; instead, there must be some articulated reasoning with some rational
`
`underpinning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 418 (2007) (quoting In
`
`re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006)).
`
` 1
`
`
`
`
`II. OVERVIEW OF U.S. PATENT NO. 8,275,358 (Ex. 1001)
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`A.
`
`Summary of the ’358 Patent
`
`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 at 1:9-11.
`
`FIG. 1 of the ’358 patent (right)
`
`illustrates an exemplary system 100 for
`
`providing user notification and
`
`receiving user consent to obtaining
`
`location information of a mobile device
`
`110 of the user. The system 100
`
`includes a communications interface
`
`120 configured for communication with the mobile device 110. Id. at FIG. 1. The
`
`communications interface 120 is configured to participate in telephone calls with
`
`the mobile device 110. Id. at 1:56-62.
`
`Validation logic 130 is configured to identify the mobile device 110 at least
`
`in part by obtaining an identifier associated with the mobile device 110. This
`
`ensures that the right party, the user, is notified that location information of the
`
`mobile device 110 will be used and that the right party, the user, consents to the
`
`disclosure of the location information. Id. at 4:3-10.
`
` 2
`
`
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`The system 100 further includes a notification logic 140 that is configured to
`
`communicate a signal including data representing an automated voice message. In
`
`one embodiment, the automated voice message provides a notice to the mobile
`
`device 110 user that includes information indicating to the user that consenting to
`
`the obtaining of the location information of the mobile device 110 would result in
`
`the location information of the mobile device 110 being disclosed. Id. at 4:27-35.
`
`The location information provider 150 may be a wireless service provider.
`
`The location information provider 150 instead may be a third party that receives
`
`the location information from the wireless service provider. In addition, the
`
`location information provider 150 may be a party other than the wireless service
`
`provider or a third party. Id. at 5:22-28.
`
`The communications interface 120 may be configured to communicate the
`
`location information to the obtaining party 160 by transmitting the location
`
`information of the mobile device to the obtaining party 160 through computer
`
`communication. Id. at 5:43-47.
`
` 3
`
`
`
`
`Utilizing the exemplary system, the ’358 patent further describes a method
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`for obtaining consent of the mobile device 110 user to obtain her location
`
`information. Id. at FIG. 2 (right). At 210,
`
`the method 200 includes participating in
`
`a telephone call with the mobile device.
`
`The user of the mobile device may
`
`initiate or receive the telephone call. At
`
`220, the method 200 includes identifying
`
`the mobile device at least in part by obtaining an identifier associated with the
`
`mobile device. The identifier may be, for example, a telephone number associated
`
`with the mobile device. Id. at 7:62-8:3.
`
`At 230, the method 200 includes transmitting to the mobile device a signal
`
`including data representing an automated voice message. The automated voice
`
`message communicates to the user of the mobile device at least one of: (a) 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, or (b) a location at which to find the notice. Id. at
`
`8:17-24.
`
` 4
`
`
`
`
`At 240, the method 200 includes receiving from the user via the mobile
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`device consent for obtaining the location information of the mobile device. Id. at
`
`8:25-27.
`
`In some embodiments, when a user consents to the disclosure of the location
`
`information of the mobile device 110, the system may be further configured to
`
`periodically generate and communicate a reminder notification message reminding
`
`the user that the location information of the mobile device 110 is currently being
`
`disclosed. Id. at 6:64-67.
`
`The ’358 patent further describes a method for the mobile device 110 user to
`
`revoke consent for obtaining the location
`
`information of the mobile device 110. Id.
`
`at FIG. 3 (right). For example, at 310, the
`
`method 300 includes participating in a
`
`telephone call with the mobile device. In
`
`one embodiment, the user of the mobile
`
`device initiates the telephone call. Id. at
`
`8:58-63.
`
`At 320, the method 300 includes identifying the mobile device at least in
`
`part by obtaining an identifier associated with the mobile device. The identifier
`
`may be a telephone number associated with the mobile device. Id. at 8:64-9:1.
`
` 5
`
`
`
`
`At 330, the method 300 includes communicating to the user via an
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`automated voice message transmitted to the mobile device information indicating
`
`that consent to obtain the location information is revocable via the mobile device.
`
`Id. at 9:8-11.
`
`At 340, the method 300 includes receiving from the mobile device
`
`revocation of the consent to obtain the location information of the mobile device.
`
`Id. at 9:8-11.
`
`III. SUMMARY OF INSTITUTED GROUNDS FOR REVIEW
`
`For the Board’s convenience, below is a summary of the grounds that were
`
`instituted in this proceeding:
`
`Ground 1: Obviousness under 35 U.S.C. § 103 of claims 1, 3-13, 15-19,
`
`and 21-30 over Poulin; and
`
`Ground 2: Obviousness under 35 U.S.C. § 103 of claims 2, 14 and 20 over
`
`Poulin and Karp.
`
`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”).
`
` 6
`
`
`
`
`A.
`
`Poulin (Ex. 1002)
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`Poulin is 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. 1002 at Abstract.
`
`Poulin describes a location based
`
`service center (LBSC) 100 and a plurality of
`
`wireless devices 102-104. Id. at [0050];
`
`FIG. 4 (right). The LBSC 100 comprises a
`
`processing system coupled to an interface
`
`system. Id. at [0035]. The LBSC 100 is
`
`connected to the wireless network 400, the short message service center (SMSC)
`
`403 and the LFE 402. Id. at [0051]. The SMSC 403 could be a conventional device
`
`that allows short text messages to be exchanged between the wireless devices 102-
`
`104 and other networks or network elements such as the LBSC 100. Id. at [0053].
`
`The wireless devices 102-104 could be any wireless devices configured to
`
`exchange information over a wireless network, including conventional wireless
`
`telephones, personal data assistants, and notebook computers. Id. at [0039].
`
`The wireless communication network 400 could be a conventional wireless
`
`network that provides wireless communication services. Some examples of the
`
` 7
`
`
`
`
`wireless communication services include personal communications service,
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`microwave multipoint distribution service, millimeter wave service, code division
`
`multiple access service, and time division multiple access service. Id. at [0052].
`
`The Internet user device 405 could be any device configured to connect and
`
`exchange information over the Internet 401. Some examples of the Internet user
`
`device 405 include without limitation, a desktop computer, a notebook computer,
`
`and a personal data assistant. The connection from the LBSC 100 to the Internet
`
`user device 405 is over the Internet 401 using an Internet browser and Internet
`
`service provider. Id. at [0053].
`
`Figure 6, below, illustrates the Poulin system from a wireless device. A call
`
`is received in the LBSC 100 from a wireless device, e.g. 102, over the wireless
`
`network 400 and place to the service manager 304. Id. at FIG 6. Responsive to
`
`receiving the call, the service manager 304 identifies the calling device 102 to
`
`determine if the device 102 is known or registered with the LBSC 100. Id. at
`
`[0065].
`
` 8
`
`
`
`
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`
`
`If the service manager 304 determines that the device 102 is not registered
`
`with the LBSC 100, a profile request message is sent to the mobile device 102. It
`
`could be a voice message provided using the IVR 309 or could be a short text
`
`message using the SMSC 403. Responsive to the profile information request
`
`message, the profile information is provided to the service manager 304 using the
`
`wireless device 102. The profile information might be an abbreviated profile
`
`received for the purpose of registering the device 102, and the subscriber would be
`
`prompted to provide additional profile information via the Internet registration
`
`process of FIG. 5 at a later date. Id. at [0066].
`
` 9
`
`
`
`
`The profile defines permission on when, where, and how other authorized
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`subscribers may obtain an individual subscriber’s own 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 [0023]. As an override to
`
`existing rules contained in the subscriber’s profile, the communication service also
`
`permits the subscriber to globally turn ON or turn OFF permission to be located
`
`and serviced. Id. at [0024].
`
`Once a subscriber is activated, Poulin describes various located-based
`
`services that can be offered:
`
`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
`
` 10
`
`
`
`
`proximately located too as well as events, attractions and other
`subscribers located in or near the same village.
`
`Id. at [0029]. Poulin also describes a procedure for a subscriber to deactivate her
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`subscription. After a pre-determined period of time, the service manager 304
`
`provides a service deactivation message to the device 102. Depending on the
`
`subscriber’s response, the service manager 304 processes the response from the
`
`wireless device 102 to deactivate or continue providing the service. If the service is
`
`deactivated and no additional information is provided to the device 102. Id. at
`
`[0073].
`
`B. Karp (Ex. 1006)
`
`Karp is entitled “Visit Verification Method and System” and is directed to a
`
`system and method for tracking clients as they visit different locations. Ex. 1006 at
`
`Abstract. Karp is more fully described below in Figure 1 and the accompanying
`
`description, but Petitioner relies on Karp solely for the narrow proposition that a
`
`POSITA would know that a mobile telephone could be identified using its
`
`automatic number identification. Petition 15, 55.
`
` 11
`
`
`
`
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`
`The system of Karp includes a public switched telephone network (PSTN)
`
`for interfacing a computer 120 with wireless phone 112 and/or a standard plain old
`
`telephone service (POTS) phone 114. Ex. 1006 at FIG 1. The PSTN includes wired
`
`segments 118A and wireless segments 118B. The wired segment includes central
`
`offices 130A-B connected over a digital backbone 124C, such as the integrated
`
`services digital network (ISDN). Central office 130B is connected by modem link
`
`132 to computer 120. Central office 130A is connected by analog subscriber line
`
`124A to fixed phone 114 located at call site 150A. The wireless segment 118B
`
`includes a plurality of cells 128A-B each represented by a transceiver. Each of the
`
`cells is connected by a wired/wireless link 124B to central office 130A.
`
`Communications between cellular phone 112 at call site 150B and computer 120
`
`are made across both wired and wireless segments of the PSTN. Either the fixed or
`
` 12
`
`
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`wireless phone may provide an identification device. Biometric input device 116 is
`
`shown connected to fixed phone 114. Ex. 1006 at 3:40-59.
`
`The computer 120 includes a timer 138 and a storage device 136. The
`
`storage device includes reports 122, databases 134, and program code 146 for
`
`implementing processes 140. The databases may include employee biological
`
`parameters, geographic data, and payroll information. Id. at 3:60-65.
`
`The computer implements processes 140 for determining on the basis of
`
`information from a packet 144 received from the client: who called, when they
`
`called, where they called from, what they did when they were at the location, and
`
`how long they were at the location. Caller/clients 11A-B have their respective
`
`unique biometric parameters 142A-B. Each of the clients has a unique biometric
`
`parameter that include, for example: voice print, finger print, or iris print. Id. at
`
`3:66-4:7.
`
`Biometric input device 116 allows a client to enter biometric parameters
`
`other than voice. For instance, the identification device can be used to
`
`electronically transmit information concerning the client’s fingerprints and/or iris
`
`print. The identification devices can be included directly on the phones 112-114 or
`
`included in a base station included at the recipient’s location. The identification
`
`device can also be carried by the clients 11A-B and include an interface which
`
`allows the identification device to communicate with the PSTN 118. Id. at 4:8-17.
`
` 13
`
`
`
`
`In operation, the caller/clients 110A/B place a call upon arrival at the
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`respective call sites 150A-B. The call site may be the home of a person who is
`
`homebound or receiving a visit from a nurse, or it may be a job site for a sales call,
`
`repair or for delivery of goods. Accordingly, the recipient can be an individual
`
`such as a patient, or a business such as a vendor, when the client arrives at the site,
`
`they call a number corresponding to computer 120. The computer answers the call
`
`and receives the packets 144 from the client. Id. at 4:18-28.
`
`The packets 144 contains information concerning the location of the clients
`
`110A-B, the identity of the clients, whether the client 110 is arriving at or
`
`departing from the location and what tasks were performed during the time the
`
`client spent at the location. The system can be customized to provide additional
`
`information as desired by employers of the clients, or by the system administrators.
`
`The computer processes 140 combine the information in the packets with databases
`
`134 to produce reports 122. Id. at 4:29-37.
`
`The reports 122 may list the activity of the client by location, by recipient,
`
`by type of activity, and by duration of activity. The reports may also list which of
`
`clients 110A-B were expected to but did not show up at, or spend the proper
`
`amount of time at a job site. Alternately, the reports may list the work site address,
`
`each employee’s name, number, employment category, treatment type, etc. The
`
`reports 22 can be printed or transmitted to a remote location. The reports may
`
` 14
`
`
`
`
`include payroll reports. Alternately, the reports may be invoices to the recipient of
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`the client’s services. The reports 122 may be supplied to the client’s employer so
`
`the employer can track the deliveries of the client 110 or the amount of time the
`
`client 110 spends with particular recipients. The employer can use the reports for
`
`payroll and/or for billing purposes. For instance, the recipient can be charged based
`
`on the amount of time the client spent with the recipient or based on the number of
`
`tasks the client performed while visiting the recipient. Id. at 4:38-59.
`
`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
`
`controversy need be expressly construed, and then only to the extent necessary to
`
`resolve the controversy. At this time, it appears that no terms require express
`
`interpretation.
`
`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
`
`science, or a related discipline, and 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 for
`
` 15
`
`
`
`
`the experience and substantial experience might substitute for some of the
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`educational background.” Petition 16. Patent Owner accepts this characterization
`
`of a POSITA.
`
`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
`
`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,
`
`17-18, 148 USPQ 459, 467 (1966); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 399 (2007) (“While the sequence of these questions might be reordered in any
`
`particular case, the [Graham] factors define the controlling inquiry.”) An
`
`obviousness analysis should take into account the knowledge, creativity, and
`
`common sense that an ordinarily skilled artisan would have brought to bear when
`
`considering combinations or modifications. Randall Mfg. v. Rea, 733 F.3d 1355,
`
`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
`
`to the requirement that the initial petition identify ‘with particularity’ the ‘evidence
`
` 16
`
`
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`that supports the grounds for the challenge to each claim’.” Intelligent Bio-Systems,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1362, 1369 (Fed. Cir. 2016); 35 U.S.C. §
`
`312(a)(3). “All arguments for the relief requested in a motion must be made in the
`
`motion.” Intelligent Bio-Systems, 821 F.3d at 1369 (declining to consider new
`
`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
`
`sustained by mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`
`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
`
`validity of those claims and their dependents.
`
`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
`
` 17
`
`
`
`
`specifically respond to the Grounds regarding claims 13–18, but has proposed
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`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:
`
`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
`
` 18
`
`
`
`
`
`device would result in the location information of the mobile
`device being disclosed, and
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
` 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.
`
`Similarly, claim 19 is the system claim corresponding to claim 1, and
`
`contains similar elements:
`
`19. A system for receiving user consent to obtaining location
`information of a mobile device, the system comprising:
`
` communications interface configured to participate in a
`telephone call with the mobile device;
`
` a
`
` a
`
` 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
`
` a
`
` 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
`
` location at which to find the notice, wherein the
`location at which to find the notice is represented by a web
`
` 19
`
`
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`
`
`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
`
`the same in both claims, the arguments are combined.
`
`Petitioner acknowledges that Poulin does not provide this requisite “notice”
`
`to the user during the telephone call, but argues that it would have been obvious to
`
`modify Poulin to provide the claimed notice. Petition 21. However, Petitioner’s
`
`argument is based on nothing but conclusory assertions from its expert. Id.; Ex.
`
`1002 at ¶¶ 65-69.
`
`Petitioner and Mr. Denning offer two rationales for why a POSITA allegedly
`
`would have been motivated to modify Poulin. First, because the user in Poulin is
`
`on notice that location information would be disclosed to others, they argue it
`
`would have been obvious to provide the user with a notice of such disclosure. Ex.
`
`1002 at ¶¶ 66, 67. Second, they argue that it would have been obvious to modify
`
` 20
`
`
`
`
`Poulin to add a notice if one had wanted to add such a notice. Ex. 1002 at ¶¶ 65,
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`66, 68.
`
`But the former argument is based on nothing but conclusory speculation,
`
`while the latter proves too much––it is always “obvious” to add a feature that one
`
`already wants to add. The real question is whether or why a POSITA would want
`
`to add such a notice to Poulin––beyond simply wanting to invalidate claims in the
`
`’358 patent. Of course, motivation to modify is the key inquiry here, not the ease
`
`of that modification: “[t]he issue is not whether a skilled artisan could [modify the
`
`prior art in the way proposed by the petitioner] or whether it would have been
`
`trivial to do so. The issue is whether a skilled artisan would have been motivated to
`
`do so….” TRW Automotive U.S. LLC v. Magna Electronics, Inc., IPR2014-01355,
`
`Paper No. 21, Final Written Decision at 15-16 (PTAB Nov. 19, 2015) (citing KSR,
`
`550 U.S. at 418).
`
`Poulin is already a complete method and system for obtaining permission
`
`from a user for location-based services, and Petitioner does not explain how or
`
`why a POSITA would have felt any need, desire, motivation, or reason to modify
`
`Poulin. See KSR, 550 U.S. at 418. Poulin can be used to obtain consent for the
`
`disclosure of a user’s location without any modification or changes whatsoever.
`
`Williams Decl., ¶¶ 58–62. Therefore, there is no inherent reason to modify Poulin,
`
`and Petitioner and its expert cannot articulate any proper reason to modify Poulin.
`
` 21
`
`
`
`
`In fact, gratuitously adding such a notice is not obvious because it is not desirable–
`
`IPR2017-02016
`U.S. Patent No. 8,275,358
`
`
`–it makes the process and the telephone call longer and more complicated. Id. at
`
`¶ 61. The user is less likely to remain on the call and to take the desire action if
`
`required to first listen to an automated voice message that is unnecessary under
`
`Poulin. Id. at ¶¶ 60–61.
`
`The Board has previously rejected proffered motivation to modify arguments
`
`the cited prior art reference already contained the desired solution or goal:
`
`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
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
