`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`RUIZ FOOD PRODUCTS, INC.,
`
`PETITIONER,
`
`v.
`
`MACROPOINT LLC,
`
`PATENT OWNER.
`
`________________________________
`
`Case IPR2017-02016
`Patent 8,275,358
`
`________________________________
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,275,358
`UNDER 35 U.S.C. §§ 311 ET SEQ. AND
`37 C.F.R. § 42.100 ET SEQ.
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1) .......................... 2
`
`A.
`
`Real Party In Interest Under 37 C.F.R. § 42.8(b)(1) ............................. 3
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2) ..................................... 3
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................. 3
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4) ............................... 4
`
`E.
`
`F.
`
`Payment of Fees Under 37 C.F.R. § 42.15............................................ 5
`
`Certification of Word Count Under 37 C.F.R. § 42.24(d) .................... 5
`
`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a) ..................... 5
`
`IV.
`
`IDENTIFICATION OF GROUNDS FOR WHICH REVIEW IS
`
`REQUESTED UNDER 37 C.F.R. § 42.104(b)(1) .......................................... 6
`
`V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`
`UNDER 37 C.F.R. § 42.104(b)(3) .................................................................. 7
`
`VI. OVERVIEW OF THE ‘358 PATENT ............................................................ 8
`
`A.
`
`State of Technology at the Time of the Alleged Invention ................... 8
`
`B.
`
`Summary of the Disclosure of the Claimed Subject Matter ............... 10
`
`C.
`
`Summary of the Prosecution of US 8,275,358 .................................... 12
`
`VII. OVERVIEW OF THE PRIOR ART ............................................................. 14
`
`A.
`
`Summary of U.S. Patent Application Publication No.
`
`2002/0115453 to Poulin et al. ............................................................. 14
`
`B.
`
`Summary of U.S. Patent No. 6,591,242 to Karp et al. ........................ 15
`
`
`
`i
`
`
`
`
`
`VIII. HOW THE CONSTRUED CLAIMS ARE UNPATENTABLE
`
`UNDER 37 C.F.R. § 42.104(b)(4) ................................................................ 16
`
`A.
`
`Level of Skill in the Art ....................................................................... 16
`
`B.
`
`Claims 1, 3-13, 15-19, 21-30 are rendered obvious under 35
`
`U.S.C. § 103 by Poulin ........................................................................ 16
`
`C.
`
`Claims 2, 14, and 20 are rendered obvious under 35 U.S.C. §
`
`103 by Poulin in view of Karp ............................................................ 54
`
`IX. CONCLUSION .............................................................................................. 58
`
`
`
`
`
`ii
`
`
`
`LIST OF EXHIBITS
`
`
`
`
`Expert Declaration of Scott Denning
`
`
`CV of Scott Denning
`
`
`
`
` Exhibit 1 001
`
`
`US. Patent No. 8,275,358 to Adelson
`
`
`
`Exhibit 1002
`
`
`Exhibit 1003
`
`
`
`
`
`
`Exhibit 1004
`
` Exhibit 1005
`
`Prosecution File History for US. Patent No. 8,275,358
`
`
`US. Patent Pub. No. 2002/0115453 to Poulin et al. (“Poulin”)
`
`Exhibit 1006 US. Patent No. 6,591,242 to Karp et al. (“Karp”)
`
`CTIA, Best Practices and Guidelines for Location-Based Services.
`
`
`Exhibit 1009 US. Patent No. 5,592,538 to Kosowsky et al. (“Kosowsky”)
`
`
`
`
`Exhibit 1007 US. Patent Publication No. 2008/0186166 to Zhou et al. (“Zhou”)
`
`
`
`
`Exhibit 1008
`
`
`
`Exhibit 1010 US. Patent Pub. No 2007/0159322 to Campbell (“Campbell”)
`
`
`
`Exhibit 1011 US. Patent No. 8,045,995 to King et al. (“King”)
`
`
`Exhibit 1012
`
`
`
`Proof of Service of Complaint of Patent Infringement, MacroPoint,
`Exhibit 1013
`LLC v Ruiz Food Products, Inc., 6:16-cv—01133 (E.D. TX) (served on
`
`Order Dismissing Complaint Without Prejudice, FourKites,
`
`Inc. v
`
`MacroPoint, LLC, Case No. 1:16-cv-02703-CAB (ND. Ohio) (entered
`
`on June 27, 2017)
`
`
`
`
`
`
`August 31, 2016)
`
`
`
`Exhibit 1014 US. Patent Publication No. 2014/0295 798 to Roach (“Roach”)
`
`iii
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner, Ruiz Foods Products Inc. (“Petitioner”), hereby respectfully
`
`requests Inter Partes Review (“IPR”) pursuant to 35 U.S.C. §§ 311 et seq. and 37
`
`C.F.R. §§ 42.100 et seq., of claims 1-30 of U.S. Patent No. 8,275,358 (“the ‘358
`
`patent”) filed March 1, 2012 to Adelson. See Ex. 1001.
`
`The ‘358 patent purports to claim methods and systems of providing notice
`
`to and receiving consent from a user of a mobile device during an automated
`
`telephone call. The notice and consent relate to obtaining and disclosing location
`
`information of the user’s mobile device. Yet, the process of notifying and
`
`obtaining consent from an individual is not inventive (and could be done through
`
`face to face conversation without the use of any technology). Moreover, the ‘358
`
`patent acknowledges that the wireless telecommunications industry had already put
`
`out guidelines for location based services requiring “user notice and consent.” Ex.
`
`1001 at 1:55-2:3.
`
`The additional claim elements of providing notice and receiving consent
`
`within the context of an automated telephone call does nothing to impart
`
`patentability in light of the ‘358 patent’s 2012 filing date. This has been
`
`accomplished for decades via live customer service representatives. The Interactive
`
`Voice Response (IVR) technology was used to provide automated interaction
`
`based on user responses long before the ‘358 patent was filed. Indeed, the
`
`
`
`1
`
`
`
`
`
`utilization of IVR with location based services was widely used and had been
`
`practiced more than a decade before the ‘358 patent was filed. Furthermore, the
`
`specification of the ‘358 patent does not assert to have created any of the
`
`telecommunications technology that enables the communication claimed by the
`
`‘358 patent. See Ex. 1001 at 11:29-12:51 (invention can be implemented with
`
`generic computer, processor, disk, bus, communications interfaces, and network
`
`environment); 14:36-41 (generic software).
`
`In sum, the ‘358 patent tries to claim the well-known idea of notice and
`
`consent using automated phone call technology that existed decades before the
`
`‘358 patent was filed. The claimed elements, either individually or as an ordered
`
`combination, recite no more than routine steps of data collection and organization
`
`using generic computer components and conventional computer data processing
`
`activities. Taken individually or in combination, the recited limitations neither
`
`improve the functions of the mobile device itself, nor provide specific
`
`programming, tailored software, or even meaningful guidance over the prior art.
`
`Thus, as discussed below, there is nothing recited in claims 1-30 of the ‘358 patent
`
`that is patentable over what is disclosed and taught by the prior art.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(a)(1)
`
`Petitioner satisfies each requirement for Inter Partes Review of the ‘358
`
`patent pursuant to 37 C.F.R. § 42.8(a)(1).
`
`
`
`2
`
`
`
`
`
`A. Real Party In Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The Real Party in Interest is Ruiz Food Products, Inc., which has a principal
`
`place of business at 501 S Alta Ave, Dinuba, California 93618. For purposes of
`
`this Petition and for the avoidance of disputes, Petitioner also identifies as an
`
`additional real party in interest, FourKites, Inc., a Delaware corporation having a
`
`principal place of business at 1 N. Dearborn Suite 810, Chicago, Illinois 60602.
`
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`There is a currently pending litigation in the Eastern District of Texas styled
`
`MacroPoint, LLC v Ruiz Food Products, Inc., 6:16-cv-01133 (E.D. TX) involving
`
`the ‘358 patent. The complaint for this litigation was served on Petitioner on
`
`August 31, 2016. Ex. 1013 at 2. The ‘358 patent was previously the subject of
`
`FourKites, Inc. v MacroPoint, LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio).
`
`However, this case has been terminated following the dismissal of the complaint
`
`without prejudice on June 27, 2017. See Ex. 1012.
`
`Petitioner is concurrently filing an Inter Partes Review Petition on U.S.
`
`Patent No. 9,429,659, which is also assigned to Patent Owner.
`
`C. Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`Petitioner is represented by the following counsel:
`
`
`
`3
`
`
`
`
`
`Lead Counsel
`
`First Back-up Counsel
`
`James P. Murphy (Reg. No. 55,474)
`Polsinelli PC
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, Texas 77002
`Telephone: 713.374.1631
`jpmurphy@polsinelli.com
`
`Matt Frontz (Reg. No. 65,198)
`Polsinelli PC
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, Texas 77002
`Telephone: 713.374.1662
`mfrontz@polsinelli.com
`
`Additional Back-up Counsel
`
`Ryan Murphy (Reg. No. 66,285)
`Polsinelli PC
`1401 I Street NW
`Suite 800
`Washington, DC 20005
`Telephone: 202.626.8373
`rmurphy@polsinelli.com
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney has been filed with
`
`this Petition.
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b)(4)
`
`Service information for lead and back-up counsel is as follows:
`
`James P. Murphy
`Polsinelli PC
`1000 Louisiana Street, Fifty-Third Floor
`Houston, Texas 77002
`
`Petitioner also consents to service by e-mail at the above e-mail addresses provided
`
`for lead and back-up counsel.
`
`
`
`4
`
`
`
`
`
`E.
`
`Payment of Fees Under 37 C.F.R. § 42.15
`
`
`
`Petitioner authorizes the U.S. Patent & Trademark Office to charge Deposit
`
`Account No. 50-1662 for the fee set in 37 C.F.R. § 42.15(a) for this Petition and
`
`further authorizes for any additional fees to be charged to this Deposit Account.
`
`F. Certification of Word Count Under 37 C.F.R. § 42.24(d)
`
`
`
`Petitioner certifies that the word count in this Petition is 12,564 words, as
`
`counted by the word-processing program (Microsoft Word 2010) used to generate
`
`this Petition, where such word count excludes the table of contents, table of
`
`authorities, mandatory notices, certificate of service, appendix of exhibits, and this
`
`certificate of word count. This Petition is in compliance with the 14,000 word limit
`
`set forth in 37 C.F.R. § 42.24(a)(1)(i).
`
`III. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(a)
`
`Petitioner certifies that the ‘358 patent is available for Inter Partes Review.
`
`Petitioner is not barred or estopped from requesting an Inter Partes Review of the
`
`‘358 patent claims on the grounds identified in this Petition. 37 C.F.R. § 42.104(a).
`
`Although real party in interest, FourKites, Inc., filed a complaint for
`
`declaratory judgment of invalidity against the ‘358 patent, that complaint was
`
`voluntarily dismissed without prejudice on June 27, 2017 under Fed. R. Civ. P.
`
`41(a). Exhibit 1012, Order granting dismissal without prejudice. “The dismissal of
`
`an action without prejudice leaves the parties as though the action had never been
`
`
`
`5
`
`
`
`
`
`brought.” Graves v. Principi, 294 F.3d 1350, 1356 (Fed. Cir. 2002); see also
`
`Holloway v. U.S., 60 Fed. Cl. 254, 261 (2004), aff’d 143 F. App’x 313 (Fed. Cir.
`
`2005) (treating civil action dismissed without prejudice “as if it never existed.”)
`
`As such, the dismissal without prejudice of the declaratory judgment
`
`“nullifies the effect of the service of the complaint and, as a consequence, does not
`
`bar” Petitioner from pursuing this IPR under 35 U.S.C. § 315(a)(1). Oracle Corp.
`
`et al. v Click-to-Call Tech. LP, IPR 2013-00312, Paper #26 at 17 (PTAB Oct. 30,
`
`2013) (Precedential); see also Xilinx, Inc. v Papst Licensing GMBH & Co., KG,
`
`IPR2016-00104, Paper #8 at 11-15 (PTAB May 6, 2016) (finding declaratory
`
`judgment of invalidity dismissed without prejudice does not trigger bar under §
`
`315(a)(1)); accord ResMed Ltd., et al. v. Fisher & Paykel Healthcare Ltd.,
`
`IPR206-01718, Paper #12 at 3-5 (PTAB March 13, 2017).
`
`Therefore, in light of the dismissal without prejudice under Fed. R. Civ. P.
`
`41(a) of the declaratory judgment action and the filing of this IPR Petition within
`
`one year of service of the complaint in MacroPoint, LLC v Ruiz Food Products,
`
`Inc., Petitioner is not barred from requesting IPR of the ‘358 patent.
`
`IV.
`
`IDENTIFICATION OF GROUNDS FOR WHICH REVIEW IS
`REQUESTED UNDER 37 C.F.R. § 42.104(b)(1)
`
`Petitioner asserts that claims 1-30 of the ‘358 patent are unpatentable based
`
`on the following grounds:
`
`
`
`6
`
`
`
`
`
`Ground 1: Claims 1, 3-13, 15-19, 21-30 are rendered obvious under 35
`
`U.S.C. § 103 by Poulin.
`
`Ground 2: Claims 2, 14, and 20 are rendered obvious under 35 U.S.C. §
`
`103 by Poulin in view of Karp.
`
`V. HOW THE CHALLENGED CLAIMS ARE TO BE CONSTRUED
`UNDER 37 C.F.R. § 42.104(b)(3)
`
`In an IPR, claim terms are to be given their broadest reasonable construction
`
`consistent with the specification. In re Cuozzo Speed Techs., LLC, 793 F.3d 1268,
`
`1276, 1279 (Fed. Cir. 2015), aff’d, 136 S.Ct. 2131, 2142 (2016); 37 C.F.R.
`
`§ 42.100(b); Official Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766
`
`(Aug. 14, 2012). “[C]laim terms need only be construed ‘to the extent necessary to
`
`resolve the controversy.’” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`
`1361 (Fed.Cir. 2011) (quoting Vivid Techs., Inc. v. Am Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed.Cir. 1999)).
`
`Petitioner believes that each of the terms within the challenged claims can be
`
`given their plain and ordinary meaning, and that no constructions are needed “to
`
`resolve the controversy.”
`
`
`
`7
`
`
`
`
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`VI. OVERVIEW OF THE ‘358 PATENT
`
`A.
`
`State of Technology at the Time of the Alleged Invention1
`
`The idea of providing notice and obtaining consent to location based
`
`services from wireless device users was a well-known solution to existing privacy
`
`concerns as acknowledged by the ‘358 patent. Ex. 1001 at 1:52-2:3; Ex. 1002 at
`
`¶¶45-46. Indeed, the ‘358 patent quotes from existing CTIA2 Guidelines that “users
`
`must receive ‘meaningful notice...’” and “must also ‘consent to the use or
`
`disclosure of location information’ and ‘have the right to revoke consent.’” Id. at
`
`1:63-2:3 (quoting Ex. 1008 at 1) (“These Guidelines rely on two fundamental
`
`principles: user notice and consent….”); see also Ex. 1001 at 5:56-58 (quoting
`
`CTIA Guidelines in describing a revocation of consent embodiment of the alleged
`
`invention); Ex. 1002 at ¶¶45-46.
`
`
`
`
`
`1 Cited references not named in a ground of rejection are cited for the purpose of
`
`showing the state of the art and the background knowledge of a person of ordinary
`
`skill in the art (“POSITA”). Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed.
`
`Cir. 2013).
`
`2 CTIA is a trade group that represents the U.S. wireless communications industry.
`
`See https://www.ctia.org/about; see also Ex. 1001 at 1:58-59.
`
`
`
`8
`
`
`
`
`
`
`
`The ‘358 patent also acknowledges existing solutions to notice and consent
`
`“have been developed that make use of web browsers and SMS texting capabilities
`
`of mobile devices” but asserts that “some of these systems have proved
`
`inconvenient.” Ex. 1001 at 2:4-8.3 The purported solution to this known problem
`
`provided by the ‘358 patent is to provide notification and consent within a
`
`telephone call. Yet, the ‘358 patent provides no details on what technological
`
`challenges were overcome in order to implement within a telephone call a solution
`
`admitted to already be known for web browsers or SMS messages. Ex. 1002 at
`
`¶47.
`
`
`
`Indeed, the use of automated IVR to provide information and receive signals
`
`within a telephone call was well-established by March 1, 2012. See e.g., Ex. 1009
`
`at 1:19-28 (in 1993 stating, “IVR provides an interactive voice session between
`
`customer and business… the customer interacts using a telephone keypad or
`
`through voiced statements.”). Moreover, the use of IVR as an equivalent to
`
`websites or SMS to sign-up and consent to share information about the user was
`
`well-known prior to the ‘358 patent. See e.g., Ex. 1010 at [0033] (“A person can
`
`
`
`3 However, despite criticizing SMS messages, the claims expressly encompass
`
`signals of consent and revocation of consent being provided by SMS. See e.g., id.
`
`at dependent claims 5 and 11 (and hence independent claim 1).
`
`
`
`9
`
`
`
`
`
`use a number of methods to sign up for the service and interact (for example: web,
`
`mobile, messaging, IVR, call centre).”); [0048] (example using SMS to obtain
`
`consent of user to join group sharing status information of the user); Ex. 1002 at
`
`¶¶48-49.
`
`
`
`Thus, the inventor of the ‘358 patent neither invented the idea of providing
`
`notice and obtaining consent to share location information nor invented the
`
`technology to provide information and receive signals within a phone call. Ex.
`
`1002 at ¶50. As discussed below, the implementation of a notice and consent
`
`process within a telephone call would have been obvious to a POSITA.
`
`B.
`
`Summary of the Disclosure of the Claimed Subject Matter
`
`Figure 1 of the ‘358 patent, reproduced below, is system 100 for providing
`
`user notification and receiving a user’s consent to obtain location information of
`
`mobile device 110. Ex.1001 at 3:56-67; 4:1-2. Communications interface 120,
`
`which can be associated with a telephone number, can participate in telephone calls
`
`with mobile device 110. Id. at 3:56-67; 4:1-2. During the telephone call, validation
`
`logic 130 identifies mobile device 110 by an identifier that is received from and
`
`associated with mobile device 110. Id. at 4:3-26; Ex. 1002 at ¶36.
`
`
`
`10
`
`
`
`
`
`
`
`Id. at FIG. 1
`
`System 100 transmits an automated voice message to mobile device 110,
`
`which can include one or both of the following options. Id. at 4:27-29. In the first
`
`option, the automated voice message notifies the user that the user’s consent would
`
`“result in location information of the mobile device 110 being disclosed.” Id. at
`
`4:29-35. In the second option, the automated voice message directs the user to a
`
`web address location. Id. at 4:35-40. The web address location includes a
`
`notification that the user’s consent would “result in location information of the
`
`mobile device 110 being disclosed.” Id; Ex. 1002 at ¶37.
`
`After the automated voice message is transmitted to mobile device 110,
`
`communications interface 120 receives data from mobile device 110 that indicates
`
`whether the user has provided consent to sharing the location information of
`
`
`
`11
`
`
`
`
`
`mobile device 110. Id. at 4:44-50. For example, mobile device 110 can transmit
`
`data that the user provided consent, such as pressing a button or speaking a
`
`particular word or phrase. Id. at 4:51-67; 5:1-4. The request includes the mobile
`
`device’s identifier, and location provider 150 can be any party that has access to
`
`that mobile device’s location information. Id. at 5:13-32. Once communications
`
`interface 120 receives the location information, it then communicates the location
`
`information to obtaining party 160. Id. at 5:33-35; Ex. 1002 at ¶38.
`
`C.
`
`Summary of the Prosecution of US 8,275,358
`
`The ‘358 patent was filed on March 1, 2012 as Application No. 13/409,281
`
`(“the ‘281 application”). Applicant received a Non-Final Office Action dated May
`
`15, 2012 rejecting all the claims as being obvious. Ex.1004 at 74-82. On June 4,
`
`2012, the Applicant and the Examiner held a telephonic interview, where the
`
`Examiner stated
`
`that while
`
`the proposed amendments were discussed,
`
`“specifically, the receiving consent step following the second option needs to be
`
`more defined.” Ex. 1004 at 93.
`
`Thereafter, the Applicant amended claims 1, 3, 9, 13, 19, and 27 in a
`
`Response filed on June 19, 2012. Ex. 1004 at 96-103. The Applicant rewrote the
`
`independent claims to perform the limitations within a telephone call (e.g.,
`
`identifying the mobile device “within the telephone call” in claims 1, 13, and 19;
`
`transmitting an automated voice message “during the telephone call” for consent
`
`
`
`12
`
`
`
`
`
`purposes in claims 1 and 19 (or revocation of the consent in claim 13); and
`
`receiving a signal including data indicating consent “during the telephone call” in
`
`claims 1 and 19 (or revocation of consent in claim 13)). Id. The Applicant also
`
`added “wherein the location at which to find the notice is represented by a web
`
`address” to claims 1 and 19. Id.
`
`In addition to the amendments, the Applicant argued in the Response that
`
`claim 1 overcame the combination of references because the prior art combination
`
`does not teach “the series of steps of claim 1, which take place within the context
`
`of a telephone call (not just a voice message, but a live, real time telephone call),”
`
`“the series of steps of claim 13, which take place within the context of a telephone
`
`call,” and “the various logics and interfaces that form the system of claim 19
`
`working within the context of a telephone call.” Ex.1004 at 104-106.
`
`In the Notice of Allowance mailed June 28, 2012, the Examiner stated that
`
`the claims were allowable “for the reasons as set forth in the applicant’s response.”
`
`Ex.1004 at 117.
`
`As will be discussed in detail below, the prior art relied on in this IPR
`
`provide for the relevant limitations to occur within a telephone call. Thus, the prior
`
`art relied on here is not cumulative to the prior art discussed in the prosecution
`
`history.
`
`
`
`13
`
`
`
`
`
`VII. OVERVIEW OF THE PRIOR ART
`
`A.
`
`Summary of U.S. Patent Application Publication No.
`2002/0115453 to Poulin et al.
`
`
`
`U.S. Patent Application No. 2002/0115453 is entitled “Method and
`
`System for Location Based Wireless Communication Services.” Ex. 1005. Poulin
`
`was filed on February 15, 2002 and was published on August 22, 2002.
`
`Accordingly, Poulin is prior art to the ‘358 patent under at least 35 U.S.C. §
`
`102(b); Ex. 1002 at ¶39.
`
`Poulin teaches a location based wireless service that enables subscribers to
`
`request the location and status information of other subscribers. Ex. 1005 at [0005].
`
`For example, a communication service permits a subscriber to “define and
`
`maintain lists of wireless devices for which a subscriber may request location and
`
`status information.” Id. at [0006]. In the employment context, the service
`
`“permit[s] employers to track progress and manage workloads by providing an
`
`overall picture of employee location, permitting employees to provide their current
`
`status, and permitting employers and employees to communicate via short message
`
`service or otherwise.” Id. at [0022]; Ex. 1002 at ¶40.
`
`Subscribers can control whether to disclose their location and/or status
`
`through their profile. Id. at [0023]. Subscribers “maintain a profile that defines
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`permission on when, where, and how other authorized subscribers (members of the
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`group) may obtain an individual subscriber’s own location and status information,”
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`
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`14
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`
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`thus granting or denying permission according
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`to a specified
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`time or
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`geography/area. Id. The communication service also allows a subscriber to
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`override rules associated with the subscriber’s profile by permitting the subscriber
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`to “globally turn ON or turn OFF permission to be located and statused.” Id. at
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`[0024]; Ex. 1002 at ¶41.
`
`The location based wireless service can be activated by a “service activation
`
`request message [that can be] the call signaling generated when a subscriber calls a
`
`service activation number.” Id. at [0030]; Ex. 1002 at ¶42.
`
`B.
`
`Summary of U.S. Patent No. 6,591,242 to Karp et al.
`
`U.S. Patent No. 6,591,242 is entitled “Visit Verification Method and
`
`System” Ex. 1006. Karp was filed on April 15, 1999 and issued on July 8, 2003.
`
`Accordingly, Karp is prior art to the ‘358 patent under at least 35 U.S.C. § 102(b);
`
`Ex. 1002 at ¶43.
`
`Karp teaches a system for tracking clients as they visit various locations. Ex.
`
`1006 at Abstract. Karp also teaches that an “ANI is used to identify the calling
`
`telephone” and that the ANI can be used in place of a client identifier, and utilized
`
`by a system to determine a phone number of a phone used to make an incoming
`
`call prior to the call being answered. Ex. 1006 at 1:31; 7:36-54; 7:66-8:8; Ex. 1002
`
`at ¶44.
`
`
`
`15
`
`
`
`
`
`VIII. HOW THE CONSTRUED CLAIMS ARE UNPATENTABLE UNDER
`37 C.F.R. § 42.104(b)(4)
`
`A. Level of Skill in the Art
`
`In view of the subject matter of the ‘358 patent, a POSITA was typically a
`
`person who had at least a bachelor’s degree in electrical engineering, computer
`
`engineering, computer science, or a related discipline, and at least two to three
`
`years of
`
`relevant experience
`
`in
`
`the
`
`fields of
`
`location/navigation and
`
`telecommunications, such as experience with mobile networks and devices.
`
`Additional education might substitute for some of the experience and substantial
`
`experience might substitute for some of the educational background. Ex. 1002 at
`
`¶¶33-35.
`
`Scott Denning is well versed in the technology of the ‘358 patent and was
`
`personally working on location based systems at the time of the alleged invention.
`
`Ex. 1002 at ¶¶8-15. As such, Mr. Denning is qualified to opine on the level of skill
`
`and the knowledge of a POSITA at the time of the alleged invention.
`
`B. Claims 1, 3-13, 15-19, 21-30 are rendered obvious under 35 U.S.C.
`§ 103 by Poulin
`
`Poulin discloses using an IVR system to send automated voice messages to a
`
`user to obtain the user’s profile information, including obtaining permission from
`
`the user to allow other authorized individuals to obtain the user’s location
`
`information. However, Poulin never expressly sets out what the content of the
`
`
`
`16
`
`
`
`
`
`automated messages sent to a user would include, leaving such specific
`
`implementation details up to those of ordinary skill in the art. Thus, it would have
`
`been obvious for the automated voice messages to include a notice to the user that
`
`providing permission to be tracked by authorized individuals will result in the
`
`location information of the user’s mobile device being disclosed. One of skill in
`
`the art would utilize such a notice to ensure that the user was aware of the effect of
`
`granting permission to be tracked.
`
`Claim 1
`
`A computer implemented method for receiving consent
`1.
`from a user of a mobile device to obtaining location information
`of the mobile device, the method comprising:
`
`Poulin teaches that a user can interact with location based service center
`
`(“LBSC”) 100, giving it parameters the service manager 304 can use to track the
`
`location of the user’s device, i.e., providing consent for obtaining location
`
`information. Ex. 1005 at [0022]; [0023]; FIG. 6; Ex. 1002 at ¶¶ 52-53.
`
`a)
`
`participating in a telephone call with the mobile device;
`
`Poulin teaches that “the operation begins with a call received in the LBSC
`
`100 from a wireless device….” Ex. 1005 at [0065]; [0068]; FIG. 6, 7; Ex. 1002 at
`
`¶¶54-55. Therefore, the wireless device, i.e., mobile device, participates in a
`
`telephone call.
`
`
`
`
`
`17
`
`
`
`
`
`b) within the telephone call, identifying the mobile device at
`least in part by obtaining an identifier associated with the mobile
`device;
`
`Poulin teaches that “[r]esponsive 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.” Ex. 1005 at [0065]; [0069]; Ex. 1002 at ¶¶56-59.
`
`Further, Poulin teaches that the device identification takes place via the MSIDN
`
`(mobile service identification number), and that “[t]hose skilled in the art will
`
`recognize numerous methods of identifying the device….” Ex. 1005 at [0065]; see
`
`also Ex. 1005 at [0062]; Ex. 1002 at ¶¶57-58. Therefore, within the telephone call,
`
`the service manager receives data allowing the service manager to identify the
`
`device, including the MSIDN and other known methods of identifying mobile
`
`telephones during a call. Ex. 1002 at ¶¶57-58.
`
`transmitting to the mobile device during the telephone call
`c)
`an automated voice message communicating to the user of the
`mobile device at least one of:
`
`Poulin teaches a system that comprises an “interactive voice response unit
`
`(‘IVR’)” and that the “service manager 304 could use the IVR 309 to interact with
`
`the subscribers” via the interface system 105. Ex. 1005 at [0038]; [0042]; [0046]
`
`Ex. 1002 at ¶¶60-63. The IVR can also be used to “obtain the profile information
`
`from the subscribers.” Ex. 1005 at [0046]; [0066]. Finally, the profile information
`
`“defines permission on when, where, and how other authorized subscribers
`
`
`
`18
`
`
`
`
`
`(members of the group) may obtain an individual subscriber’s own location and
`
`status information.” Ex. 1005 at [0023]; Ex. 1002 at ¶60.
`
`Poulin also teaches that a message can be sent “after a pre-determined period
`
`of time, the service manager 304 provides a service deactivation message to the
`
`device 102.” Ex. 1005 at [0073]; Ex. 1002 at ¶¶71-74. The deactivation message
`
`includes text stating “press 1 to continue the service or 2 to sign-off.” Id.
`
`Communicating to the user that she can press “1 to continue the service” is
`
`transmitting a message to the mobile device. Ex. 1002 at ¶72. It would be obvious
`
`to a POSITA that this message can be conveyed to the subscriber via the IVR
`
`during a phone call. Ex. 1005 at [0046]; Ex. 1002 at ¶75.
`
`Accordingly, the service manager transmits to the mobile device during the
`
`telephone call an automated voice message via the IVR, that can include a request
`
`to obtain and share the subscriber’s location information. Ex. 1002 at ¶¶60-62.
`
`a notice including information indicating that consenting to
`d)
`the obtaining of the location information of the mobile device
`would result in the location information of the mobile device being
`disclosed; and a location at which to find the notice, wherein the
`location at which to find the notice is represented by a web
`address corresponding to a website where, during the telephone
`call, the user can find the notice indicating to the user that
`consenting to the obtaining of the location information of the
`mobile device would result in the location information of the
`mobile device being disclosed;
`
`As discussed with respect to element “c” above, Poulin teaches that the
`
`service manager 304 can transmit, via the interface system 105, a voice message to
`
`
`
`19
`
`
`
`
`
`the wireless devices, 102-104, using the IVR 309 to obtain subscriber profile
`
`information. Ex. 1005 at [0023]; [0041]; [0042]; [0046]; Ex. 1002 at ¶¶64-69.
`
`Further, it would have been obvious to a POSITA based on the teachings of Poulin
`
`that the IVR message can include notice by asking for permission to share the
`
`location information with other subscribers. Ex. 1002 at ¶67. For example, Poulin
`
`allows the user to “define[] permission on when, where, and how other authorized
`
`subscribers (members of the group) may obtain an individual subscriber’s own
`
`location and status information.” Ex. 1005 at [0023]; Ex. 1002 at ¶66.
`
`Poulin also teaches that a message can be sent “after a pre-determined period
`
`of time, the service manager 304 provides a service deactivation message to the
`
`device 102.” Ex. 1005 at [0073]; Ex. 1002 at ¶¶71-74. The deactivation message
`
`includes text stating “press 1 to continue the service or 2 to sign-off.” Ex. 1005 at
`
`[0073]; Ex. 1002 at ¶¶71-72. Communicating to the user that she can press “1 to
`
`continue the service” is transmitting a message to the mobile device that puts the
`
`subscriber on notice that by pressing “1” or similar input, the system will collect
`
`location data and share that data with other users in line with the subscriber’s
`
`profile. Ex. 1002 at ¶72. It would be obvious to a POSITA that this message can be
`
`conveyed to the subscriber via the IVR during a phone call. Ex. 1005 at [0046];
`
`Ex. 1002 at ¶¶73-75.
`
`
`
`20
`
`
`
`
`
`Moreover, the Poulin system is designed to “link[] proximately located
`
`subscribers.” Ex. 1005 at [0002]; [0022]; [0023]; [0067]; Ex. 1002 at ¶66.
`
`Accordingly, one of the purposes of a subscriber granting permission to the service
`
`manager, including during the registration process, is to share the subscriber’s
`
`location information with other subscribers. Ex. 1002 at ¶¶66-67. By providing the
`
`subscriber the parameters of when, where, and how their data is going to be shared
`
`when permission is granted, the subscriber
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