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
`
`________________________________
`
`OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`RUIZ FOOD PRODUCTS, INC.,
`
`PETITIONER,
`
`v.
`
`MACROPOINT LLC,
`
`PATENT OWNER.
`
`________________________________
`
`Case IPR2017-02016
`Patent 8,275,358
`
`________________________________
`
`OPPOSITION TO PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction .................................................................................................. 1
`
`II.
`
`Proposed Substitute Claims Are Abstract Ideas under 35 U.S.C. §101.......... 1
`
`A.
`
`Alice Step One .................................................................................... 2
`
`B.
`
`Alice Step Two.................................................................................... 7
`
`C.
`
`Prior §101 court decisions on patent related to the ’358 patent ........... 9
`
`III.
`
`Proposed Substitute Claims Lack Written Description Support and are
`
`Indefinite under §112 .................................................................................. 11
`
`A.
`
`Substitute claims lack written description support............................. 11
`
`B.
`
`“The mobile device of a driver by a carrier” is indefinite .................. 15
`
`IV. Substitute claims 31-60 have been improperly broadened ........................... 15
`
`V.
`
`Substitute Claims 31-60 are Obvious .......................................................... 16
`
`A.
`
`Reasons to combine Poulin with Cone (with or without Karp): ......... 18
`
`B.
`
`Obtaining Location Information of the Mobile Device of a
`
`Driver by a Carrier so That the Carrier May Assign Freight for
`
`the Driver to Haul (Substitute Claim 31 and 49) ............................... 19
`
`C.
`
`Receiving from the carrier a code that the carrier obtained from
`
`another carrier that serves as verification that the driver has
`
`consented to disclosing the location information of the mobile
`
`device (Substitute Claims 31 and 49) ................................................ 21
`
`D. A “second” telephone call (Substitute claim 43) ............................... 24
`
`E.
`
`Substitute claims 32-42, 44-48 and 50-60 ......................................... 25
`
`
`
`i
`
`
`
`
`
`VI. CONCLUSION .......................................................................................... 25
`VI.
`CONCLUSION .......................................................................................... 25
`
`
`
`
`
`ii
`ii
`
`
`
`
`
`LIST OF EXHIBITS
`
`
`
`Exhibit 1001 U.S. Patent No. 8,275,358 to Adelson
`
`Exhibit 1002 Expert Declaration of Scott Denning
`
`Exhibit 1003 CV of Scott Denning
`
`Exhibit 1004 Prosecution File History for U.S. Patent No. 8,275,358
`
`Exhibit 1005 U.S. Patent Pub. No. 2002/0115453 to Poulin et al. (“Poulin”)
`
`Exhibit 1006 U.S. Patent No. 6,591,242 to Karp et al. (“Karp”)
`
`Exhibit 1007 U.S. Patent Publication No. 2008/0186166 to Zhou et al. (“Zhou”)
`
`Exhibit 1008
`
`CTIA, Best Practices and Guidelines for Location-Based Services,
`
`May 23, 2012.
`
`Exhibit 1009 U.S. Patent No. 5,592,538 to Kosowsky et al. (“Kosowsky”)
`
`Exhibit 1010 U.S. Patent Pub. No 2007/0159322 to Campbell (“Campbell”)
`
`Exhibit 1011 U.S. Patent No. 8,045,995 to King et al. (“King”)
`
`Exhibit 1012 Order Dismissing Complaint Without Prejudice, FourKites, Inc. v
`
`MacroPoint, LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio) (entered
`
`on June 27, 2017)
`
`Exhibit 1013 Proof of Service of Complaint of Patent Infringement, MacroPoint,
`
`LLC v Ruiz Food Products, Inc., 6:16-cv-01133 (E.D. TX) (served on
`
`August 31, 2016)
`
`
`
`iii
`
`
`
`
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`Exhibit 1014 U.S. Patent Publication No. 2014/0295798 to Roach (“Roach”)
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`Exhibit 1015 Declaration of Scott Denning in support of Petitioner’s Opposition to
`
`Patent Owner’s Motion to Amend
`
`Exhibit 1016 US Patent Application Publication No. 2008/0045232 to Cone
`
`(“Cone”)
`
`Exhibit 1017 Guester, M. and Liu, X, “Protecting Privacy in Continuous Location-
`
`Tracking Applications”, IEEE COMPUTER SOCIETY, 1540-7993/04
`
`(March/April 2004). (“Guester”)
`
`Exhibit 1018 U.S. Patent No. 4,785,408 to Britton et al.
`
`Exhibit 1019 Rebuttal Expert Report of Ivan Zatkovich
`
`Exhibit 1020 Deposition Transcript of David H Williams
`
`Exhibit 1021 U.S. Patent No. 5,199,062 to Von Meister et al.
`
`Exhibit 1022 U.S. Patent No. 5,592,538 to Kosowsky et al.
`
`Exhibit 1023 U.S. Patent No. 6,442,391 to Johansson et al.
`
`
`
`iv
`
`
`
`
`
`I.
`
`Introduction
`
`The Board should deny Patent Owner’s Motion to Amend because all of the
`
`substitute claims, 31-60, are unpatentable under each of §101, §112, and §103.
`
`First, the claims are directed to the abstract idea of receiving consent and do not
`
`include an inventive concept. Second, the proposed amendments lack written
`
`description support and are indefinite. Third, the proposed amendments broaden
`
`the claims. Finally, all substitute claims are obvious over the prior art cited in the
`
`Petition in light of the additional teaching of Cone.1 Each of these separate grounds
`
`to deny Patent Owner’s Motion to Amend is presented below.
`
`II.
`
`Proposed Substitute Claims Are Abstract Ideas under 35 U.S.C. §101
`
`Patent-eligible subject matter does not include abstract ideas. Alice Corp. v.
`
`CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). “The ‘abstract ideas’ category
`
`embodies ‘the longstanding rule’ that ‘[a]n idea of itself is not patentable.’” Id. at
`
`2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Here, all of the
`
`substitute claims 31-60 are patent ineligible because they are directed to the
`
`abstract idea of receiving consent and do not include an inventive concept.
`
`The Supreme Court in Alice set forth a two-step “framework for
`
`
`1 Exhibit 1016, US Patent Application Publication No. 2008/0045232 to Cone
`
`(“Cone”). Cone was published on Feb. 21, 2008, more than one year before the
`
`’358 patent was filed, qualifying as Cone as prior art under at least §102(b).
`
`
`
`1
`
`
`
`
`
`distinguishing patents that claim . . . abstract ideas from those that claim patent-
`
`eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step
`
`under Alice is to “determine whether the claims at issue are directed to a patent-
`
`ineligible concept,” such as an abstract idea. Id. at 2355–56. The second step of
`
`Alice is the “search for an inventive concept—i.e., an element or combination of
`
`elements that is sufficient to ensure that the patent in practice amounts to
`
`significantly more than a patent upon the ineligible concept itself.” Id. at 2355.
`
`Claims that fail both steps are unpatentable under 35 U.S.C. § 101. Two-Way
`
`Media Ltd. v. Comcast Cable Cmmc’n, LLC, 874 F.3d 1329, 1332 (Fed. Cir. 2017).
`
`A. Alice Step One
`
`The substitute claims at issue in this proceeding are directed to the abstract
`
`idea of receiving consent. Patent Owner’s expert agrees with this as well. Ex. 1020
`
`at 78:2-4 (“This claim [claim 31] is directed to the idea of obtaining consent,
`
`correct? A. Correct.”); Ex. 1015 at ¶13. The specification of the ’358 patent
`
`recognizes this fact when it describes the problem as “user’s privacy may be at risk
`
`if location information is misused or disclosed without the authorization or
`
`knowledge of the user” and a known solution provided to address this problem by
`
`the wireless telecommunications industry was to provide notice and obtain consent
`
`of users to the disclosure of their location information.” Ex. 1001 at 1:52-2:3.
`
`Although the particular field of use addressed by the substitute claims of the
`
`
`
`2
`
`
`
`
`
`’358 patent relate to the disclosure of location information of mobile devices,
`
`limiting an abstract idea like receiving consent to a particular field of use or
`
`“environment does not render the claims any less abstract.” Affinity Labs of Tex.,
`
`LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016). The same is true
`
`even if the substitute claims as amended are found to be limited to the field of
`
`vehicle or freight location tracking due to the recitation of “driver” and “carrier.”
`
`Likewise,
`
`the recitation of well-known and conventional hardware
`
`components (e.g., mobile device), or steps
`
`that require well-known and
`
`conventional
`
`physical
`
`activity
`
`(participating
`
`in
`
`a
`
`telephone
`
`call,
`
`transmitting/receiving data) do not render a claim directed to an abstract idea any
`
`less abstract. Alice, 134 S.Ct. at 2358 (claims performed “in the physical, rather
`
`than purely conceptual real…is beside the point.”); Ex. 1020 at 52:4-9.
`
`As the specification of the ’358 patent makes clear, the components recited
`
`in the claims require nothing more than using conventional mobile devices, such as
`
`cell phones, and generic, general-purpose computers in well-understood, routine
`
`ways. See, e.g., Ex. 1001 at 4:3–26, 4:51–5:3, 6:42–57 (generic cell phones); id. at
`
`11:29–31 (generic computers); id. at 12:29–48 (operation in a conventional
`
`network environment using any of a number of known, standardized
`
`communication protocols); id. at 14:36–41 (implementation using standard
`
`computer languages and tools). The ’358 patent does not disclose any new devices
`
`
`
`3
`
`
`
`
`
`or algorithms for monitoring locations or obtaining consent.
`
`Substitute claim 31 is representative of all substitute claims because they are
`
`all directed to the same abstract idea of receiving consent and they all recite well-
`
`known and generic concepts rather than any inventive concept. Ex. 1015, Reply
`
`Declaration, ¶13; Ex. 1020 at 78:2-4 and 52:4-9.
`
`Firstly, the preamble of claim 31 recites a method “for receiving consent
`
`from a user.” The proposed amendment to the preamble merely indicates an
`
`intended purpose of the claims (“assign freight for the driver”). Even assuming the
`
`preamble is limiting, this amendment at best limits the abstract idea to a particular
`
`field but does not render the method of receiving consent any less abstract.
`
`The first body limitation recites participating in the telephone call with
`
`mobile device. Both experts agree that this step was well-known and conventional.
`
`Ex. 1015 at ¶ 14; Ex. 1020 at 52:15-53:8. The claim next recites identifying the
`
`mobile device. As indicated in the specification, this was performed using well-
`
`known techniques including automatic number identification (ANI) or numerous
`
`other serial or identification numbers known in the art. Ex. 1001 at 4:11-26; Ex.
`
`1015 at ¶ 15; Ex. 1020 at 53:9-54:7 and 55:14-18. Thus, as admitted in the ’358
`
`patent and acknowledged by the experts, these limitations rely on conventional
`
`hardware performing their conventional processes.
`
`Next, the claim recites transmitting an automated voice message during the
`
`
`
`4
`
`
`
`
`
`call. This limitation is performed using well-known and conventional IVR systems
`
`that both experts agree were in use long before the ’358 patent. Ex. 1015 at ¶¶ 16-
`
`17; Ex. 1020 at 56:23-58:15; see also Ex. 1020 at 59:19-23 and 61:15-62:2
`
`(agreeing these types of notices were transmitted prior to date of invention via text
`
`or websites). The message includes nothing more than informational content: either
`
`1) a notice that consenting would result in disclosure of location information or 2)
`
`a web address where such notice can be found. The content of a message is the
`
`essence of an abstract idea and these limitations do not involve the improvement of
`
`any technology. Ex. 1015 at ¶ 18; Praxair Distrib., Inc. v Mallinckrodt Hosp.
`
`Prods., 890 F.3d 1024, 1032 (Fed. Circ. 2018) (“Claim limitations directed to the
`
`content of information…is not patent eligible subject matter”).
`
`Finally, the claims recite receiving a signal from a mobile device and
`
`receiving a code from a carrier, both of which indicate consent. Again, receiving
`
`information, whether in the form of signals or codes, was well-known long before
`
`the ’358 patent. Ex. 1015 at ¶¶ 19-20; Ex. 1020 at 62:3-16, 64:19-65:5 and 66:3-8.
`
`The fact that the signal and code indicate or verify consent merely relates to the
`
`content of the data in the signal/code and does not involve the application of any
`
`technology. Praxair 890 F.3d at 1032. Likewise, the fact the code is “obtained
`
`from another carrier” is a conventional transmission of data and involved no
`
`improvement in technology. Ex. 1015 at ¶¶ 19-21.
`
`
`
`5
`
`
`
`
`
`Therefore, substitute claim 31 does not even superficially involve an
`
`improvement in technology whether the limitations are considered individually or
`
`as a whole. Rather, the claim merely recites the use of conventional technology
`
`performing routine functions in order to implement the abstract idea of receiving
`
`consent. Ex. 1015 at ¶¶ 21-22; Ex. 1020 at 52:4-9. Indeed, other than the
`
`insignificant use of an “automated” voice message, claim 31 could be performed
`
`entirely by two humans talking over a telephone. Ex. 1015 at ¶ 23; See Mortg.
`
`Grader, Inc. v. First Choice Loans Servs., Inc., 811 F.3d 1314, 1324 (Fed. Cir.
`
`2016) (a claim performed by humans without a computer is an abstract idea).
`
`While the above discussion relates to substitute claim 31, it is representative
`
`of the only other substitute independent claim as Patent Owner agrees. See Mot to
`
`Amend at 11 (“substitute claim 49, which is generally the system equivalent of the
`
`method of substitute claim 31.”). Substitute claim 31 is also representative of the
`
`substitute dependent claims 32-48 and 50-60, because these dependent claims do
`
`not change the abstract idea but merely add insignificant post-solution activity.
`
`The substitute dependent claims further limit claims 31 and 49 to the
`
`identification of the mobile device using the well-known ANI number (32, 44, 50),
`
`periodic transmission of the notice (33, 51), received signals include performing
`
`actions like pressing a button or voice commands (34, 45, 47, 52), received signals
`
`are SMS messages that include specific terms like “share” or “hide” (35, 41, 46,
`
`
`
`6
`
`
`
`
`
`53, 59), receiving a request for location information including via an application
`
`programming interface (36, 37, 54, 55), communicating location information to a
`
`freight service provider (38 and 56), providing notice that consent is revocable (39,
`
`43, 57), and receiving a signal that revokes consent (40, 42, 43, 47, 48, 58, 60).
`
`All of the limitations in the substitute dependent claims either employ well-
`
`known
`
`technology
`
`to perform
`
`its conventional
`
`function
`
`(ANI number,
`
`transmitting/receiving/communication data, SMS messages, API’s, generate signal
`
`by taking actions/voice commands), describe data contained in signals (“share,”
`
`“hide,” or revocation information), or identify recipients of information (freight
`
`service provider). Ex. 1015 at ¶¶ 24-32. None of them alters the abstract idea
`
`recited in claim 1 of receiving consent. Rather, each dependent claim merely adds
`
`token implementation details on how the consent is received. Ex. 1015 at ¶33.
`
`B. Alice Step Two
`
`The substitute claims also fail step two of Alice as there is no inventive
`
`concept recited. Alice, 134 S. Ct. at 2355. The Federal Circuit routinely finds
`
`claims that are directed to an abstract idea that “merely requir[e] generic computer
`
`implementation” fail the requirement for an inventive concept. Smart Syst.
`
`Innovations, LLC v Chi. Transit Auth., 873 F.3d 1364, 1374 (Fed. Cir. 2017);
`
`buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); Intellectual
`
`Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017);
`
`
`
`7
`
`
`
`
`
`Mortg. Grader, 811 F.3d at 1324–25; Content Extraction Transmission LLC v.
`
`Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014).
`
`The claims here barely require any computer implementation at all, only
`
`requiring an “automated voice message.” Ex. 1015 at ¶23. Every other limitation
`
`can be done by humans communicating via voice over a telephone (participating in
`
`a phone call, identifying the mobile device, transmitting a notice, receiving a signal
`
`indicating consent, receiving a code that serves as verification of consent). Ex.
`
`1015 at ¶¶21-22. The limitation reciting an automated voice message is merely
`
`reciting the conventional use of IVR systems which transmit automated voice
`
`messages to provide information to users or generated responses by users. IVR
`
`systems were well-known long before the ’358 patent. Ex. 1015 at ¶¶4, 16-17; Ex.
`
`1020 at 56:23-58:15.
`
`The dependent claims do not recite any additional hardware or an inventive
`
`concept. They also recite conventional implementation of technologies to transmit,
`
`receive, or otherwise communicate data. The fact that the content of the data may
`
`be related to tracking the location of a mobile device is irrelevant as the data is
`
`generated, processed, and communicated using conventional means.
`
`Finally, the claims here do not improve “the functioning of the computer
`
`itself,” “overcome a problem specifically arising in the realm of computer
`
`networks,” “attempt to solve a challenge particular to the Internet,” or otherwise
`
`
`
`8
`
`
`
`
`
`recite a concept the Federal Circuit has found to be patent eligible. Ex. 1015 at ¶33.
`
`See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); DDR
`
`Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); In re
`
`TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). Rather, at
`
`most any use of a computer in the substitute claims is “merely invoked as a tool”
`
`rendering the claims patent ineligible. Enfish, 822 F.3d at 1335-36.
`
`C. Prior §101 court decisions on patent related to the ’358 patent
`
`The Federal Circuit upheld a District Court’s finding that another patent
`
`assigned to Patent Owner, USPN 8,604,943, that shares a similar specification and
`
`claim language as the ’358 patent, was ineligible under §101. MacroPoint, LLC v.
`
`FourKites, Inc., 2015 WL 6870118 at *5 (N.D. Ohio Nov. 6, 2015), aff’d 671 Fed.
`
`Appx. 780 (Mem) (Fed. Circ. 2016). Like the ’358 patent, the ’943 patent recited
`
`limitations for an automated voice message and receiving consent which Patent
`
`Owner argued showed an inventive concept. The District Court disagreed holding:
`
`According to plaintiff [MacroPoint], the patents-in-suit contain a third
`
`inventive concept. Plaintiff points out that claim 1 of the ’943 patent
`
`provides a “signal including data that prompts an automated message
`
`to be communicated to a use of the communications device” and a
`
`“signal including data indicative of consent from the user” regarding
`
`the location of the device. According to plaintiff, this solves the
`
`
`
`9
`
`
`
`
`
`technical problem of obtaining consent for location information from
`
`the owner of the device… [T]he patents-in-suit incorporate pre-
`
`existing industry standards for notice and consent in relation to the use
`
`of tracking systems. As such, the obtaining of consent was already
`
`known in the industry before the issuance of the patents-in-suit. The
`
`patents simply use a computer to “transmit” and “receive” data in
`
`order to accomplish this task. These limitations –either individually or
`
`as an ordered combination– do not transform the abstract idea into a
`
`patent-eligible application.
`
`MacroPoint, 2015 WL 6870118 at *5. The District Court expressly held that
`
`limiting the claims to the freight tracking industry did not render them patentable:
`
`The overall gist of plaintiff’s argument is that the concept of using a
`
`third-party intermediary to locate freight and obtain consent is an
`
`inventive concept because this method has not been used in the freight
`
`tracking industry. But, “[e]ven if some steps in the claims ‘were not
`
`previously employed in this art is not enough–standing alone–to
`
`confer patent eligibility upon the claims at issue.’” Essocite, Inc. V.
`
`Clickbooth.com, LLC, 2015 WL 1428919 (C.D. Cal. Feb. 11,
`
`2015)(quoting Ultramerical, 772 F.3d at 716)).
`
`Id. at *6.
`
`
`
`10
`
`
`
`
`
`While the District Court’s finding, summarily affirmed by the Federal
`
`Circuit pursuant to Federal Circuit Rule 36, may not be binding authority with
`
`regards to this inter partes review of the ’358 patent, the Board should find it
`
`persuasive given the similarities of the issues.
`
`III. Proposed Substitute Claims Lack Written Description Support and are
`Indefinite under §112
`
`35 U.S.C. §112 includes at least two separate requirements for patentability:
`
`written description and definiteness. 35 U.S.C. §112 ¶¶ 1-2 (now §112 (a) and (b)).
`
`The proposed substitute claims fail to meet either requirement.
`
`A. Substitute claims lack written description support
`
`To provide written description support, “the specification must describe an
`
`invention understandable to [a POSITA] and show that the inventor actually
`
`invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
`
`1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he hallmark of written description is
`
`disclosure” and “a description that merely renders the invention obvious does not
`
`satisfy the requirement.” Id. at 1351-52.
`
`Here, the specification does not disclose “receiving from the carrier a code
`
`obtained from another carrier that serves as verification that the driver has
`
`consented to disclosing the location of the mobile device.” See Mot. to Amend,
`
`Claim Appendix for claims 31 and 49 at pages ii and vi-vii (claim 49 recites
`
`“receives” instead of “receiving”). This amendment requires a code that serves to
`
`
`
`11
`
`
`
`
`
`verify the consent of a first entity (“the driver”) received from a second entity (“the
`
`carrier”) and was obtained from a third entity (“another carrier”).
`
`Patent Owner asserts support for this limitation is found in paragraphs
`
`[0058] and [0062] of its application. Mot. to Amend at 10-11 and 13-14. However,
`
`neither paragraph provides the necessary support. Ex. 1015 at ¶34. A fact that
`
`Patent Owner’s expert conceded. See Ex. 1020 at 72:17-21(discussing paragraph
`
`[0058] stating, “No, it doesn't say that specifically. Does the phrasing include that,
`
`not at all.”) and 72:22-73:2 (discussing paragraph [0062], “doesn’t have anything
`
`to do with – or doesn’t talk about multiple carriers or anything like that.”)
`
`1.
`
`Paragraph [0058]
`
`Paragraphs [0058] describes the embodiment of Figure 4, where the user
`
`interface displays a “Partner/Code” field. Paragraph [0058] describes the code as
`
`corresponding to a partner company or driver but provides no discussion or support
`
`that “the code is a verification that the driver has consented to disclose the location
`
`the mobile device.” Indeed, as shown in Figure 4, the same partner code is used for
`
`three different phone numbers, some of which are being tracked and others that are
`
`“hidden.” Thus, the partner code cannot determine whether the user associated
`
`with the phone number consented to being tracked. Ex. 1015 at ¶34-35.
`
`Furthermore, although paragraph [0058] states “carrier A may subcontract
`
`with another carrier NAT” it does not provide any discussion that a code was
`
`
`
`12
`
`
`
`
`
`involved in this process. In particular, there is no disclosure that a code was
`
`received from carrier A or that carrier A obtained the code from carrier NAT. Ex.
`
`1015 at ¶36. In short, paragraph [0058] does not contain any discussion about how
`
`the “Partner/Code” described therein is obtained to provide support for a code that
`
`is “obtained from another carrier.”
`
`2.
`
`Paragraph [0062]
`
`Paragraph [0062] states that “the user may enter a Partner/Code that serves
`
`as verification that the user has obtained authorization from the partner to obtain
`
`location information of the mobile device.” Ex. 1004 at 23. While this disclosure
`
`superficially resembles the proposed amendment, there are important differences.
`
`The disclosure in paragraph [0062] only relates to two entities (“the user” and “the
`
`partner”) while the proposed amendment involves three (“the carrier,” “another
`
`carrier,” and “the driver”). Ex. 1015 at ¶37. Assuming the “user” is asserted to
`
`provide support for the “carrier” then the “partner” cannot simultaneously provide
`
`support for both the “another carrier” and the “driver” limitations.
`
`If obtaining authorization from the “partner” is the alleged support for
`
`obtaining the code from “another carrier” then there is no support that the code
`
`“serves as verification that the driver has consented.” Conversely, if obtaining
`
`authorization from the “partner” is the alleged support that the code “serves as
`
`verification that the driver has consented” then there is no support for obtaining the
`
`
`
`13
`
`
`
`
`
`code from “another carrier.” Ex. 1015 at ¶¶38-40.
`
`Therefore, there is no disclosure in paragraph [0062] or elsewhere that
`
`shows the inventor of the ’358 patent actually invented, “receiving from the carrier
`
`a code obtained from another carrier that serves as verification that the driver has
`
`consented to disclosing the location of the mobile device.” Ex. 1015 at ¶41. At
`
`most, this limitation might be an obvious variant over what was actually disclosed,
`
`but “a description that merely renders the invention obvious does not satisfy the
`
`[written description] requirement.” Ariad at 1352.
`
`3.
`
`No support for receiving both a signal indicated consent and a
`code that verifies consent
`
`The substitute claims also recite both “receiving…a code…that the driver
`
`has consented” and “receiving from the mobile device….a signal including data
`
`indicating consent.” See Mot. to Amend at i. Yet, the specification never discloses
`
`support for receiving both a signal and a code, let alone where they are used to
`
`confirm the same information—consent that the location of the mobile device can
`
`be disclosed. Ex. 1015 at ¶¶42-43. Nor is it clear from the context of any
`
`description in the specification why or how a signal and a code would have both
`
`been employed in the manner provided in substitute claims 31 and 49 as
`
`acknowledged by Patent Owner’s expert. Ex. 1020 at 76:10-15 (“I'm not sure
`
`exactly what the purpose was.”). Therefore, the substitute claims lack written
`
`description support for this proposed limitation under ¶112.
`
`
`
`14
`
`
`
`
`
`B.
`
`“The mobile device of a driver by a carrier” is indefinite
`
`The standard of indefiniteness for IPR proceedings is set forth in In re
`
`Packard, which states “a claim is indefinite when it contains words or phrases
`
`whose meaning is unclear.” 751 F.3d 1307, 1314 (Fed. Cir. 2014). However, even
`
`under Nautilus, the claims would still be indefinite for the reasons provided below.
`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (claim must
`
`inform a POSITA of scope with “reasonable certainty”).
`
`Patent Owner seeks to add the phrase “the mobile device of a driver by a
`
`carrier” in all the substitute claims but it is unclear and uncertain how this phrase
`
`affects the scope of the claims. See e.g., Mot. to Amend at i and vi. In particular,
`
`“the mobile device of a driver by a carrier” has no normal understood meaning. It
`
`is unclear what type of relationship between driver and carrier is meant by this
`
`phrase. Ex. 1015 at ¶44; see also Ex. 1020 at 48:25-49:19 (meaning of this phrase
`
`is “pretty wide open”). Therefore the meaning of the substitute claims are unclear
`
`and do not inform a POSITA with reasonable certainty as to the scope.
`
`IV. Substitute claims 31-60 have been improperly broadened
`
`Claim 31 recites both a “driver” and a “user of a mobile device.” Patent
`
`Owner’s expert conceded the claim could be understood to mean the driver and
`
`user of the mobile device were different entities. See Ex. 1020 at 47:14-17 (“Q. So
`
`is the user and the driver the exact same entity in this claim? A. It’s not clear that
`
`
`
`15
`
`
`
`
`
`it’s one or the other. It could be interpreted as yes or no.”) and 73:9-10. As claim
`
`31 does not require the driver and the user to be the same, the claim scope is broad
`
`enough to include subject matter not covered by original claim 1.
`
`Substitute claim 49 is overtly broadened as it removed the limitation for the
`
`“user of the mobile device” and replaced it with the “driver.” While the “driver”
`
`recited in substitute claim 49 might be the user of the mobile device, this is not
`
`required by claim 49. Thus, the scope of driver in claim 49 is broad enough to
`
`include individuals that are not the “user of the mobile device.” Ex. 1015 at ¶45.
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`The substitute claims 32-28 and 50-60 that depend from substitute claims 31
`
`and 49 would likewise be broadened through their dependency.
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`V.
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`Substitute Claims 31-60 are Obvious
`
`Patent Owner’s Motion to Amend is contingent on a finding by the Board
`
`that claims 1 and/or 19 are unpatentable. Mot. to Amend at 1. However, the
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`amendments proposed in substitute claims 31 and 49 represent trivial differences
`
`from issued claim 1 and 19. Ex. 1015 at ¶¶ 4-6, 46. The substitute claims do not
`
`require any different technology to be implemented compared to the issued claims
`
`but simply attempt to limit the claims to a particular use case, where a “code” is
`
`received from a freight carrier that verifies consent of the driver. There is nothing
`
`new or non-obvious about this particular feature that would render the substitute
`
`claims patentable if the issued claims are found unpatentable.
`
`
`
`16
`
`
`
`
`
`The Patent Owner has amended the preamble of claims 1 and 19 to recite “a
`
`driver by a carrier so that the carrier may assign freight for the driver to haul,” and
`
`added a limitation in the body of each that recites “receive[/receiving] from the
`
`carrier a code that the carrier obtained from another carrier that serves as
`
`verification that the driver has consented to disclosing the location information of
`
`the mobile device.” Yet, issued claim 8 already recites “a freight service provider”
`
`which the Board found likely to be obvious in the Institution Decision. Inst. Dec. at
`
`16 (“On this record, we are not persuaded by Patent Owner’s argument that
`
`‘tracking freight carried by a vehicle carrying a mobile device’ is sufficiently
`
`different from the employer and employee tracking disclosed in Poulin.”). Patent
`
`Owner did not challenge this finding in its Response.
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` Thus, as provided in the Petition, Poulin’s teaching of employer-employee
`
`tracking renders obvious freight carrier-driver tracking. See Pet. at 30-31; Ex. 1005
`
`at [0006]; Ex. 1002 at ¶¶105-106; Ex. 1007 at [0249]-[0250]; see also Ex. 1015 at
`
`¶47. The further use of a code to verify consent for location tracking was also well
`
`known and taught at least by Cone. Cone teaches a subscriber can provide a
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`“network operator-independent personal location code (PLC)” which is supplied in
`
`a request for location information and used to confirm permission to see the user’s
`
`location. Ex. 1016 at [0006], [0018], [0019], and [0038]; Ex. 1015 at ¶47.
`
`The only other amendment presented in the substitute claims is in substitute
`
`
`
`17
`
`
`
`
`
`claim 43, which amends issued claim 13 to be a dependent claim and requires a
`
`second telephone call. If the Board finds issued claim 13 to be obvious, then
`
`neither the change to a dependent claim or the trivial step of a second telephone
`
`call renders substitute claim 43 to be non-obvious. Ex. 1015 at ¶48.
`
`For the reasons provided below, the Board should find that substitute claims
`
`31, 33-43, 45-49 and 51-60 are obvious over Poulin in view of Cone and substitute
`
`claims 32, 44, and 50 are obvious over Poulin in view of Karp and Cone.
`
`A. Reasons to combine Poulin with Cone (with or without Karp):
`
`Cone and Poulin are from the same field of endeavor, namely location-based
`
`tracking systems, and their combination would lead to predictable results of
`
`allowing users of Poulin to better control who has access to the user’s location
`
`using the PLC code of Cone. Ex. 1015 at ¶¶49-53. Likewise, Karp can be
`
`combined with Poulin and Cone for the same reasons identified in my original
`
`declaration, as the benefits Karp provides with respect to using the ANI to identify
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`the subscribers of Poulin are still present with the addition of Cone. Ex. 1015 at
`
`¶57; see also Ex. 1002 at ¶211. A POSITA would be motivated to combine these
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`references because the use of a code that verifies consent provides for a more
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`seamless and convenient system in Poulin.
`
`As Cone states, there are problems associated with communications between
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`networks and privacy permissions between applications. Ex. 1016 a
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