`
`
`
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`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
`
`________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................ 1
`
`II.
`
`Patent Owner Does Not Contest Claims 13-18 Are Obvious ......................... 3
`
`III. Claims 1-12 and 19-30 Are Obvious ............................................................. 3
`
`A. Motivation to modify Poulin ............................................................... 5
`
`B.
`
`No reliance on hindsight ................................................................... 10
`
`IV. CONCLUSION .......................................................................................... 12
`
`
`
`
`
`i
`
`
`
`
`
`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)
`
`Exhibit 1014 U.S. Patent Publication No. 2014/0295798 to Roach (“Roach”)
`
`
`
`ii
`
`
`
`
`
`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.
`
`
`
`iii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s Response (“PO Resp.”) presents identical arguments,
`
`worded in almost the exact same way, as Patent Owner’s Preliminary Response.
`
`The Board already considered and dismissed these arguments in its Institution
`
`Decision for this case, see Paper #7, Institution Decision at 11-14, and Patent
`
`Owner does not even attempt to rebut the Board’s preliminary findings. Patent
`
`Owner has presented no basis for the Board to reach a different outcome in its
`
`Final Written Decision.
`
`Just as in the preliminary response, Patent Owner argues that the Petition
`
`provides no reason to modify Poulin without hindsight. PO Resp. at 20-24.
`
`However, as the Board found in the Institution Decision, the Petition provides a
`
`reason to modify Poulin that does not rely on hindsight. Institution Decision at 13-
`
`14 (“Thus, we do not agree with Patent Owner’s argument that modification of
`
`Poulin relies on hindsight or lacks a persuasive reason for the modification of
`
`Poulin”) (citing to the Petition at 20-21, Ex. 1002 at ¶¶66-68 and Ex. 1005 at ¶¶2,
`
`22, 23 and 67).
`
`The PO Resp. does not meaningfully address, let alone overcome, any of the
`
`evidence supporting the grounds for obviousness provided in the Petition and cited
`
`by the Board in the Institution Decision. Indeed, Patent Owner did not depose Mr.
`
`Denning, Petitioner’s expert, to challenge the testimony he provided for why the
`
`
`
`1
`
`
`
`
`
`claims were obvious. As set forth in the Petition, Poulin’s system provides notice
`
`that consent will result in location data being disclosed to others but does not
`
`explicitly teach that this notice is transmitted as automated voice message during
`
`the telephone call. See Pet. at 16-23. However, it would have been obvious to a
`
`person of ordinary skill in the art at the time of the invention (“POSITA”) to apply
`
`Poulin’s teaching of using an IVR system to transmit the notice during a call. Id.
`
`While Patent Owner submitted a declaration in support of its PO Resp., its
`
`expert—Mr. Williams—merely repeated the same arguments from Patent Owner’s
`
`Preliminary Response. When cross examined at deposition, Mr. Williams agreed
`
`with Mr. Denning that Poulin teaches all but one of the limitations in the
`
`independent claims, disagreeing only that the Poulin fails to teach “explicit notice,”
`
`for example stating “‘you are being tracked,’ there is nothing like that in Poulin.”
`
`Ex. 1002 at ¶51; Ex. 1020 at 26:23-28:18, 29:24-31:21, 32:24-25 (“For my
`
`viewing of this, I viewed it [notice] as needing to be explicit.”).
`
`However, since notice is given its plain and ordinary meaning, there is no
`
`basis to allege that the specific text “you are being tracked” or some other explicit
`
`statement is required of the claims. See Institution Decision at 6-7. Accordingly,
`
`there is no credible dispute that Poulin renders obvious the claims under the
`
`broadest reasonable interpretation of the claims.
`
`
`
`2
`
`
`
`
`
`For the reasons set forth below, the Board should maintain the findings from
`
`the Institution Decision and issue a Final Written Decision finding claims 1-30 are
`
`unpatentable.
`
`II.
`
`Patent Owner Does Not Contest Claims 13-18 Are Obvious
`
`Patent Owner does not contest that claims 13-18 are obvious over the
`
`grounds presented in the Petition. PO Resp. at 17-18. Rather than contest
`
`patentability of issued claims 13-18, Patent Owner proposes substitute amended
`
`claims to replace the issued claims as set forth in Patent Owner’s Motion to
`
`Amend. Id.1 For the reasons set forth in the Petition, and not contested by Patent
`
`Owner, the Board should find that claims 13-18 are unpatentable as obvious. See
`
`Petition at 37-44 (claims 13, 15-18 obvious over Poulin) and 54-56 (claim 14
`
`obvious over Poulin in view of Karp).
`
`III. Claims 1-12 and 19-30 Are Obvious
`
`Patent Owner’s arguments are directed to independent claims 1 and 19,
`
`while the other claims are asserted to be patentable based upon their dependency
`
`from claims 1 or 19. PO Resp. at 18-24.2 Patent Owner argues that the Petition
`
`
`
`1 The Board should not accept the proposed substitute claims for the reasons set
`
`forth in Petitioner’s Opposition to the Motion to Amend filed concurrently.
`
`2 Mr. Williams’ Declaration appears to separately address claims 3, 8, 12, 13, 21,
`
`and 26. However, there is no corresponding argument in the Response for those
`
`
`
`3
`
`
`
`provides no reason to modify Poulin without hindsight. In particular, Patent
`
`Owner states:
`
`
`
`Neither Petitioner nor Mr. Denning identify any reason—apart from
`
`the identified problem solved by the technology of the ’358 patent—
`
`why a POSITA would have been motivated to modify Poulin. Poulin
`
`already provides a means for obtaining consent. Petitioner’s
`
`conclusory argument is nothing but an attempt to use the invention of
`
`the ’358 patent to justify modifying Poulin to arrive at claim 1 of the
`
`’358 patent. This is classic, impermissible hindsight.
`
` PO Resp. at 24.
`
`Yet, this assertion is belied by Patent Owner’s own admission that the
`
`“Petitioner and Mr. Denning offer two rationales for why a POSITA allegedly
`
`would be motivated to modify Poulin.” PO Resp. at 20 (citing Ex. 1002 at ¶¶65-
`
`68). These cited paragraphs of Mr. Denning’s declaration discuss only Poulin and
`
`not the ’358 patent and explain why a POSITA would have used IVR to provide
`
`the notice as an automated voice message instead of Poulin’s embodiment of using
`
`
`
`claims. Hence, the Board should not consider any of Mr. Williams’ testimony for
`
`those claims. See IPR2014-00077, Apple Inc. v. Rensselaer Polytechnic Inst.,
`
`Decision on Req. for Rehearing, Paper No. 14 at 5 (June 13, 2014) (“We decline to
`
`consider information presented in a supporting declaration, but not discussed in a
`
`petition,…”). Therefore, claims 3, 8, 12, 13, 21 are unpatentable for the reasons
`
`presented in the Petition.
`
`
`
`4
`
`
`
`
`
`text messages and web pages to communicate with users. Thus, rather than the
`
`Petition failing to “identify any reason” other than hindsight, the main complaint
`
`the Patent Owner seems to have is that it disagrees with Mr. Denning’s testimony
`
`of how a POSITA would view Poulin. However, Patent Owner did not depose Mr.
`
`Denning and Mr. Denning’s testimony stands unrebutted.
`
`Furthermore, Patent Owner’s expert agrees with Mr. Denning that there are
`
`many reasons to choose IVR over other alternatives when creating a system. Mr.
`
`Williams stated that it was known in the art at the time of the filing of the ’358
`
`patent that “Interactive voice response [IVR] was one of the key automation tools”
`
`and that older demographics would be “more comfortable with an IVR” than web
`
`based technologies. Ex. 1020 at 10:7-20, 39:1-9 and 40:6-17.
`
`Accordingly, both experts agree that providing notice via IVR was a known
`
`solution that required no hindsight and was not first identified by the ’358 patent.
`
`A. Motivation to modify Poulin
`
`The suggestion and motivation to modify Poulin is based at least on the
`
`teachings of Poulin itself and the knowledge of a POSITA. Sibia Neurosciences,
`
`Inc. v. Cadus Pharmaceutical Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (“In
`
`appropriate circumstances, a single prior art reference can render a claim
`
`obvious…. suggestion or motivation may be derived from the prior art reference
`
`
`
`5
`
`
`
`
`
`itself, from the knowledge of one of ordinary skill in the art, or from the nature of
`
`the problem to be solved.”) (emphasis added) (internal citations omitted).
`
`With regards to Poulin’s teaching of the notice, Mr. Denning testified that:
`
`1) Poulin explicitly suggests the system “could use the IVR” to interact with
`
`subscribers to administer the communication service and obtain profile information
`
`(citing Ex. 1005 at [0046] and [0042]); 2) a POSITA would consider Poulin’s
`
`teachings of asking permission to share location information as a notice that
`
`consent will result in location information being collected and shared (citing Ex.
`
`1005 at [0002], [0022], [0023], and [0067]); and 3) in light of these teachings a
`
`POSITA would have recognized IVR as “one choice when designing the system”
`
`and that the “IVR message can and should include a message that asks for
`
`permission to share the subscriber’s location” “during registration and whenever
`
`the user updates her profile.” Ex. 1002 at ¶¶48-50, 64-69; see also Petition at 9-10,
`
`18-23 (citing Ex. 1002 at ¶¶64-69 and Ex. 1005 at ¶¶[0002], [0022], [0023],
`
`[0042], [0046] and [0067]).
`
`Therefore, although the primary embodiment in Poulin is based on
`
`interacting with subscribers through text messages, a POSITA would have
`
`considered Poulin’s explicit teaching that the interaction with subscribers could be
`
`through IVR and, applying the knowledge of a POSITA, would have designed the
`
`system to provide a voice message requesting permission to share location with
`
`
`
`6
`
`
`
`
`
`others (i.e., notice that consenting will result in location information being
`
`disclosed) during a phone call to register or update profile information. See KSR
`
`Int’l Co. v Teleflex Inc., 550 U.S. 398, 421 (2007) (“A person of ordinary skill is
`
`also a person of ordinary creativity, not an automaton.”).
`
`Patent Owner argues that a POSITA would not have modified Poulin
`
`because “Poulin can be used to obtain consent for the disclosure of a user’s
`
`location without any modification or changes whatsoever.” PO Resp. at 21 (citing
`
`Ex. 2002 at ¶¶58-62). However, the fact that Poulin already teaches obtaining
`
`consent supports the finding of obviousness, not the opposite. Indeed, Petitioner
`
`directly relies on Poulin’s teaching for providing notice and obtaining consent,
`
`which is provided in the context of text messages, as support for why it would have
`
`been obvious to implement consent and notice as an automated voice message in
`
`the context of IVR. Petition at 18-23 (citing Ex. 1002 at ¶¶64-69 and Ex. 1005 at
`
`¶¶[0002], [0022], [0023], [0042], [0046] and [0067]).
`
`Further, Patent Owner fails to grapple with any of the independent evidence
`
`relied upon in the Petition and by Mr. Denning. The Petition and Mr. Denning
`
`provided ample independent evidence that IVRs and notice using IVRs was well
`
`known in the art at the time of the filing of the ’358 patent. For example, evidence
`
`was provided that IVRs were well known and that IVRs are equivalent to websites
`
`or SMS messages for signing up or consenting to location based services. Petition
`
`
`
`7
`
`
`
`
`
`at 9-10 and Ex. 1002 at ¶¶48-49 (relying on Ex. 1009 and 1010 for ubiquity of IVR
`
`systems and their interchangeability with text-based systems.). Ex. 1010 even
`
`states that users are contacted for consent to track. Ex. 1010 at [0032] (“Each
`
`person can be located just once using LBS (location based services) and are
`
`preferably just once or if necessary more than once asked if they are OK using a
`
`messaging service.”). The consent can be asked for via “… email, instant
`
`messaging, mobile instance messaging, SMS (short message service), MMS,
`
`paging, outgoing IVR, or other communication service or technology.” Ex. 1010 at
`
`[0035] (emphasis added). All of this uncontroverted evidence is the background
`
`with which a POSITA would view the Poulin reference.
`
`Finally, the Petition does not “gratuitously” add a notice to Poulin (PO Resp.
`
`at 22), but instead modifies Poulin’s text-based notice message with a notice
`
`implemented via the IVR system as suggested by Poulin. Moreover, Patent
`
`Owner’s argument regarding a user being “less likely to remain on the call and to
`
`take the desired action if required to listen to an automated voice message that is
`
`unnecessary under Poulin” is baseless. PO Resp. at 22. The notice messages relied
`
`upon in the Petition are not “unnecessary” but are instead messages that ask for
`
`permission to share the subscriber’s location which an integral part of the operation
`
`and design of Poulin. Ex. 1002 at ¶¶66-68. Without subscriber’s permission to
`
`share location, the system of Poulin would have no purpose.
`
`
`
`8
`
`
`
`
`
`In addition, Patent Owner presents no evidence or data to support Mr.
`
`Williams’ assertion that a voice message requesting permission to share location
`
`data would result in subscribers not continuing a telephone call. Thus, this
`
`testimony “is entitled to little or no weight.” 37 C.F.R. § 42.65. Further, Mr.
`
`Denning has testified that the opposite is true, in that “users would avoid services
`
`that did not treat their privacy seriously, and one way to show that a company is
`
`treating user’s privacy seriously is to provide the user the ability to grant, deny,
`
`and revoke permission to track the user.” Ex. 1002 at ¶¶45-46.
`
`Mr. Denning’s testimony is also supported by background references,
`
`including the guidelines to protect user privacy set forth by CTIA, a leading trade
`
`group for U.S. wireless communication industry. Ex. 1002 at ¶¶45-46 (citing Ex.
`
`1008 at 1). In fact, this prior art CTIA Guidelines document -- and its focus on
`
`privacy concerns -- is explicitly discussed in the specification of the ’358 patent.
`
`Ex. 1001, Col. 1, line 58-Col. 2, line 3. Mr. William’s agreed that a company
`
`looking to follow the CTIA guidelines or the company’s own privacy policy would
`
`have looked to provide notice to the users of its services. Ex. 1020 at 42:13-22,
`
`43:19-44:16 and 61:1-5.
`
`Therefore, all of the evidence in this proceeding, including testimony from
`
`both parties experts, supports the finding that Poulin provides a notice to its users
`
`and a POSITA would have reason to provide that notice via IVR.
`
`
`
`9
`
`
`
`
`
`B. No reliance on hindsight
`
`Patent Owner’s hindsight arguments are misplaced. As just discussed, the
`
`evidence showing that a POSITA would have been motivated to modify Poulin
`
`does not rely on any disclosure from the ’358 patent.
`
`Notwithstanding the lack of any reliance on the ’358 patent, Patent Owner
`
`tries to manufacture hindsight by asserting that the prior art “does not suggest that
`
`a lack of notice during the call was a problem to be solved at all. Instead, this
`
`‘problem’ was first identified in the ’358 patent, and it is impermissible hindsight
`
`to use the invention itself to supply the reason to modify the prior art.” PO Resp.
`
`at 23. 3 This argument fails for a number of reasons.
`
`First, it is belied by the evidence of the Petition showing that notice and
`
`consent was a widely known issue relative to location based services prior to the
`
`
`
`3 It is questionable if this purported problem was identified by the ’358 patent at
`
`all. The only problem identified in the ’358 patent is that, for existing web browser
`
`and SMS solutions, “some of these systems proved inconvenient and may require
`
`advanced mobile devices or extensive training.” Ex. 1001 at 4-8 (emphasis added).
`
`This criticism is not directed to when the notice is provided (e.g., during a
`
`telephone call) and does not even appear directed towards all web browser or SMS
`
`systems given the fact the specification uses the word “some” and the claims
`
`expressly recite using “an SMS message.” See e.g., Ex. 1001 at claims 5, 11, 16,
`
`and 29.
`
`
`
`10
`
`
`
`
`
`filing of the ’358 patent. Pet. at 8-9. Indeed, the ’358 patent acknowledges this
`
`fact when it discusses the pre-existing industry guidelines as “provid[ing] a
`
`framework based on two principles: user notice and consent.” Ex. 1001 at 1:52-
`
`2:3; Ex. 1002 at ¶¶45-46 (citing to Ex. 1008); see also Ex. 1020 at 42:13-22 and
`
`43:19-44:16. Moreover, IVR technology that could be used to transmit automatic
`
`voice messages to provide notice and receive a signal indicating consent existed
`
`well before the ’358 patent. Pet. at 9 (citing Ex. 1002 at 48-49, Ex. 1009 at 1:19-
`
`28, and Ex. 1010 at [0033].); Ex. 1015 at ¶4; Ex. 1020 at 37:19-22, 65:6-66:8.
`
`Perhaps most damning of all is that Poulin alone, which was filed a decade before
`
`the ’358 patent, describes providing notice and consent with a suggestion to
`
`implement it using IVR. Ex. 1002 at ¶¶64-69 and Ex. 1005 at ¶¶ [0002], [0022],
`
`[0023], [0042], [0046] and [0067].
`
`Second, even assuming the ’358 patent was the first to identify the problem
`
`and solution of providing notice during a telephone call, the problem to be solved
`
`is only one basis to find motivation. Patent Owner simply ignores the motivation
`
`found in Poulin and the knowledge of one of skill in the art which are the basis of
`
`motivation provided in the Petition. Sibia Neurosciences, 225 F.3d at 1356
`
`(“suggestion or motivation may be derived from the prior art reference itself, from
`
`the knowledge of one of ordinary skill in the art, or from the nature of the problem
`
`to be solved”) (emphasis added); see also KSR 550 U.S. 398 at 415 (obviousness
`
`
`
`11
`
`
`
`
`
`determined based on “expansive and flexible approach”). In particular, Patent
`
`Owner presents no argument for how following the teaching of Poulin, provided a
`
`decade before the filing of the ’358 patent, or applying the knowledge of one of
`
`skill in the art about notice, consent and IVR that pre-dates the ’358 could be
`
`hindsight.
`
`IV. CONCLUSION
`
`In view of the foregoing, claims 1-30 of the ’358 patent are not patentable
`
`and Petitioner requests that the Board issue an Final Determination finding claims
`
`1-30 of the ’358 patent unpatentable.
`
`
`
`
`
`Date: August 31, 2018
`
`
`
`
`
`
`
`
`
`
`
`POLSINELLI PC
`1000 Louisiana Street,
`Suite 6400
`Houston, Texas 77002
`P: 713-374-1600
`F: 713-374-1601
`
`
`Respectfully submitted,
`
`/James P. Murphy/
`
`
`
`POLSINELLI PC
`James P. Murphy
`Reg. No. 55,474
`Matthew Frontz
`Reg. No. 65,198
`Ryan Murphy
`Reg. No. 66,285
`
`
`
`
`12
`
`
`
`
`
`CERTIFICATE OF WORD COUNT
`
`Petitioner certifies that the word count in this Reply to Patent Owner’s
`
`
`
`Response is 2,766 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 5,600 word limit set forth in 37 C.F.R. § 42.24(c)(3).
`
`
`
`
`
`
`
`
`/Sabrina Alaniz/
`Sabrina Alaniz
`POLSINELLI PC
`1000 Louisiana, Sixty-Fourth Floor
`Houston, Texas 77002
`Tele: (713) 374-1600
`Fax: (713) 374-1601
`
`
`
`13
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the accompanying Reply to
`
`
`
`Patent Owner’s Response, has been served on August 31, 2018 via email directed
`
`to the following email addresses of record:
`
`Mark Johnson
`mjohnson@rennerotto.com
`
`Luis Carrion
`lcarrion@rennerotto.com
`
`Kyle Fleming
`kfleming@rennerotto.com
`
`
`
`
`
`
`
`
`
`
`
`/Sabrina Alaniz/
`Sabrina Alaniz
`POLSINELLI PC
`1000 Louisiana, Sixty-Fourth Floor
`Houston, Texas 77002
`Tele: (713) 374-1600
`Fax: (713) 374-1601
`
`
`
`
`14
`
`
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