UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
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`RUIZ FOOD PRODUCTS, INC.,
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`Petitioner,
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`v.
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`MACROPOINT LLC,
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`Patent Owner.
`
`__________
`
`Case IPR2017-02016
`U.S. Patent No. 8,275,358 B1
`__________
`
`
`PATENT OWNER’S REPLY BRIEF IN SUPPORT OF
`CONTINGENT MOTION TO AMEND
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`
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`
`
`

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`UPDATED LIST OF EXHIBITS
`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
`
`Declaration of Kyle B Fleming, Esq.
`
`Kyle B. Fleming CV
`
`Complaint filed in FourKites, Inc. v MacroPoint, LLC,
`Case No. 1:16-cv-02703-CAB (N.D. Ohio)
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`Exhibit Number
`2001
`2002
`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`I.
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`THE PROPOSED CLAIMS ARE NOT INVALID UNDER § 101
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`The patented invention solved a technological problem. Location
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`information of freight is valuable to shippers, freight hauling services providers,
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`and consumers. The use of location information technology, however, raises
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`privacy issues; a user's privacy may be at risk if location information is misused or
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`disclosed without the user’s authorization or knowledge. Prior art systems created
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`to solve these privacy issues used web browsers or mobile devices’ SMS texting
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`capabilities to provide notification and obtain the user’s consent. These prior art
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`systems proved inconvenient and often required extensive user training.
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`The invention provides a unique communications interface that provides
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`notification and obtains the user’s consent in a convenient way.
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`The claims thus recite “a method for receiving consent from a user of a
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`mobile device to obtaining location information.” Like most software, the
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`invention uses algorithms. But the claim is not a method for, for example, merely
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`calculating numbers. It is a method for producing a tangible result—electronically
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`providing notification and obtaining the user’s consent for tracking her location.
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`The method is precisely the sort of “improve[ment to] an existing technological
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`process” that meets the Supreme Court’s test for patent-eligibility under § 101.
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`Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014).
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`Petitioner does not seriously dispute that. Instead, Petitioner attempts to
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`change the subject by declaring without support that “receiving consent” is an
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`“abstract idea” and ultimately falsely declaring that “the ‘358 patent does not
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`disclose any new devices or algorithms for monitoring locations or obtaining
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`consent.” Opp. at 3-4.
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`Petitioner’s arguments regarding both steps of the Alice/Mayo framework
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`consist of repeating (but not proving) those false premises. The actual claim
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`language and prior art show that the claims are neither directed to nor seek to claim
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`an abstract idea. Instead, they claim a specific, step-by-step technological process
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`for producing a tangible result. Like the claims in Diamond v. Diehr, 450 U.S. 175
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`(1981), they are “eligible to receive the protection of our patent laws.” Id. at 184.
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`A. The Claims Are a Patent-Eligible Improvement to a Technological
`Problem
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`Under Alice, a claim is not an unpatentable abstract idea if it “improve[s] an
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`existing technological process.” 134 S. Ct. at 2358. That precisely describes the
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`invention here: For the first time a communications interface electronically
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`provides notification and obtains a user’s consent in a convenient way.
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`Petitioner nonetheless asserts over and over, and each time without support,
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`that the claims “are directed to an abstract idea.” Opp. at 2-7. From there, the
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`Petitioner digresses into whether the claims limit the abstract idea to a particular
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`field, whether the recited hardware around the abstract idea is conventional, etc.
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`eventually concluding that “[n]one of them alters the abstract idea recited in claim
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`1 of receiving consent.” Opp. at 7. Thus, Petitioner begins and ends by asserting
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`that the claims are directed to an abstract idea without ever actually demonstrating
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`that the claims are directed to an abstract idea.
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`Claims (even claims directed to “computer-related technology”) that provide
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`improvements in a technology are not directed to abstract ideas. McRO, Inc. dba
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`Planet Blue v. Bandai Namco Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir.
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`2016). An indication that a claim is directed to an improvement in computer-
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`related technology may include a teaching in the specification about how the
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`claimed invention improves a computer or other technology. Id. at 1313.
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`The ‘358 patent teaches regarding prior art technology that “[a]lthough,
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`electronic methods have been developed that make use of web browsers and SMS
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`texting capabilities of mobile devices to provide notification and consent, some of
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`these systems have proved inconvenient and may require advanced mobile devices
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`or extensive user training.” Col. 2, lines 4-8. The Specification then offers the
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`disclosed invention as an improvement in the technology. See, e.g. Col. 2, lines 9-
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`51. Thus, as in McRO, the ‘358 patent makes clear the problem to be improved
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`upon and offers the claimed invention as the technological improvement. The
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`claimed invention is a patent-eligible technological advance under Alice.
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`B. The Claims Reflect the Disclosed Improvement and Recite
`Specific Steps for Achieving It
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`Petitioner suggests that the claims do not “involve an improvement in
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`technology” apparently because “other than the insignificant use of an ‘automated’
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`voice message, claim 31 could be performed entirely by two humans talking over a
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`telephone.” Opp. at 6. But “processes that automate tasks humans are capable of
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`performing are patent eligible if properly claimed.” McRO, 837 F.3d at 1313.
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`The question is not whether humans can perform the process but one of
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`preemption and whether the patent “focus on a specific means or method that
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`improves the relevant technology or are instead directed to a result or effect that
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`itself is the abstract idea and merely invoke generic processes and machinery.” Id.
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`at 1314 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
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`2016) and Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1048 (Fed.
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`Cir. 2016)). The claims in McRO defined a specific way, namely use of particular
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`rules (“mathematical rules,” id. at 1315) to solve the problem, and thus were not
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`directed to an abstract idea.
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`As described above, the ‘358 patent defines the improvement as a
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`communications interface that electronically provides notification and obtains a
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`user’s consent in a convenient way. The claim language correlates directly to this
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`technological improvement but does not merely recite the result or effect but
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`specific means or methods to achieve such result or effect. For example, proposed
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`amended claims 31 recites:
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`31. A computer implemented method for receiving consent from a
`user of a mobile device to 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, 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 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;
`receiving from the mobile device during the telephone call a signal
`including data indicating consent for obtaining the location information of
`the mobile device; and
`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.
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`Notice the very detailed claim language above that recites rules (e.g. steps),
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`that must be followed to accomplish the result. The claim does not recite mere
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`results, but concrete rules or steps as approved in McRO. Those claims defined a
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`specific way, namely use of particular rules to solve the problem therein, and thus
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`were not directed to an abstract idea. Similar to McRO, the claims here do not
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`recite mere results but actually solve the problem of electronically providing
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`notification and obtaining a user’s consent in a convenient way.
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`Thus, as in McRO the claims here are not directed to an abstract idea.
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`II. THE PROPOSED AMENDED CLAIMS SATISFY § 112
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`The specification supports the added language in the proposed amended
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`claims—“receiving from the carrier a code obtained from another carrier that
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`serves as verification that the diver has consented to disclosing the location of the
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`mobile device”—despite Petitioner’s efforts to misread, misconstrue, and mis-state
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`both the claim language and the description.
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`The entire specification is generally directed at solving a privacy problem
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`related to tracking a driver’s mobile device. See, e.g., [0006]-[0007]. Most of the
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`scenarios and embodiments describe a two-party arrangement—the driver, or
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`user/owner of the mobile device to be tracked, and the location-obtaining party,
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`who is often the freight carrier. Most of the patent is related to the notice-consent
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`solution with these two parties such that the driver is giving his/her consent to the
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`freight carrier.
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`However, the specification also discloses situations where there might be
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`three parties—the driver, the freight carrier who employs the driver, and the
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`location-obtaining party such as the freight carrier originally hired to haul the
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`freight. The proposed amended claims are directed at this scenario, with [0058]
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`teaching that “carrier A” may “subcontract with another carrier NAT to move the
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`freight.” This paragraph also discloses the use of a “Partner/Code” that can
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`correspond to a “partner company or driver,” such as another carrier. Using the
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`Partner/Code to indicate consent is found in [0062].
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`But Petitioner argues (Opp. at 13-14) that there are only two parties
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`mentioned in [0062], not three as required by the claims. But the highlighting of
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`[0062] plainly refutes Petitioner:
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`In some cases, the obtaining party user may not know the Telephone
`Number of the mobile device or the user may know the Telephone Number
`but not have authorization to obtain the mobile device associated with the
`Telephone Number. In one embodiment (not shown), 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 associated with the Telephone Number. This feature may also serve
`to keep the user from learning the telephone number of the mobile device in
`cases where the mobile device user, the partner, or some other party desires
`not to reveal the telephone number to the obtaining party user.
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`There is “the user” and its antecedent, “the obtaining party user” who can be
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`
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`a freight carrier; a “partner” who can be another carrier; and a “mobile device user”
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`who can be a driver. See, e.g., [0058] and [0063].
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`The carrier/user entry of the Partner/Code verifies that the user is authorized
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`by the partner to track the mobile device of the driver. The original claim
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`limitations (aka, the rest of the claim) relates to the driver giving authorization to
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`one freight carrier, and Petitioner does not raise any objections or complaints
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`regarding the support in the specification for those other elements. The consent
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`from one carrier is extended to another party in [0062] where entry of “a
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`Partner/Code that verifies that the user has obtained authorization from the partner
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`to obtain location information of the mobile device.” Thus, there is support for the
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`entire proposed amended claims, specifically including the new language.
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`Petitioner’s other written description arguments are equally unavailing. For
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`example, plaintiff argues that Fig. 4 does not support the amended language (Opp.
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`at 12), but [0062] expressly states that the embodiment it describes is “not shown.”
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`Figure 4 is directed at a different embodiment, so Petitioner’s argument about Fig.
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`4 is silly, disingenuous, and meritless.
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`Lastly, Petitioner argues that there is no support for receiving both a signal
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`and a code “to confirm the same information-consent that the location of the
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`mobile device can be disclosed.” Opp. at 14. Petitioner’s premise is faulty because
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`the signal and code do not convey the same information. The “signal” referenced
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`by Petitioner is consent to one carrier (“the other carrier” in claim parlance)
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`whereas the “code” is consent to the location-obtaining user (or “the carrier” in the
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`claims). Two different parties, two different authorizations, and two different
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`indicators of consent. And the general method discloses a system with a step of
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`receiving a signal, see, e.g., [0009], and the embodiment in [0062] further discloses
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`a user entering the “code” into the system. Reception by the system is the
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`corresponding event to a user entering data into the system. Thus, the specification
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`provides support for all limitations of the proposed amended claims.
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`A. The Amended Claims Are Not Indefinite
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`Petitioner’s sophistry continues when it argues that the phrase “the mobile
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`device of a driver by a carrier” is indefinite because the meaning is unclear. But
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`plucking partial phrases from a long clause to see whether it makes complete sense
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`is not the proper test. See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120,
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`2129 (2014) (“we read § 112, ¶ 2 to require that a patent's claims, viewed in light
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`of the specification and prosecution history, inform those skilled in the art about
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`the scope of the invention with reasonable certainty.”).
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`The extended proposed phrase is “receiving consent from a user of a mobile
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`device to obtaining location information of the mobile device of a driver by a
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`carrier so that the carrier may assign freight for the driver to haul.” Petitioner’s
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`argument is specious when the entire phrase is considered. The propositional
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`phrase “by a carrier” identifies who is “obtaining location information” and the
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`prepositional phrase “of the mobile device of the driver” (aka, the “driver’s mobile
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`device”) refers to what location information is obtained.
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`B. The Proposed Claims Are Not Improperly Broadened
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`Contrary to Petitioner’s conclusory arguments, the claims are narrower—not
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`broader. First, this language appears in the preamble, which is normally not
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`considered a claim limitation. See, e.g., Am. Med. Sys., Inc. v. Biolitec, Inc., 618
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`F.3d 1354, 1358 (Fed. Cir. 2010) (“Generally [] the preamble does not limit the
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`claims.”) (citation omitted). Petitioner did not ask for any claim construction or
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`deviation from the normal construction. Petition at 7. The proposed amendment to
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`the preamble renders the preamble a limitation—one which otherwise restricts, not
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`broadens, the claim. See Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289
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`F.3d 801, 808 (Fed. Cir. 2002) (“clear reliance on the preamble during prosecution
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`to distinguish the claimed invention from the prior art transforms the preamble into
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`a claim limitation” that narrows the scope of the claim).
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`Moreover, the claims are written to show that the “user” of the mobile
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`device is the driver. But even if these were two different people, Petitioner does
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`not explain how a claim requiring a second actor is broader than a claim requiring
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`only a single actor. A claim requiring two has less scope (is narrower) than
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`requiring one.
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`III. NEITHER POULIN NOR CONE DISCLOSES OR SUGGESTS A
`“CODE THAT SERVES AS VERIFICATION OF CONSENT” AS SET
`FORTH SUBSTITUTE CLAIMS 31 AND 49, AND IT WOULD NOT
`HAVE BEEN OBVIOUS TO A POSITA TO MODIFY POULIN
`AND/OR CONE TO UTILIZE SUCH A CODE
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`Petitioner acknowledges that Poulin does not teach or suggest the use of a
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`code that serves as verification of consent. Ex. 1015, ¶¶ 56-63, Opp. at 21-22.
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`Cone does not cure this deficiency, and a POSITA would not have been motivated
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`to modify Cone and/or Poulin to utilize such a code.
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`Cone is directed to the use of a “personal location code” (“PLC”) which can
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`have associated authorization conditions, and which can be used by an individual
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`being tracked (i.e., the mobile device user) to control who is allowed to locate the
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`individual and when. Cone at [0006], [0018] and [0025]; Ex. 1015, ¶ 25; Opp. at
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`21-22. The purpose of Cone was to provide the mobile device user with greater
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`control over how and when she is tracked, and what information is made available
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`to the tracker. As such, the PLC is nothing more than a proxy for the mobile device
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`user’s phone number. The PLC is associated with the user in a middleware location
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`broker, which stores a user profile that includes the PLC and “reference
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`authorization conditions and constraint conditions which govern semantics of the
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`user’s PLCs.” Cone at [0019]. Thus, the conditions set forth in the user profile, not
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`the PLC itself, provide verification of consent.
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`Neither Poulin nor Cone disclose or suggest a code (passed from one carrier
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`to another) that verifies that a user has consented to disclosing the location of the
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`user’s mobile device location information. The PLC of Cone merely serves to
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`identify a user profile stored on a middleware server, and the information
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`contained in that user profile may dictate whether the user has consented to
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`disclosure of location information. Cone at [0019]. In addition, because consent
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`verification functionality is already provided in Cone by the user profile stored on
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`the middleware server, a POSITA would not have been motivated to modify the
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`PLC of Cone to serve as a verification of consent.
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`Moreover, claims 31 and 49 also require the carrier code to be obtained by
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`one carrier from another carrier. Cone discloses a system in which only the mobile
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`device user shares the PLC with others—the middleware PLC broker does not
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`share the PLC with others. Thus, even if the disclosed PLC of Cone could be
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`considered a “carrier code” “that serves as verification of consent”—it is not—
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`such a PLC is never obtained by one carrier from another carrier.
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`Neither Poulin nor Cone discloses or suggests providing a carrier code that
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`serves as verification of consent to obtain the user’s mobile device location
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`information. Nor does Poulin or Cone disclose or suggest a method in which a
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`carrier receives a consent code from another carrier.
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`Claims 31 and 49 are patentable over Poulin in view of Cone.
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`Date: September 28, 2018
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`Respectfully submitted,
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` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Kyle B. Fleming (admitted pro hac vice)
`Luis A. Carrion, Reg. No. 61,255
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
`
`Attorneys for Patent Owner
`MacroPoint, LLC
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`
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`The undersigned hereby certifies that the above-captioned PATENT OWNER’S
`REPLY BRIEF IN SUPPORT OF CONTINGENT MOTION TO AMEND is
`being served in its entirety on this date by filing this document through the Patent
`Review Processing System as well as delivering a copy via electronic mail upon
`the following at:
`
`
`James P. Murphy jpmurphy@polsinelli.com
`Matt Frontz mfrontz@polsinelli.com
`Ryan Murphy rmurphy@polsinelli.com
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`Date: September 28, 2018
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`Respectfully submitted,
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` /Mark C. Johnson/
`Mark C. Johnson, Reg. No. 51,854
`Renner Otto
`1621 Euclid Avenue, Floor 19
`Cleveland, Ohio 44115
`t: +1.216.621.1113
`f: +1.216.621.6165
`
`Attorney for Patent Owner
`MacroPoint, LLC
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