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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`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.
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`__________
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`Case IPR2017-02016
`U.S. Patent No. 8,275,358 B1
`__________
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`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION PURSUANT TO 37 C.F.R. § 42.107
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`TABLE OF CONTENTS
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`III.
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`OVERVIEW OF U.S. PATENT NO. 8,275,358 ............................................ 2
`A. Summary of the ’358 Patent .................................................................... 2
`B.
`Independent Claims 1, 13, and 19 ........................................................... 6
`SUMMARY OF THE CITED REFERENCES ............................................... 8
`A. Poulin ....................................................................................................... 9
`B. Karp ....................................................................................................... 13
`IV. CLAIM CONSTRUCTION .......................................................................... 17
`V.
`THE PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) .......... 17
`VI. PETITIONER HAS THE BURDEN OF PRESENTING EVIDENCE
`AND ARGUMENT SHOWING A REASONABLE LIKELIHOOD
`OF SUCCESS ON THE CHALLENGED CLAIMS .................................... 17
`VII. PETITIONER HAS NOT OFFERED ANY VALID GROUNDS
`DEMONSTRATING A REASONABLE LIKELIHOOD THAT ANY
`OF THE CLAIMS OF THE ’358 PATENT IS UNPATENTABLE ............ 19
`A. Ground 1: Claims 1, 3-13, 15-19, And 21-30 Are Not Rendered
`Obvious Under 35 U.S.C. § 103 By Poulin .......................................... 19
`1. Claim 1: Poulin does not disclose the “notice” element of claim 1
`and it would not have been obvious to a POSITA to modify
`Poulin. .................................................................................................... 19
`2. Claim 3: Poulin does not disclose the periodic message to the
`user notifying her that location information is “currently being
`disclosed.” ............................................................................................. 23
`3. Claim 8: Poulin does not disclose providing the location
`information of freight carried by a vehicle carrying the mobile
`device as required by claim 8 and it would not have been obvious
`to a POSITA to modify Poulin. ............................................................. 26
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`i
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`4. Claim 12: Poulin does not disclose the temporary revocation of
`consent steps of claim 12. ...................................................................... 29
`5. Claim 13: Poulin does not disclose the “communicating to the
`user … that consent to obtain the location information is
`revocable” element of claim 13 and it would not have been
`obvious to a POSITA to modify Poulin. ............................................... 32
`B. Ground 2: Claims 2, 14 and 20 are not rendered obvious under
`35 U.S.C. § 103 by Poulin in view of Karp .......................................... 36
`VIII. CONCLUSION .............................................................................................. 36
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`ii
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`Patent Owner MacroPoint LLC (“Patent Owner”), pursuant to 35 U.S.C. §
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`313 and 37 C.F.R. § 42.170, respectfully requests that the Patent Trial and Appeal
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`Board (“Board”) deny institution of IPR2017-02016. This filing is timely made
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`within three months of the date of the Notice according the Petition a filing date.
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`Notice, Paper 3.
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`I.
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`INTRODUCTION
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`Although the Poulin reference and the ’358 patent offer solutions to similar
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`problems—getting authorization from a mobile user to track and share her location
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`information with others—petitioner acknowledges that Poulin fails to disclose
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`every limitation of any claim of the ’358 patent. However, rather than offering a
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`secondary reference or other evidence of the art at the time, petitioner attempts to
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`inject the missing limitations with bald, unexplained conclusions from its expert
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`that it would have been “obvious” to modify Poulin to achieve the claims of the
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`’358 patent.
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`But petitioner’s arguments, and Mr. Denning’s assertions, are nothing more
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`than improper hindsight bias, fallaciously using a problem and solution first
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`identified in the ’358 patent as the basis for concluding that it is obvious in
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`retrospect. But § 103 does not work that way and, even under the relaxed rubric of
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`KSR, hindsight bias is impermissible and “obviousness cannot be sustained by
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`mere conclusory statements; instead, there must be some articulated reasoning with
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`1
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`some rational underpinning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 538, 418
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`(2007) (quoting In re Kahn, 441 F.3d 977, 988, (Fed. Cir. 2006)).
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`Petitioner has failed in its petition to meet its burdens of production and
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`persuasion, and the Board should decline to institute an inter partes review on any
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`claim on any ground.
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`II. OVERVIEW OF U.S. PATENT NO. 8,275,358
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`A.
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`Summary of the ’358 Patent
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`The ’358 patent is directed to systems and methods for providing
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`notification to and receiving consent from a user whose mobile device's location is
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`to be obtained. Ex. 1001 at 1:9-11.
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`An illustration is shown of an
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`exemplary system 100 for providing
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`user notification and receiving user
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`consent to obtaining location
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`information of a mobile device 110 of
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`the user. Id. at FIG. 1. The system 100
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`includes a communications interface 120 configured for communication with the
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`mobile device 110. The communications interface 120 is configured to participate
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`in telephone calls with the mobile device 110. Id. at 1:56-62.
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`2
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`Validation logic 130 is configured to identify the mobile device 110 at least
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`in part by obtaining an identifier associated with the mobile device 110. Obtaining
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`the identifier associated with the mobile device 110 ensures that the right party, the
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`user, is notified that location information of the mobile device 110 will be used and
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`that the right party, the user, consents to the use of the location information. Id. at
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`4:3-10.
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`The system 100 further includes a notification logic 140 that is configured to
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`communicate a signal including data representing an automated voice message. In
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`one embodiment, the automated voice message provides a notice to the user of the
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`mobile device 110 that includes information indicating to the user that consenting
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`to the obtaining of the location information of the mobile device 110 would result
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`in the location information of the mobile device 110 being disclosed. Id. at 4:27-
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`35.
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`In one embodiment, the location information provider 150 is a wireless
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`service provider. In another embodiment, the location information provider 150 is
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`a third party that receives the location information from the wireless service
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`provider. In yet another embodiment, the location information provider 150 is a
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`party other than the wireless service provider or a third party. Id. at 5:22-28.
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`In one embodiment, the communications interface 120 is configured to
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`communicate the location information to the obtaining party 160 by transmitting
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`3
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`the location information of the mobile device to the obtaining party 160 through
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`computer communication. Id. at 5:43-47.
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`Utilizing the exemplary system, the ’358 patent further describes a method
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`for obtaining consent of the mobile
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`device 110 user to obtain her location
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`information. Id. at FIG. 2 (right). At
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`210, the method 200 includes
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`participating in a telephone call with
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`the mobile device. In one embodiment,
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`the user of the mobile device initiates the telephone call. In another embodiment,
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`the user of the mobile device receives the telephone call. At 220, the method 200
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`includes identifying the mobile device at least in part by obtaining an identifier
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`associated with the mobile device. In one embodiment, the identifier is a telephone
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`number associated with the mobile device. Id. at 7:62-8:3.
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`At 230, the method 200 includes transmitting to the mobile device a signal
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`including data representing an automated voice message. The automated voice
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`message communicates to the user of the mobile device at least one of: (a) a notice
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`including information indicating that consenting to the obtaining of the location
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`information of the mobile device would result in the location information of the
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`mobile device being disclosed, or (b) a location at which to find the notice. Id. at
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`8:17-24.
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`At 240, the method 200 includes receiving from the user via the mobile
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`device consent for obtaining the location information of the mobile device. Id. at
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`8:25-27.
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`In some embodiments, when the location information of the mobile device
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`110 is being disclosed, the system is further configured to periodically generate
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`and to periodically communicate a reminder notification message reminding the
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`user that the location information of the mobile device 110 is currently being
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`disclosed. Id. at 6:64-67.
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`The ’358 patent further describes a method for the mobile device 110 user to
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`revoke consent for obtaining her location
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`information. Id. at FIG. 3 (below). For
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`example, at 310, the method 300 includes
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`participating in a telephone call with the
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`mobile device. In one embodiment, the
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`user of the mobile device initiates the
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`telephone call. Id. at 8:58-63.
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`At 320, the method 300 includes identifying the mobile device at least in
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`part by obtaining an identifier associated with the mobile device. In one
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`embodiment, the identifier is a telephone number associated with the mobile
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`device. Id. at 8:64-9:1.
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`At 330, the method 300 includes communicating to the user via an
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`automated voice message transmitted to the mobile device information indicating
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`that consent to obtain the location information is revocable via the mobile device.
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`Id. at 9:8-11.
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`At 340, the method 300 includes receiving from the mobile device
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`revocation of the consent to obtain the location information of the mobile device.
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`Id. at 9:8-11.
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`B.
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`Independent Claims 1, 13, and 19
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`1. A computer implemented method for receiving consent from a
`user of a mobile device to obtaining location information of the
`mobile device, the method comprising:
`participating in a telephone call with the mobile device;
`within the telephone call, identifying the mobile device at least
`in part by obtaining an identifier associated with the mobile device;
`transmitting to the mobile device during the telephone call an
`automated voice message communicating to the user of the mobile
`device at least one of:
`a notice including information indicating that consenting
`to the obtaining of the location information of the mobile
`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
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`6
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`mobile device would result in the location information of the
`mobile device being disclosed; and
`receiving from the mobile device during the telephone call a
`signal including data indicating consent for obtaining the location
`information of the mobile device.
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`13. A computer implemented method for receiving from a user of a
`mobile device a revocation of consent to obtain location information
`of the mobile device, the method comprising:
`participating in a telephone call with the mobile device;
`within the telephone call, identifying the mobile device at least
`in part by obtaining an identifier associated with the mobile device;
`communicating to the user via an automated voice message
`transmitted to the mobile device during the telephone call information
`indicating that consent to obtain the location information is revocable
`via operation of the mobile device; and
`receiving from the mobile device during the telephone call a
`signal including data indicating revocation of the consent to obtain the
`location information of the mobile device.
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`19. A system for receiving user consent to obtaining location
`information of a mobile device, the system comprising:
`a communications interface configured to participate in a
`telephone call with the mobile device;
`a validation logic configured to, within the telephone call,
`identify the mobile device at least in part by obtaining an identifier
`associated with the mobile device; and
`a notification logic configured to communicate during the
`telephone call an automated voice message including at least one of:
`a notice including information indicating to the user of
`the mobile device that consenting to the obtaining of the
`location information of the mobile device would result in the
`location information of the mobile device being disclosed, and
`a location at which to find the notice, wherein the
`location at which to find the notice is represented by a web
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`7
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`address corresponding to a website where, during the telephone
`call, the user of the mobile device can find the notice including
`information indicating to the user of the mobile device that
`consenting to the obtaining of the location information of the
`mobile device would result in the location information of the
`mobile device being disclosed;
`wherein the communications interface is configured to transmit
`during the telephone call the automated voice message to the mobile
`device, and
`wherein the communications interface is further configured to,
`during the telephone call, receive from the mobile device data
`indicating the user consent for obtaining the location information of
`the mobile device.
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`III. SUMMARY OF THE CITED REFERENCES
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`Petitioner relies on U.S. Patent Publication No. 2002/0115453 (“Poulin”),
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`Ex. 1002, and U.S. Patent No. 6,591,242 (“Karp”), Ex. 1006, in asserting
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`obviousness on two grounds.
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`Ground 1: Petitioner alleges claims 1, 3-13, 15-19, and 21-30 are obvious
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`under Poulin.
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`Ground 2: Petitioner alleges claims 2, 14 and 20 are obvious under Poulin
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`in view of Karp.
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`A.
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`Poulin
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`
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`Poulin is entitled “Method and System for Location Based Wireless
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`Communication Services” and is directed to providing registered subscribers with
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`location-based services such as navigation, messaging, business, entertainment and
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`meeting information. Ex. 1002 at Abstract.
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`Poulin describes a location based
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`service center (LBSC) 100 and a plurality of
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`wireless devices 102-104. Id. at [0050];
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`FIG. 4 (right). The LBSC 100 comprises a
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`processing system coupled to an interface
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`system. Id. at [0035]. The LBSC 100 is
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`connected to the wireless network 400, the short message service center (SMSC)
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`403 and the LFE 402. Id. at [0051]. The SMSC 403 could be a conventional device
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`that allows short text messages to be exchanged between the wireless devices 102-
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`104 and other networks or network elements such as the LBSC 100. Id. at [0053].
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`The wireless devices, 102-104, could be any wireless devices configured to
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`exchange information over a wireless network including conventional wireless
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`telephones, personal data assistants, and notebook computers. Id. at [0039].
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`The wireless communication network 400 could be a conventional wireless
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`network that provides wireless communication services. Some examples of the
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`wireless communication services include personal communications service,
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`microwave multipoint distribution service, millimeter wave service, code division
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`multiple access service, and time division multiple access service. Id. at [0052].
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`The Internet user device 405 could be any device configured to connect and
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`exchange information over the Internet 401. Some examples of the Internet user
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`device 405 include without limitation, a desktop computer, a notebook computer,
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`and a personal data assistant. The connection from the LBSC 100 to the Internet
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`user device 405 is over the Internet 401 using an Internet browser and Internet
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`service provider. Id. at [0053].
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`Figure 6, below, illustrates the Poulin system from a wireless device. A call
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`is received in the LBSC 100 from a wireless device, e.g. 102, over the wireless
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`network 400 and place to the service manager 304. Id. at FIG 6. Responsive to
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`receiving the call, the service manager 304 identifies the calling device 102 to
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`determine if the device 102 is known or registered with the LBSC 100. Id. at
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`[0065].
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`If the service manager 304 determines that the device 102 is not registered
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`with the LBSC 100, a profile request message is sent to the mobile device 102. It
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`could be a voice message provided using the IVR 309 or could be a short text
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`message using the SMSC 403. Responsive to the profile information request
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`message, the profile information is provided to the service manager 304 using the
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`wireless device 102. The profile information might be an abbreviated profile
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`received for the purpose of registering the device 102, and the subscriber would be
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`prompted to provide additional profile information via the Internet registration
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`process of FIG. 5 at a later date. Id. at [0066].
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`The profile defines permission on when, where, and how other authorized
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`subscribers may obtain an individual subscriber’s own location and status
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`information. For example, permission may be granted according to a time of day,
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`day of the week, e.g. Monday-Friday from 4:00 PM-1:00 AM or always.
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`Permission may also be granted within a specified geography, e.g. city, county,
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`country or arbitrary subscriber defined area. Id. at [0023]. As an override to
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`existing rules contained in the subscriber’s profile, the communication service also
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`permits the subscriber to globally turn ON or turn OFF permission to be located
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`and serviced. Id. at [0024].
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`Once a subscriber is activated, Poulin describes various located-based
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`services that can be offered:
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`The present service is designed to provide fun finding meeting areas
`and venues where subscribers can spontaneously meet, or plan to
`meet, with other subscribers. The service may also serve as an
`introductory meeting service for subscribers interested in a casual date
`or impromptu meeting. Subscribers use their wireless devices such as
`telephones, personal data assistants, and notebook computers to obtain
`the service area information, venue information, and subscriber
`information. Active subscribers may also communicate with other
`active subscribers using their wireless devices by sending short
`messages or placing voice calls. It should be noted that the contact
`information for other active subscribers is provided as part of the
`subscriber information, which subscribers have consented too, so that
`subscribers can feel comfortable sending a short message or placing a
`voice call to other active subscribers, which they may not previously
`have known. Advantageously, the present service provides subscribers
`with access to information on villages that they are located in or
`proximately located too as well as events, attractions and other
`subscribers located in or near the same village.
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`Id. at [0029]. Poulin also describes a procedure for a subscriber to deactivate her
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`subscription. After a pre-determined period of time, the service manager 304
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`provides a service deactivation message to the device 102. Depending on the
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`subscriber’s response, the service manager 304 processes the response from the
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`wireless device 102 to deactivate or continue providing the service. If the service is
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`deactivated and no additional information is provided to the device 102. Id. at
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`[0073].
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`B. Karp
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`Karp is entitled “Visit Verification Method and System” and is directed to a
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`system and method for tracking clients as they visit different locations. Ex. 1006 at
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`Abstract. Karp is more fully described below in Figure 1 and the accompanying
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`description, but petitioner relies on Karp solely for the narrow proposition that a
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`POSITA would know that a mobile telephone could be identified using its
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`automatic number identification. Petition at pp. 15, 55.
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`The system of Karp includes a public switched telephone network (PSTN)
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`for interfacing a computer 120 with wireless phone 112 and/or a standard plain old
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`telephone service (POTS) phone 114. Ex. 1006 at FIG 1. The PSTN includes wired
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`segments 118A and wireless segments 118B. The wired segment includes central
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`offices 130A-B connected over a digital backbone 124C, such as the integrated
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`services digital network (ISDN). Central office 130B is connected by modem link
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`132 to computer 120. Central office 130A is connected by analog subscriber line
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`124A to fixed phone 114 located at call site 150A. The wireless segment 118B
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`includes a plurality of cells 128A-B each represented by a transceiver. Each of the
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`cells is connected by a wired/wireless link 124B to central office 130A.
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`Communications between cellular phone 112 at call site 150B and computer 120
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`are made across both wired and wireless segments of the PSTN. Either the fixed or
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`wireless phone may provide an identification device. Biometric input device 116 is
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`shown connected to fixed phone 114. Ex. 1006 at 3:40-59.
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`The computer 120 includes a timer 138 and a storage device 136. The
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`storage device includes reports 122, databases 134, and program code 146 for
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`implementing processes 140. The databases may include employee biological
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`parameters, geographic data, and payroll information. Id. at 3:60-65.
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`The computer implements processes 140 for determining on the basis of
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`information from a packet 144 received from the client: who called, when they
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`14
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`called, where they called from, what they did when they were at the location, and
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`how long they were at the location. Caller/clients 11A-B have their respective
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`unique biometric parameters 142A-B. Each of the clients has a unique biometric
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`parameter that include, for example: voice print, finger print, or iris print. Id. at
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`3:66-4:7.
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`Biometric input device 116 allows a client to enter biometric parameters
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`other than voice. For instance, the identification device can be used to
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`electronically transmit information concerning the client’s fingerprints and/or iris
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`print. The identification devices can be included directly on the phones 112-114 or
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`included in a base station included at the recipient’s location. The identification
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`device can also be carried by the clients 11A-B and include an interface which
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`allows the identification device to communicate with the PSTN 118. Id. at 4:8-17.
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`In operation, the caller/clients 110A/B place a call upon arrival at the
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`respective call sites 150A-B. The call site may be the home of a person who is
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`homebound or receiving a visit from a nurse, or it may be a job site for a sales call,
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`repair or for delivery of goods. Accordingly, the recipient can be an individual
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`such as a patient, or a business such as a vendor, when the client arrives at the site,
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`they call a number corresponding to computer 120. The computer answers the call
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`and receives the packets 144 from the client. Id. at 4:18-28.
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`15
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`The packets 144 contains information concerning the location of the clients
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`110A-B, the identity of the clients, whether the client 110 is arriving at or
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`departing from the location and what tasks were performed during the time the
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`client spent at the location. The system can be customized to provide additional
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`information as desired by employers of the clients, or by the system administrators.
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`The computer processes 140 combine the information in the packets with databases
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`134 to produce reports 122. Id. at 4:29-37.
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`The reports 122 may list the activity of the client by location, by recipient,
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`by type of activity, and by duration of activity. The reports may also list which of
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`clients 110A-B were expected to but did not show up at, or spend the proper
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`amount of time at a job site. Alternately, the reports may list the work site address,
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`each employee’s name, number, employment category, treatment type, etc. The
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`reports 22 can be printed or transmitted to a remote location. The reports may
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`include payroll reports. Alternately, the reports may be invoices to the recipient of
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`the client’s services. The reports 122 may be supplied to the client’s employer so
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`the employer can track the deliveries of the client 110 or the amount of time the
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`client 110 spends with particular recipients. The employer can use the reports for
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`payroll and/or for billing purposes. For instance, the recipient can be charged based
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`on the amount of time the client spent with the recipient or based on the number of
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`tasks the client performed while visiting the recipient. Id. at 4:38-59.
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`16
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`IV. CLAIM CONSTRUCTION
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`
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`For purposes of this Preliminary Response, Patent Owner addresses the
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`terms of the challenged claims under petitioner’s proposed construction of plain
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`and ordinary meaning. Petition at p. 7. With respect to language of the claims,
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`Patent Owner reserves the right to present its own claim construction should the
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`inter partes review be instituted.
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`V. THE PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
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`Petitioner’s expert, Mr. Denning, states that a POSITA would have been “a
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`person having at least a bachelor’s degree in electrical engineering, computer
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`engineering, computer science, or a related discipline, and two to three years of
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`relevant experience in the fields of location/navigation and telecommunications,
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`such as experience with mobile networks and devices. Additional education might
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`substitute for some for the experience and substantial experience might substitute
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`for some of the educational background.” Petition at 16. For purposes of this
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`Preliminary Response only, Patent Owner accepts this characterization of a
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`POSITA.
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`VI. PETITIONER HAS THE BURDEN OF PRESENTING EVIDENCE
`AND ARGUMENT SHOWING A REASONABLE LIKELIHOOD OF
`SUCCESS ON THE CHALLENGED CLAIMS
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`The Board may grant a petition for inter partes review only where “the
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`information presented in the petition … shows that there is a reasonable likelihood
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`that the petitioner would prevail with respect to at least 1 of the claims challenged
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`in the petition.” 35 U.S.C. §314(a); 37 C.F.R. §42.108(c).
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`“It is of the utmost importance that petitioners in the IPR proceedings adhere
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`to the requirement that the initial petition identify ‘with particularity’ the ‘evidence
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`that supports the grounds for the challenge to each claim’.” Intelligent Bio-Systems,
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`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1362, 1369 (Fed. Cir. 2016); 35 U.S.C. §
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`312(a)(3). “All arguments for the relief requested in a motion must be made in the
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`motion.” Intelligent Bio-Systems, 821 F.3d at 1369 (declining to consider new
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`obviousness arguments, new reasons to combine, and new evidence not presented
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`in petition); 37 C.F.R. § 42.23(b).
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`Moreover, it is well settled that “rejections on obviousness cannot be
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`sustained by mere conclusory statements; instead, there must be some articulated
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`reasoning with some rational underpinning to support the legal conclusion of
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`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006)). As shown below, Petitioner has not established a reasonably likely
`
`case of obviousness with respect to any claim on Grounds 1 or 2, and the Board
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`should decline to institute review of the ’358 patent.
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`18
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`VII. PETITIONER HAS NOT OFFERED ANY VALID GROUNDS
`DEMONSTRATING A REASONABLE LIKELIHOOD THAT ANY
`OF THE CLAIMS OF THE ’358 PATENT IS UNPATENTABLE
`
`A. Ground 1: Claims 1, 3-13, 15-19, And 21-30 Are Not Rendered
`Obvious Under 35 U.S.C. § 103 By Poulin
`
`Claim 1: Poulin does not disclose the “notice” element of
`1.
`claim 1 and it would not have been obvious to a POSITA to
`modify Poulin.
`
`Claim 1 requires transmitting “a notice including information indicating that
`
`consenting to the obtaining of the location information of the mobile device would
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`result in the location information of the mobile device being disclosed.” Petitioner
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`acknowledges that Poulin does
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`not provide this requisite “notice”
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`to the user during the telephone
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`call as required by claim 1, but
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`argues that it would have been
`
`obvious to modify Poulin to
`
`provide the claimed notice.
`
`Petition at p. 21. However,
`
`petitioner’s argument is based on
`
`nothing but conclusory assertions from its expert. Id.; Ex. 1002 at ¶¶ 65-69.
`
`Petitioner and Mr. Denning offer two rationales for why a POSITA allegedly
`
`would have been motivated to modify Poulin. First, because the user in Poulin is
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`19
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`on notice that location information would be disclosed to others, they argue it
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`would have been obvious to provide the user with a notice of such disclosure. Ex.
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`1002 at ¶¶ 66, 67. Second, they argue that it would have been obvious to a
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`POSITA to modify Poulin to add a notice if one had wanted to add such a notice.
`
`Ex. 1002 at ¶¶ 65, 66, 68.
`
`But petitioner and Mr. Denning offer nothing but speculation and bald
`
`conclusions. Poulin describes a complete method and system for obtaining
`
`permission from a user for location based services, and petitioner does not explain
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`how or why a POSITA would have felt any need, desire, motivation, or reason to
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`modify Poulin. See KSR, 550 U.S. at 418. Poulin can be used to obtain consent for
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`the disclosure of a user’s location without any modification or changes whatsoever.
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`Therefore, there is no inherent reason to modify Poulin, and petitioner and its
`
`expert cannot articulate any proper reason to modify Poulin. The Board has
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`previously rejected proffered obviousness combinations when the primary
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`reference already contained the desired solution or goal:
`
`In that regard, Petitioner proffers two such reasons for combining
`Gillig with Pitroda and with Hennige. First, Petitioner contends
`modifying the Gillig telephone to incorporate credit card account
`information in light of Pitroda or Hennige would “allow credit card
`users to avoid having to carry multiple credit cards.” Second,
`Petitioner contends the combination would “allow users of the
`telephone to have access to these cards when making long distance
`phone calls, or making purchases over the phone.” We are not
`persuaded. In particular, we agree with Patent Owner that Pitroda and
`Hennige already allow credit card users to avoid having to carry
`
`20
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`multiple credit cards, and Pitroda and Hennige already provide access
`to credit cards for purposes of making telephone calls or purchases
`over the phone. Petitioner’s proffered reasons for modifying Gillig to
`include credit card account information fail to provide a persuasive
`reason why one of ordinary skill would incorporate the Pitroda /
`Hennige functionality into Gillig’s telephone.
`
`For the foregoing reasons, Petitioner has not established a reasonable
`likelihood Petitioner would prevail in showing the challenged ‘875
`patent claims are unpatentable as obvious over Gillig and Pitroda, or
`over Gillig and Hennige.
`
`Square, Inc. v. Cooper, IPR 2014-00158, Paper 10 at p. 30 (evidentiary citations
`
`omitted).
`
`Moreover, petitioner’s circular logic—that it would be obvious to add the
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`notice element if one wanted to add the notice element—evidences the hindsight
`
`bias that infects its entire argument. Whether the system of Poulin could have been
`
`programmed to perform the notice step of claim 1 is irrelevant. The prior art
`
`argued by petitioner does not suggest that a lack of notice during the call was a
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`problem to be solved at all. Instead, this “problem” was first identified in the ’358
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`patent, and it is impermissible hindsight to use the invention itself to supply the
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`reason to modify the prior art. See, e.g., Mintz v. Dietz & Watson, Inc., 679 F.3d
`
`1372, 1377 (Fed. Cir. 2012) (the statement of the problem can “represent[] a form
`
`of prohibited reliance on hindsight, [because] [o]ften the inventive contribution lies
`
`in defining the problem in a new, revelatory way.”); Insite Vision Inc. v. Sandoz,
`
`Inc., 783 F.3d 853, 859 (Fed. Cir. 2