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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
`
`_________________________________________________
`
`U.S. Patent No. 9,429,659
`
`Case No.: IPR2017-02018
`_________________________________________________
`
`DECLARATION OF DAVID HILLIARD WILLIAMS
`
`
`
`MACROPOINT EX. 2001
`
`
`
`IPR2017-02018
`U.S. Patent No. 9,429,659
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`TABLE OF CONTENTS
`
`LIST OF EXHIBITS ................................................................................................ iii
`I.
`INTRODUCTION AND SCOPE OF WORK ................................................ 1
`II.
`SUMMARY OF OPINIONS ........................................................................... 2
`III. BACKGROUND AND QUALIFICATIONS ................................................. 2
`IV. LEGAL STANDARDS ................................................................................... 6
`A. My Understanding Of Claim Construction ............................................. 6
`B. My Understanding Of Obviousness ........................................................ 6
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 10
`V.
`VI. OVERVIEW OF THE ’659 PATENT .......................................................... 11
`VII. TECHNOLOGY BACKGROUND ............................................................... 15
`VIII. SUMMARY OF PRIOR ART IDENTIFIED BY PETITIONER ................ 23
`A. Enzmann ................................................................................................ 23
`B. King ....................................................................................................... 25
`C. Dhanani .................................................................................................. 26
`IX. CLAIM CONSTRUCTION .......................................................................... 27
`X. DETAILED OPINIONS AND ANALYSIS ................................................. 29
`A. None Of Claims 1, 2, 12, and 23 Is Obvious In View Of The
`Cited Art ................................................................................................ 29
`
`i
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`1.
`
`“Monitoring location of at least one of a vehicle or freight”
`or a server programmed to “receive a request for
`information regarding the location of a vehicle or freight”
`and “estimate the location of the vehicle or the freight”
`(claims 1, 2, 12 and 23). ................................................................ 29
`2. A POSITA would not have been motivated to modify
`Enzmann to monitor the location of vehicles carrying
`freight. ........................................................................................... 30
`3. An indication of consent in the form of receipt of location
`information from location information provider (claim 7). .......... 36
`B. None Of Claims 5, 7 and 26 Is Obvious In View Of The Cited
`Art .......................................................................................................... 43
`C. Ground 3: Claims 11 and 16 Are Not Rendered Obvious Under
`35 U.S.C. § 103 By Enzmann in View of Dhanani ............................... 44
`XI. CONCLUSION .............................................................................................. 44
`
`
`
`
`
`
`ii
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`LIST OF EXHIBITS
`
`Description
`Expert Declaration of David Hilliard Williams
`David Hilliard Williams CV
`“What are the differences in the technical specifications in the
`1988 automatic onboard recording device (AOBRD) Rule (49
`CFR 395.15) and the Electronic Logging Device (ELD)
`rule?”, https://www.fmcsa.dot.gov/faq/what-are-differences-
`specs-1988-aobrd-rule-and-eld-rule
`“ELD MANDATE: UPDATES, VIOLATION
`INFORMATION AND DEVICE INTRODUCTION
`PRICING & REVIEWS DRIVERS NEED TO KNOW,”
`https://unitedworldtransportation.com/eld-mandate-updates-
`violation-information-device-introduction-pricing-reviews-
`drivers-need-know/
`“Automatic On-Board Recording Devices (AOBRDs) Hand-
`Held, Commercial Vehicle Safety Alliance, June 6, 2012,
`http://www.ct.gov/dmv/lib/dmv/cv_bulletins/2012-05-
`automatic-on-board-recording-devices-aobrds-hand-held-
`created-06-06-12.pdf
`“Small Hardware Device Provides GPS Fleet Tracking
`Capabilities,” Fleet Financials, October 14, 2010,
`https://www.fleetfinancials.com/72619/small-hardware-
`device-provides-gps-fleet-tracking-capabilities
`“A Look at the Geotab GO Device: Past, Present, and
`Future,” Malene Johansen & Vincent Zhu, June 22, 2015,
`https://www.geotab.com/blog/geotab-go-device-past-present-
`future/
`“Announcing Geotab GO5 Premium Vehicle Tracking
`Device,” April 5, 2011, https://www.geotab.com/press-
`release/u-blox/
`
`Exhibit No.
`2001
`2002
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`iii
`
`
`
`Exhibit No.
`2009
`
`2010
`
`IPR2017-02018
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`Description
`“FMCSA Implementation of MAP-21,” Federal Motor
`Carrier Safety Administration, September 28, 2012,
`https://www.fmcsa.dot.gov/sites/fmcsa.dot.gov/files/docs/FM
`CSA%20Implementation%20of%20MAP-21-%20Overview-
`Agenda-Qs%209-28-12.pdf
`“The Future of Electronic On-board Recording Devices in the
`U.S.,” Michael Goldberg, July 3, 2011, https://www.frg-
`law.com/blog/the-future-of-electronic-on-board-recording-
`devices-in-the-u-s/
`
`
`
`iv
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`
`
`I, David Hilliard Williams, declare as follows:
`
`IPR2017-02018
`U.S. Patent No. 9,429,659
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`I.
`
`INTRODUCTION AND SCOPE OF WORK
`I have been retained on behalf of the Patent Owner for the above-
`1.
`
`captioned inter partes review proceeding. I am being compensated for my time in
`
`connection with this IPR at my standard hourly consulting rate. I understand that
`
`this proceeding involves U.S. Patent No. 9,429,659 (“the ’659 patent”) titled
`
`“Machine Or Group Of Machines For Monitoring Location Of A Vehicle Or
`
`Freight Carried By A Vehicle” by Bennett H. Adelson, and that the ’659 patent is
`
`currently assigned to MacroPoint LLP.
`
`2.
`
`I have reviewed and am familiar with the specification of the ’659
`
`patent filed on January 4, 2016 and claiming priority to United States Patent
`
`Application No. 13/429,618, filed on March 26, 2012, now Pat. No. 8,330,626. I
`
`understand that the ’659 patent has been provided as Exhibit 1001. I will cite to the
`
`specification using the following format: (1:1-10). This example citation points to
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`the ’659 patent specification at column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’659
`
`patent. I understand that the file history has been provided as Exhibit 1007.
`
`4.
`
`In preparing this Declaration, I have also reviewed and considered the
`
`materials of record in IPR2017–02018 as of the time of signing this Declaration,
`
`1
`
`
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`including but not limited to the Petition (Paper 1) and Exhibits 1001 – 1018
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`thereto, the Patent Owner Preliminary Response (Paper 6) and the Decision
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`Instituting Inter Partes Review of the ’659 patent (Paper 7). In addition, I have
`
`reviewed and considered Exhibits 2003 – 2010.
`
`5.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ’659 patent and the references that form the basis for
`
`the grounds of rejection set forth in the Decision (Paper 7).
`
`II.
`
`SUMMARY OF OPINIONS
`Based on my experience and expertise, discussed below, and my
`6.
`
`review of the Papers and evidence in this inter partes review, it is my opinion that
`
`none of claims 1-30 of the ’659 patent is obvious in view of the cited art.
`
`III. BACKGROUND AND QUALIFICATIONS
`In formulating my opinions, I have relied upon my training,
`7.
`
`knowledge, and experience in the relevant art. A copy of my current curriculum
`
`vitae is provided as Ex. 2002, and it provides a comprehensive description of my
`
`academic and employment history over the last thirty-plus years.
`
`8.
`
`I have over 30 years of experience in wireless location services,
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`including experience implementing Wireless 911 (E911) systems and designing,
`
`2
`
`
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`implementing, and managing numerous location-based service (LBS) applications
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`such as family tracking and fleet, worker, and asset tracking management. I am
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`currently the President of the company E911-LBS Consulting, and I have been
`
`with the company since 2002. As the President of E911-LBS Consulting, I provide
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`services across the entire wireless value chain, particularly with respect to
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`technology and business strategic planning and product design and development
`
`associated with LBS, Global Positioning Satellite (GPS) systems, E911, Real-Time
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`Location Systems (RTLS), Radio Frequency Identification (RFID), beacon, and
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`other location determination and sensing technologies and services.
`
`9.
`
`I have extensive expertise in all aspects of LBS delivery across the
`
`wireless location ecosystem including enabling network, map data, geospatial
`
`platform, chipset, data management, device, and location determination
`
`infrastructure and integration providers. I am an expert in all related aspects of
`
`LBS, including data privacy and security management.
`
`10. For example, I managed the development and launch of several
`
`consumer-oriented LBS applications including mobile social networking, family
`
`tracking and local search for a major wireless carrier (AT&T). This work included
`
`the development of corporate-wide location data privacy policies and their
`
`systemic implementation for all LBS customers. My work in both data privacy and
`
`3
`
`
`
`mobile social networking resulted in my co-inventing a patent in this field titled
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`“Method and Apparatus for Providing Mobile Social Networking Privacy.” (U.S.
`
`Patent Number 8,613,109, issued on December 17, 2013). This patent also
`
`involved obtaining consent from account owners for location tracking and
`
`providing periodic notifications to account members that their location was being
`
`tracked.
`
`11.
`
`I also managed the launch, updates to, and ongoing product
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`management of numerous business mobile resource management (MRM) products
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`on behalf of AT&T. These products include applications and supporting
`
`subsystems for field worker tracking and management, fleet/vehicle tracking and
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`management, and asset tracking and management. Several of these products were
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`targeted at the freight hauling/delivery tracking and management industry. I also
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`gained additional knowledge relating to the fleet/vehicle freight-hauling industry
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`while assisting FedEx and Geotab with projects involving fleet management,
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`vehicle and freight monitoring, and GPS tracking.
`
`12.
`
`I also have a great deal of experience related to E911 systems. For
`
`example, in 2003-2004, I consulted with AT&T Wireless on their implementation
`
`of E911 systems. Specifically, I led the development of implementation and
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`monitoring of systems in AT&T Wireless Western Region as part of their
`
`4
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`
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`deployment of TDOA (Time Difference of Arrival) non-GPS E911 network
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`location infrastructure to meet the wireless E911 location requirements mandated
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`by the FCC. In 2004-2005, I worked with NAVTEQ, a key provider of LBS and
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`E911 location map data, in developing their application developer ecosystem and
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`website, providing developers with access to all of NAVTEQ’s product and
`
`technical resources for developing location-related applications, including data
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`products involving 911 GIS (Geographical Information Systems).
`
`13.
`
`I have authored multiple books on wireless location, including:
`
`• The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless Location-
`
`Based Services (2005 and 2009 versions);
`
`• The Definitive Guide to Wireless E911; and
`
`• The Definitive Guide to Mobile Positioning and Location Management
`
`(co-author).
`
`14.
`
`I received a B.S. degree, in Electrical Engineering, from Purdue
`
`University in 1983 with top honors. I received an MBA degree in Information
`
`Systems Management from The University of Texas at Austin in 1987, also with
`
`top honors.
`
`5
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`
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`IV. LEGAL STANDARDS
`In preparing my analysis, I have applied the legal standards described
`15.
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`below, which were provided to me by counsel for the Patent Owner. I have been
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`provided with an understanding of the legal standards sufficient to conduct the
`
`analysis given in this report.
`
`A. My Understanding Of Claim Construction
`
`16.
`
`I understand that, during an inter partes review, claims are to be given
`
`their broadest reasonable construction in light of the specification as would be read
`
`by a person of ordinary skill in the relevant art (“POSITA”). I understand that only
`
`those terms that are in controversy need be expressly construed, and then only to
`
`the extent necessary to resolve the controversy.
`
`B. My Understanding Of Obviousness
`
`17.
`
`I understand that a patent claim is invalid if the claimed invention
`
`would have been obvious to a person of ordinary skill in the field at the time the
`
`application was filed. This means that even if all of the requirements of the claim
`
`cannot be found expressly in a single prior art reference that would anticipate the
`
`claim, the claim can still be invalid.
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`6
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`
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`18. As part of this inquiry, I have been asked to consider the level of
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`ordinary skill in the field that someone would have had at the time the claimed
`
`invention was made. In deciding the level of ordinary skill, I considered the
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`following:
`
`•
`
`•
`
`•
`
`the levels of education and experience of persons working in the field;
`
`the types of problems encountered in the field; and
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`the sophistication of the technology.
`
`19. To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an
`
`invention is obvious when the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a POSITA.
`
`20.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how the prior art references could have been combined or modified in
`
`order to create the inventions claimed in the asserted claim.
`
`7
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`
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`I also understand that prior art references can be combined or
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`21.
`
`modified under several different circumstances. For example, it is my
`
`understanding that one such circumstance is when a proposed combination of prior
`
`art references results in a system that represents a predictable variation, which is
`
`achieved using prior art elements according to their established functions. It is also
`
`my understanding that prior art references can be combined when the combination
`
`could be performed using known techniques, and if the corresponding results
`
`would have been predictable to a POSITA.
`
`22.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`analysis. I understand there may be a number of rationales that may support a
`
`conclusion of obviousness, including:
`
`• Combining prior art elements according to known methods to yield
`
`predictable results;
`
`• Substitution of one known element for another to obtain predictable
`
`results;
`
`• Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`8
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`
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`• Applying a known technique to a known device (method, or product)
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`ready for improvement to yield predictable results;
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`• “Obvious to try” – choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`• Known work in one field of endeavor may prompt variations of it for use
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`in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary
`
`skill in the art; or
`
`• Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
`
`prior art teachings to arrive at the claimed invention.
`
`23.
`
`I understand that it is not proper to use hindsight to combine
`
`references or elements of references to reconstruct the invention using the claims
`
`as a guide. My analysis of the prior art is made as of the time the invention was
`
`made.
`
`24.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious. Such indicia include:
`
`commercial success of products covered by the patent claims; a long-felt need for
`
`the invention; failed attempts by others to make the invention; copying of the
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`9
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`
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`invention by others in the field; unexpected results achieved by the invention as
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`compared to the closest prior art; praise of the invention by the infringer or others
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`in the field; the taking of licenses under the patent by others; expressions of
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`surprise by experts and those skilled in the art at the making of the invention; and
`
`the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`25. Mr. Denning states that a POSITA would have been “a person having
`
`at least a Bachelor of Science degree (or equivalent) in Computer Engineering,
`
`Computer Science, or Electrical Engineering and two to three years of experience
`
`in the fields of telecommunications, location/navigation including tracking
`
`technologies, geolocation, triangulation and/or GPS.” Petition at 22; Ex. 1002 at ¶
`
`35.
`
`26. Based on my experience, I disagree with Mr. Denning’s definition. It
`
`is my view that a POSITA must also have an understanding of the freight-hauling
`
`industry. It is therefore my opinion that a POSITA would have been “a person
`
`having at least a Bachelor of Science degree (or equivalent) in Computer
`
`Engineering, Computer Science, or Electrical Engineering, with a working
`
`knowledge of the freight-hauling industry, and having and two to three years of
`
`10
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`
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`experience in the fields of telecommunications, location/navigation including
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`tracking technologies, geolocation, triangulation and/or GPS.”
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`27.
`
`I believe that I am qualified to provide opinions as to what a POSITA
`
`would have understood, known, or concluded at the time of the earliest priority
`
`date of the application for ’659 patent, which I have been instructed to assume is
`
`March 26, 2012.
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`VI. OVERVIEW OF THE ’659 PATENT
`28. The description of the ’659 patent provided by Mr. Denning is mostly
`
`fair, but in my opinion de-emphasizes the fact that the field of art for the ’659
`
`patent is monitoring freight-hauling vehicles. The ’659 patent is directed to a
`
`system (a machine or group of machines) that monitors the location of a freight-
`
`hauling vehicle or freight carried by the vehicle. Ex. 1001 at Abstract. As shown in
`
`Figure 1 of the ’659 patent (see below) the system 100 includes a communications
`
`interface 120 and a correlation logic 170, a communications device 110, a
`
`requesting party 160, a receiving party 165, a location information provider 150,
`
`and a network 155. Id. at 4:24-31. The location information provider “has access to
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`the location of the vehicle 105 or the device 110. The location information
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`provider 150 may be a wireless service provider that provides wireless service in a
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`network 155. Id. at 4:34-38.
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`Id. at FIG. 1.
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`29. According to the ’659 patent, before the system can track the location
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`of a mobile device, the mobile device user must consent to the transmission of
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`location information. Figure 3 of the ’659 patent illustrates an embodiment of a
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`system:
`
`12
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`Id. at FIG. 3.
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`30. The requesting party 160 is a party or device seeking to monitor the
`
`vehicle 105 (or to allow another party to monitor the vehicle 105). In a freight-
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`hauling application the requesting party may be the freight hauling service provider
`
`(the freight carrier). Id. at 4:54-66. The receiving party is a party or device that
`
`13
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`
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`receives the location of the vehicle from the system 100 to monitor the location of
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`the vehicle 105. Id. at 4:51-56. The location information determined by the
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`location information can be derived by “1) techniques that require the device to
`
`incorporate a global positioning system (GPS) receiver, and 2) techniques that use
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`some form of radiolocation from the device’s network and do not require the
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`device to incorporate a GPS receiver.” Id. at 7:10-13.
`
`31. The system requires consent from the user of the mobile device to
`
`monitor the location of the vehicle. Figure 3 illustrates an example of validation
`
`logic 130 that is programmed to identify the device 110 so that the correct user
`
`(e.g., a driver of a vehicle 105) is notified that the location of the vehicle 105 will
`
`be monitored, and that such user consents to the monitoring of the location. Id. at
`
`8:37-55.
`
`32. Consent can be obtained in numerous ways including telephone calls
`
`and/or automated voice messages. Id. at 8:37-9:7. The user’s device 110 sends data
`
`to the communications interface 120 indicating user consent to monitoring the
`
`location of the vehicle 105. Id. at 9:4-25. For example, the user may indicate
`
`consent by performing an action, such as pressing the number 1, or speaking, such
`
`as by saying “yes.” Id. The consent for location monitoring can be revoked, or
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`temporarily paused by the user. Id. at 10:5-38.
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`14
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`33. The communications interface 120 transmits a request for the location
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`information of device 110 and receives the location information of the device from
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`the location information provider 150. Id. at 5:31-38. Correlation logic then
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`correlates the location information of the device 110 to the location information of
`
`the vehicle 105. Id. at 5:38-40. These associations can be stored in a database. Id.
`
`at 5:19-21; see, FIG. 2.
`
`VII. TECHNOLOGY BACKGROUND
`34. The freight-hauling industry has a long history of utilizing technology
`
`to improve operations. In the 1970’s Citizen Band (CB) radios fostered a way of
`
`communicating with and between truck drivers for an industry that previously had
`
`very little way of knowing where vehicles were with any degree of specificity
`
`other than drivers calling in at gas stations using payphones.1
`
`35. The 1980s brought about trucking deregulation, with the mid-1980s
`
`beginning the formalization of tracking drivers time and hours for a variety of
`
`
`
`1 CB Radios also fostered a nationwide craze, including with songs and movies,
`
`such as Smokey and The Bandit.
`
`
`
`15
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`
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`purposes. Systems such as AOBRD (Automatic Onboard Recording Devices)
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`became increasingly used in the industry, and became formally required in 1988
`
`with Rule 49 CF 395.15 (the AOBRD Rule) by the Federal Motor Carrier Safety
`
`Administration.2
`
`Example of AOBRD Device3
`
`
`
`36. According to the rule, AOBRD (for hand-held devices) was defined
`
`as:
`
`
`
`2 Ex. 2003, https://www.fmcsa.dot.gov/faq/what-are-differences-specs-1988-aobrd-
`
`rule-and-eld-rule
`
`3 Ex. 2004, https://unitedworldtransportation.com/eld-mandate-updates-violation-
`
`information-device-introduction-pricing-reviews-drivers-need-know/
`
`
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`16
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`“an electric, electronic, electromechanical, or mechanical device
`capable of recording driver’s duty status information accurately and
`automatically as required by 391.15. The device must be integrally
`synchronized with specific operations of the commercial motor
`vehicle in which it is installed. At a minimum, the device must record
`engine use, road speed, miles driven, the date and the time of day.”4
`
`37. The specifics of the rule provided a practical “floor” for any
`
`technology used to adhere to the 391.15 rule. In particular, as highlighted above it
`
`must be “integrally synchronized with specific operations of the commercial motor
`
`vehicle in which it is installed.” As a practical matter, this meant that any
`
`device/application not synchronized with the motor vehicle (such as the Adelson
`
`invention) would not meet the 395.15 requirements.
`
`38. Beyond AOBRD, the freight-hauling industry continued to use
`
`technology to improve operations and address key issues to field ever-more-
`
`efficient fleets. In the 2000s, “Driver Scorecards” began widespread adoption,
`
`using technology to identify operational problems, including monitoring and
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`scoring drivers for positive (and negative) driving behaviors, using devices that
`
`
`
`4 Ex. 2005, http://www.ct.gov/dmv/lib/dmv/cv_bulletins/2012-05-automatic-on-
`
`board-recording-devices-aobrds-hand-held-created-06-06-12.pdf (emphasis in
`
`original)
`
`17
`
`
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`IPR2017-02018
`U.S. Patent No. 9,429,659
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`plugged into a vehicle’s On-Board Diagnostics (OBD) port, such as the one below,
`
`that allowed key vehicle, engine, and driver-related parameters to be captured and
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`communicated back to a central server for processing and reporting.
`
`Use of OBD Port for Vehicle Data Capture5
`
`
`
`
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`5 Ex. 2006, https://www.fleetfinancials.com/72619/small-hardware-device-
`
`provides-gps-fleet-tracking-capabilities
`
`
`
`18
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`IPR2017-02018
`U.S. Patent No. 9,429,659
`
`
`History of Geotab OBD Devices6
`
`
`
`39.
`
`It is important to note that the industry readily recognized the utility,
`
`efficiency, and cost effectiveness of using OBD devices via a standardized port for
`
`all kinds of data capture, as illustrated by the timeline above of devices by
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`AOBRD-maker, Geotab. This included incorporating GPS antenna and chipsets
`
`into OBD devices such as the above, with the Geotab GO5 device for example,
`
`launched in 2011, being integrated with GPS capability.7 This system integration
`
`of a location determination/collection function with driver/vehicle record keeping
`
`
`
`6 Ex. 2007, https://www.geotab.com/blog/geotab-go-device-past-present-future/
`
`7 Ex. 2008, https://www.geotab.com/press-release/u-blox/
`
`19
`
`
`
`and engine data collection decreased costs and improved efficiencies, since a
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`IPR2017-02018
`U.S. Patent No. 9,429,659
`
`
`single integrated device inserted into a universal standardized OBD port was used.
`
`40. At the time of the ’659 patent filing in 2012, it was becoming clear
`
`that government was going to again “upgrade” the reporting requirements of the
`
`freight-hauling industry, requirements that up to then had been mostly voluntarily
`
`(and extensively) addressed in some form by the industry. The Moving Ahead for
`
`Progress in the 21st Century Bill ("MAP-21"; P.L. 112-141) included a provision
`
`requiring the Federal Motor Carrier Safety Administration (FMCSA)—the primary
`
`regulatory body for the freight-hauling industry—to develop a rule mandating the
`
`use of electronic logging devices.8 MAP-21 was signed into law on July 6, 2012
`
`and included many provisions intended to help the Federal Motor Carrier Safety
`
`Administration (FMCSA) in its important mission to reduce crashes, injuries and
`
`fatalities involving large trucks and buses. Id. Many of the provisions in MAP-21
`
`
`
`8 https://www.fmcsa.dot.gov/mission/policy/map-21-moving-ahead-progress-21st-
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`century-act
`
`
`
`20
`
`
`
`track the Agency's strategic framework to improve commercial motor vehicle
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`IPR2017-02018
`U.S. Patent No. 9,429,659
`
`
`(CMV) safety.9
`
`41. While the final rule not issued until December 2015, at the time of the
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`’659 filing it had become obvious to the industry that the “ELD ( Electronic
`
`Logging Device) Mandate” would increase the need for and use of technology to
`
`meet the additional requirements envisioned by MAP-21, such as additional/more
`
`frequent data collection regarding engine efficiencies, driver safety, and (of
`
`particular importance) overall synchronization/coordination of when and how data
`
`was collected and how such data was related to (e.g., synchronized) with each
`
`other.10 As early as 2011 the industry was anticipating how these new “Electronic
`
`On-Board Recording Devices” were going to change the industry.11
`
`
`
`9 Ex. 2009,
`
`https://www.fmcsa.dot.gov/sites/fmcsa.dot.gov/files/docs/FMCSA%20Implementa
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`tion%20of%20MAP-21-%20Overview-Agenda-Qs%209-28-12.pdf
`
`10 Ex. 2003.
`
`11 Ex. 2010, https://www.frg-law.com/blog/the-future-of-electronic-on-board-
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`recording-devices-in-the-u-s/
`
`
`
`21
`
`
`
`42. Not only did these additional requirements come to fruition in the
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`IPR2017-02018
`U.S. Patent No. 9,429,659
`
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`final rule making, the expectation that the system(s) needed to collect, synchronize,
`
`process, and report this data would need to be an integrated, all-in-one multi-
`
`function also became a reality, and conversely, single-function systems would
`
`become impractical or at the very least not meet the ELD Mandate.
`
`43.
`
`Indeed, as an industry publication stated shortly after the ELD
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`Mandate was finalized in December 201512:
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`An ELD must connect to the truck’s engine computer (ECM). The
`primary reason for is so the ELD can detect when the truck is
`being driven, and put the driver into Driving status automatically.
`Solutions that run only on a smart phone using GPS to detect
`motion without any connection to the ECM are NOT a valid
`ELD.13
`
`44. Thus, the clear freight-hauling industry direction at the time of March
`
`2012 (the earliest priority date of the ’659 patent) was towards a sophisticated,
`
`integrated, multi-function, synchronized, all-in-one system to meet operational and
`
`
`
`12 Again, while the ELD Mandate was finalized and issued in December 2015, the
`
`rule making process began in 2012, with the passage of the MAP-21 bill—
`
`legislation that had been in progress in 2011, before the ‘659 patent filing date.
`
`13 See http://eldratings.com/mandate/
`
`22
`
`
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`regulatory requirements that were not met by the systems of the ’659 patent. The
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`IPR2017-02018
`U.S. Patent No. 9,429,659
`
`
`“solution” of the ’659 patent at that time did not meet these existing and upcoming
`
`requirements of the industry and its regulatory bodies, and therefore in my opinion
`
`would not have been considered obvious by a POSITA.
`
`VIII. SUMMARY OF PRIOR ART IDENTIFIED BY PETITIONER
`45. The claims at issue in the Petition are addressed in Grounds 1-3.
`
`Petitioner relies on U.S. Patent No. 7,130,630 to Enzmann et al. (“Enzmann”) as a
`
`primary reference with secondary references U.S. Patent No. 8,045,995 to King et
`
`al. (“King”) and U.S. Patent No. 8,395,547 to Dhanani et al. (“Dhanani”).
`
`A. Enzmann
`
`46. Enzmann describes a location query service for use with a wireless
`
`network that tracks the location of network devices. Ex. 1004 at Abstract. “The
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`service provides requestors with the locations of network users, based on the
`
`locations of the user’s wireless network devices.” Id. at 2:5-7. For example, “the
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`location query service receives a location query from a requestor for a network
`
`user, retrieves the location information of the network user, and returns the
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`location information to the requestor. The requestor may be an authorized
`
`requestor and the service authenticates that the requestor is authorized before
`
`23
`
`
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`returning the location information to the requestor.” Id. at 2:17-23. However, “[i]f
`
`IPR201
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