UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`RUIZ FOOD PRODUCTS INC.,
`PETITIONER,
`
`v.
`
`MACROPOINT LLC,
`
`PATENT OWNER.
`
`________________________________
`
`Case IPR2017-02018
`Patent 9,429,659
`
`________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________________
`
`RUIZ FOOD PRODUCTS INC.,
`PETITIONER,
`
`v.
`
`MACROPOINT LLC,
`
`PATENT OWNER.
`
`________________________________
`
`Case IPR2017-02018
`Patent 9,429,659
`
`________________________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`A PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ................. 2
`
`III. CLAIM CONSTRUCTION ............................................................................ 6
`
`A.
`
`Broadest reasonable interpretation of claims does not limit
`
`claims to a “freight-carrying vehicle” ................................................... 6
`
`B.
`
`Scope of “freight-carrying vehicle” ...................................................... 8
`
`IV. CLAIMS 1-30 ARE UNPATENTABLE ........................................................ 9
`
`A.
`
`Patent Owner Does Not Dispute Enzmann Renders Obvious
`
`Monitoring Location of a Vehicle ....................................................... 10
`
`B.
`
`Enzmann Renders Obvious Monitoring the Location of a
`
`Freight-Carrying Vehicle .................................................................... 12
`
`C.
`
`Enzmann renders obvious monitoring the location of a vehicle
`
`of a freight service provider (claims 6, 18 and 27). ............................ 20
`
`D.
`
`Enzmann renders obvious an indication of consent in the form
`
`of receipt of location information from location information
`
`provider (claim 7) ................................................................................ 21
`
`E.
`
`Claims 5, 7 and 26 under 35 U.S.C. § 103 are unpatentable over
`
`Enzmann in view of King .................................................................... 25
`
`F.
`
`Claims 11 and 16 under 35 U.S.C. § 103 are unpatentable over
`
`Enzmann in view of Dhanni ................................................................ 25
`
`V.
`
`CONCLUSION .............................................................................................. 26
`
`
`
`
`
`
`ii
`
`
`
`
`
`LIST OF EXHIBITS
`
`
`
`Exhibit 1001 U.S. Patent No. 9,429,659 (“the ‘659 patent”)
`
`Exhibit 1002 Expert Declaration of Scott Denning
`
`Exhibit 1003 Scott Denning CV
`
`Exhibit 1004 U.S. Patent No. 7,130,630 to Enzmann et al. (“Enzmann”)
`
`Exhibit 1005 U.S. Patent No. 8,045,995 to King et al. (“King”)
`
`Exhibit 1006 U.S. Patent No. 8,395,547 to Dhanani et al. (“Dhanani”)
`
`Exhibit 1007
`
`Prosecution File History of the ‘659 Patent (“the ‘659 prosecution
`history”)
`
`Exhibit 1008
`
`CTIA, Best Practices and Guidelines for Location-Based Services,
`May 23, 2012
`
`Exhibit 1009 U.S. Design Patent No. D580,387 to Andre et al. (“Andre”)
`
`Exhibit 1010 U.S. Patent No. 6,833,811 to Zeitfuss et al. (“Zeitfuss”)
`
`Exhibit 1011 U.S. Patent No. 7,864,163 to Ording et al. (“Ording”)
`
`
`
`
`iii
`
`
`
`
`
`Exhibit 1012
`
`Order Dismissing Complaint Without Prejudice, FourKites, Inc. v
`MacroPoint, LLC, Case No. 1:16-cv-02703-CAB (N.D. Ohio) (entered
`on June 27, 2017)
`
`Exhibit 1013
`
`Proof of Service of Complaint of Patent Infringement, MacroPoint,
`LLC v Ruiz Food Products, Inc., 6:16-cv-01133 (E.D. TX) (served on
`August 31, 2016)
`
`Exhibit 1014
`
`Complaint of Patent Infringement, MacroPoint, LLC v Ruiz Food
`Products, Inc., 6:16-cv-01133 (E.D. TX)
`
`Exhibit 1015 U.S. Patent No. 4,736,290 to McCallion (“McCallion”)
`
`Exhibit 1016 U.S. Patent No. 4,467,420 to Murakami (“Murakami”)
`
`Exhibit 1017 U.S. Patent No. 4,768,150 to Chang et al. (“Chang”)
`
`Exhibit 1018 U.S. Patent Publication No. 2008/0186166 to Zhou et al. (“Zhou”)
`
`Exhibit 1019 Rebuttal Expert Report of Ivan Zatkovich
`
`
`
`
`iv
`
`
`
`
`
`Exhibit 1020 Deposition Transcript of David H Williams
`
`Exhibit 1021
`
`Joint claim construction chart, submitted in MacroPoint, LLC v Ruiz
`Food Products, Inc., 6:16-cv-01133 (E.D. TX) (submitted on
`September 14, 2017)
`
`
`
`
`
`
`
`v
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Unable to defend the patentability of the claims as issued, Patent Owner
`
`proposes an unfounded claim construction and a level of one of ordinary skill in
`
`the art that attempts to limit the claims to the field of freight. While the
`
`independent claims plainly recite “vehicle or freight carried by the vehicle,” Patent
`
`Owner argues this limitation should not be interpreted as covering any “vehicle”
`
`but only a “freight carrying vehicle.” PO Resp. at 8. Patent Owner also argues that
`
`a person having ordinary skill in the art must have “a working knowledge of the
`
`freight-hauling industry.” PO Resp. at 16.
`
`These new “freight” requirements are inconsistent with the broadest
`
`reasonable interpretation of the claims in light of the specification of the ’659
`
`patent. Moreover, Patent Owner has no credibility in arguing these “freight”
`
`requirements when Patent Owner’s expert testimony and statements in the co-
`
`pending litigation reflect the same level of skill in the art and constructions as
`
`relied on by Petitioner in this IPR. Ex. 1019 at ¶¶ 45-47 (Patent Owner’s litigation
`
`expert report on level of skill in the art) and Ex. 1021 at 5-8 (Joint claim
`
`construction chart).
`
` However, even if the Board were inclined to adopt these “freight”
`
`requirements, the prior art would still render the claims unpatentable. The Petition
`
`already demonstrates how claims 6, 18 and 27 are obvious over Enzmann even
`
`
`
`1
`
`
`
`
`
`though they expressly recite “freight service provider” and “freight services.” See
`
`e.g., Pet. at 43-45 and Ex. 1002 at ¶¶140-143. The primary rebuttal to these
`
`arguments provided by Patent Owner is that federal regulations for some
`
`commercial vehicles were driving to a solution other than what is claimed in the
`
`’659 patent. While there is little evidence to back up such a theory, it is irrelevant
`
`because even if the claims are limited to “freight carrying vehicles” the claims are
`
`not limited the types of commercial vehicles covered in the cited regulations.
`
`The only argument raised by Patent Owner not related to “freight” is for
`
`claim 7 where Patent Owner argues the proposed modification would produce
`
`some negative consequence. Yet, Patent Owner does not rebut that the proposed
`
`modification also provides benefits that would lead a person of ordinary skill in the
`
`art to make the modification. Patent Owner presents no separate arguments for
`
`claims 3-5, 8-11, 13-17, 19-22, 24-26 or 28-30, so those claims stand or fall with
`
`the independent claims.
`
`Accordingly, the Board should find claims 1-30 to be unpatentable.
`
`II. A PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`
`Patent Owner argues that Petitioner’s definition of a POSITA “is flawed”
`
`because it does not include a requirement that a POSITA have “a working
`
`knowledge of the freight-hauling industry.” PO Resp. at 16-17 (citing Ex. 2001,
`
`Williams Dec. ¶¶ 25-27). Patent Owner’s position is based on the premise that the
`
`
`
`2
`
`
`
`
`
`claims must be construed to mean “freight carrying vehicle.” Id. (citing Ex. 2001,
`
`Williams Dec. ¶¶ 28-33). However, this interpretation of the ’659 patent and its
`
`claims is incorrect for the reasons discussed below with regards to Patent Owner’s
`
`claim construction.
`
`Yet, even without considering claim construction, the Board should give no
`
`weight to Patent Owner’s definition of a POSITA in this IPR because it is directly
`
`contradicted by definition of a POSITA provided by Patent Owner’s expert (Mr.
`
`Zatkovich) in the co-pending litigation, which Patent Owner relied on. Ex. 1019
`
`at ¶¶ 45-47. Patent Owner’s expert in this IPR, Mr. Williams, conceded that Mr.
`
`Zatkovich and Mr. Denning’s definition were consistent but maintained his
`
`disagreement with that definition. See Ex. 1020 at 88:18-22 (“Q. This definition
`
`provided by Mr. Zatkovich would be consistent with the definition provided by
`
`Mr. Denning, is that right? A. I have to compare word to word, but on the surface it
`
`seems the same); see also Id. at 87:5-88:9 (Mr. Williams disagreeing with the
`
`definition provided by Mr. Zatkovich).
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`A comparison of the three different definitions of a POSITA are presented
`
`below, with the requirement related to “freight” highlighted in Patent Owner’s IPR
`
`definition.
`
`Petitioner
`IPR1
`“a person of ordinary skill in the
`art at the time of the invention
`(“POSITA” or “person of skill”)
`would have had a bachelor’s
`degree in electrical engineering,
`computer engineering, computer
`science, or a related discipline,
`and at least two to three years of
`relevant experience in the fields
`of telecommunications,
`location/navigation including
`tracking technologies,
`geolocation, triangulation and/or
`GPS.”
`
`
`Patent Owner
`Patent Owner
`IPR
`Litigation
`“a person of ordinary skill in “a person having at least a
`
`the art of the ’358 and ’659
`Bachelor of Science degree (or
`Patents in the 2012 time
`equivalent) in Computer
`period would have at least a
`Engineering, Computer Science,
`Bachelor’s degree in
`or Electrical Engineering, with a
`computer science, electrical
`working knowledge of the
`freight-hauling industry, and
`engineering, or a related
`having and two to three years of
`discipline and 2 years of
`experience in the fields of
`experience in the relevant
`telecommunications,
`technical field of geolocation
`location/navigation including
`and mobile communications
`tracking technologies,
`or the equivalent.”
`geolocation, triangulation and/or
`GPS.”
`
`Incredibly, the Patent Owner argues that Mr. Denning’s testimony is
`
`“flawed” even though it is based same definition of a POSITA that Patent Owner
`
`and its expert have relied in the co-pending litigation. PO Resp. at 16. However,
`
`even if the Board were to entertain Patent Owner’s narrower POSITA definition,
`
`Mr. Denning has the requisite experience and knowledge through consulting with
`
`
`1 The definition provided by Petitioner’s litigation expert is substantially similar to
`the definitions provided by Mr. Denning and Zatkovich and likewise has no
`requirement of “freight” experience.
`
`
`
`4
`
`
`
`
`
`companies in the freight hauling industry, which Mr. Williams acknowledged was
`
`sufficient during his deposition. See Ex. 1020 at 85:4-7 (“Q. So one could acquire
`
`knowledge or an understanding of the freight hauling industry by consulting with
`
`companies in that industry? A. I certainly did.”); see also 83:5-85:3. Specifically,
`
`Mr. Denning “[d]esigned and presented vehicle tracking prototypes to Coca Cola
`
`and closed $1.2M in preproduction orders” during his time at NAVSYS. Ex. 1003
`
`at 6. Mr. William’s admits Coca-Cola delivery trucks are a “freight carrying
`
`vehicle” which shows that Mr. Denning had obtained a working knowledge of the
`
`freight-hauling industry by virtue of him designing tracking prototypes for Coca-
`
`Cola’s freight carrying vehicles and is therefore. Ex. 1020 at 115:3-19 and 122:25-
`
`123:11.
`
`Finally, Patent Owner’s suggestion that Mr. Denning’s testimony must be
`
`“disregarded” is baseless. His testimony would still be relevant because he is
`
`“qualified in the pertinent art” which the ‘659 patent defines as “related to a
`
`machine or group of machines for monitoring location.” Sundance, Inc. v.
`
`DeMonte Fabricating Ltd., 550 F.3d 1356, 1363–64 (Fed. Cir. 2008); Ex. 1001 at
`
`1: 7-8. Moreover, Mr. Denning’s testimony would likewise remain relevant even
`
`wrongly assuming there isn’t a perfect match between his experience and the
`
`relevant field. SEB S.A.v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed.
`
`Cir. 2010).
`
`
`
`5
`
`
`
`
`
`Therefore Mr. Denning is qualified as a POSITA under both Petitioner’s and
`
`Patent Owner’s definition of a POSITA and the Board should accord his testimony
`
`full weight.
`
`III. CLAIM CONSTRUCTION
`
`A. Broadest reasonable interpretation of claims does not limit claims
`to a “freight-carrying vehicle”
`
`Under the broadest reasonable construction standard, claim terms are given
`
`their ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). While the proposed construction of “freight-
`
`carrying vehicle” is indisputably narrower than the ordinary meaning of “vehicle,”
`
`Patent Owner contends that language in the independent claims’ preambles, as well
`
`as the specification, support such a construction. Id. Neither of those contentions
`
`are true.
`
`First, the preamble language of “monitoring location of at least one of a
`
`vehicle or freight carried by the vehicle” does not require the proposed
`
`construction. Patent Owner argues that “freight carried by the vehicle” means that
`
`carrying freight must be imputed on “vehicle.” PO Resp. at 8. The problem with
`
`this logic is that takes an optional element of the claim, “freight carried by the
`
`vehicle,” and makes it mandatory. The fact that the freight being monitored in the
`
`second option can be carried by the same vehicle being monitored in the first
`
`
`
`6
`
`
`
`
`
`option does not mandate that the vehicle recited in the first option must carry
`
`freight.
`
`Patent Owner’s construction is also improper because it would read a
`
`preferred embodiment of “freight hauling vehicles” from the specification into the
`
`claims. PO Resp. at 8 (citing Ex. 1001 at 4:16-17). Unsurprisingly, Patent Owner’s
`
`citation to the ’659 patent leaves out the very next sentence that explicitly states
`
`the patent is not limited to “freight hauling vehicles.” The relevant paragraph is
`
`provided below to provide the full context:
`
`In the present disclosure, embodiments are described in the context of
`
`location of freight hauling vehicles. It will be appreciated, however,
`
`that the exemplary context of freight hauling vehicles is not the only
`
`operational environment in which aspects of the disclosed systems
`
`and methods may be used. Therefore, the techniques described in this
`
`disclosure may be applied to many types of apparatus, vehicles or
`
`devices whose location information may be of interest.
`
`Ex. 1001 at 4:16-23 (emphasis added); see also id. at 21:16-32 (“the invention is
`
`not limited to the specific details, and illustrative examples shown or described.”);
`
`Ex. 1020 at 105:20-106:14 (Patent Owner’s expert agrees specification is not
`
`limited to freight hauling vehicles).
`
`
`
`The use of the conjunction “or” in the claims to denote separate options and
`
`the broad nature of the specification explicitly extending the scope beyond freight
`
`hauling, requires the broadest reasonable interpretation of a “vehicle” to be its
`
`
`
`7
`
`
`
`
`
`ordinary meaning, rather than limited to “freight-carrying vehicle.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (the “‘ordinary
`
`meaning’ of a claim term is its meaning to the ordinary artisan after reading the
`
`entire patent.”).
`
`
`
`Finally, even if the Board were to construe “vehicle” to mean “freight-
`
`carrying vehicle” the claims would still be obvious. As discussed below, Patent
`
`Owner’s alleged distinction between the location monitoring of non-freight-
`
`carrying vehicles and freight-carrying vehicles is unfounded.
`
`B.
`
`Scope of “freight-carrying vehicle”
`
`
`
`Next, if the Board agrees to adopt Patent Owner’s construction, it must then
`
`resolve the issue of scope of “freight-carrying vehicle.” This issue is important as
`
`the Patent Owner’s arguments to distinguish the prior art are premised on certain
`
`commercial vehicle regulations, and thus the question is if the construed term
`
`“freight-carrying vehicle” falls within these regulation or includes vehicles that fall
`
`outside of these regulations.
`
`
`
`When asked to provide his understanding of “freight” during his deposition,
`
`Mr. Williams stated it was “plain and ordinary meaning of something that needs to
`
`be carried or hauled around” or “something that needs to be moved from one place
`
`to another.” Ex. 1020 at 108:22-109:22. Mr. Williams also answered it was not
`
`limited to commercial purposes as the patent does not make “a distinction between
`
`
`
`8
`
`
`
`
`
`commercial and noncommercial.” Id. at 109-2-7. Mr. Williams also conceded that
`
`examples such as a sedan carrying a laptop, a pizza delivery vehicle, or a taxi could
`
`be considered a “freight-carrying vehicle” by testifying they are a “gray area,”
`
`“you could argue that’s a freight hauling vehicle,” or “depends on your
`
`interpretation.” Ex. 1020 at 109:23 –115:19.
`
`
`
`In light of the testimony of Mr. Williams, the plain and ordinary meaning of
`
`“freight carrying vehicle” in the context of the ’659 patent is broad enough to
`
`encompass any vehicle that moves something from one place to another, including
`
`non-commercial vehicles. The scope of “freight-carrying vehicle” is certainly not
`
`limited to semi tractor-trailers or other large commercial vehicles. See Ex. 1001 at
`
`4:16-23 (“techniques described in this disclosure may be applied to many types of
`
`apparatus, vehicles or devices”) (emphasis added) and 21:16-32.
`
`
`
`Therefore, even if the Board adopts the Patent Owner’s proposed claim
`
`construction of “freight-carrying vehicle,” the scope of the claims would not be
`
`limited to the large commercial vehicles that Patent Owner’s arguments are
`
`premised on.
`
`IV. CLAIMS 1-30 ARE UNPATENTABLE
`
`
`
`Patent Owner’s arguments for the patentability of the independent claims
`
`rests entirely on the reading of “freight” into the claims through its proposed
`
`definition of a POSITA and claim constructions. If the Board does not adopt Patent
`
`
`
`9
`
`
`
`
`
`Owner’s proposals, then Patent Owner has no substantive response to the
`
`unpatentability arguments presented in the Petition, except for claim 7. However,
`
`even if the Board should agree with the Patent Owner’s proposal to read a freight
`
`requirement into the claims, the prior art would still render the claims obvious as
`
`described below.
`
`A.
`
`Patent Owner Does Not Dispute Enzmann Renders Obvious
`Monitoring Location of a Vehicle
`
`While Patent Owner disputes that Enzmann “discloses” monitoring location
`
`of vehicles (i.e., vehicle fleet management) because the only explicit discussion of
`
`vehicle tracking in Enzmann is in the background section (PO Resp. at 20-22), that
`
`dispute is irrelevant because the ground of rejection is obviousness rather than
`
`anticipation. The Petition makes clear that “Enzmann’s primary embodiment is to
`
`obtain location information of [a] user associated with a mobile device” but that “it
`
`would have been obvious to estimate the location of a vehicle using Enzmann’s
`
`system, particularly in light of Enzmann’s teaching that location systems were
`
`useful for fleet tracking.” Pet. at 23.
`
`To the extent that Patent Owner’s argument is intended to mean that the
`
`discussion of vehicle tracking in the background section of Enzmann cannot be
`
`used to demonstrate obviousness, the Federal Circuit has firmly rejected that
`
`position. For instance, in WesternGeco, the PTAB found the claims unpatentable in
`
`a Final Written Decision and the patent owner appealed to the Federal Circuit
`
`
`
`10
`
`
`
`
`
`arguing that the prior art “does not explicitly disclose a ‘global control system’ and
`
`that the Board improperly mixed the [prior art’s] background discussion with its
`
`detailed description.” WesternGeco LLC v. Ion Geophysical Corp., Appeal 16-
`
`2099, p. 32 (slip op. May 7, 2018). The Federal Circuit held there was “no error in
`
`this case from the Board’s use of a reference’s background to furnish context for
`
`how a skilled artisan would understand the reference’s disclosed embodiments.”
`
`Id.
`
`As indicated by Mr. Denning, a POSITA would have modified Enzmann to
`
`locate vehicles and freight in light of Enzmann’s background and the knowledge of
`
`one of skill in the art that location monitoring was especially useful fleet managers.
`
`Ex. 1002 at ¶84. In addition, because Enzmann queries the location of a wireless
`
`mobile device, the location monitoring method taught by Enzmann could be used
`
`to track any of a vehicle, freight carried by the vehicle, or a user that are associated
`
`with the mobile device. Id. at ¶¶85, 106 and 107. Further using Enzmann’s method
`
`would reduce costs associated with installing dedicated networks and devices. Id.
`
`at ¶108.
`
`Therefore, if the Board does not adopt Patent Owner’s construction reading
`
`“freight-carrying vehicle” into the claim, then the Board should find the claims are
`
`obvious as set forth in the Petition because there is no meaningful dispute that
`
`
`
`11
`
`
`
`
`
`Enzmann renders obvious the claims under the plain and ordinary meaning of a
`
`“vehicle.”
`
`B.
`
`Enzmann Renders Obvious Monitoring the Location of a Freight-
`Carrying Vehicle
`
`Based on the proposed definition of a POSITA and its proposed claim
`
`construction, Patent Owner argues that there is no motivation to “a POSITA in the
`
`freight hauling industry…to modify Enzmann to track freight-carrying vehicles.”
`
`PO Resp. at 23.2 However, Patent Owner simply ignores much of Mr. Denning’s
`
`testimony and other evidence related to motivation to focus entirely on Patent
`
`Owner’s argument that cost reduction would not have been a motivation in the
`
`context of the freight hauling industry. Id. The arguments and evidence set forth in
`
`the Petition demonstrate that prior art renders obvious monitoring the location of
`
`freight tracking vehicles and/or freight.
`
`1. Motivation to Modify Enzmann
`
`Patent Owner wrongly asserts that the “sole” motivation provided by Mr.
`
`Denning for why a POSITA would use Enzmann’s system to track vehicles was to
`
`reduce costs. PO Resp. at 24 (citing Ex. 1002 at ¶108.) In addition the benefit of
`
`reducing costs, which is addressed further below with regards to Mr. Williams
`
`
`2 Patent Owner does not dispute that Mr. Denning explained how a POSITA could
`
`modify Enzmann to track a vehicle. Id.
`
`
`
`12
`
`
`
`
`
`testimony, Mr. Denning also identified a POSITA would be motivated to use
`
`Enzmann for tracking “vehicles and freight” because wireless telephone location
`
`tracking was known to a POSITA to be “especially useful” for tracking fleets of
`
`vehicles:
`
`It would have been obvious to a POSITA that Enzmann’s system was
`
`intended for locating a network user (including vehicles and freight)
`
`as this was a well-known application for location based services
`
`before the priority date of the ’659 patent, commonly referred to as
`
`“fleet tracking systems,” and is specifically mentioned in Enzmann at
`
`1:64-67. For example, Zhou at [0249-0251] discusses a wireless
`
`telephone location based tracking system that is “especially useful to
`
`fleet managers” and is useful for “truck and fleet tracking.”
`
`
`
`Ex. 1002 at ¶84 (emphasis added) (citing Ex. 1005 and 1018). In re Kotzab, 217
`
`F.3d 1365, 1370 (Fed. Cir. 2000) (motivation may be expressly stated or implicitly
`
`found in the prior art); see also Randall Mfg. v. Rea, 733 F.3d 1355, 1362-63 (Fed.
`
`Cir. 2013) (cited references not named in a ground of rejection can be cited for the
`
`purpose of showing the state of the art and the background knowledge of a
`
`POSITA).
`
`
`
`Patent Owner fails to acknowledge, let alone address, this evidence of
`
`usefulness in using wireless telephone location monitoring for fleet tracking would
`
`have motivated a POSITA to apply Enzmann’s wireless telephone location
`
`
`
`13
`
`
`
`
`
`monitoring to track “vehicles or freight.” This omission is particularly glaring
`
`considering the ’659 patent states in its background section that it was known prior
`
`to the date of invention that “freight service providers (freight hauling) benefit
`
`from monitoring the location of vehicles in their fleets.” Ex. 1001 at 14-26.
`
`
`
`Similarly, Mr. Williams testified that one kind of technology that would be
`
`utilized by “freight-related companies” would be “an actual fleet management type
`
`operation where you would have devices in the cab, particularly through what’s
`
`called the OBD ports, to be able to collected data on the vehicle.” Ex. 1020 at 14:2-
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`17. Accordingly, Mr. Williams acknowledges that fleet management operations,
`
`which Enzmann is a solution for, use the type of systems (e.g., all-in-one systems
`
`that plug into the ODB port) to which Patent Owner bases their entire response.
`
`See P.O. Response at 4-6.
`
`
`
`Mr. Williams also opined that AT&T utilized wireless telephones,
`
`specifically cell ID, to track the location of vehicles for fleet management well
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`before the ’659 patent. Ex. 1020 at 13:25-15:6. This admission in the background
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`section of the ’659 patent, along with the testimony of Mr. Williams further
`
`confirms that Enzmann renders the claims obvious, including claims directed
`
`towards “freight,” for the reasons provided in the Petition and support by Mr.
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`Denning’s declaration.
`
`
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`
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`14
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`
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`
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`2. Modification of Enzmann does not increase costs or reduce
`efficiency
`
`Patent Owner’s expert, Mr. Williams, states at the time of the ’659 patent
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`that the freight-hauling industry was about to be regulated by the Federal Motor
`
`Carrier Safety Administration (FMCSA) to collect “vehicle, engine, and driver
`
`parameter information.” PO Resp. at 24-25 (citing Ex. 2001 at ¶¶35-44, 66).
`
`According to Mr. Williams, because these regulations require specific hardware to
`
`be installed in the vehicle to collect the required information, it would have been
`
`cheaper and more efficient to use that hardware to monitor the location of a
`
`freight-carrying vehicle instead of Enzmann’s solution of monitoring the location
`
`of through an associated mobile telephone. Id.
`
`However, even assuming the claims were limited to “freight-carrying
`
`vehicle,” the claims are not limited to vehicles that comply with the FMCSA
`
`regulations cited by Mr. Williams, rendering Mr. Williams testimony regarding
`
`such vehicles irrelevant. Neither the claims nor the specification mention any
`
`regulation. Further, as confirmed by Mr. Williams none of these regulations were
`
`in effect at the time of the ’659 patent. Ex. 1020 at 94:15-18; 96:22-25; see also
`
`Ex. 1020 at 89-3:102:19.
`
`In addition, the FMSCA regulations relied upon by Mr. Williams also do not
`
`apply to all “freight-carrying vehicles.” The FMSCA regulations for data recording
`
`are directed to “commercial motor vehicles” and provide for an exception to
`
`
`
`15
`
`
`
`
`
`“private motor carrier of passengers (nonbusiness)” among other exceptions. 49
`
`C.F.R. §395.8(a)(1)(i). Both “commercial motor vehicles” and “private motor
`
`carrier of passengers (nonbusiness)” are explicitly defined in in the FMSCA
`
`regulations and reproduced below:
`
`Commercial motor vehicle means any self-propelled or towed motor
`
`vehicle used on a highway in interstate commerce to transport
`
`passengers or property when the vehicle -
`
`(1) Has a gross vehicle weight rating or gross combination weight
`
`rating, or gross vehicle weight or gross combination weight, of 4,536
`
`kg (10,001 pounds) or more, whichever is greater; or
`
`(2) Is designed or used to transport more than 8 passengers (including
`
`the driver) for compensation; or
`
`(3) Is designed or used to transport more than 15 passengers,
`
`including the driver, and is not used to transport passengers for
`
`compensation; or
`
`(4) Is used in transporting material found by the Secretary of
`
`Transportation to be hazardous under 49 U.S.C. 5103 and transported
`
`in a quantity requiring placarding under regulations prescribed by the
`
`Secretary under 49 CFR, subtitle B, chapter I, subchapter C.
`
`***
`
`Private motor carrier means a person who provides transportation of
`
`property or passengers, by commercial motor vehicle, and is not a for-
`
`hire motor carrier.
`
`
`
`16
`
`
`
`
`
`Private motor carrier of passengers (business) means a private motor
`
`carrier engaged in the interstate transportation of passengers which is
`
`provided in the furtherance of a commercial enterprise and is not
`
`available to the public at large.
`
`Private motor carrier of passengers (nonbusiness) means private motor
`
`carrier involved in the interstate transportation of passengers that does
`
`not otherwise meet the definition of a private motor carrier of
`
`passengers (business).
`
`49 C.F.R. §395.5 (“Definitions”).
`
`
`
`Hence, the FMSCA data collecting regulations do not apply to “freight
`
`carrying vehicles” that have a gross weight less than 10,001 pounds, transport less
`
`than 8 passengers for compensation, and do not transport hazardous material
`
`because such “freight carrying vehicles” are not “commercial motor vehicles.” In
`
`addition, a “freight carrying vehicle” that transports passengers, but is not for hire
`
`would be excluded from the FMSCA data collecting regulations because it is a
`
`“private motor carrier of passengers (nonbusiness).”
`
`
`
`
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`In sum, because the claims of the ’659 patent do not limit the recited vehicle
`
`to be a “commercial motor vehicle” as defined by the FMSCA, Mr. Williams
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`reliance on FMSCA data collection regulations is misplaced. Patent Owner
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`provides no argument or evidence that “freight-carrying vehicles” that do not need
`
`
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`17
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`
`
`
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`to comply with the FMSCA data collecting regulations would fail to benefit from
`
`Enzmann’s reduced cost and improved fleet management as testified to by Mr.
`
`Denning.
`
`3. Modification of Enzmann to track freight-carrying vehicles was
`not challenging
`
`Patent Owner argues that “Enzmann appears to have been conceived from
`
`the perspective of a single cellular provider” and that vehicle drivers in the freight
`
`hauling industry could have used different providers which “would have required a
`
`much more complex, expensive, system than the system of Enzmann.” PO Resp. at
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`25-26 (citing Ex. 2001 at ¶¶67-71). As stated by Mr. Williams, “the creation and
`
`operation of a multi-carrier, multi-device system would be far more complex and
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`costly than the single carrier, few device, system envisioned by Enzmann.” Ex.
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`2001 at ¶71.
`
`First, this argument again is based on limitations that are not in the claims.
`
`As conceded by Mr. Williams during cross examination, the claims are not limited
`
`to a “multi-carrier, multi-device system.” Ex. 1020 at 123:141-129:11. Instead, the
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`claims recite a singular “location information provider” and a singular “mobile
`
`device.” Ex. 1001 at claim 1; see Ex. 1020 at 126:18-127:17 and 128:12-14. Mr.
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`Williams does not contest that Enzmann teaches using a location service provider
`
`to monitor the location of a mobile device. In addition, Mr. Williams
`
`acknowledges that in “employer controlled systems” the employer would
`
`
`
`18
`
`
`
`
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`“typically deployed the same make/model of mobile device.” Ex. 2001 at ¶69; see
`
`also Ex. 1020 at 118:4-119:22 (Mr. Williams testifying about Enzmann in the
`
`context of BellSouth where employees “very likely have the same mobile device”
`
`and “they had their own carrier.”). Thus, there is no dispute that Enzmann
`
`discloses the claim limitations because it discloses at least one mobile device and
`
`at least one location information provider, a wireless carrier.
`
`Finally, neither the Patent Owner nor Mr. Williams provide any citation
`
`from Enzmann that is relied upon in reaching the conclusion that Enzmann could
`
`not be modified to work with multiple different devices on multiple different
`
`carriers if the claim required such. PO Resp. at 25-26; Ex. 2001 at ¶¶67-71.
`
`“Expert testimony that does not disclose the underlying facts or data on which the
`
`opinion is based is entitled to little or no weight.” 37 CFR §42.65. While Mr.
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`Williams opined that modifying Enzmann to work with multiple different devices
`
`and communication networks would be “complex,” merely asserting
`
`the
`
`modification would increase complexity does not alone rebut a showing of
`
`obviousness. Ex. 1020 at 118:4-119:22; See KSR Int’l Co. v Teleflex Inc., 550 U.S.
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`398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity,
`
`not an automaton.”).
`
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`19
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`
`
`
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`4. Petition has identified to Patent Owner prior art that suggests the
`benefit of tracking freight-carrying vehicles via driver’s mobile
`devices
`
`Patent Owner argues that Petitioner was “unable to identify any prior art that
`
`suggests it would have been beneficial or desirable to track freight-carrying
`
`vehicles by monitoring the locations of driv
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