IN THE UNITED STATESDISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TYLERDIVISION
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`Civil Action No.: 6:16-cv-01133-RWS-KNM
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`District Judge Robert W. Schroeder, II]
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`Magistrate Judge K. Nicole Mitchell
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`| | | | | | | |
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`MACROPOINT,LLC,
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`Plaintiff,
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`Vv.
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`RUIZ FOOD PRODUCTS,INC.,
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`Defendant.
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`REBUTTAL EXPERT REPORTOF IVAN ZATKOVICH
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`February 15, 2018
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`ai=i0T=
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`WiihAMS
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`A EXHIBIT
`V 4eins 4
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`Page 1 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`FOR THE EASTERN DISTRICT OF TEXAS
`TYLERDIVISION
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`Civil Action No.: 6:16-cv-01133-RWS-KNM
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`District Judge Robert W. Schroeder, II]
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`Magistrate Judge K. Nicole Mitchell
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`| | | | | | | |
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`| |
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`MACROPOINT,LLC,
`
`Plaintiff,
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`Vv.
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`RUIZ FOOD PRODUCTS,INC.,
`
`Defendant.
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`REBUTTAL EXPERT REPORTOF IVAN ZATKOVICH
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`February 15, 2018
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`ai=i0T=
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`WiihAMS
`
`A EXHIBIT
`V 4eins 4
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`Page 1 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`TABLE OF CONTENTS
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`MATERIALS CONSIDERED FORTHIS REPORT............scsccssssssscsesscsssserscesereoesnees 6
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`SUMMARYOFOPINIONG..........:ssssesscessersssensersonsesarsassassssssssesonssseossssossceaceesseseeennseeens 6
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`COBALTRTCATONGS rescsats sau eiiauss visitpapeihtaa icacbnenvntterenerenenedbaae Laanaan 8
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`APPLICABLE LEGAL STANDARDS ....:ccccssssssssrssssscsstesncsnsescserssnsnaerorsesssscnnesssoonsons 12
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`4.]
`Presumption Of Validity... eee eseesetceeeeeseeeeeeeeeeeeteeeesteeeececeseeaeeneeeaeeas 12
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`Aa
` <Aditiipation=35 U-S.C. 6 102:: avaaereinnn initiate 13
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`43
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`Non-obviousness-35 U.S.C. § 103 sccecssisncecnascestinesorssee--soyememeneneuan 15
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`4.4
`Objective Indicia of Non-obviousness...............:ccscceceeeeceeeceeeeestereneteneeeees 17
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`ONE OF ORDINARYSKILL IN THE ART.............cccssssccscssessenssssssorsecsersecsescesrsecsoes 18
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`OVERVIEW OF THE PATENTS -IN-SUIT ....c.scssssssasesssoeasersssnanserrossenssesnssasansnnnannace 19
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`6.1
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`6.2
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`Summary Ofte GS) Patent sctiasecccesasieacasavconbebiotbdcvohedecvabenstivchadahiudadiats 22
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`Summary of the ‘358 Patent ....... ccc eeeesecseeesneeeseeseeeeseesacneeeeesentenseeeeees 23
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`CLAIM CONSTRUCTION......ccviicuesseeearea 26
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`ANTICIPATION ANALYSIS5 sisccssisnsstsoremncnesanesninncssncesnciasitncani tien ianaianaiicwemecnsnamnsensnn 26
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`8.1
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`“250 ANTICIPATION AINADGGIG sirsisrsescs unas ietaaastbeena aL 26
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`S131 CTA Guidelines.. .csmisuinisaiielanuimnniaiin 29
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`8.1.2 TechnoCom White Paper .......... cece ceceseseeeseceseeseeeeeeeeeseeeeeeeeeetens 62
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`AS: TRATES fae ceases eset Aroars coal shart oateiel a leachdcel cna oop 88
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`82
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`“659. ANTICIPATION ANALYSIS........:..:-.ncosiececsenareecaiesecsseissnsvent <bbbte 102
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`2 Piper A TS aces dacs serrssvsaeen sececpu ta phoa intndeataed pope ecb 103
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`2
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`822 Claitie 2.aa.BS 109
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`BPS Chait 12 ves spccrassasazsanaesannonnvnnnenparesnrssurccssssccuansansenmersasagueneencencnye 128
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`BF ClikDaas leis crac pacesealh caccanyhnntamanaanaaanatisanassininspouaiveerhs 132
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`9
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`OBVIOUSNESS ANALYSIS ..sncciecasssensinicerssacsestinsancnninintecrerrernennncennnianinibilaesenenns 136
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`9.1
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`*358 Obviousness AnalySis............::ccceccesecnseeseeseeeseneseeeeeaeeeseteneteaseneeeaes 136
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`9.1.1
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`PM Demoin view of POSITA Knowledge........ cece eseeteees 138
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`9.1.2
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`PM Demoin view of POSITA Knowledge......... cee eeeeeeeeee 168
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`9.1.3. TechnoCom White Paper in view of CTIA Guidelines.............. 169
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`9.1.4 TechnoCom White Paperin view of Enterprise ................c 170
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`9.2
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`*659 Obviousness AnalySis.........cccesseseseseessereseecnseeerseecessseeaecsecseeeseenaeens 173
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`9.2.1
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`Several Cited References are not Analogous Aft 0.0... eee 174
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`922 Dependent Claims 3 and 24 oie ccsismnperserreemccaurtenesenrsceie 176
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`9.2.5 Dependent Clans 4, U3)-annd 25... ccceccitbepil lich cactweenmeise LFF
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`924 Dependent Claims 5 and V? ).ccseeweenie 179
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`9.2.5 Dependent Claims 6. 18, and 27 00... lees cseceeeteeeseseseneeeees 180
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`92.6 Depentent Claims 7, 22, amd 25 isianadtiiiteeaeeiiicsssdeatenastidavssens 182
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`9.2.7 Dependent Claims 8, 19, 20, and 21 ...cccsssssuenssersereererreccnnessens 183
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`92.8 Dependent Wlainns 9, 14anid 29 nc: jeiesdapieastiseasapdeassidannsspuaeassasiog 184
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`9.2.9 Dependent Claims 10, 15, and 30 20... tscsesessescssennensnenenee sees 186
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`9.2.10 Dependent Claim 11 and 16.0.0... eee eee eee eeeeeeneetneeeeeenael 186
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`9.2.11 Additional Deficiencies in the prior art .......... cece eee eee 188
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`9.2.12 Lack of Reason to Combine......... cc eeeesesssseseeeeeeseseeeeectsetasneeeees 190
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`3
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`9.3
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`Secondary Considerations ....cssmncavenanccuccoarxcccemesemeeamnemecsseeces 192
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`9.3.1 MacroPoint Practices the ‘358 and ‘659 Patents .........0....:.00 192
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`O:3i2
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`<COMPTMENCIAN SUCCESS sinenonsahasnannanse ai 35idtnereaccatseldssvo nen aselalenelalt 193
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`9.3.3 Long Felt but Unsolved Need / Recognition of Problem ........... 210
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`934A Recognition of Need..............c edule ew eeeeawenN Maw elo
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`9.3.5
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`Praise by Others ws scssiszicrccsmcsssacmenncamnnntacnunhnereniaeidais vias 213
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`O23,0)
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`Fanline er ists wiiiassnanaannediiintimaseean reece 216
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`9.3.7 Copying of the invention by competitors............ccccccceceeeeteees 218
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`9.3.8
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`Skepticism of Experts ........ cc eceesesseesseeceesecseeeseescetesseeseeesseneens 220
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`93.9 Teaching Away .galeaiere estima Glee uumions 220
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`OTA.
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`TINGE UIN EENEEScipe staan ns cance SRE SNARE ws 221
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`9.5
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`WRITTEN DESCRIPTION / ENABLEMENT.............::::ecseeceesseseesees 222
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`CONCLUSION ccseciciinnaaannein 224
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`1.
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`I, Ivan Zatkovich, have been retained by MacroPoint, LLC. (““MacroPoint
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`99
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`or “Plaintiff’) through the law firm of Thompson Hine LLP as an expert witness in the
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`matter of MacroPoint, LLC v. Ruiz Food Products, Inc., Civil Action No. 6:16-cv-01133-
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`RWS-KNM.
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`I have previously submitted an expert report on behalf of MacroPoint
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`regarding infringement of the U.S. Patent No. 8,275,358 (the “‘358 Patent”) and U.S.
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`Patent No. 9,429,659 (the “‘659 Patent”) (together, the “Patents-in-Suit”) by Defendant
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`Page 5 of 225
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`RUIZ FOOD PRODUCTS, INC.
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` Ruiz Food Products, Inc. (“Ruiz Foods”or “Defendant”).'
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`I submit this report in rebuttal
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`of the Expert Report of Dr. Stephen B. Heppe regarding validity of the Patents-in-Suit.
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`z:
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`I] may supplement myreport in light of any additional discovery, opinions
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`by Defendant’s experts, and/or trial testimony.
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`I also may provide rebuttal opinions and
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`testimony in response to Defendant’s experts, and rebuttal testimony in response to any
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`of Defendant’s witnesses. Further, I may use animations, demonstratives, enlargements
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`of actual Exhibits, and other information in orderto illustrate my opinions.
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`1 MATERIALS CONSIDERED FOR THIS REPORT
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`3.
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`A list of materials I considered in preparing this report are attached as
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`Exhibit A.
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`I have consulted with Mr. R. Christopher Anderson, who I understand to has
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`been engaged to provide an expert opinion in connection with damagesin this case.
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`2
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`SUMMARYOF OPINIONS
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`4,
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`It is my understanding that claims 1, 4, 19, and 22 of the ‘358 Patent and
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`claims 2 — 25 and 27 — 30 ofthe ‘659 Patent (altogether, the “Asserted Claims”) are at
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`issue in this action.
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`5:
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`Based on my review and analysis of the materials listed in Exhibit A
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`including Dr. Heppe’s report and the prior art references identified therein, as well as my
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`' Expert Report of Ivan Zatkovich Regarding Infringement of U.S. Patent Nos. 8,275,358
`and 9,429,659, Jan. 25, 2018.
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`experience and education, it is my opinion that Defendant and Dr. Heppe havefailed to
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`meet their burden to prove by clear and convincing evidence that the Asserted Claims are
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`anticipated by any ofthe prior art references they have identified.
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`6.
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`It is my opinion that Defendant and Dr. Heppe have failed to meet their
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`burden to prove by clear and convincing evidence that the Asserted Claims are obviousin
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`view ofthe prior art references they have identified, individually or in combination.
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`7.
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`It
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`is my opinion that secondary considerations of non-obviousness,
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`including commercial success, long-felt but unresolved need, failure of others, skepticism
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`by experts, praise by others, teaching away, licensing of the invention, recognition of a
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`problem, and copying by others further support the non-obviousness of the Asserted
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`Claims.
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`8.
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`Further, Dr. Heppe states without support
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`in a footnote that
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`it
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`is his
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`opinion“that the claims in the ‘358 and ‘659 patents do not appear substantially different
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`from manyof the claims” of patents found to be directed to unpatentable subject matter
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`in prior litigation.” 1 disagree. Dr. Heppe has donenothingto establish that the Asserted
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`Claims of the ‘358 and ‘659 Patents are in any way similar to any claim of patents at
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`issue in the priorlitigation.
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`In fact, the claims plainly differ on their face, for example,
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`Claim 1 of the 943 Patent, which was identified as representative of the claims in the
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`? Expert Report of D. Stephen B. Heppe 21, n. 5, Jan. 25, 2018.
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`Page 7 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`prior litigation? lacks the limitation “request location information of the mobile device
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`comprising the GPS receiver from a location information provider.”
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`[ERR
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`Defendant and Dr. Heppe have not met their burden to prove by clear and convincing
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`evidence that the ‘358 and ‘659 patents are not substantially different from any claim at
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`Therefore, it is my opinion that
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`issue in prior litigation.
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`3. QUALIFICATIONS
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`1.291 Reference 1 (Jan. 27, 2016)).
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`7.
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`] have extensive experiencein the field of art relevant to the ‘358 and ‘659
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`Patents.
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`I expect to testify concerning my qualifications, background and experience
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`relevant to the issues in this investigation. A copy of my Curriculum Vitae and
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`Testimony I have provided in the last 5 years is attached as Exhibit B.
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`10.
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`I am a Principal Consultant of eComp Consultants, a position I have held
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`for over 15 years. I have over 30 years of experience in a diverse set of technologies
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`3 MacroPoint, LLC v. FourKites, Inc., Mem. of Op. and Order 2, No. 1:15-cv-1002 (N.D.
`Oh. Nov. 6, 2015) (available in File Wrapper of ‘659 Patent at Protest Under 37 C.F.R. §
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`11.|eComp Consultants provides professional consulting services relating to
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`including GIS (Geographic Information Systems), GPS, Vehicle Tracking, Electronic
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`Logging Devices, Wireless and Network Communications, and Mobile Applications.
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`computer and technical matters in a wide range of industries
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`including utilities, telecommunications, eCommerce, financial transactions, digital media,
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`and cloud-based services. Such consulting services include working with clients on
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`specific information technology projects, process improvement, project management and
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`other technology issues, as well as providing professional expert witnessservices.
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`12.
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`I received a Bachelor’s degree in Computer Science, with a minorin
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`Electrical Engineering Digital Circuit Design, from the University of Pittsburgh in 1980.
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`I completed a Master’s thesis in Computer Networks from the University of Pittsburgh,
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`the results of which were published in Byte Magazine.
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`13.
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`_In my professional career, | have worked for companies suchas Digital
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`Equipment Corp. and GTE/Verizon Telecommon projects designing, developing and
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`integrating software and hardware for computer networks, wireless, cellular, and
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`telecommunications systems. For example, relevant projects from my career include:
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`14.
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`Utility Partners —- Developed the MobileUP application, a geographic work
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`order and vehicle Tracking System dispatching Field Service personnel and managing
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`Electronic Onboard Recording.
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`¢ Utility Partners — Developed the MobileUP application, a geographic work order
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`and vehicle tracking system dispatching Field Service personnel and managing
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`Electronic Onboard Recording.
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`Page 9 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`e GTE/Verizon — Designed and developed Automated Geolocation, Geographic
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`MappingandFacilities Management system based on Customer & Equipment
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`location. Developed provisioning systems for mobile phones and cellular networks.
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`e GIS Dispatch Mapping (AWAS) — Implemented Geographic based mobile field
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`services for locating subscribers and displaying routing information on a geographic
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`map.
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`e
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`eComp Consultants — Location based mobile applications including:
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`e Mobile Payments — developed patents for mobile phone payment and
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`advertising. Technology includes NFC (Near Field Communication) and
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`SMS basedtransaction authorization. (Android, iPhone)
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`Cell Mesh Networks — developed Mesh Network for hyper-local
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`marketing and mobile applications using WiFi direct connect technology
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`(Android, iPhone)
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`and status information.
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`15.
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`Ihave been frequently called upon to provide my expert opinion on
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`matters concerning patent disputes for over 15 years. I have given testimony as an expert
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`at trial and by deposition, including in areas that relate to the technology described in the
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`patents-in-suit. For example. | was qualified as an expert in geolocation and mobile
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`telecommunications in the following cases:
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`e GT Nexusv Inttra, Inc., 4:1 1-cv-02145-SBA (N.D.Cal.) — Patent Litigation-
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`Testifying expert providing expertise in systems for Location and Tracking of Cargo
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`and Container shipments using central communication and normalization of tracking
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`Page 10 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`e
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`Progressive v. State Farm, CBM2012-00003, CBM2013-00004 (PTAB) —
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`Covered Business Method — Expert providing expertise in
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`Electronic OnBoard Recording devices to allow vehicles to record and transmit
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`vehicle location, status, and other characteristics. Provided expert report including
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`rebuttal of a 101 Patentable subject matter challenge.
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`e GeoTag, Inc v. Frontier Communications Corp., 2:10-cv-00265 (E.D. Tex.) —
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`Patent Litigation — Testifying expert for 12 defendants for web and mobile based
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`Geolocation applications to identify proximity to and location of Merchants.
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`¢ Black Hills Media, LLC v. Samsung, Inv. No. 337-TA-882 (ITC) — ITC Patent
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`Investigation — Analysis of Mobile based location sharing and event driven mobile
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`applications such as AT&T FamilyMap, Google+ Location, and Latitude. Providing
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`infringementassertions against Samsung, LG, and Toshiba (smart phones & mobile
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`tablets).
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`16.
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`Byvirtue of the above experience, I have gained a detailed understanding
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`of the technologythat is at issue in this case. In addition, my experience with commercial
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`and technical aspects of geolocation and mobile telecommunicationsis directly relevant
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`to the subject matter of the patents-in-suit.
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`17.
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`Therefore, I consider myself a person ofat least ordinary skill in the art of
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`the ’358 and ’659 Patents in the 2012 time period, the qualifications of which | have
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`stated below.
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` APPLICABLE LEGAL STANDARDS
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`18.
`‘In expressing opinions on legal issues, I have applied the following legal
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`I have additionally reviewed and
`standards conveyed to me by MacroPoint’s counsel.
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`understand the legal standards set forth in Dr. Heppe’s expert report.
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`4.1 Presumption of validity
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`19.
`| understand that the claimsin an issued patent are presumedto be valid.
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`| u
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`nderstand that each claim of a patent is presumed valid independently of the validity of
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`other claims.
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`20;
`I understand that the burden of establishing invalidity of a patent or any
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`I understand that to overcome the
`claim thereof rests on the party asserting invalidity.
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`presumption of a claim’s validity, the party asserting invalidity must prove invalidity by
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`I understand that the clear and convincing evidence
`clear and convincing evidence.
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`standard described as a high or very high degree of confidence.
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`I understand that a party seeking to establish invalidity of any claim of a
`21.
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`patent with a prior art reference that was considered by the Patent Office Examiner
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`during prosecution of that patent bears the additional burden of overcoming the deference
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`that is due to a qualified government agency presumed to have properly doneits job.
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`1
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`understand this deference extends to Patent Examiners, who are assumed to have some
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`expertise in interpreting the references and to be familiar from their work with the level
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`of skill in the art, and whose duty it is to issue only valid patents.
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`EAs
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`] understand that the party asserting invalidity bears the burden of proving
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`that allegedly invalidating art is prior in time to the inventions claimed in the Patents-in-
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`Suit.
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`23.
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`I understand that because establishing invalidity requires clear and
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`convincing evidence, mere conclusory statements are insufficient to support an invalidity
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`conclusion.
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`I similarly understand that unsupported assertions or opinions lacking a
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`reasonable technical foundation are also insufficient to support an invalidity conclusion.
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`4.2 Anticipation — 35 U.S.C. § 102
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`24.
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`I understand that a reference may only anticipate claims of an issued
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`patent, under 35 U.S.C. § 102, if the reference is “priorart” to the patent.
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`25.
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`I understand that several categories of prior art are defined by subsections
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`of § 102 and that these categories changed somewhat with passage of the America
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`Invents Act
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`(“AIA”).
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`I understand that
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`the effective date,
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`for anticipation and
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`obviousness purposes, of the AIA is March 16, 2013. Thus, any patent filed before that
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`date is evaluated under § 102 asit existed prior to the AIA.
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`26.—I understand that under pre-AJA § 102, a documentis priorart to a patent
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`if it was publicly disclosed (i.e., published) prior to the priority date of the patent. By
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`contrast,
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`I also understand that documents that were not publicly disclosed, including
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`documents that were distributed under confidentiality restrictions or under a non-
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`disclosure agreement, are not prior art for purposes of pre-AIA § 102.
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`27.
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`I understand that prior art described in the specification is considered by
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`the examiner.
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`RUIZ FOOD PRODUCTS, INC.
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`28.
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`I understand that merelisting of a reference in an information disclosure
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`statementis not taken as an admissionthat the referenceis prior art against the claims.
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`29.
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`| understand that for anticipation to exist that each and every limitation of
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`the claim at issue must be identically found in the reference disclosure, as viewed by a
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`person of ordinary skill in the field of invention at the time the invention was made.
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`30.
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`Anticipation requires that each element of the claim at issue be found,
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`either expressly or inherently, in a single prior art reference, or that the claimed invention
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`waspreviously known or embodied in a single prior art device or practice.
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`1 understand
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`that a limitation is only inherently disclosed by a reference if that limitation is necessarily
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`present in the reference, and it must be so recognized by personsof ordinary skill in the
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`art.
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`I understand inherency may not be established by probabilities, possibilities,
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`suggestions, or inferences that a limitation may be present in the disclosed features of a
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`reference, and that the mere fact that a certain thing may result from a given set of
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`alternatives, does not establish inherency.
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`circumstancesis not sufficient to show inherency.
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`31.
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`As I understand it, an example of inherency is that disclosure of water
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`molecules necessarily discloses the presence of hydrogen and oxygen atoms because
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`science dictates that water comprises hydrogen and oxygen.
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`Bycontrast, disclosure of a
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`motorcycle does not
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`inherently disclose a vehicle with two wheels because some
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`motorcycles have three wheels notwithstanding that we may conventionally think that
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`motorcycles have two wheels.
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`I understand inherency to require “certainty” not
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`“possibility.”
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`It is my understanding that a design choice, in the presence of design
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`32.
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`Invalidity by anticipation requires that the four cornersofa single priorart
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`reference describe every element of the claimed invention, either expressly or inherently,
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`such that a person of ordinary skill in the art could practice the invention without undue
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`experimentation.
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`4.3 Non-obviousness — 35 U.S.C. § 103
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`33.
`
`I understand that a patent claim is obvious only if the differences between
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`the claim andtheprior art are such that the subject matter of the claim as a whole would
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`have been obviousto one of ordinary skill in the art at the time of the invention.
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`34.
`
`I understand that for a patented invention to be invalid as obvious, the
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`accused infringer must identify prior art references that alone or in combination with
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`other references (or the knowledge of a person of ordinary skill in the art) would have
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`rendered the claimed invention obvious to one of ordinary skill in the art at the time of
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`the invention.
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`35.
`
`I understand for a claim to be found obvious every claim limitation must
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`be found present in the combination of the prior art references or POSITA (a Person of
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`Ordinary Skill in the Art) knowledge before the obviousness analysis proceeds.
`
`36.
`
`1 understand that
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`the factors that should be assessed in the obvious
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`analysis include at least: (1) the scope and content ofthe priorart; (2) the differences
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`between the prior art and the claim at issue; (3) the level of ordinary skill in the art; and
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`(4) whatever objective evidence may be presentas indicia of nonobviousness.
`
`bs
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`Page 15 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`30.
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`] understand that inherent aspects of the prior art not readily known to a
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`person of ordinary skill do not support a finding of obviousness because obviousness
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`cannot be predicated on what is unknown.
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`38.
`
`I understand that an obviousness determination is analyzed from the
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`perspective of one of ordinary skill in the art at the time of the invention.
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`I understand
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`that it is impermissible to use the patent as a template (and reason) for combining prior
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`art references to achieve the claimed invention because that would reflect hindsight bias.
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`This improperpractice often takes the form of working backwards from the claims to find
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`references that disclose the claims’ limitations and then declaring, without analysis, that
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`the combination would have been obvious because all
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`limitations were known.
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`I
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`understand that the person ofordinary skill in the art at the time the invention was made
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`would need to be motivated to combine references to create the combination of features
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`claimed by the patent independentof the teachingsof the patent.
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`39.
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`It is my understanding that obviousness requires also that a reason must be
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`shownthat would have prompted a person ofordinary skill in the art to combine known
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`elements in the fashion claimed bythe patents at issue. This reason is often described as
`bed
`a “motivation to combine.” A motivation to combine is often absent for a combination
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`when a POSITA would have knownthat disadvantages to making the combination would
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`have existed. A motivation to combine is also often absent when a POSITA would have
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`been dissuaded from making a combination. This dissuasion can take many forms
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`including statements in printed publications and is often described as a “teaching away.”
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`Page 16 of 225
`¯°±²³´µ³¶·³¸¸¹
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`AO.
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`| also understand that if a combination of two or moreprior art references
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`is used to render a claimed invention obvious, there must be a reasonable expectation of
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`success in making or practicing the claimed invention based on such combination.
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`|
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`understand that in order for a reference to be proper for use in an obviousnessrejection
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`under 35 U.S.C. 103, the reference must be analogousart to the claimed invention.
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`4].
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`—_In addition, | understand the obviousness analysis cannot discount at the
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`time of invention, the inventor’s insights, and willingness to confront and overcome
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`obstacles, and even serendipity where the pathway to the invention seems to follow the
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`logical steps to produce these patented properties.
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`4.4 Objective Indicia of Non-obviousness
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`42.
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`It is my understanding that objective indicia of non-obviousness may be
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`the most pertinent, probative, and revealing evidence available to the decision maker in
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`reaching a conclusion about obviousness. Under certain circumstances, the objective
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`indicia evidence maybe particularly strong and entitled to such weight that it may be
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`decisive.
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`43.
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`I understand that examples of objective indicia that must be considered as
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`part of an obviousness inquiry include:
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`(1) commercial success;
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`(2) long-felt but unresolved needs;
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`(3) failure of others;
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`(4) skepticism by experts;
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`(5) praise by others;
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`Page 17 of 225
`º»¼½¾¿À¾Á¾ÃÃÄ
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`(6) teaching away;
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`(7) licensing of the invention;
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`(8) recognition of a problem (withoutits resolution); and
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`(9) copying ofthe invention.
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`44.
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`To the extent any issues of law are raised by Dr. Heppe or Defendant
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`which I have not addressed in this report, | reserve the right to supplement my opinions
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`accordingly.
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`5 ONE OF ORDINARYSKILL IN THE ART
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`45.
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`|
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`have
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`been
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`asked
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`to
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`offer my
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`opinion
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`regarding
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`the
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`level
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`of ordinary skill in the art with respect to the °358 and ’659 Patents.
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`46.
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`To assess the level of ordinary skill in the art, I understand one considers
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`the type of problems encounteredin theart, the prior solutions to those problems found in
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`prior art references, the rapidity with which innovations are made, the sophistication of
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`the technology, and the level of education of active workersin the field.
`
`47.
`
`To assess the level of ordinary skillin the art of the ’358 and ’659
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`Patents, ] have considered the type of problems encountered in theart, the prior solutions
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`to those problems found in prior art references, the rapidity with which innovations are
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`made, the sophistication of the technology, the level of education of active workers in the
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`field, and my own experience working with those of skill
`
`in the art at the time of
`
`inventions.
`
`In my opinion, a person of ordinary skill in the art of the °358 and ’659
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`Patents in the 2012 time period would have at
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`least a Bachelor’s degree in computer
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`science, electrical engineering, or a related discipline and 2 years of experience in the
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`
`
`18
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`Page 18 of 225
`ÅÆÇÈÉÊËÉÌÍÉÎÎÏ
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`relevant technical field of geolocation and mobile communications or the equivalent.
`
`|
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`am very familiar with people having this level of skill, as discussed in my curriculum
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`vitae and background.
`
`6
`
`OVERVIEW OF THE PATENTS-IN-SUIT
`
`48.
`
`Each of the asserted patents in this case disclose novel and inventive
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`systems and methods for tracking, monitoring, and reporting to a requesting party the
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`location of a vehicle or the freight carried by a vehicle.
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`Prior to the invention,
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`conventional vehicle tracking systems required the acquisition and installation of GPS
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`equipmentin each vehicle to be tracked. GPS equipmentcan be costly, and requires the
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`GPS equipmentto provide the location information, with attendant costs to deliver this
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`informationto the user.
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`49.
`
`The claimed inventions of the asserted patents cleverly leverage the facts
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`that
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`(1) a truck driver typically has with him on his person or
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`in his truck a
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`communications device, such as a mobile phone, that can be used to track his location
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`using a variety of techniques; (2) independentthird parties routinely collect this location
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`information about the millions of communications devices already used throughout the
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`country: and (3) a communications device can be correlated to a particular truck by
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`matching the communicationsdeviceto the truck’s driver.
`
`
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`50.|MacroPoint’s patented tracking technologyresolves the prior art problems
`
`
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`by providing notice to and obtaining a driver’s consent for monitoring the location of his
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`phone, obtaining the location of the driver’s phone from a third party with the capability
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`to track it, correlating the location of a vehicle with the location of the driver’s phone,
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`
`
`19
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`Page 19 of 225
`ÐÑÒÓÔÕÖÔ×ØÔÙÙÚ
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`
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`and aggregating and reporting the location of multiple vehicles, regardless of tracking
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`technique. This provides continuous, real-time location information to shippers and
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`customers aboutall of their shipments, regardless of trucking company, in one integrated
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`service.
`
`evire
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`pi
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`a:
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`
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`Figure 3
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`51.
`
`Figure 3 of the ‘659 Patent shows an example of how MacroPoint’s
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`invention can be implemented. A third-party Location Information Provider (such as a
`20
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`Page 20 of 225
`ÛÜÝÞßàáßâãßààä
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`
`
` cellular services provider) can determine the location of a communications device using
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`
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`GPS or radiolocation techniques that analyze the device’s position based on its
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`relationship to surrounding cellular towers.
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`(See *659 Patent at 6:60-8:16; ‘358 Patent at
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`1:41-51.)
`
`52.
`
`The system then correlates the device’s location to a particular truck using
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`computers programmed with customized “correlation logic” that indicates which driveris
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`in which vehicle. (See ‘659 Patent at 5:7-6:48; ‘358 Patent, 1:49-51 and 10:58-62.)
`
`53.
`
`To address any issues regarding privacy, the system uses “notification
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`logic” that informs the driver his location may be seen byothers and “validation logic”
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`that ensures the driver consents to sharing his location.
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`(See ‘659 Patent at 8:26-10:49;
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`‘358 Patent at 11:31-51.) Various parties can then request or receive the truck’s location
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`from the third-party location service provider. (‘659 Patent at 5:25-54; ‘358 Patent at
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`5:22-55.) For example, MacroPoint could request the information and then provideit to a
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`shipper or customer.
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`
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`54.|The invention provides several advantages over prior art systems. It
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`
`
`provides continuous information about any truck’s location, allowing a shipper to know
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`exactly where its goods are at any time.
`
`It allows shippers to efficiently go to a single
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`source, such as MacroPoint, to obtain information about all shipments acrossall trucking
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`companies. It can also process location data using multiple and distinct types of tracking
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`technology—e.g., GPS, radiolocation, etc—unlike prior art systems in which each
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`trucking company’s system waslimited to a single technology.
`
`(See ‘659 Patent at 8:17-
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`24; ‘358 Patent at 1:41-51.)
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`Page 21 of 225
`åæçèéêëéìíéêêî
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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` !
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`6.1
`
`Summaryof the ‘659 Patent
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` wre pa ea
`Device
`-—
`i
`
`-
`
`i
`
`
`terface
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`Communication
`
`
`
`Requesthng
`Party
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`Onder
`
`Aieoentng
`Party
`a
`
`Mees
`
`ailorretahor:
`ogc
`
`55.
`
`Discussing an exemplary embodimentof the ‘659 patent, Figure 1 of the
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`‘659 Patent (above) illustrates certain key features of the claimed system.
`
`In the ‘659
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`Patent, system 100 monitors the location of a communication device 110 located in
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`vehicle 105. System 100 includes a communications interface 120 that communicates
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`with external devices via electronic signals and correlation logic 170 that correlates the
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`vehicle 105 and the device 110. A Location Information Provider 150 has access to the
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`location of device 110 and maybe, for example, a wireless service provider that provides
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`wireless service in a network 155. The location information provided to the receiving
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`ae
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`Page 22 of 225
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`RUIZ FOOD PRODUCTS, INC.
`Exhibit 1019
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`57.|There are industry guidelines (the Best Practices and Guidelines for
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`party comes from Location Information Provider 150, and not fro
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