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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC
`Petitioner
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`v.
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`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
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`Case IPR2018-01081
`Patent 9,445,251
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`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,445,251
`
`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Google 1003
`U.S. Patent No. 9,445,251
`
`
`
`TABLE OF CONTENTS
`
`I.
`Qualifications ............................................................................................. 3
`My Understanding of Claim Construction .............................................. 6
`II.
`My Understanding of Obviousness .......................................................... 7
`III.
`Level of Ordinary Skill in the Art .......................................................... 11
`IV.
`Overview of the ’251 Patent .................................................................... 11
`V.
`The Priority Date of the ’251 Patent Cannot Be Earlier Than April 17,
`A.
`2006 15
`VI.
`Overview of the State of the Art at the Time of Filing ......................... 17
`A.
`Systems for Locating Wireless Devices, such as E911 systems, arrived in
`the 1990s ...............................................................................................................19
`B.
`Expanding Wireless Device Locators to the Creation of Ad-Hoc Networks
`for Emergency Responders was Known ..............................................................22
`C.
`Utilizing Interactive Maps within the Context of Location-Based Services
`and Ad-Hoc Networks was known .......................................................................29
`D.
`Conclusion .................................................................................................30
`VII.
`Grounds of Unpatentability .................................................................... 31
`A.
`The combination of Haney and Fumarolo teaches or suggests each feature
`of claims 1, 2, 4-6, 8, 10, 12, 22-24, 27, 29, 31, 32, and 35 .................................31
`1. Overview of Haney ....................................................................................31
`2. Overview of Fumarolo ...............................................................................32
`3. Overview of the Combination of Haney in view of Fumarolo ..................33
`4. Motivation to Combine Haney and Fumarolo ...........................................34
`5. The combination of Haney in view of Fumarolo discloses or suggests each
`feature of claims 1, 2, 4-6, 8, 10, 12, 22-24, 27, 29, 31, 32, and 35 ..........39
`Dependent Claims 2, 4-6, 8, 10, 12, 22, 23, 27, 29, 31, 32, and 35 Recite
`B.
`Nothing More Than Obvious Design Choices .....................................................86
`VIII. Conclusion ................................................................................................ 87
`
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`
`- i -
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`
`
`EXHIBIT LIST
`
`Exhibit No. Description
`1001
`U.S. Patent No. 9,445,251 to Beyer, Jr. et al. (“the ’251 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Prosecution History of U.S. Patent No. 9,445,251 (Application No.
`14/633,804)
`
`Declaration of David Williams
`
`Curriculum Vitae of David Williams
`
`U.S. Patent No. 7,353,034 to Haney et al. (“Haney”)
`
`U.S. Patent No. 6,366,782 to Fumarolo et al. (“Fumarolo”)
`
`Intentionally Left Blank
`
`Complaint for Patent Infringement, AGIS Software Development
`LLC v. Huawei Device USA Inc., et al., Civ. No. 2:17-cv-00513
`(E.D. Tex.), filed June 21, 2017 (“Infringement Complaint”)
`
`Microsoft Word document compare of specifications between U.S.
`Patent No. 7,630,724 to Beyer, Jr. et al. and 7,031,728 to Beyer, Jr.
`et al.
`
`U.S. Patent No. 7,630,724 to Beyer, Jr. et al. (“’724 patent”)
`
`U.S. Patent No. 7,031,728 to Beyer, Jr. et al. (“’728 patent”)
`
`911 and E911 Services, Federal Communications Commission,
`www.fcc.gov/e911 (last visited May 7, 2018)
`
`Fact Sheet, FCC Wireless 911 Requirements (January 2001),
`available at https://transition.fcc.gov/pshs/services/911-
`services/enhanced911/archives/factsheet_requirements_012001.pdf
`
`Jock Christie, et al., Development and Deployment of GPS Wire-
`less Devices for E911 and Location Based Services (Position, Lo-
`cation, and Navigation Symposium, 2002) (“Christie”)
`
`
`
`- ii -
`
`
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`Dale N. Hatfield, A Report on Technical and Operational Issues
`Impacting The Provision of Wireless Enhanced 911 Services, Fed-
`eral Communications Commission (2002) (“Hatfield”)
`
`Charles E. Perkins, “Ad Hoc Networking.” Nokia Research Center
`(November 28, 2000) (“Perkins”)
`
`Duncan Scott Sharp, Adapting Ad Hoc Network Concepts to Land
`Mobile Radio Systems (1972 Ph.D. dissertation, University of Al-
`berta) (on file with Simon Fraser University, December 2002)
`(“Duncan”)
`
`Madhavi W. Subbarao, Mobile Ad Hoc Data Networks for Emer-
`gency Preparedness Telecommunications - Dynamic Power-
`Conscious Routing Concepts (Submitted as an interim project for
`Contract Number DNCR086200 to the National Communications
`Systems, February 1, 2000) (“Subbarao”)
`
`McKinsey & Company, The McKinsey Report : FDNY 9/11 Re-
`sponse (2002) (“The McKinsey Report”)
`
`U.S. Patent Application Publication No. 2003/0100326 A1 to
`Grube et al. (“Grube”)
`
`Intentionally Left Blank
`
`U.S. Patent No. 6,182,114 to Yap et al. (“Yap”)
`
`U.S. Patent No. 6,700,589 to Canelones et al. (“Canelones”)
`
`U.S. Patent No. 6,654,683 to Jin et al. (“Jin”)
`
`Ching-Chien Chen, et al., Automatically and Accurately Conflating
`Satellite Imagery and Maps (University of Southern California,
`October 2003) (“Chen”)
`
`U.S. Patent No. 5,563,931 to Bishop et al. (“Bishop”)
`
`Michael Trupiano, A Taxonomy for Assessing Fitness of Mobile
`Data Services in US Consumer Markets (February 1, 2001 Ph.D.
`dissertation, Massachusetts Institute of Technology) (on file with
`Massachusetts Institute of Technology) (“Trupiano”)
`
`
`
`- iii -
`
`
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`
`
`
`
`
`
`William K. Rashbaum, Report on 9/11 Finds Flaws In Response of
`Police Dept., N.Y. Times (July 27, 2002), available at
`http://www.nytimes.com/2002/07/27/nyregion/report-on-9-11-
`finds-flaws-in-response-of-police-dept.html?mcubz=0
`
`Fred Durso, Jr., A Decade of Difference, NFPA Journal (Sept. 1,
`2011), available at http://www.nfpa.org/news-and-
`research/publications/nfpa-journal/2011/september-october-
`2011/features/a-decade-of-difference
`
`Intentionally Left Blank
`
`John H. Mock et al., A Voice Over IP Solution for Mobile Radio
`Interoperability, University of New Hampshire, ECE Department,
`IEEE 56th, Vol. 3, pp. 1338-1341 (2002)
`
`Rick Rotondo, Locate-Track-Extract: Wireless Mesh Networking
`Allows Commanders to Keep Track of Firefighters at an Incident
`Scene, Mission Critical Communications Magazine (March 2004)
`
`- iv -
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`
`
`I, David Hilliard Williams, declare as follows:
`
`1.
`
`I have been retained on behalf of Google LLC. (“Google”) for the
`
`above-captioned inter partes review proceeding. I am being compensated for my
`
`time in connection with this IPR at my standard hourly consulting rate. I
`
`understand that this proceeding involves U.S. Patent No. 9,445,251 (“the ’251
`
`patent”) titled “Method to Provide Ad Hoc and Password Protected Digital and
`
`Voice Networks” by Malcolm K. Beyer, Jr. and Christopher R. Rice, and that the
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`’251 patent is currently assigned to Advanced Ground Information Systems, Inc.
`
`2.
`
`I have reviewed and am familiar with the specification of the ’251
`
`patent filed on February 27, 2015. I understand that the ’251 patent has been
`
`provided as Google 1001. I will cite to the specification using the following
`
`format: (’251 patent, 1:1-10). This example citation points to the ’251 patent
`
`specification at column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’251
`
`patent. I understand that the file history has been provided as Google 1002.
`
`4.
`
`I understand that the ’251 patent has a filing date of February 27,
`
`2015. But it is my opinion that the ’251 patent should not be afforded a priority
`
`date earlier than April 17, 2006 (the filing date of U.S. Patent No. 7,630,724). I am
`
`informed by Google’s counsel that the ’251 patent has an earliest possible priority
`
`date of September 21, 2004 (the filing date of U.S. Patent No. 7,031,728), but it is
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`- 1 -
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`my opinion that the claims of the ’251 patent are not entitled to this date.
`
`Accordingly, I understand that there is a discrepancy in the priority date for the
`
`’251 patent. Out of an abundance of caution, the opinions in this Declaration will
`
`address both the April 17, 2006 and September 21, 2004 priority dates.
`
`5.
`
`In preparing this Declaration, I have also reviewed and am familiar
`
`with the following prior art used in the Petition for Inter Partes Review of the ’251
`
`patent and/or in my declaration below:
`
`U.S. Patent No. 7,353,034 to Haney, titled “Location Sharing and
`Tracking Using Mobile Phones or Other Wireless Devices”
`(“Haney”). Haney has an issue date of April 1, 2008 and a filing
`date of April 4, 2005 where the filing date is prior to the April 17,
`2006 priority date of the ’251 patent. I understand that Haney has
`been provided as Google 1005.
`
`U.S. Patent No. 6,366,782 to Fumarolo et al., titled “Method and
`Apparatus for Allowing a User of a Display-Based Terminal to
`Communicate with Communication Units in a Communication
`System” (“Fumarolo”). Fumarolo published on April 2, 2002
`which is more than a year prior to the ’251 patent’s earliest
`possible priority date of September 21, 2004. I understand that
`Fumarolo has been provided as Google 1006.
`
`6.
`
`The ’251 patent describes methods and systems for individuals to set
`
`up an ad hoc digital and voice network allowing users to coordinate their activities.
`
`(Google 1001, ’251 patent, Abstract.) One goal of the ’251 patent appears to be
`
`
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`- 2 -
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`
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`“eliminating the need for pre-entry of data into a web or identifying others by
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`name, phone numbers or email” when establishing the ad hoc digital and voice
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`network. (Id.) The ’251 explains that its system and method are “especially useful
`
`for police, fire fighters, military, first responders or other emergency situations for
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`coordinating different organizations at the scene of a disaster ...” (Id.) I am familiar
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`with the technology described in the ’251 patent as of its February 27, 2015 filing
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`date, its April 17, 2006 priority date, and its earliest possible priority date
`
`September 21, 2004.
`
`7.
`
`I have been asked to provide my technical review, analysis, insights,
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`and opinions regarding the ’251 patent and the above-noted references that form
`
`the basis for the grounds of rejection set forth in the Petition for Inter Partes
`
`Review of the ’251 patent.
`
`I.
`
`Qualifications
`
`8.
`
`In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience in the relevant art. A copy of my current curriculum
`
`vitae is provided as Google 1004, and it provides a comprehensive description of
`
`my academic and employment history over the last thirty-plus years.
`
`9.
`
`I have over 30 years of experience in wireless location services,
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`including experience implementing Wireless 911 (E911) systems and designing,
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`implementing, and managing numerous location-based service (LBS) applications
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`- 3 -
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`such as family tracking and fleet and asset management. I am currently the
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`President of the company E911-LBS Consulting, and I have been with the
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`company since 2002. As the President of E911-LBS Consulting, I provide services
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`across the entire wireless value chain, particularly with respect to technology and
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`business strategic planning and product design and development associated with
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`LBS, Global Positioning Satellite (GPS) systems, E911, Real-Time Location
`
`Systems (RTLS), Radio Frequency Identification (RFID), beacon, and other
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`location determination and sensing technologies and services.
`
`10.
`
`I have extensive expertise in all aspects of LBS delivery across the
`
`wireless location ecosystem including enabling network, map data, geospatial
`
`platform, chipset, data management, device, and
`
`location determination
`
`infrastructure and integration providers. I am an expert in all related aspects of
`
`LBS, including data privacy and security management.
`
`11. For example, I managed the development and launch of several
`
`consumer-oriented LBS applications including mobile social networking, family
`
`tracking and local search for a major wireless carrier (AT&T). This work included
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`the development of corporate-wide location data privacy policies and their
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`systemic implementation for all LBS customers. My work in both data privacy and
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`mobile social networking resulted in my co-inventing a patent in this field titled
`
`
`
`- 4 -
`
`
`
`“Method and Apparatus for Providing Mobile Social Networking Privacy.” (U.S.
`
`Patent Number 8,613,109, issued on December 17, 2013).
`
`12.
`
`I also have a great deal of experience related to E911 systems. For
`
`example, in 2003-2004, I consulted with AT&T Wireless on their implementation
`
`of E911 systems. Specifically, I led the development of implementation and
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`monitoring of systems in AT&T Wireless Western Region as part of their
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`deployment of TDOA (Time Difference of Arrival) non-GPS E911 network
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`location infrastructure to meet the wireless E911 location requirements mandated
`
`by the FCC. In 2004-2005, I worked with NAVTEQ, a key provider of LBS and
`
`E911 location map data, in developing their application developer ecosystem and
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`website, providing developers with access to all of NAVTEQ’s product and
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`technical resources for developing location-related applications, including data
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`products involving 911 GIS (Geographical Information Systems).
`
`13.
`
`I have authored multiple books on wireless location, including:
`
`• The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless Location-
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`Based Services (2005 and 2009 versions);
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`• The Definitive Guide to Wireless E911; and
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`• The Definitive Guide to Mobile Positioning and Location Management
`
`(co-author).
`
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`14.
`
`I received a B.S. degree, in Electrical Engineering, from Purdue
`
`University in 1983. I received a MBA degree, in Information Systems
`
`Management, from The University of Texas at Austin in 1987.
`
`15. My Curriculum Vitae is provided as Google 1004, which contains
`
`further details on my education, experience, publications, and other qualifications
`
`to render an expert option. My work on this case is being billed at a flat rate of
`
`$350 per hour. I do not charge for non-working travel time except for
`
`reimbursement for actual expenses. My compensation is not contingent upon the
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`outcome of this inter partes review.
`
`II. My Understanding of Claim Construction
`
`16.
`
`I understand that, during an inter partes review, claims are to be given
`
`their broadest reasonable construction in light of the specification as would be read
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`by a person of ordinary skill in the relevant art (“POSA”).
`
`17.
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`It is my opinion that the term “second georeferenced map” means “an
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`aerial photograph, a satellite image, or a moved map relative to a first
`
`georeferenced map.”
`
`18.
`
`I note that the disclosure of the ’251 patent does not explain or even
`
`recite the term “second georeferenced map” in the specification. With regard to
`
`this term, I have reviewed the following materials in order to understand the scope
`
`of this particular term: the specification of the ’251 patent, the prosecution history
`
`
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`- 6 -
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`
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`of the ’251 patent, and a complaint filed by Patent Owner in a district court case
`
`currently pending in the Eastern District of Texas. With regard to the prosecution
`
`history, Patent Owner cited to column 18, line 57 to column 19, line 7 of the ’724
`
`patent as support for the claimed “second georeferenced map data” limitation. This
`
`portion of the ’724 patent recites “[t]he cell phone device application software,
`
`however, can also provide the user the ability to request a specific geo-referenced
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`map or chart, aerial photograph or satellite image from a remote image server by
`
`pointing at the specific location desired for the map.” (Google 1010, 18:63-19:2.)
`
`19.
`
`I have also been informed by counsel that in a district court case
`
`currently pending in the Eastern District of Texas, Patent Owner provided a single
`
`sentence to explain why the accused products allegedly operate by “sending … a
`
`request for a second georeferenced map”: “[t]he exemplary Accused Devices are
`
`further programmed to permit users to request and display additional maps by, for
`
`example, moving the map screen and/or by selecting satellite image maps.”
`
`(Google 1008, p. 18.)
`
`III. My Understanding of Obviousness
`I understand that a patent claim is invalid if the claimed invention
`20.
`
`would have been obvious to a person of ordinary skill in the field at the time the
`
`application was filed. This means that even if all of the requirements of the claim
`
`cannot be found expressly in a single prior art reference that would anticipate the
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`- 7 -
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`
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`claim, the claim can still be invalid. As part of this inquiry, I have been asked to
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`consider the level of ordinary skill in the field that someone would have had at the
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`time the claimed invention was made. In deciding the level of ordinary skill, I
`
`considered the following:
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`• the levels of education and experience of persons working in the field;
`
`• the types of problems encountered in the field; and
`
`• the sophistication of the technology.
`
`21. To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an
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`invention is obvious when the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a POSA.
`
`22.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
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`which elements of the patent claim appear in each of the asserted references; and
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`(3) explain how the prior art references could have been combined in order to
`
`create the inventions claimed in the asserted claim.
`
`23.
`
`I also understand that prior art references can be combined under
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`several different circumstances. For example, it is my understanding that one such
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`- 8 -
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`circumstance is when a proposed combination of prior art references results in a
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`system that represents a predictable variation, which is achieved using prior art
`
`elements according to their established functions. It is also my understanding that
`
`prior art references can be combined when the combination could be performed
`
`using known techniques, and if the corresponding results would have been
`
`predictable to a POSA.
`
`24.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`analysis. I understand there may be a number of rationales that may support a
`
`conclusion of obviousness, including:
`
`• Combining prior art elements according to known methods to yield
`
`predictable results;
`
`• Substitution of one known element for another to obtain predictable
`
`results;
`
`• Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
`• Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`• "Obvious to try" – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
`
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`- 9 -
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`
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`• Known work in one field of endeavor may prompt variations of it for use
`
`in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary
`
`skill in the art; or
`
`• Some teaching, suggestion, or motivation in the prior art that would have
`
`led one of ordinary skill to modify the prior art reference or to combine
`
`prior art teachings to arrive at the claimed invention.
`
`25.
`
`I understand that it is not proper to use hindsight to combine
`
`references or elements of references to reconstruct the invention using the claims
`
`as a guide. My analysis of the prior art is made as of the time the invention was
`
`made.
`
`26.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether a patent is obvious or nonobvious. Such indicia include:
`
`commercial success of products covered by the patent claims; a long-felt need for
`
`the invention; failed attempts by others to make the invention; copying of the
`
`invention by others in the field; unexpected results achieved by the invention as
`
`compared to the closest prior art; praise of the invention by the infringer or others
`
`in the field; the taking of licenses under the patent by others; expressions of
`
`surprise by experts and those skilled in the art at the making of the invention; and
`
`the patentee proceeded contrary to the accepted wisdom of the prior art.
`
`
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`- 10 -
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`
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`IV. Level of Ordinary Skill in the Art
`
`27.
`
`I understand that a person of ordinary skill in the art is one who is
`
`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
`
`art, and is a person of ordinary creativity. A person of ordinary skill in the art
`
`("POSA") would have had knowledge of the mobile communication and location-
`
`based services, and various related technologies as of both 2004 and 2006.
`
`28. Based on the disclosure of the ’251 patent, one of ordinary skill in the
`
`art would have had either: (1) a Bachelor of Science degree in Electrical
`
`Engineering or an equivalent field, with three to five years of academic or industry
`
`experience in the wireless/mobile location industry or comparable industry
`
`experience; or (2) a Master of Science degree in Electrical Engineering or an
`
`equivalent field, with two to four years of academic or industry experience in the
`
`same field. Additionally, experience could take the place of some formal training,
`
`as relevant knowledge and skills could be learned on the job. This description is
`
`approximate, and a higher level of education or skill might make up for less
`
`experience, and vice-versa.
`
`V. Overview of the ’251 Patent
`29. The ’251 patent describes methods and systems for individuals to set
`
`up an ad hoc digital and voice network allowing users to coordinate their activities.
`
`(’251 patent, Abstract.) One goal of the ’251 patent appears to be “eliminating the
`
`
`
`- 11 -
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`
`
`need for pre-entry of data into a web or identifying others by name, phone numbers
`
`or email” when establishing the ad hoc digital and voice network. (Id.) The ’251
`
`explains that its system and method are “especially useful for police, fire fighters,
`
`military, first responders or other emergency situations for coordinating different
`
`organizations at the scene of a disaster ....” (Id.)
`
`30. The ’251 patent further alleges
`
`that “[c]oordinating different
`
`organizations at the scene of a disaster presents several problems as there are voice
`
`and digital data (text messages) communications that need to be constantly
`
`occurring up and down the chain of command.” (Id., 2:20-23.) To solve these
`
`alleged problems, the ’251 patent purports to provide a way for establishing “ad
`
`hoc voice and data networks to enable both data and voice communications up and
`
`down their chain of command and simultaneously with different, not pre-known,
`
`organizations, responding to a disaster.” (Id., 2:37-44.)
`
`31. When such a disaster arises, a first wireless device can establish a
`
`temporary ad hoc network for one or more second wireless devices to join. (Id.,
`
`2:57-3:14.) The ’251 patent explains that each wireless device may include a
`
`“Global Positioning System (GPS) receiver” and “Advanced Communication
`
`Software application programs” to facilitate the sharing of GPS information and
`
`status information. (Id., 1:33-46.) Using their respective GPS receivers, each
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`- 12 -
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`wireless device can “either broadcast to a group or selectively transmit to each of
`
`the other [wireless devices] … its GPS position and status.” (Id., 2:57-67.)
`
`32. The wireless devices are configured to share their respective GPS and
`
`status information by interacting with a “communication Server [that] acts as a
`
`forwarder for IP communications between any combination of cell phone/PDA
`
`users and/or PC based user.” (Id., 5:13-15.) The ’251 patent discloses that the
`
`“Server also fills another role of being a database from which data can be
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`requested by network participants (i.e. maps, satellite images, and the like) or can
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`be pushed to network participants (i.e. symbology and soft switch changes, and the
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`like).” (Id., 3:39-45.) Thus, in addition to sharing GPS information among wireless
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`devices in an ad hoc network, a first wireless device can download from the server,
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`and subsequently display, “a geographical map and georeferenced entities,” such
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`as one or more second wireless devices. (Id., 6:18-23.) Figure 1 (reproduced
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`below) illustrates an example of a wireless device displaying “a geographical map
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`and georeferenced entities.” (Id.)
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`(’251 patent, FIG. 1.)
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`33. Further, users of the wireless devices are able to “make calls to or
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`send data to remote phones by touching their display symbols” shown on the
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`geographical map. (Id., 3:5-6.)
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`34. The ’251 patent does not purport to invent a new wireless device, a
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`new server, or even new location determination techniques. Instead, the ’251 pa-
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`tent merely purports to add functionality for downloading and displaying multiple
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`geographical maps to known map-based systems for providing location and com-
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`munication information.
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`35.
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`I note that features described above, including those with respect to a
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`server, such as the ’251 patent’s disclosure that the “communication Server [that]
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`acts as a forwarder for IP communications between any combination of cell
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`phone/PDA users and/or PC based user,” (Id., 5:13-15), are not described or
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`disclosed in the ’728 patent. Indeed, the ’728 patent describes organizing cellular
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`phones
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`into a “communications net” and utilizing a peer-to-peer
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`type
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`communication to transmit information and data directly to other cellular phones.
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`(Google 1011, ’728 patent, 3:44-52, 4:32-46, 8:38-43.) The ’728 patent discloses
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`that cellular phones “report[] their positions and status information directly to all or
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`selected users equipped with cellular phone/PDA communication/GPS system in
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`the communications net.” (Id., 2:18-27.)
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`A. The Priority Date of the ’251 Patent Cannot Be Earlier Than
`April 17, 2006
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`36. Although the ’251 patent claims priority back to September 21, 2004
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`(the filing date of U.S. Patent No. 7,031,728), the ’251 patent should not be
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`afforded a priority date earlier than April 17, 2006 (the filing date of U.S. Patent
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`No. 7,630,724). My opinion is based on my understanding that a patent is only
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`entitled to an earlier priority date if an earlier-filed application provides written
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`description support for each and every claim feature of the patent in question.
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`37.
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`It is my understanding that the ’251 patent’s priority chain includes
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`several continuations-in-part (“CIPs”), which I understand is a mechanism that can
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`be used to present new subject matter that was not included in an earlier
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`application. As discussed above, I have examined the prosecution history of the
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`’251 patent, which included an examination of the earlier patents to which the ’251
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`patent claims priority.
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`38. As an initial matter, in its response to the August 13, 2015 Office
`
`Action, Patent Owner amended the independent claims to include several
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`limitations relating to “a server.” (’251 patent File History, pp. 430-436 (Claim
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`Amendment, November 13, 2015).) Similarly, in its response to the December 10,
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`2015 Office Action, Patent Owner amended the independent claims to include the
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`limitation “wherein the first device does not have access to respective Internet
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`Protocol addresses of the second devices.” (’251 patent File History, pp. 493-498,
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`Claim Amendment, January 26, 2016.) As such, it is my understanding that the
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`independent claims of the ’251 patent are entitled to an earlier priority date only if
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`the earlier-filed patent provides adequate written description support for these
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`claim amendments. And after reviewing the applications to which the ’251 patent
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`claims priority, it is my opinion that the first application that could potentially
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`provide support for the above claim amendments is U.S. Patent No. 7,630,724.
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`- 16 -
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`39.
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`Indeed, my review of the ’724 patent has revealed that every portion
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`of that patent that could potentially provide support for the above claim
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`amendments, were added by way of a CIP, and where thus not included in U.S.
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`Patent No. 7,031,728. (See e.g., ’724 patent, 10:57-11:15, 12:20-28, 12:50-62,
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`15:50-16:2, 16:45-54, 18:63-19:7.) In fact, the term “server” does not appear even
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`once in the ’728 patent. This is not surprising given the fact that the ’728 patent is
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`directed towards peer-to-peer (P2P) communications, rather than communications
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`that are carried out via a “server.” Moreover, the concept of “anonymous phone
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`calling”—which can only be assumed to refer to the above amendment of “wherein
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`the first device does not have access to respective Internet Protocol addresses of
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`the second devices”—was also added by way of the ’724 CIP patent. (See ’724
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`patent, 10:57-11:15.)
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`40. Therefore, it is my opinion that the ’251 patent should not be afforded
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`a priority date earlier than April 17, 2006.
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`VI. Overview of the State of the Art at the Time of Filing
`41. As mentioned above, I understand that there is a discrepancy in the
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`priority date of the ’251 patent, but that it is my opinion that the correct priority
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`date for the ’251 patent is April 17, 2006. I also understand that analyzing the state
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`of mobile communications, location based services (“LBS”) technology including
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`E911 services, ad-hoc networks involving a variety of different mobile devices,
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`- 17 -
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`and E911 during the years prior to both the correct priority date of the ’251 patent
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`(April 17, 2006), as well as the earliest possible priority date of September 21,
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`2004 can provide valuable insight into what people of ordinary skill in the art were
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`aware of at the time, and in what direction the industry was headed. By 2004, all
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`the technology at issue in the ’251 patent was broadly applied and well known by
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`developers of mobile communication and/or LBS. No individual elements of the
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`’251 patent claims were novel at the time of the alleged invention, and there was
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`nothing novel about the manner in which those elements were combined in the
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`claims. Further, there were no technological barriers to combining these elements
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`to form the claimed invention. Indeed, the topics of LBS including E911, ad hoc
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`network creation between disparate mobile devices, and mobile communication
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`have been known well prior to 2004.
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`42. Figure A below shows a timeline of key E911 events, milestones and
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`statistics, along with key dates associated with this case that I will discuss in
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`additional detail below.
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`- 18 -
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`Figure A – E911 Key Events and Milestones
`Systems for Locating Wireless Devices, such as E911 systems,
`A.
`arrived in the 1990s
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`43. The 911 emergency system in the U.S. plays a significant role in the
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`technology involved in this case. Its evolution and history, beginning well back in
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`the
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`last century,
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`led
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`to many regulatory and
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`technology decisions and
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`developments that became commonly known and served as key technology
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`architectures, platforms, and/or services known to all parties involved: all six major
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`and nearly all smaller Wireless Carriers, roughly 6,000 Public Safety Ans