`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`GOOGLE LLC
`Petitioner
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2018-01083
`Patent 9,445,251
`
`
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,445,251
`
`
`
`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 ............................................................................................. 4
`My Understanding of Claim Construction .............................................. 7
`II.
`My Understanding of Obviousness .......................................................... 8
`III.
`Level of Ordinary Skill in the Art .......................................................... 11
`IV.
`Overview of the ’251 Patent .................................................................... 12
`V.
`The Priority Date of the ’251 Patent Cannot Be Earlier Than April 17,
`A.
`2006 16
`VI.
`Overview of the State of the Art at the Time of Filing ......................... 18
`A.
`Systems for Locating Wireless Devices, such as E911 systems, arrived in
`the 1990s ............................................................................................................... 20
`B.
`Expanding Wireless Device Locators to the Creation of Ad-Hoc Networks
`for Emergency Responders was Known .............................................................. 23
`C.
`Utilizing Interactive Maps within the Context of Location-Based Services
`and Ad-Hoc Networks was known ....................................................................... 30
`D.
`Conclusion ................................................................................................. 31
`VII.
`Ground of Unpatentability ..................................................................... 32
`A.
`Ground 1: The combination of Fumarolo-782, Fumarolo-844, Muramatsu,
`and Liu teaches or suggests each feature of claims 1, 2, 4-6, 8, 10, 12, 22-24, 27,
`29, 31, 32, and 35. ................................................................................................ 32
`1. Overview of Fumarolo-782 ........................................................................ 32
`2. Overview of Fumarolo-844 ........................................................................ 33
`3. Overview of Muramatsu ............................................................................ 34
`4. Overview of Liu ......................................................................................... 34
`5. Overview of the Combination of Fumarolo-782, Fumarolo-844,
`Muramatsu, and Liu ................................................................................... 35
`6. Motivation to Combine Fumarolo-782, Fumarolo-844, Muramatsu, and
`Liu .............................................................................................................. 37
`7. The combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu
`discloses or suggests each feature of claims 1, 2, 4-6, 8, 10, 12, 22-24, 27,
`29, 31, 32, and 35 ....................................................................................... 49
`Dependent Claims 2, 4-6, 8, 10, 12, 22, 23, 27, 29, 31, 32, and 35 Recite
`B.
`Nothing More Than Obvious Design Choices ..................................................... 98
`
`
`
`- i -
`
`
`
`VIII. Conclusion ................................................................................................ 99
`
`VITT.«—«»_«CONCLUSION 2.............cccccccccccccssccccccccccccccccscsscccccccccecccscssccccccccccececscsscsssoossees99
`
`
`
`
`
`
`
`
`- ii -
`ii -
`
`
`
`EXHIBIT LIST
`
`1002
`
`1003
`1004
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Exhibit No. Description
`U.S. Patent No. 9,445,251 to Beyer, Jr. et al., issued September 13,
`1001
`2016 (“’251 Patent”)
`File History of U.S. Patent No. 9,445,251 (“’251 Patent File
`History”)
`Declaration of David Hilliard Williams (“Williams”)
`Curriculum Vitae of David Hilliard Williams
`U.S. Patent No. 6,366,782 to Fumarolo et al., issued April 2, 2002
`(“Fumarolo-782”)
`U.S. Patent No. 6,204,844 to Fumarolo et al., issued March 20,
`2001 (“Fumarolo-844”)
`U.S. Patent Application Publication No. 2002/0173906 to
`Muramatsu, published November 21, 2002, (“Muramatsu”)
`U.S. Patent Application Publication No. 2002/0027901 to Liu et
`al., issued March 7, 2002 (“Liu”)
`Plaintiff’s Original Complaint for Patent Infringement, AGIS
`Software Development LLC v. Huawei Device USA Inc., et al.,
`Case No. 2:17-cv-00513 (TXED), filed June 21, 2017.
`(“Infringement Complaint”)
`U.S. Patent No. 7,031,728 to Beyer, Jr., issued April 18, 2006
`(“’728 Patent”)
`U.S. Patent No. 7,630,724 to Beyer, Jr. , et al., issued December 8,
`2009 (“’724 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 Wireless
`Devices for E911 and Location Based Services (Position, Location,
`and Navigation Symposium, 2002) (“Christie”)
`Dale N. Hatfield, A Report on Technical and Operational Issues
`Impacting The Provision of Wireless Enhanced 911 Services,
`Federal Communications Commission (2002) (“Hatfield”)
`Charles E. Perkins, “Ad Hoc Networking.” Nokia Research Center
`(November 28, 2000) (“Perkins”)
`
`1015
`
`1016
`
`
`
`- iii -
`
`
`
`1018
`
`1019
`1020
`
`1021
`
`Exhibit No. Description
`Duncan Scott Sharp, Adapting Ad Hoc Network Concepts to Land
`1017
`Mobile Radio Systems (1972 Ph.D. dissertation, University of
`Alberta) (on file with Simon Fraser University, December 2002)
`(“Duncan”)
`Madhavi W. Subbarao, Mobile Ad Hoc Data Networks for
`Emergency 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”)
`Intentionally Left Blank
`McKinsey & Company, The McKinsey Report : FDNY 9/11 Re-
`sponse (2002) (“The McKinsey Report”)
`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
`“Locate-Track-Extract; Wireless Mesh Networking Allows Com-
`manders to Keep Track of Firefighters at an Incident Scene,” Mis-
`sion Critical Communications, March 2004
`U.S. Patent Publication No. 2003/0100326 to Grube et al., pub-
`lished May 29, 2003 (“Grube”)
`U.S. Patent No. 6,654,683 to Jin et al., issued November 25, 2003
`(“Jin”)
`U.S. Patent No. 6,119,017 to Cassidy et al., issued September 12,
`2000 (“Cassidy”)
`U.S. Patent No. 5,563,931 to Bishop et al., issued October 8, 1996
`(“Bishop”)
`Ching-Chien Chen, et al., Automatically and Accurately Conflating
`Satellite Imagery and Maps (University of Southern California, Oc-
`tober 2003) (“Chen”)
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`- iv -
`
`
`
`
`
`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
`
`’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. I am also 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 my opinion that the claims of the ’251 patent are not entitled
`
`
`
`- 1 -
`
`
`
`to this date. Instead, 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). Nevertheless, out of an abundance of caution, the opinions in this
`
`Declaration are provided from the perspective of a 2004 priority date.
`
`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. 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-782”). Fumarolo-782 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-782 has been provided as Google 1005.
`
`U.S. Patent No. 6,204,844 to Fumarolo et al., titled “Method and
`Apparatus for Dynamically Grouping Communication Units in a
`Communication System” (“Fumarolo-844”). Fumarolo-844 has an
`issue (publication) date of March 20, 2001, which is more than a
`year prior to the ’251 patent’s earliest possible priority date of
`September 21, 2004. I understand that Fumarolo-844 has been
`provided as Google 1006.
`
`U.S. Patent Application Publication No. 2002/0173906 to
`Muramatsu, titled “Portable Navigation Device and System, and
`
`
`
`- 2 -
`
`
`
`Online Navigation Service in Wireless Communication Network”
`(“Muramatsu”). Muramatsu has a publication date of November
`21, 2002, which is more than a year prior to the ’251 patent’s
`earliest possible priority date of September 21, 2004. I understand
`that Muramatsu has been provided as Google 1007.
`
`U.S. Patent Application Publication No. 2002/0027901 to Liu et
`al., titled “Apparatus, Methods and Systems for Anonymous
`Communication” (“Liu”). Liu has a publication date of March 7,
`2002, over a year prior to the ’251 patent’s earliest possible
`priority date of September 21, 2004. I understand that Liu has been
`provided as Google 1008.
`
`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
`
`“eliminating the 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.) I am
`
`familiar with the technology described in the ’251 patent as of its February 27,
`
`2015 filing date, its April 17, 2006 priority date, and its earliest possible priority
`
`date September 21, 2004.
`
`
`
`- 3 -
`
`
`
`7.
`
`I have been asked to provide my technical review, analysis, insights,
`
`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,
`
`including experience implementing Wireless 911 (E911) systems and designing,
`
`implementing, and managing numerous location-based service (LBS) applications
`
`such as family tracking and fleet and asset management. I am currently the
`
`President of the company E911-LBS Consulting, and I have been with the
`
`company since 2002. As the President of E911-LBS Consulting, I provide services
`
`across the entire wireless value chain, particularly with respect to technology and
`
`business strategic planning and product design and development associated with
`
`LBS, Global Positioning Satellite (GPS) systems, E911, Real-Time Location
`
`Systems (RTLS), Radio Frequency Identification (RFID), beacon, and other
`
`location determination and sensing technologies and services.
`
`
`
`- 4 -
`
`
`
`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
`
`the development of corporate-wide location data privacy policies and their
`
`systemic implementation for all LBS customers. My work in both data privacy and
`
`mobile social networking resulted in my co-inventing a patent in this field titled
`
`"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
`
`monitoring of systems in AT&T Wireless Western Region as part of their
`
`deployment of TDOA (Time Difference of Arrival) non-GPS E911 network
`
`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
`
`
`
`- 5 -
`
`
`
`E911 location map data, in developing their application developer ecosystem and
`
`website, providing developers with access to all of NAVTEQ’s product and
`
`technical resources for developing location-related applications, including data
`
`products involving 911 GIS (Geographical Information Systems).
`
`13.
`
`I have authored multiple books on wireless location, including:
`
` The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless Location-
`
`Based Services (2005 and 2009 versions);
`
` The Definitive Guide to Wireless E911; and
`
` The Definitive Guide to Mobile Positioning and Location Management
`
`(co-author).
`
`14.
`
`I received a B.S. degree, in Electrical Engineering, from Purdue
`
`University in 1983. I received a MBA degree, in Information Systems
`
`Management, from The University of Texas at Austin in 1987.
`
`15. My Curriculum Vitae (Google 1004)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 outcome of this inter partes review.
`
`
`
`- 6 -
`
`
`
`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
`
`by a person of ordinary skill in the relevant art (“POSA”).
`
`17.
`
`It is my opinion that the term “second georeferenced map” means “an
`
`aerial photograph, a satellite image, or a moved map relative to a first
`
`georeferenced map.”
`
`18.
`
`I note that the specification of the ’251 patent does not use the terms
`
`“second georeferenced map.” With regard to this term, I have received the
`
`following materials in order to understand the scope of this particular term: the
`
`specification of the ’251 patent, the prosecution history 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. (Google 1002, ’251
`
`Patent File History, p. 554.) 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 map or chart, aerial photograph or satellite image
`
`from a remote image server by pointing at the specific location desired for the
`
`map.”
`
`
`
`- 7 -
`
`
`
`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.”
`
`III. My Understanding of Obviousness
`20.
`I understand that a patent claim is invalid if the claimed invention
`
`would have been obvious to a person of ordinary skill in the field at the time the
`
`application was filed. This means that even if all of the requirements of the claim
`
`cannot be found expressly in a single prior art reference that would anticipate the
`
`claim, the claim can still be invalid.
`
`21. As part of this inquiry, I have been asked to consider the level of
`
`ordinary skill in the field that someone would have had at the time the claimed
`
`invention was made. In deciding the level of ordinary skill, I considered the
`
`following:
`
` 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.
`
`
`
`- 8 -
`
`
`
`22. To obtain a patent, a claimed invention must have, as of the priority
`
`date, been nonobvious in view of the prior art in the field. I understand that an
`
`invention is obvious when the differences between the subject matter sought to be
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a POSA.
`
`23.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain how the prior art references could have been combined in order to
`
`create the inventions claimed in the asserted claim.
`
`24.
`
`I also understand that prior art references can be combined under
`
`several different circumstances. For example, it is my understanding that one such
`
`circumstance is when a proposed combination of prior art references results in a
`
`system that represents a predictable variation, which is achieved using prior art
`
`elements according to their established functions. It is also my understanding that
`
`prior art references can be combined when the combination could be performed
`
`using known techniques, and if the corresponding results would have been
`
`predictable to a POSA.
`
`
`
`- 9 -
`
`
`
`25.
`
`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;
`
` 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
`
`
`
`- 10 -
`
`
`
` 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.
`
`26.
`
`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.
`
`27.
`
`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.
`
`IV. Level of Ordinary Skill in the Art
`
`28.
`
`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 POSA would have had knowledge of
`
`
`
`- 11 -
`
`
`
`the mobile communication and location-based services, and various related
`
`technologies as of 2004.
`
`29. 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
`30. 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
`
`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,
`
`
`
`- 12 -
`
`
`
`military, first responders or other emergency situations for coordinating different
`
`organizations at the scene of a disaster ....” (Id.)
`
`31. 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.)
`
`32. 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
`
`wireless device can “either broadcast to a group or selectively transmit to each of
`
`the other [wireless devices] … its GPS position and status[.]” (Id., 2:57-66.)
`
`33. The wireless devices are configured to share their respective GPS and
`
`status information by interacting with a “communication Server [that] acts as a
`
`
`
`- 13 -
`
`
`
`forwarder for IP communications between any combination of cell phone/PDA
`
`users and/or PC based users.” (Id., 5:13-15.) The ’251 patent discloses that the
`
`“Server also fills another role of being a database from which data can be
`
`requested by network participants (i.e. maps, satellite images, and the like) or can
`
`be pushed to network participants (i.e. symbology and soft switch changes, and the
`
`like).” (Id., 3:39-45.) Thus, in addition to sharing GPS information among wireless
`
`devices in an ad hoc network, a first wireless device can download from the server,
`
`and subsequently display, “a geographical map and georeferenced entities,” such
`
`as one or more second wireless devices. (Id., 6:18-23.) Figure 1 (reproduced
`
`below) illustrates an example of a wireless device displaying “a geographical map
`
`and georeferenced entities.” (Id.)
`
`
`
`- 14 -
`
`
`
`(‘251 Patent, FIG. 1.)
`
`34. Further, users of the wireless devices are able to “make calls to or
`
`
`
`send data to remote phones by touching their display symbols” shown on the geo-
`
`graphical map. (Id., 2:57-3:14.)
`
`35. The ’251 patent does not purport to invent a new wireless device, a
`
`new server, or even new location determination techniques. Instead, the ’251 pa-
`
`
`
`- 15 -
`
`
`
`tent merely purports to add functionality for downloading and displaying multiple
`
`geographical maps to known map-based systems for providing location and com-
`
`munication information of communication units.
`
`36.
`
`I note that features described above, including those with respect to a
`
`server, such as the ’251 patent’s disclosure that the “communication Server [that]
`
`acts as a forwarder for IP communications between any combination of cell
`
`phone/PDA users and/or PC based users,” (id., 5:13-15), are not described or
`
`disclosed in the ’728 patent. Indeed, the ’728 patent describes organizing cellular
`
`phones
`
`into a “communications net” and utilizing a peer-to-peer
`
`type
`
`communication to transmit information and data directly to other cellular phone
`
`(Google 1010, ’728 patent, 3:44-52, 4:25-46, 8:38-43.) The ’728 patent discloses
`
`that cellular phones “report[] their positions and status information directly to all or
`
`selected users equipped with cellular phone/PDA communication/GPS system in
`
`the communications net[.]” (Id., 2:18-27.)
`
`A. The Priority Date of the ’251 Patent Cannot Be Earlier Than
`April 17, 2006
`37. Although the ’251 patent claims priority back to September 21, 2004
`
`(the filing date of U.S. Patent No. 7,031,728), 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). My opinion is based on my understanding that a patent is only
`
`
`
`- 16 -
`
`
`
`entitled to an earlier priority date if an earlier-filed application provides written
`
`description support for each and every claim feature of the patent in question.
`
`38.
`
`It is my understanding that the ’251 patent’s priority chain includes
`
`several continuations-in-part (“CIPs”), which I understand is a mechanism that can
`
`be used to present new subject matter that was not included in an earlier
`
`application. As discussed above, I have examined the prosecution history of the
`
`’251 patent, which included an examination of the earlier patents to which the ’251
`
`patent claims priority.
`
`39. As an initial matter, in its response to the August 13, 2015 Office
`
`Action, Patent Owner amended the independent claims to include several
`
`limitations relating to “a server.” (’251 Patent File History, pp. 430-436) Similarly,
`
`in its response to the December 10, 2015 Office Action, Patent Owner amended the
`
`independent claims to include the limitation “wherein the first device does not
`
`have access to respective Internet Protocol addresses of the second devices.” (Id.,
`
`pp. 493-498, Amendments to the Claims, January 26, 2016.) As such, it is my
`
`understanding that the independent claims of the ’251 patent are entitled to an
`
`earlier priority date only if the earlier-filed patent provides adequate written
`
`description support for these claim amendments. And after reviewing the
`
`applications to which the ’251 patent claims priority, it is my opinion that the first
`
`
`
`- 17 -
`
`
`
`application that could potentially provide support for the above claim amendments
`
`is U.S. Patent No. 7,630,724.
`
`40.
`
`Indeed, my review of the ’724 patent has revealed that every portion
`
`of that patent that could potentially provide support for the above claim
`
`amendments, were added by way of a CIP, and where thus not included in U.S.
`
`Patent No. 7,031,728. (See, e.g., Google 1011, ’724 patent, 10:57-11:15, 12:20-28,
`
`12:50-62, 15:50-16:2, 16:45-54, and 18:63-19:7.) In fact, the term “server” does
`
`not appear even once in the ’728 patent. This is not surprising given the fact that
`
`the ’728 patent is directed towards peer-to-peer (P2P) communications, rather than
`
`communications that are carried out via a “server.” Moreover, the concept of
`
`“anonymous phone calling”—which can only be assumed to refer to the above
`
`amendment of “wherein the first device does not have access to respective Internet
`
`Protocol addresses of the second devices”—was also added by way of the ’724 CIP
`
`patent. (See id., 10:57-11:15.)
`
`41. Therefore, it is my opinion that the ’251 patent should not be afforded
`
`a priority date earlier than April 17, 2006.
`
`
`VI. Overview of the State of the Art at the Time of Filing
`42. As an initial matter, analyzing the state of mobile communications,
`
`location based services (“LBS”) technology including E911 services, ad-hoc
`
`networks involving a variety of different mobile devices, and E911 during the
`
`
`
`- 18 -
`
`
`
`years prior to the earliest possible priority date of September 21, 2004 can provide
`
`valuable insight into what people of ordinary skill in the art were aware of at the
`
`time, and in what direction the industry was headed. By 2004, all the technology at
`
`issue in the ’251 patent was broadly applied and well known by developers of
`
`mobile communication and/or LBS. No individual elements of the ’251 patent
`
`claims were novel at the time of the alleged invention, and there was nothing novel
`
`about the manner in which those elements were combined in the claims. Further,
`
`there were no technological barriers to combining these elements to form the
`
`claimed invention. Indeed, the topics of LBS including E911, ad hoc network
`
`creation between disparate mobile devices, and mobile communicat