UNITED STATES PATENT AND TRADEMARK OFFICE
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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 IPR2018-01084
`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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`
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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
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`
`
`Google 1003
`U.S. Patent No. 9,445,251
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`

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`TABLE OF CONTENTS
`EXHIBIT LIST ........................................................................................................ 3 
`I. 
`Qualifications ............................................................................................. 4 
`II. 
`My Understanding of Claim Construction .............................................. 7 
`III. 
`My Understanding of Obviousness .......................................................... 8 
`IV. 
`Level of Ordinary Skill in the Art .......................................................... 11 
`V. 
`Overview of the ’251 Patent .................................................................... 12 
`A. 
`The Priority Date of the ’251 Patent Cannot Be Earlier Than April 17,
`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. 
`Grounds of Unpatentability .................................................................... 32 
`A. 
`The combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu
`teaches or suggests each feature of claim 1. ......................................................... 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 .............................................................................................................. 38 
`7.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu
`discloses or suggests each feature of claims 13-19 and 21 ....................... 49 
`Ground 1: The combination of Fumarolo-782, Fumarolo-844, Muramatsu,
`B. 
`Liu, and Spaargaren teaches or suggests each feature of claims 13-19 and 21. .. 84 
`
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`- i -
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`1.  Overview of Spaargaren ............................................................................. 85 
`2.  Motivation to combine Fumarolo-782, Fumarolo-844, Muramatsu, Liu,
`and Spaargaren ........................................................................................... 86 
`3.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 13 ....................... 90 
`4.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 14 ....................... 96 
`5.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 15 .....................101 
`6.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 16 .....................104 
`7.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 17 .....................106 
`8.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 18 .....................107 
`9.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 19. ....................108 
`10.  The combination of Fumarolo-782, Fumarolo-844, Muramatsu, Liu, and
`Spaargaren discloses or suggests each feature of claim 21. ....................109 
`Dependent Claims 13-19 and 21 Recite Nothing More Than Obvious
`C. 
`Design Choices ...................................................................................................110 
`VIII.  Conclusion .............................................................................................. 110 
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`- ii -
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`Exhibit No. Description
`
`EXHIBIT LIST
`
`1001
`
`1002
`
`1003
`1004
`1005
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`U.S. Patent No. 9,445,251 B2 to Beyer, Jr. et al. (“’251 patent”)
`Prosecution History of U.S. Patent No. 9,445,251 B2 (Application
`No. 14/633,804)
`Declaration of David Hilliard Williams (“Williams Dec.”)
`Curriculum Vitae of David Hilliard Williams
`U.S. Patent No. 6,366,782 B1 to Fumarolo et al. (“Fumarolo-782”)
`U.S. Patent No. 6,204,844 B1 to Fumarolo et al. (“Fumarolo-844”)
`U.S. Publication No. 2002/0173906 A1 to Muramatsu
`(“Muramatsu”)
`U.S. Publication No. 2002/0027901 to Liu et al. (“Liu”)
`Intl. Publication No. WO 02/17567 A2 to Spaargaren
`(“Spaargaren”)
`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”)
`
`
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`- iii -
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`Exhibit No. Description
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`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
`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
`Rick Rotondo, “Locate-Track-Extract; Wireless Mesh Networking
`Allows Commanders to Keep Track of Firefighters at an Incident
`Scene,” Mission 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”)
`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.
`
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`- 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
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`above-captioned inter partes review proceeding. I am being compensated for my
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`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
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`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
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`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
`
`to this date. Instead, it is my opinion that the ’251 patent should not be afforded a
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`- 1 -
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`priority date earlier than April 17, 2006 (the filing date of U.S. Patent No.
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`7,630,724). Nevertheless, out of an abundance of caution, the opinions in this
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`Declaration are provided from the perspective of a 2004 priority date.
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`5.
`
`In preparing this Declaration, I have also reviewed and am familiar
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`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
`Online Navigation Service in Wireless Communication Network”
`(“Muramatsu”). Muramatsu has a publication date of November
`
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`- 2 -
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`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.
`
`WO Publication No. 02/17567 to Spaargaren, titled “Data
`Communications” (“Spaargaren”). Spaargaren was published on
`February 28, 2002, which is more than a year prior to the ’251
`patent’s earliest possible priority date. I understand that Spaargaren
`has been provided as Google 1009.
`
`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
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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
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`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,
`
`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
`
`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
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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
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`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
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`wireless location ecosystem including enabling network, map data, geospatial
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`platform, chipset, data management, device, and
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`location determination
`
`infrastructure and integration providers. I am an expert in all related aspects of
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`LBS, including data privacy and security management.
`
`11. For example, I managed the development and launch of several
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`consumer-oriented LBS applications including mobile social networking, family
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`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
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`“Method and Apparatus for Providing Mobile Social Networking Privacy.” (U.S.
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`Patent Number 8,613,109, issued on December 17, 2013).
`
`12.
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`I also have a great deal of experience related to E911 systems. For
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`example, in 2003-2004, I consulted with AT&T Wireless on their implementation
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`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
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`by the FCC. In 2004-2005, I worked with NAVTEQ, a key provider of LBS and
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`E911 location map data, in developing their application developer ecosystem and
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`website, providing developers with access to all of NAVTEQ’s product and
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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-
`
`Based Services (2005 and 2009 versions);
`
` The Definitive Guide to Wireless E911; and
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` 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 contains further details on my education,
`
`experience, publications, and other qualifications to render an expert option. My
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`work on this case is being billed at a flat rate of $350 per hour. I do not charge for
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`non-working travel time except for reimbursement for actual expenses. My
`
`compensation is not contingent upon the outcome of this inter partes review.
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`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
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`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.” (Google 1010, Infringement Complaint, p. 19.)
`
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`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.
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`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.
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`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
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` 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 person of ordinary skill in the art
`
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`(“POSA”) would have had knowledge of 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.
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`V. Overview of the ’251 Patent
`30. The ’251 patent describes methods and systems for “individuals to set
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`up an ad hoc digital and voice network” allowing users to coordinate their
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`activities. (’251 patent, Abstract.) One goal of the ’251 patent appears to be
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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
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`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.)
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`31. The ’251 patent further alleges
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`that “[c]oordinating different
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`organizations at the scene of a disaster presents several problems as there are voice
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`and digital data (text messages) communications that need to be constantly
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`occurring up and down the chain of command.” (Id., 2:20-23.) To solve these
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`alleged problems, the ’251 patent purports to provide a way for establishing “ad
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`hoc voice and data networks to enable both data and voice communications up and
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`down their chain of command and simultaneously with different, not pre-known,
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`organizations, responding to a disaster.” (Id., 2:37-44.)
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`32. When such a disaster arises, a first wireless device can establish a
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`temporary ad hoc network for one or more second wireless devices to join. (Id.,
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`2:57-3:14.) The ’251 patent explains that each wireless device may include a
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`“Global Positioning System (GPS) receiver” and “Advanced Communication
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`Software application programs” to facilitate the sharing of GPS information and
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`status information. (Id., 1:33-46.) Using their respective GPS receivers, each
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`wireless device can “either broadcast to a group or selectively transmit to each of
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`the other [wireless devices] … its GPS position and status[.]” (Id., 2:57-66)
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`33. The wireless devices are configured to share their respective GPS and
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`status information by interacting with a “communication Server [that] acts as a
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`forwarder for IP communications between any combination of cell phone/PDA
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`users and/or PC based users.” (Id., 5:13-15.) The ’251 patent discloses that the
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`“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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`34. 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 geo-
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`graphical map. (Id., 2:57-3:14.)
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`35. 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 of communication units.
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`36.
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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 users,” (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, 4:25-46, 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 (emphasis added).)
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`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
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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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`38.
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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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`39. As an initial matter, in its response to the August 13, 2015 Office
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`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
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`(Amendments to the Claims, November 13, 2015).) Similarly, in its Response to
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`the December 10, 2015 Office Action, Patent Owner amended the independent
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`claims to include the limitation “wherein the first device does not have access to
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`respective Internet Protocol addresses of the second devices.” (Id., pp. 493-498,
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`Amendments to the Claims, January 26, 2016.) As such, it is my understanding
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`that the independent claims of the ’251 patent are entitled to an earlier priority date
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`only if the earlier-filed patent provides adequate written description support for
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`these claim amendments. And after reviewing the applications to which the ’251
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`patent claims priority, it is my opinion that the first application that could
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`potentially provide support for the above claim amendments is U.S. Patent No.
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`7,630,724.
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`40.
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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 were thus not included in U.S.
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`Patent No. 7,031,728. (See, e.g., Google 1012, ’724 patent, 10:57-11:15, 12:20-28,
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`12:50-62, 15:50-16:2, 16:45-54, and 18:63-19:7.) In fact, the term