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`IPR2018-01084
`U.S. Patent No. 9,445,251
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________________
`
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`Patent Owner.
`
`
`
`Patent No. 9,445,251
`Issue Date: September 13, 2016
`Title: METHOD TO PROVIDE AD HOC AND PASSWORD PROTECTED
`DIGITAL AND VOICE NETWORKS
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`
`
`_________________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2018-01084
`_________________________________________________________________________
`
`
`
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`IPR2018-01084
`U.S. Patent No. 9,445,251
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION ........................................................................................... 1
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`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED
`IN THE PETITION, AND THE PETITION SHOULD BE DENIED ........... 4
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`
`
`I.
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`II.
`
`A.
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`Requirements for Showing Obviousness Under 35 U.S.C. § 103 ......... 4
`
`B.
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`C.
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`Ground 1 Is Deficient Because Fumarolo Is Directed to a
`Completely Different Technological Field and There Is No
`Motivation to Combine Fumarolo with the Secondary
`References .............................................................................................. 7
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`Ground 1 Is Deficient Because the Prior Art Does Not Disclose
`or Suggest the Claimed “First Device” and Petitioner Does Not
`Provide a Proper Motivation to Combine the References...................... 14
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`D. Ground 1 Is Deficient Because the Prior Art Fails to Disclose or
`Suggest “presenting, via an interactive display of the first
`device, a first interactive, georeferenced map and a plurality of
`user-selectable symbols corresponding to the plurality of
`second devices, wherein the symbols are positioned on the first
`georeferenced map at respective positions corresponding to the
`locations of the second devices, and wherein the first
`georeferenced map includes data relating positions on the first
`georeferenced map to spatial coordinates” ............................................ 16
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`E.
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`F.
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`Ground 1 Is Deficient Because The Prior Art Does Not
`Disclose or Suggest the Claimed “with a first device, receiving
`a message from a second device, wherein the message relates to
`joining a group” ...................................................................................... 20
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`Ground 1 Is Deficient Because Liu Is Directed to a Completely
`Different Technological Field and There Is No Motivation to
`Combine Any of the References with Liu .............................................. 21
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`ii
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`IPR2018-01084
`U.S. Patent No. 9,445,251
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`G. Ground 1 Is Deficient Because Spaargaren Is Directed to a
`Completely Different Technological Field and There Is No
`Motivation to Combine Any of the References with Spaargaren .......... 22
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`III. CONCLUSION ..............................................................................................24
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`iii
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`Cases
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`IPR2018-01084
`U.S. Patent No. 9,445,251
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`TABLE OF AUTHORITIES
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` Page(s)
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`Apple, Inc. v. Contentguard Holdings, Inc.,
`Case No. IPR2015-00355 (P.T.A.B., June 26, 2015) ........................................... 4
`
`Broadcom Corp. v. Emulex Corp.,
`732 F.3d 1325 (Fed. Cir. 2013) ............................................................................ 5
`
`Fresenius USA, Inc. v. Baxter Int’l, Inc.,
`582 F.3d 1288 (Fed. Cir. 2009) ............................................................................ 6
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) .................................................................................................. 4
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) ............................................................................ 5
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ............................................................................ 5
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) .............................................................................................. 4
`
`Los Angeles Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v.
` Eli Lilly & Co., 849 F.3d 1049 (Fed. Cir. 2017) ................................................. 5
`
`Pers. Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) .............................................................................. 4
`
`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ............................................................................ 4
`
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) ............................................................................ 5
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`iv
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`Statutes
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`IPR2018-01084
`U.S. Patent No. 9,445,251
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`35 U.S.C. § 103 .......................................................................................................... 3
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`35 U.S.C. § 112 .......................................................................................................... 6
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`35 U.S.C. § 314(a) ..................................................................................................... 3
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`Other Authorities
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`37 C.F.R. § 42.104 ......................................................................................... 6, 14, 16
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`MPEP 2143.01 ......................................................................................................... 22
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`
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`v
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`Exhibit No.
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`Document
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`LIST OF EXHIBITS
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`Appendix 1 to P.R. 4-3 Joint Claim Construction and Pre-
`Hearing Statement in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence in AGIS Software
`Development LLC v. Huawei Device USA, Inc., et al., Case No.
`2:17-cv-00513-JRG-RSP (Dkt. 149-1)
`P.R. 4-3 Joint Claim Construction and Pre-Hearing Statement in
`AGIS Software Development LLC v. Huawei Device USA, Inc., et
`al., Case No. 2:17-cv-00513-JRG-RSP (Dkt. 149)
`Appendix 1 to P.R. 4-3 - Updated Joint Claim Construction and
`Prehearing Statement in AGIS Software Development LLC v.
`Huawei Device USA, Inc., et al. – Parties’ Proposed
`Constructions and Supporting Evidence in AGIS Software
`Development LLC v. Huawei Device USA, Inc., et al., Case No.
`2:17-cv-00513-JRG-RSP (Dkt. 162-1)
`P.R. 4-3 - Updated Joint Claim Construction and Prehearing
`Statement in AGIS Software Development LLC v. Huawei Device
`USA, Inc., et al., Case No. 2:17-cv-00513-JRG-RSP (Dkt. 162)
`Motorola Dispatch Console
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`2001
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`2002
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`2003
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`2004
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`2005
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`vi
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`I.
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`INTRODUCTION
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`On May 15, 2018, Google LLC (“Petitioner”) submitted a petition (Paper 2,
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`“Petition” or “Pet.) to institute inter partes review (“IPR”) of U.S. Patent No.
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`9,445,251 (Ex. 1001, “the ’251 Patent”), challenging claims 13-19 and 21 (the
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`“Challenged Claims”)1. Each of the Challenged Claims depends from Claim 1.
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`The Petition identifies the real parties in interest as “Google LLC; Huawei Device
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`USA Inc.; Huawei Device Co., Ltd.; Huawei Device (Dongguan) Co., Ltd.;
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`Huawei Technologies USA Inc.; Huawei Technologies Co., Ltd.; and LG
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`Electronics, Inc.” Pet. at 2. Huawei and LG are parties to district court cases
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`captioned as AGIS Software Development LLC v. Huawei Device USA Inc., Case
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`No. 2:17-cv-00513 (E.D. Tex. June 21, 2017) (Lead Case) and AGIS Software
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`Development LLC v. HTC Corporation, Case No. 2:17-cv-00514 (E.D. Tex. June
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`21, 2017) (Lead Case) (hereinafter, the “District Court Litigation”). Google and
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`LG are represented by the same outside counsel, Arnold & Porter Kaye Scholer
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`LLP.
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`The Petition challenges all of the claims with only a single ground––that the
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`Challenged Claims are obvious over five documents: U.S. Patent No. 6,366,782 to
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`Fumarolo et al. (Exhibit 1005, “Fumarolo”) in view of U.S. Patent No. 6,204,844
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`1 The Challenged Claims in IPR2018-01083 are the very same claims
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`challenged in IPR2018-01081.
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`1
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`U.S. Patent No. 9,445,251
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`to Fumarolo et al. (Exhibit 1006, “Fumarolo-844”), U.S. Patent Application No.
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`2002/0173906 by Muramatsu (Exhibit 1007, “Muramatsu”), U.S. Patent No.
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`2002/0027901 by Liu et al. (Exhibit 1008, “Liu”), and WO Publication No.
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`02/17567 by Spaargaren (Exhibit 1009, “Spaargaren”). Pet. at 5. With respect to
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`Claim 1 of the ’251 Patent, the Petition alleges that Claim 1 is obvious over four
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`documents: Fumarolo, Fumarolo-844, Muramatsu, and Liu. Id. However, the
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`Petition fails for at least two reasons: (a) the Petitioner fails to identify how certain
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`elements are disclosed in the references; and (b) the Petition does not demonstrate
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`that the Challenged Claims are obvious and that a person of ordinary skill in the art
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`would have been motivated to combine the references which are directed to
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`different technological fields.
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`Petitioner has not identified any motivation to combine Liu with any of the
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`references, including Fumarolo. Petitioner fails to show that combining or
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`modifying the teachings of the prior art because Petitioner merely proposes an
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`incorporation of Liu’s alleged anonymous communication combined system based
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`on Fumarolo. Because the proposed combination is based on a hypothetical result,
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`not any teaching of the prior art, Petitioner has failed to identify how the prior art
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`discloses or suggests the claimed invention. For example, Petitioner’s basis for
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`alleging that a person of ordinary skill in the art would reach Liu is that Fumarolo
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`“discloses that the goal of its system is to ‘communicate directly with
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`U.S. Patent No. 9,445,251
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`communication units from a single map environment,’” Pet. 20 (citing Fumarolo at
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`2:52-56) but fails to explain how Liu’s alleged anonymous communication
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`“facilitates this single map environment.” Moreover, Petitioner alleges neither that
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`any first device can communicate as claimed with a second device where the “first
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`device does not have access to respective Internet Protocol addresses of the second
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`devices,” nor that Liu’s stations correspond to the claimed first device and second
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`device or Fumarolo’s display-based terminal 101 or Muramatsu’s cellular phone 1.
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`Indeed, Petitioner alleges only that Liu does not know a “reference code” and does
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`not explain how a “reference code” is an IP address as required by the claims.
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`Moreover, Petitioner does not allege any motivation or reason to combine Liu and
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`Muramatsu. Accordingly, nothing in Liu addresses the deficiencies of the alleged
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`combination of Fumarolo-based combinations.
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`Similarly, Petitioner has not identified any motivation to combine
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`Spaargaren with any of the references, including Fumarolo. Petitioner fails to
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`show that combining or modifying the teachings of the prior art because Petitioner
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`merely proposes an incorporation of Spaargaren’s location-based features into the
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`combined system based on Fumarolo. Because the proposed combination is based
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`on a hypothetical result, not any teaching of the prior art, Petitioner has failed to
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`identify how the prior art discloses or suggests the claimed invention. Moreover,
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`Spaargaren is directed only to a browser-based system which calls a website
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`containing a map with location data in a URL. This browser-based solution is a
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`completely different technological field from Fumarolo or the invention of the
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`Challenged Claims. Neither Fumarolo, nor the other secondary references disclose
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`web- or browser-based map interfaces, and Petitioner does not provide any further
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`explanation to address the fundamental differences between the references.
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`Moreover, nothing in Spaargaren addresses the deficiencies of the alleged
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`combination of Fumarolo-based combinations.
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`Due to at least these deficiencies, the Petition does not establish “a
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`reasonable likelihood that the Petitioner would prevail with respect to at least one
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`of the claims challenged in the Petition.” 35 U.S.C. § 314(a). While Patent Owner
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`explicitly reserves the right to present additional arguments, the deficiencies of the
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`Petition noted herein are sufficient for the Board to find that Petitioner has not met
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`its burden to demonstrate a reasonable likelihood that it would prevail in showing
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`unpatentability of any of the Challenged Claims.
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`II.
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`PETITIONER HAS NOT DEMONSTRATED A REASONABLE
`LIKELIHOOD OF SUCCESS FOR THE GROUNDS ADVANCED IN
`THE PETITION, AND THE PETITION SHOULD BE DENIED
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`A. Requirements for Showing Obviousness Under 35 U.S.C. § 103
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`The question of obviousness is resolved on the basis of underlying factual
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`determinations, including: (1) the scope and content of the prior art, (2) any
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`differences between the claimed subject matter and the prior art, (3) the level of
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`U.S. Patent No. 9,445,251
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`skill in the art, and (4) where in evidence, so-called secondary considerations.
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); KSR Int’l Co. v. Teleflex
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`Inc., 550 U.S. 398, 406 (2007). The question is not whether the differences
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`themselves would have been obvious, but whether the claimed invention as a
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`whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
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`1530, 1537 (Fed. Cir. 1983).
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`The Board has held that a failure to identify the differences between the
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`claimed subject matter and the prior art is fatal to an obviousness challenge. See,
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`Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00355, Decision Denying
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`Institution of Inter Partes Review, Paper 9 at 9-10 (P.T.A.B., June 26, 2015)
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`(denying institution for failure to identify the differences between the claimed
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`subject matter and the prior art).
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`In arriving at an obviousness determination, the Board must sufficiently
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`explain and support the conclusions that the prior-art references disclose all of the
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`elements recited in the Challenged Claims and a relevant, skilled artisan not only
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`could have made, but would have been motivated to combine all the prior art
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`references in the way the patent claims and reasonably expect success. Pers. Web
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`Techs., LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017). That is, even if all
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`the claim elements are found across a number of references, an obviousness
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`determination must consider whether a person of ordinary skill in the art would
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`have the motivation to combine those references. Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1368 (Fed. Cir. 2016); Los Angeles
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`Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d
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`1049, 1067 (Fed. Cir. 2017) (vacating and remanding an obviousness
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`determination, in part, because the Board did not make factual finding as to
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`whether there was an apparent reason to combine all three prior art references to
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`achieve the claimed invention and whether a person of skill in the art would have
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`had a reasonable expectation of success from such a combination.) This
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`combinability determination, as supported by an articulated motivation to combine,
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`requires a plausible rationale as to why those prior art references would have
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`worked together. Broadcom Corp. v. Emulex Corp., 732 F.3d 1325, 1335 (Fed.
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`Cir. 2013). Absent some articulated rationale, a “common sense” finding is no
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`different than the conclusory statement “would have been obvious.” In re Van Os,
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`844 F.3d 1359, 1361 (Fed. Cir. 2017). Of additional importance, “knowledge of a
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`problem and motivation to solve it are entirely different from motivation to
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`combine particular references. . . .” Innogenetics, N.V. v. Abbott Labs., 512 F.3d
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`1363, 1373 (Fed. Cir. 2008).
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`This Petition is deficient because it fails to meet the fundamental
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`requirements for demonstrating invalidity. As set forth above, because Petitioner
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`did properly construe many of the claim elements, including failing to identify
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`corresponding structure for terms it alleges are covered by 35 U.S.C. § 112(f) in
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`the District Court Litigation, Petitioner does not “specify where each element of
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`the claim is found in the prior art patents or printed publications relied upon.”
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`37 C.F.R. § 42.104(b)(4). To establish the presence of a means-plus-function
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`limitation in the prior art, the challenger must show that the structure
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`corresponding to the claimed function, or an equivalent, is present in the prior art.
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`Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1299 (Fed. Cir. 2009).
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`Petitioner also neglects to support its obviousness combinations with
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`motivations supported by “some articulated reasoning with some rational
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`underpinning.”
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`B. Ground 1 Is Deficient Because Fumarolo Is Directed to a
`Completely Different Technological Field and There Is No
`Motivation to Combine Fumarolo with the Secondary References
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`Petitioner admits that numerous limitations are missing from the primary
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`reference, Fumarolo, and the Petition relies on four additional references to
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`allegedly fill those gaps. However, Fumarolo is not directed to the same
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`technological field as the ’251 Patent or the secondary references, i.e., Muramatsu,
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`and Liu. A person of ordinary skill in the art would not begin with Fumarolo as a
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`primary reference to arrive at the claimed invention.
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`While Fumarolo uses terms like “user input device,” it is clear from the
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`disclosure that there exists only a single user input device which is located at the
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`dispatcher. This single user input device, also referred to as the “terminal 101,” is
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`described as follows:
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`The user input device 125 preferably comprises a foot switch, a panel
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`microphone, a push-to-talk (PTT) activator, a computer mouse, a
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`keyboard, a touchscreen portion of the GUI 119, a voice activated
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`device, a voice recognition device, or some combination thereof to
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`enable the user of the terminal 101 to input user information for
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`transmission to one or more of the communications units 105-113.
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`Exhibit 1005 at 4:46-53. The other devices described by Fumarolo, i.e. the
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`communications units 105-113, are rudimentary devices that do not have a screen
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`or GUI. Exhibit 1005 at 4:6-10. To one of skill in the art, the system of Fumarolo
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`(a Motorola patent) would have looked more like the Motorola console depiction
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`below:
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`8
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`See Exhibit 2005. The technological field of the ’251 Patent, by comparison, is
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`2
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`described as:
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`2 See Exhibit 2005,
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`https://www.motorolasolutions.com/en_us/products/dispatch/dispatch-console-
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`accessories.html.
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`A communications method and system using a plurality of cellular
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`phones each having an integrated Personal Digital Assistant (PDA)
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`and Global Positioning System (GPS) receiver for the management of
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`two or more people through the use of a communications network.
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`The method and system provide each user with an integrated handheld
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`cellular/PDA/GPS/phone that has Advanced Communication
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`Software application programs (hereinafter referred to as ACS) and
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`databases used in conjunction with a remote Server that enable a user
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`to quickly establish a communication network of cell phone
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`participants having a common temporary ad hoc network using
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`mobile wireless communication devices.
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`Ex. 1001 at 1:33-46. The secondary references Muramatsu and Liu, similarly,
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`make no mention of the type of system described by Fumarolo.
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`Petitioner’s mapping of the prior art to the claim references is fatal to the
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`Petition. Petitioner advances inconsistent mappings to the “first device” claim
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`element through each limitation of the Challenged Claims. Initially, Petitioner
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`maps the claimed “first device” to Fumarolo’s “display-based terminal 101.” Pet.
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`at 23. In subsequent limitations, Petitioner inconsistently maps Muramatsu’s cell
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`phone 1 to the claimed “first device,” without providing a sufficient obviousness
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`analysis, and without any motivation to combine (or substitute) Muramatsu’s
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`“cellular phone 1” (Pet. 28) with Fumarolo’s display-based terminal 101. In one
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`example, Petitioner fails to describe how Fumarolo discloses “presenting, via the
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`interactive display of the first device, a second georeferenced map,” instead relying
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`solely on Muramatsu’s “cellular phone 1” to disclose the limitation, without
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`providing any obviousness argument or motivation to combine the references.
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`Pet. at 43. In another example, Petitioner concludes that “[a] POSA would have
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`understood that cellular phone 1’s ability to transmit its position information to the
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`navigation server would equally apply to Fumarolo’s remote terminal” (Pet. at 29)
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`without any explanation as to whether, how, or why a POSA would have been
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`motivated to do so.
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`Petitioner attempts to blur the lines between Fumarolo’s display-based
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`terminal 101 and the communication units 105-113. However, Fumarolo’s
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`communication units 105-113 are basic wireless radios. Petitioner does not
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`provide any evidentiary basis (that is not based on a conflation with the fixed
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`terminal 101) in Fumarolo to suggest that any of the communication units 105-113
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`possess any display, software, and/or characteristics of the fixed terminal 101.
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`Petitioner states, incorrectly, that “Fumarolo discloses that a first wireless device
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`‘receives location coordinates of the communication units 105-113 on a periodic
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`basis.’” Pet. at 14. Rather, Fumarolo’s terminal 101 (which receives location
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`coordinates of units 105-113) is a resource-abundant “fixed computer-aided
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`dispatch (CAD) terminal”––not a mobile wireless device like a cell phone. Exhibit
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`11
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`1005, 3:21-31, 4: 23-38. The rudimentary devices of Fumarolo are not described
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`as having the capability to support any application.
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`Instead of confronting this problem head-on, Petitioner attempts to conflate
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`the features of Fumarolo’s fixed dispatch terminal 101 with the communication
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`units 105-113 (as well as Muramatsu’s cellular phone 1 and the first device of the
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`’251 Patent). Petitioner does so by mischaracterizing the terminal 101 as a
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`wireless device and through the creative use of out-of-context excerpts of quotes
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`from Fumarolo. For example, Petitioner states:
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`Fumarolo-782, like the ’251 patent, is directed to establishing a
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`network that allows for groups of wireless devices to share location
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`information and “display[] a map to [a wireless device] user indicating
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`locations of communication units in at least a portion of the
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`communication system.”
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`Pet. at 13-14. The actual quote from Fumarolo states “[t]he terminal displays a
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`map to the user indicating locations of communication units in at least a portion of
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`the communication system.” Ex. 1005 at 3:24-26. (Emphasis added). The “a
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`wireless device” was a wholesale addition by Petitioner, and the omission of
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`“terminal” is material. Neither Petitioner, nor its expert, conveys that the alleged
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`“wireless device” is, in fact, a stationary dispatch terminal with, among other
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`things, a foot pedal and a panel microphone. Ex. 1005 at 4:46-53.
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`Fumarolo is not directed to location sharing from between cellular
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`phones. Fumarolo is directed to a resource-abundant “fixed computer-aided
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`dispatch (CAD) terminal.” Exhibit 1005, 3:21-31, 4: 23-38. While Fumarolo’s
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`dispatch terminal connected wirelessly to “communication units” (none of which
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`are described as cell phones) (Exhibit 1005, 4:6-10), the connection necessitated an
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`interface to “one or more communication links 116 (one shown), such as
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`broadband leased telephone lines (e.g., T1 or T3 lines), standard telephone lines,
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`coaxial cable, fiber optic cable, or microwave links. . . or an RS232 or standard
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`telephone lines.” Exhibit 1005, 4:14-38. In other words, Fumarolo’s dispatch
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`terminal required significantly more bandwidth in order to accommodate the
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`communication of location information with its “communication
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`units.” Additional resources required by Fumarolo’s 1999 dispatch terminal
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`include “a processor 121, a memory 123, a user input device 125, a selection
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`device 127.” Exhibit 1005, 4:29-38. Fumarolo’s dispatch terminal’s processor
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`121 “comprises a microprocessor and a digital signal processor.” Exhibit 1005,
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`4:43-46. Fumarolo’s dispatch terminal’s user input device 125 “comprises a foot
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`switch, a panel microphone, a push-to-talk (PTT) activator, a computer mouse, a
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`keyboard . . . to input user information for transmission to one or more of the
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`communication units 105-113.” Exhibit 1005, 4:46-53 (emphasis
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`added). Fumarolo’s dispatch terminal’s memory 123 preferably comprises a
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`combination of random access memory (RAM), read-only memory (ROM),
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`programmable read-only memory (PROM), and a floppy disk to store software
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`algorithms and data . . . used by the processor 121 during operation of the
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`terminal 101. Exhibit 1005, 4:53-59 (emphasis added).
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`Fumarolo and Muramatsu are neither directed to the same technological
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`field, nor would the references appear in the same toolbox of a person of ordinary
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`skill in the art at the time of the invention. Petitioner neither alleges that Liu cures
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`this deficiency, nor does it provide any motivation or reason to combine all four
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`references. Accordingly, because each ground relies on this deficient combination,
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`the Petition should be denied in its entirety.
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`C. Ground 1 Is Deficient Because the Prior Art Does Not Disclose or
`Suggest the Claimed “First Device” and Petitioner Does Not
`Provide a Proper Motivation to Combine the References
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`The Challenged Claims require “a first device” which performs claimed
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`limitations. Exhibit 1005, Claim 1. The Petition is deficient because Petitioner has
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`not shown how the prior art discloses or suggests the claimed “first device.”
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`Petitioner maps the claimed “first device” to Fumarolo’s display-based
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`terminal 101. Pet. at 23. As described in the preceding section, Fumarolo’s
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`display-based terminal 101 is a resource-abundant “fixed computer-aided dispatch
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`(CAD) terminal”––not a mobile wireless device like a cell phone. Exhibit 1005, 4:
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`23-38. Petitioner does not attempt to provide any motivation to combine
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`Fumarolo’s terminal 101 with any other mobile devices or cell phones disclosed in
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`other secondary references.
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`Meanwhile, Petitioner foregoes reliance on Fumarolo-728’s display-based
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`terminal 101 in later limitations and turns to Muramatsu’s “cell phone 1” to fill the
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`gap. In another example, Petitioner fails to describe how Fumarolo’s display-
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`based terminal 101 discloses “presenting, via the interactive display of the first
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`device, a second georeferenced map,” and instead relies solely on Muramatsu’s
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`“cellular phone 1” to disclose the limitation. Pet. at 43. Petitioner relies on
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`Muramatsu’s cell phone 1, without providing any explanation about how the
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`combination of references teaches or suggests the claimed first device or any
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`motivation to combine (or substitute) Fumarolo’s display-based terminal 101 with
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`Muramatsu’s cell phone 1. In another example, Petitioner simply concludes that
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`“[a] POSA would have understood that cellular phone 1’s ability to transmit its
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`position information to the navigation server would equally apply to Fumarolo’s
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`remote terminal” (Pet. at 29) without any explanation as to whether, how, or why a
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`POSA would have been motivated to do so.
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`Petitioner’s inconsistent mapping of the “first device” limitations is a direct
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`contravention of the requirements of 37 C.F.R. 42.104(d) which require that a
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`petitioner “specify where each element of the claim is found” in the references.
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`Petitioner’s failure to provide any motivation to combine the elements fails to meet
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`the requirements for proving obviousness. These fundamental flaws infect the
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`reading of each of the remaining limitations which require operation by the
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`claimed “first device.” Petitioner does not rely on Fumarolo-844 or Liu to disclose
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`the first device element. Accordingly, the Board should deny the Petition in its
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`entirety.
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`D. Ground 1 Is Deficient Because the Prior Art Fails to
`Disclose or Suggest “presenting, via an interactive display of
`the first device, a first interactive, georeferenced map and a
`plurality of user-selectable symbols corresponding to the
`plurality of second devices, wherein the symbols are
`positioned on the first georeferenced map at respective
`positions corresponding to the locations of the second
`devices, and wherein the first georeferenced map includes
`data relating positions on the first georeferenced map to
`spatial coordinates”
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`The Challenged Claims require “presenting, via an interactive display of the
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`first device, a first interactive, georeferenced map and a plurality of user-selectable
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`symbols corresponding to the plurality of second devices, wherein the symbols are
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`positioned on the first georeferenced map at respective positions corresponding to
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`the locations of the second devices, and wherein the first georeferenced map
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`includes data relating positions on the first georeferenced map to spatial
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`coordinates.” Exhibit 1001, Claim 1. Fumarolo does not disclose or suggest this
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`limitation.
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`First, as noted above, Petitioner inconsistently applies Fumarolo and
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`Muramatsu to disclose the first device element, without providing any motivation
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`to combine the references to disclose or suggest the element.
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`Second, Petitioner does not specify how any of Fumarolo’s icons
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`corresponding to the communication units 105-113 are “user-selectable symbols.”
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`Petitioner alleges that the Fumarolo’s Figure 3 map is interactive and a selection is
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`received from the map. Pet. at 32-34 (citing Fumarolo at 3:26-31). However,
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`Petitioner does not specify any particular section where Fumarolo describes
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`whether the selection from the map occurs on the symbols are in fact “user-
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`selectable,” i.e., that any particular selection event directly on a symbol results in
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`the selection of the symbol. Petitioner does not explain how the cited selection on
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`the map, not the symbol, discloses the “user-selectable symbol” claim element.
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`Petitioner does not allege inherency for this limitation. Without more than a
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`citation to 3:26-31, Petitioner fails to meet the requirements of 37 C.F.R. 42.104(d)
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`which require that a petitioner “specify where each element of the claim is found”
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`in the references. The Petition should be denied.
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`Third, Petitioner fails to meet its burden to show how the prior art discloses
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`or suggests “wherein the symbols are positioned on the first georeferenced map at
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`respective positions corresponding to the locations of the second devices, and
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`wherein the first georeferenced map includes data relating positions on the first
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`georeferenced map to spatial coordinates.” Petitioner disregards the entirety of the
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`limitation “wherein the symbols are positioned on the first georeferenced map at
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`respective positions corresponding to the locations of the second devices,” and
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`simply alleges that Fumarolo’s GUI 119 (of Figure 3) displays the locations of the
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`communication units on the map. Pet. at 32-33. Petitioner does not explain why
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`or how the Figure 3 is georeferenced or how the symbols are positioned at
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`respective positions corresponding to the locations of the communication units.
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`Accordingly, the Petition has failed to identify where this claim limitation is found
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`in the prior art, and the Petition should be denied.
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`Fourth, Petitioner
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