`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`In re Inter Partes Review of:
`)
`U.S. Patent No. 9,445,251
`)
`Issued: September 13, 2016
`)
`Application No.: 14/633,804
`)
`For: Method to Provide Ad Hoc and Password Protected Digital and Voice
`Networks
`FILED VIA E2E
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`GOOGLE LLC
`Petitioner
`v.
`AGIS SOFTWARE DEVELOPMENT, LLC
`Patent Owner
`Case IPR2018-01084
`Patent 9,445,251
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 9,445,251
`Mail Stop “PATENT BOARD”
`
`Apple Inc. Exhibit 1030
`U.S. Patent No. 9,445,251
`
`
`
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`TABLE OF CONTENTS
`3
`EXHIBIT LIST
`4
`I.
`Qualifications
`II.
`My Understanding of Claim Construction
`7
`8
`My Understanding of Obviousness
`III.
`Level of Ordinary Skill in the Art
`IV.
`11
`12
`Overview of the ’251 Patent
`V.
`The Priority Date of the ’251 Patent Cannot Be Earlier Than April 17,
`A.
`200616
`18
`VI.
`Overview of the State of the Art at the Time of Filing
`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
`34
`4. Overview of Liu
`5. Overview of the Combination of Fumarolo-782, Fumarolo-844,
`Muramatsu, and Liu
`35
`6. Motivation to Combine Fumarolo-782, Fumarolo-844, Muramatsu, and
`38
`Liu
`7. The combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu
`discloses or suggests each feature of claims 13-19 and 21
`49
`- i -
`
`
`
`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
`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
`
`- ii -
`
`
`
`Exhibit
`No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`EXHIBIT LIST
`Description
`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,
`- iii -
`
`
`
`Exhibit
`No.
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`
`Description
`Location, and Navigation Symposium, 2002) (“Christie”)
`Dale N. Hatfield, A Report on Technical and Operational Issues
`Impacting The Provision of Wireless Enhanced 911 Services,
`Federal Communications Commission (2002) (“Hatfield”)
`Charles E. Perkins, “Ad Hoc Networking.” Nokia Research Center
`(November 28, 2000) (“Perkins”)
`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
`Response (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.,
`published May 29, 2003 (“Grube”)
`U.S. Patent No. 6,654,683 to Jin et al., issued November 25, 2003
`(“Jin”)
`- iv -
`
`
`
`Exhibit
`No.
`1027
`1028
`
`Description
`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.
`
`- v -
`
`
`
`I, David Hilliard Williams, declare as follows:
`1.
`I have been retained on behalf of Google LLCApple Inc.
`(“GoogleApple”) for the above-captioned inter partes review proceeding. I am
`being compensated for my time in connection with this IPR at my standard hourly
`consulting rate. I understand that this proceeding involves U.S. Patent No.
`9,445,251 (“the ’251 patent”) titled “Method to Provide Ad Hoc and Password
`Protected Digital and Voice Networks” by Malcolm K. Beyer, Jr. and Christopher
`R. Rice, and that the ’251 patent is currently assigned to Advanced Ground
`Information Systems, IncAGIS Software Development LLC.
`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 GoogleExhibit 1001. I will cite to the specification using the
`following format: (’251 patent, 1:1-10). This example citation points to the ’251
`patent specification at column 1, lines 1-10.
`3.
`I have reviewed and am familiar with the file history of the ’251
`patent. I understand that the file history has been provided as GoogleExhibit 1002.
`4.
`I understand that the ’251 patent has a filing date of February 27,
`2015. I am also informed by Google’sApple’s counsel that the ’251 patent has an
`earliest possible priority date of September 21, 2004 (the filing date of U.S. Patent
`- 1 -
`
`
`
`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 priority date earlier than April 17, 2006 (the filing date of U.S. Patent
`No. 7,630,724). Nevertheless, out of an abundance of caution, the opinions in this
`Declaration are provided from the perspective of a 2004 priority date.
`5.
`In preparing this Declaration, I have also reviewed and am familiar
`with the following prior art used in the Petition for Inter Partes Review of the ’251
`patent and/or in my declaration below:
`U.S. Patent No. 6,366,782 to Fumarolo et al., titled “Method and
`Apparatus for Allowing a User of a Display-Based Terminal to
`Communicate with Communication Units in a Communication
`System” (“Fumarolo-782”). Fumarolo-782 published on April 2,
`2002 which is more than a year prior to the ’251 patent’s earliest
`possible priority date of September 21, 2004. I understand that
`Fumarolo-782 has been provided as GoogleExhibit 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 GoogleExhibit 1006.
`- 2 -
`
`
`
`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
`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 GoogleExhibit 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 GoogleExhibit 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 GoogleExhibit 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.
`(GoogleExhibit 1001, ’251 patent, Abstract.) One goal of the ’251 patent appears
`to be “eliminating the need for pre-entry of data into a web or identifying others by
`name, phone numbers or email” when establishing the ad hoc digital and voice
`- 3 -
`
`
`
`network. (Id.) The ’251 explains that its system and method are “especially useful
`for police, fire fighters, military, first responders or other emergency situations for
`coordinating different organizations at the scene of a disaster ...” (Id.) I am familiar
`with the technology described in the ’251 patent as of its February 27, 2015 filing
`date, its April 17, 2006 priority date, and its earliest possible priority date
`September 21, 2004.
`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.
`Qualifications
`I.
`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 GoogleExhibit 1004, and it provides a comprehensive
`description of my academic and employment history over the last thirty-plus years.
`9.
`I have over 30 years of experience in wireless location services,
`including experience implementing Wireless 911 (E911) systems and designing,
`implementing, and managing numerous location-based service (LBS) applications
`such as family tracking and fleet and asset management. I am currently the
`President of the company E911-LBS Consulting, and I have been with the
`- 4 -
`
`
`
`company since 2002. As the President of E911-LBS Consulting, I provide services
`across the entire wireless value chain, particularly with respect to technology and
`business strategic planning and product design and development associated with
`LBS, Global Positioning Satellite (GPS) systems, E911, Real-Time Location
`Systems (RTLS), Radio Frequency Identification (RFID), beacon, and other
`location determination and sensing technologies and services.
`10.
`I have extensive expertise in all aspects of LBS delivery across the
`wireless location ecosystem including enabling network, map data, geospatial
`platform, chipset, data management, device, and
`location determination
`infrastructure and integration providers. I am an expert in all related aspects of
`LBS, including data privacy and security management.
`11.
`For example, I managed the development and launch of several
`consumer-oriented LBS applications including mobile social networking, family
`tracking and local search for a major wireless carrier (AT&T). This work included
`the development of corporate-wide location data privacy policies and their
`systemic implementation for all LBS customers. My work in both data privacy and
`mobile social networking resulted in my co-inventing a patent in this field titled
`“Method and Apparatus for Providing Mobile Social Networking Privacy.” (U.S.
`Patent Number 8,613,109, issued on December 17, 2013).
`- 5 -
`
`
`
`I also have a great deal of experience related to E911 systems. For
`12.
`example, in 2003-2004, I consulted with AT&T Wireless on their implementation
`of E911 systems. Specifically, I led the development of implementation and
`monitoring of systems in AT&T Wireless Western Region as part of their
`deployment of TDOA (Time Difference of Arrival) non-GPS E911 network
`location infrastructure to meet the wireless E911 location requirements mandated
`by the FCC. In 2004-2005, I worked with NAVTEQ, a key provider of LBS and
`E911 location map data, in developing their application developer ecosystem and
`website, providing developers with access to all of NAVTEQ’s product and
`technical resources for developing location-related applications, including data
`products involving 911 GIS (Geographical Information Systems).
`13.
`I have authored multiple books on wireless location, including:
` The Definitive Guide to GPS, RFID, Wi-Fi, and Other Wireless Location-
`Based Services (2005 and 2009 versions);
` The Definitive Guide to Wireless E911; and
` The Definitive Guide to Mobile Positioning and Location Management
`(co-author).
`I received a B.S. degree, in Electrical Engineering, from Purdue
`14.
`University in 1983. I received a MBA degree, in Information Systems
`Management, from The University of Texas at Austin in 1987.
`- 6 -
`
`
`
`15. My curriculum vitae contains further details on my education,
`experience, publications, and other qualifications to render an expert option. My
`work on this case is being billed at a flat rate of $350400 per hour. I do not charge
`for non-working travel time except for reimbursement for actual expenses. My
`compensation is not contingent upon the outcome of this inter partes review.
`II. My Understanding of Claim Construction
`16.
`I understand that, during an inter partes review, claims are to be given
`their broadest reasonable construction in light of the specification as would be read
`by a person of ordinary skill in the relevant art (“POSA”).
`17.
`It is my opinion that the term “second georeferenced map” means “an
`aerial photograph, a satellite image, or a moved map relative to a first
`georeferenced map.”
`18.
`I note that the specification of the ’251 patent does not use the terms
`“second georeferenced map.” With regard to this term, I have received the
`following materials in order to understand the scope of this particular term: the
`specification of the ’251 patent, the prosecution history of the ’251 patent, and a
`complaint filed by Patent Owner in a district court case currently pending in the
`Eastern District of Texas. With regard to the prosecution history, Patent Owner
`cited to column 18, line 57 to column 19, line 7 of the ’724 patent as support for
`the claimed “second georeferenced map data” limitation (GoogleExhibit 1002,
`- 7 -
`
`
`
`’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.” (GoogleExhibit 1010, Infringement Complaint, p. 19.)
`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
`- 8 -
`
`
`
`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.
`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
`- 9 -
`
`
`
`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.
`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
`- 10 -
`
`
`
`other market forces if the variations are predictable to one of ordinary
`skill in the art; or
` Some teaching, suggestion, or motivation in the prior art that would have
`led one of ordinary skill to modify the prior art reference or to combine
`prior art teachings to arrive at the claimed invention.
`I understand that it is not proper to use hindsight to combine
`26.
`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.
`- 11 -
`
`
`
`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
`(“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.
`V.
`Overview of the ’251 Patent
`30.
`The ’251 patent describes methods and systems for “individuals to set
`up an ad hoc digital and voice network” allowing users to coordinate their
`activities. (’251 patent, Abstract.) One goal of the ’251 patent appears to be
`- 12 -
`
`
`
`“eliminating the need for pre-entry of data into a web or identifying others by
`name, phone numbers or email” when establishing the ad hoc digital and voice
`network. (Id.) The ’251 explains that its system and method are “especially useful
`for police, fire fighters, military, first responders or other emergency situations for
`coordinating different organizations at the scene of a disaster ....” (Id.)
`31.
`The ’251 patent further alleges that “[c]oordinating different
`organizations at the scene of a disaster presents several problems as there are voice
`and digital data (text messages) communications that need to be constantly
`occurring up and down the chain of command.” (Id., 2:20-23.) To solve these
`alleged problems, the ’251 patent purports to provide a way for establishing “ad
`hoc voice and data networks to enable both data and voice communications up and
`down their chain of command and simultaneously with different, not pre-known,
`organizations, responding to a disaster.” (Id., 2:37-44.)
`32. When such a disaster arises, a first wireless device can establish a
`temporary ad hoc network for one or more second wireless devices to join. (Id.,
`2:57-3:14.) The ’251 patent explains that each wireless device may include a
`“Global Positioning System (GPS) receiver” and “Advanced Communication
`Software application programs” to facilitate the sharing of GPS information and
`status information. (Id., 1:33-46.) Using their respective GPS receivers, each
`- 13 -
`
`
`
`wireless device can “either broadcast to a group or selectively transmit to each of
`the other [wireless devices] … its GPS position and status[.]” (Id., 2:57-66)
`33.
`The wireless devices are configured to share their respective GPS and
`status information by interacting with a “communication Server [that] acts as a
`forwarder for IP communications between any combination of cell phone/PDA
`users and/or PC based users.” (Id., 5:13-15.) The ’251 patent discloses that the
`“Server also fills another role of being a database from which data can be
`requested by network participants (i.e. maps, satellite images, and the like) or can
`be pushed to network participants (i.e. symbology and soft switch changes, and the
`like).” (Id., 3:39-45.) Thus, in addition to sharing GPS information among wireless
`devices in an ad hoc network, a first wireless device can download from the server,
`and subsequently display, “a geographical map and georeferenced entities,” such
`as one or more second wireless devices. (Id., 6:18-23.) Figure 1 (reproduced
`below) illustrates an example of a wireless device displaying “a geographical map
`and georeferenced entities.” (Id.)
`
`- 14 -
`
`
`
`(‘251 Patent, FIG. 1.)
`34.
`Further, users of the wireless devices are able to “make calls to or
`send data to remote phones by touching their display symbols” shown on the
`geographical map. (Id., 2:57-3:14.)
`The ’251 patent does not purport to invent a new wireless device, a
`35.
`new server, or even new location determination techniques. Instead, the ’251
`- 15 -
`
`
`
`patent merely purports to add functionality for downloading and displaying
`multiple geographical maps to known map-based systems for providing location
`and communication information of communication units.
`36.
`I note that features described above, including those with respect to a
`server, such as the ’251 patent’s disclosure that the “communication Server [that]
`acts as a forwarder for IP communications between any combination of cell
`phone/PDA users and/or PC based users,” (id., 5:13-15), are not described or
`disclosed in the ’728 patent. Indeed, the ’728 patent describes organizing cellular
`phones
`into a “communications net” and utilizing a peer-to-peer
`type
`communication to transmit information and data directly to other cellular phones.
`(GoogleExhibit 1011, ’728 patent, 3:44-52, 4:25-46, 8:38-43.) The ’728 patent
`discloses that cellular phones “report[] their positions and status information
`directly
`to all or selected users equipped with cellular phone/PDA
`communication/GPS system in the communications net[.]” (Id., 2:18-27 (emphasis
`added).)A.
`The Priority Date of the ’251 Patent Cannot Be Earlier Than
`April 17, 2006
`37. Although the ’251 patent claims priority back to September 21, 2004
`(the filing date of U.S. Patent No. 7,031,728), the ’251 patent should not be
`afforded a priority date earlier than April 17, 2006 (the filing date of U.S. Patent
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`
`
`
`No. 7,630,724). My opinion is based on my understanding that a patent is only
`entitled to an earlier priority date if an earlier-filed application provides written
`description support for each and every claim feature of the patent in question.
`38.
`It is my understanding that the ’251 patent’s priority chain includes
`several continuations-in-part (“CIPs”), which I understand is a mechanism that can
`be used to present new subject matter that was not included in an earlier
`application. As discussed above, I have examined the prosecution history of the
`’251 patent, which included an examination of the earlier patents to which the ’251
`patent claims priority.
`39. As an initial matter, in its response to the August 13, 2015 Office
`Action, Patent Owner amended the independent claims to include several
`limitations relating to “a server.” (’251 Patent File History, pp. 430-436
`(Amendments to the Claims, November 13, 2015).) Similarly, in its Response to
`the December 10, 2015 Office Action, Patent Owner amended the independent
`claims to include the limitation “wherein the first device does not have access to
`respective Internet Protocol addresses of the second devices.” (Id., pp. 493-498,
`Amendments to the Claims, January 26, 2016.) As such, it is my understanding
`that the independent claims of the ’251 patent are entitled to an earlier priority date
`only if the earlier-filed patent provides adequate written description support for
`these claim amendments. And after reviewing the applications to which the ’251
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`
`
`patent claims priority, it is my opinion that the first application that could
`potentially provide support for the above claim amendments is U.S. Patent No.
`7,630,724.40.
`Indeed, my review of the ’724 patent has revealed that every portion
`of that patent that could potentially provide support for the above claim
`amendments, were added by way of a CIP, and were thus not included in U.S.
`Patent No. 7,031,728. (See, e.g., GoogleExhibit 1012, ’724 patent, 10:57-11:15,
`12:20-28, 12:50-62, 15:50-16:2, 16:45-54, and 18:63-19:7.) In fact, the term
`“server” does not appear even once in the ’728 patent. This is not surprising given
`the
`fact
`that
`the
`’728 patent
`is directed
`towards peer-to-peer
`(P2P)
`communications, rather than communications that are carried out via a “server.”
`Moreover, the concept of “anonymous phone calling”—which can only be
`assumed to refer to the above amendment of “wherein the first device does not
`have access to respective Internet Protocol addresses of the second devices”—was
`also added by way of the ’724 CIP patent. (See id., 10:57-11:15.)
`41.
`Therefore, it is my opinion that the ’251 patent should not be afforded
`a priority date earlier than April 17, 2006.
`
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`
`VI. Overview of the State of the Art at the Time of Filing
`42. As an initial matter, analyzing the state of mobile communications,
`location based services (“LBS”) technology including E911 services, ad-hoc
`networks involving a variety of different mobile devices, and E911 during the
`years prior to the earliest possible priority date of September 21, 2004 can provide
`valuable insight into what people of ordinary skill in the art were aware of at the
`time, and in what direction the industry was headed. By 2004, all the technology at
`issue in the ’251 patent was broadly applied and well known by developers of
`mobile communication and/or LBS. No individual elements of the ’251 patent
`claims were novel at the time of the alleged invention, and there was nothing novel
`about the manner in which those elements were combined in the claims. Further,
`there were no technological barriers to combining these elements to form the
`claimed invention. Indeed, the topics of LBS including E911, ad hoc network
`creation between disparate mobile devices, and mobile communication have been
`known well prior to 2004.
`43.
`Figure A below shows a timeline of key E911 events, milestones and
`statistics, along with key dates associated with this case that I will discuss in
`additional detail below.
`
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`
`
`Figure A – E911 Key Events and Milestones
`A.
`Systems for Locating Wireless Devices, such as E911 systems,
`arrived in the 1990s
`The 911 emergency system in the U.S. plays a significant role in the
`44.
`technology involved in this case. Its evolution and history, beginning well back in
`the last century, led to many regulatory and technological decisions and
`developments that became commonly known and served as key technology
`architectures, platforms, and/or services known to all parties involved. These
`parties include all six major and nearly all smaller Wireless Carriers, roughly 6,000
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`
`
`Public Safety Answering Points (PSAPs), hundreds of hardware/software/system
`integrator v