`
`
`
`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
`
`
`
`
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,445,251
`
`
`
`
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`TABLE OF CONTENTS
`
`
`EXHIBIT LIST ........................................................................................................ 3
`I.
`Mandatory Notices (37 C.F.R. § 42.8(a)(1)) ............................................ 2
`II.
`Grounds for Standing (37 C.F.R. § 42.104(a)) ........................................ 6
`III.
`Identification of Challenge (37 C.F.R. § 42.104(b)) ................................ 7
`A.
`Statutory Ground for the Challenge ............................................................. 7
`B.
`Citation of Prior Art ..................................................................................... 7
`IV.
`The ’251 Patent .......................................................................................... 8
`A.
`Background of the ’251 Patent .................................................................... 8
`B.
`Level of Ordinary Skill in the Art ............................................................. 11
`C.
`Claim Construction .................................................................................... 11
` “second georeferenced map” ...................................................................... 12
`Ground of Rejection ................................................................................ 14
`V.
`Claim 1 is Obvious Over Fumarolo-782 in View of Fumarolo-844,
`A.
`Muramatsu, and Liu. ............................................................................................. 14
` Overview .................................................................................................... 14
` The combination of Fumarolo-782, Fumarolo-844, Muramatsu, and Liu
`renders independent claim 1 obvious. ....................................................... 24
`Ground 1: Claims 13-19 and 21 are Obvious Over Fumarolo-782 in View
`B.
`of Fumarolo-844, Muramatsu, Liu, and Spaargaren ............................................ 50
` Overview .................................................................................................... 50
` Claim 13 is obvious. ................................................................................... 53
` Claim 14 is obvious. ................................................................................... 58
` Claim 15 is obvious. ................................................................................... 63
` Claim 16 is obvious. ................................................................................... 66
` Claim 17 is obvious. ................................................................................... 68
` Claim 18 obvious. ...................................................................................... 68
` Claim 19 is obvious. ................................................................................... 69
` Claim 21 is obvious. ................................................................................... 70
`The Dependent Claims Merely Recite Obvious Design Choices. ............. 71
`
`C.
`
`
`
`- i -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`The Instant Petition Should be Instituted Under § 325(d) .................. 72
`VI.
`The References in the Instant Petition Were Either Not Cited And/Or Not
`A.
`Considered by the Office During Examination of the ’251 Patent. ..................... 72
`B.
`The Instant Petition is Not Cumulative with the Concurrently-Filed
`Petitions Based on Fumarolo and Haney and Each Petition Should be Instituted.
`
`73
`C.
`The Instant Petition is Not Cumulative with the Petition filed in IPR2018-
`00817 and Both Petitions Should be Instituted. ................................................... 75
`D.
`The Circumstances of This Joinder Petition Do Not Justify Denial Under
`314(a) or 325(d) .................................................................................................... 76
`VII.
`Conclusion ................................................................................................ 77
`
`
`
`
`
`
`
`
`- ii -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`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
`
`
`
`- iii -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`Exhibit No. Description
`
`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 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”)
`Intentionally Left Blank
`
`1017
`
`1018
`
`1019
`
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`- iv -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`Exhibit No. Description
`
`1029
`
`1030
`
`Computer-generated redline comparison between petition in
`IPR2018-01084 and instant Petition
`Computer-generated redline comparison between Williams Decla-
`ration (Google 1003) of IPR2018-01084 and Williams Declaration
`(Exhibit 1003) attached hereto
`
`
`
`- v -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`Apple Inc. (“Apple”) petitions1 for inter partes review of claims 13-19 and
`
`21 of United States Patent No. 9,445,251 to Beyer et al., titled “Method to Provide
`
`Ad Hoc and Password Protected Digital and Voice Networks” (“the ʼ251 patent”).2
`
`The ’251 patent is provided as Exhibit 1001.
`
`A reasonable likelihood exists that claims 13-19 and 21 of the ’251 patent
`
`are unpatentable. The claimed system and method for using a wireless device to
`
`display maps showing the locations of a group of wireless devices, and
`
`communicating with one or more of those devices by interacting with a map
`
`interface were well-known before September 21, 2004, the earliest possible
`
`priority date of the ’251 patent.3 In fact, the independent claims of the ’251 patent,
`
`
` 1
`
` Apple is concurrently filing a motion for joinder of this petition to IPR2018-
`
`01084. The evidence and grounds herein are identical to those in the -01084 IPR.
`
`See Motion for Joinder.
`
`2 Although independent claim 1 is not challenged herein, claims 13-19 and 21 de-
`
`pend from independent claim 1. Thus, independent claim 1 is also addressed here-
`
`in. Independent claim 1 is specifically challenged in the concurrently-filed petition.
`
`3 While Apple asserts that the claims of the ’251 patent are not entitled to the
`
`September 21, 2004 priority date, out of an abundance of caution, each of the
`
`references relied on herein are dated prior to September 21, 2004.
`
`- 1 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`at their core, are directed to nothing more than a generic process for establishing a
`
`network, and subsequently interacting with network participants using standard
`
`graphical user interface (“GUI”) functionality via a map. Likewise, the remaining
`
`claims of the ’251 patent are merely directed to ancillary wireless communication
`
`techniques and/or techniques for interacting with a GUI that amount to nothing
`
`more than obvious design choices.
`
`Apple’s expert, David Williams has over 30 years of experience working in
`
`the wireless/mobile location industry—specifically working with GPS systems,
`
`network-based location determination systems, and wireless 911 (E911) systems.
`
`Mr. Williams explains that the purported novelty of the ’251 patent, downloading
`
`and displaying multiple interactive maps showing the locations of other network
`
`device was standard practice in the industry years before the earliest possible
`
`priority date of the ’251 patent.
`
`Thus, Apple respectfully requests that the Board institute trial on the ground
`
`set forth below.
`
`I. MANDATORY NOTICES (37 C.F.R. § 42.8(A)(1))
`REAL PARTIES IN INTEREST: The real parties in interest is Apple Inc. No other
`
`parties exercised or could have exercised control over this petition, or funded or
`
`directed this petition.
`
`RELATED MATTERS:
`
`- 2 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`The ’251 patent has been asserted in the following five district court cases
`
`currently pending in the Eastern District of Texas:
`
`• AGIS Software Development LLC v. Huawei Device USA Inc., TXED-2-
`
`17-cv-00513, filed June 21, 2017;
`
`• AGIS Software Development LLC v. HTC Corporation, TXED-2-17-cv-
`
`00514, filed June 21, 2017;
`
`• AGIS Software Development LLC v. LG Electronics, Inc., TXED-2-17-
`
`cv-00515, filed June 21, 2017;
`
`• AGIS Software Development LLC v. Apple Inc., TXED-2-17-cv-00516,
`
`filed June 21, 2017; and
`
`• AGIS Software Development LLC v. ZTE Corporation, TXED-2-17-cv-
`
`00517, filed June 21, 2017.
`
`The ’251 patent is also the subject of the following inter partes reviews:
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2018-00817, filed
`
`March 22, 2018 (institution denied October 3, 2018).
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01081, filed
`
`May 15, 2018 (institution denied November 20, 2018).
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01082, filed
`
`May 15, 2018 (institution denied November 20, 2018).
`
`- 3 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01083, filed
`
`May 15, 2018.
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01084, filed
`
`May 15, 2018.
`
`U.S. Patent Nos. 8,213,970, 9,408,055, 9,467,838, and 9,749,829 have also
`
`been asserted in the above district court litigations. These patents are the subject of
`
`the following inter partes reviews:
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2018-00818, filed
`
`March 22, 2018 (institution denied October 3, 2018).
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2018-00819, filed
`
`March 22, 2018 (instituted November 7, 2018).
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2018-00821, filed
`
`March 22, 2018 (institution denied October 23, 2018).
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2018-01471, filed
`
`July 31, 2018.
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2019-00411, filed
`
`December 7, 2018. (joinder motion to -01079 pending)
`
`• Apple Inc. v. AGIS Software Development LLC, IPR2019-00432, filed
`
`December 13, 2018. (joinder motion to -01080 pending)
`
`- 4 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01079, filed
`
`May 15, 2018 (instituted November 20, 2018).
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01080, filed
`
`May 15, 2018 (instituted December 4, 2018).
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01085, filed
`
`May 15, 2018 (institution denied November 19, 2018).
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01086, filed
`
`May 15, 2018 (institution denied December 4, 2018).
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01087, filed
`
`May 15, 2018.
`
`• Google LLC v. AGIS Software Development LLC, IPR2018-01088, filed
`
`May 15, 2018.
`
`• ZTE (USA), Inc., et al. v. AGIS Software Development LLC, IPR2019-
`
`00389, filed December 7, 2018. (joinder motion to -00819 pending)
`
`• Google LLC v. AGIS Software Development LLC, IPR2019-00403, filed
`
`December 7, 2018. (joinder motion to -00819 pending)
`
`LEAD AND BACKUP COUNSEL: Pursuant to 37 C.F.R. §§ 42.8(b)(3),
`
`42.8(b)(4), and 42.10(a), Apple designates the following lead counsel:
`
`• Matthew J. Moore (Reg. No. 42,012), matthew.moore@lw.com,
`
`Latham & Watkins LLP; 555 Eleventh Street, NW, Ste. 1000;
`
`- 5 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`Washington, DC 20004-1304; 202.637.2278
`
`Apple also designates the following backup counsel:
`
`• Jonathan M. Strang (Reg. No. 61,724), jonathan.strang@lw.com,
`
`Latham & Watkins LLP; 555 Eleventh Street, NW, Ste. 1000;
`
`Washington, DC 20004-1304; 202.637.2362.
`
`• Lisa K. Nguyen (Reg. No. 58,018) lisa.nguyen@lw.com, Latham &
`
`Watkins LLP; 140 Scott Drive; Menlo Park, CA 94025;
`
`650.470.4848.
`
`• Robert Steinberg (Reg. No. 33,144), bob.steinberg@lw.com, Latham
`
`& Watkins LLP; 555 Eleventh Street, NW, Ste. 1000; Washington,
`
`DC 20004-1304; 202.637.2301.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney from Apple is attached.
`
`Apple consents to electronic service.
`
`FEE FOR INTER PARTES REVIEW:
`
`The Director is authorized to charge the fee specified by 37 C.F.R. §
`
`42.15(a) to Deposit Account No. 506269.
`
`II. GROUNDS FOR STANDING (37 C.F.R. § 42.104(A))
`The undersigned and Petitioner certify that the ʼ251 patent is available for
`
`inter partes review. Petitioner certifies that it is not barred or estopped from
`
`requesting this inter partes review on the ground identified herein because a
`
`- 6 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`motion for joinder was filed concurrently with this petition.
`
`III.
`
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(B))
`A.
`Statutory Ground for the Challenge
`Apple requests inter partes review of claims 13-19 and 21 of the ’251 patent
`
`on the following ground:
`
`Ground
`
`Claims
`
`Basis
`
`1
`
`13-19 and 21
`
`§103: Fumarolo-782, Fumarolo-844, Muramatsu,
`
`Liu, and Spaargaren
`
`B. Citation of Prior Art
`In support of the ground of unpatentability cited above, Apple cites the
`
`following prior art references:
`
`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”), is prior art
`
`under at least §102(b) because it was published on April 2, 2002, which is more
`
`than a year prior to both the ’251 patent’s earliest possible priority date of
`
`September 21, 2004. Fumarolo-782 is provided as Exhibit 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”), is prior art under at least §102(b) because it was published on
`
`- 7 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`March 20, 2001, which is more than a year prior to the ’251 patent’s earliest
`
`possible priority date. Fumarolo-844 is provided as Exhibit 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”), is prior art under at least
`
`§102(b) because it was published on November 21, 2002, which is more than a
`
`year prior to the ’251 patent’s earliest possible priority date. Muramatsu is
`
`provided as Exhibit 1007.
`
`U.S. Patent Application Publication No. 2002/0027901 to Liu et al., titled
`
`“Apparatus, Methods and Systems for Anonymous Communication” (“Liu”), is
`
`prior art under at least §102(b) because it was published on March 7, 2002, which
`
`is more than a year prior to the ’251 patent’s earliest possible priority date. Liu is
`
`provided as Exhibit 1008.
`
`WO Publication No.
`
`02/17567
`
`to Spaargaren,
`
`titled
`
`“Data
`
`Communications” (“Spaargaren”), is prior art under at least § 102(b) because it
`
`was published on February 28, 2002, which is more than a year prior to the ’251
`
`patent’s earliest possible priority date. Spaargaren is provided as Exhibit 1009.
`
`IV. THE ’251 PATENT
`A. Background of the ’251 Patent
`The application that matured into the ’251 patent was filed on February 27,
`
`2015. The ’251 patent follows a series of largely continuations-in-part that stretch
`
`- 8 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`back to a first application filed on September 21, 2004 that resulted in Patent No.
`
`7,031,728 as illustrated in Figure A (below):
`
`
`
`(FIG. A)
`
`- 9 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`During the prosecution of the ’251 patent, through two preliminary
`
`amendments and several rounds of wholesale edits and rewrites, the Examiner
`
`rejected all pending claims as anticipated multiple times. (Exhibit 1002, ’251
`
`Patent File History, pp. 386-394 (Aug. 13, 2015 Office Action), pp. 447-463 (Dec.
`
`10, 2015 Office Action), pp. 521-533 (Feb. 19, 2016 Office Action).) Ultimately,
`
`in order to overcome the rejections, Patent Owner added claim language directed to
`
`downloading and displaying an additional “second” geographical map from a
`
`server. (Id., 542 (amending the independent claims claim 1 to recite “ … sending,
`
`from the first device to the server, a request for a second georeferenced map
`
`different from the first georeferenced map … receiving, from the server, the
`
`second georeferenced map … [and] presenting, via the interactive display of the
`
`first device, the second georeferenced map and the plurality of user-selectable
`
`symbols corresponding to the plurality of second devices …”).)
`
`Moreover, Patent Owner only alleged that the applied references failed to
`
`disclose the newly-added downloading and displaying a second geographical map
`
`functionality. Thus, the prosecution history makes it clear that Patent Owner
`
`believed this newly-added functionality to be the novel limitations of the claims.
`
`But as explained in the ground below, the concept of downloading and displaying
`
`multiple geographical maps showing the locations of other network device existed
`
`well before the earliest possible priority date of the ’251 patent.
`
`- 10 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`
`B.
`Level of Ordinary Skill in the Art
`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,
`
`Computer Science, 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,
`
`Computer Science, 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. (Exhibit 1003, Williams, ¶29.)
`
`C. Claim Construction
`Because the ’251 patent has not expired, the terms of the ’251 patent are to
`
`be given their plain and ordinary meaning under the broadest reasonable
`
`interpretation, as understood by a person having ordinary skill in the art (“POSA”)
`
`and consistent with the disclosure. Cuozzo Speed Technologies, LLC v. Lee, 136 S.
`
`Ct. 2131, 2142 (2016).4
`
`
`
`4 Although this petition offers a construction for one particular term, Apple
`
`does not concede that a construction is necessary under the district court’s claim
`
`- 11 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`
`“second georeferenced map”
`Under the broadest reasonable interpretation, “second georeferenced map”
`
`includes “an aerial photograph, a satellite image, or a moved map relative to a first
`
`georeferenced map.” (Williams, ¶¶17-19.)
`
`The specification of the ’251 patent does not use the terms “second georef-
`
`erenced map.” Therefore, to determine the proper scope for this term, a POSA
`
`should look to other intrinsic evidence as well as extrinsic evidence. See Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (“In addition to consulting the
`
`specification, we have held that a court ‘should also consider the patent's prosecu-
`
`tion history, if it is in evidence.… Although we have emphasized the importance of
`
`intrinsic evidence in claim construction, we have also authorized district courts to
`
`
`
`construction standard or that the specification of the ’251 patent discloses adequate
`
`structure for any term that may be interpreted as a means-plus-function term to sat-
`
`isfy the indefiniteness standard that applies in the district court. Instead, Apple
`
`merely asserts that the prior art teaches or suggests at least as much structure for
`
`any such term as disclosed in the specification of the ’251 patent. The prior art,
`
`therefore, renders the challenged claims of the ’251 patent obvious, as explained
`
`herein.
`
`- 12 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`rely on extrinsic evidence, which ‘consists of all evidence external to the patent
`
`and prosecution history ….’”).
`
`Looking first to the prosecution history, in response to a Final Office Action,
`
`Patent Owner pointed to a single sentence from a related application as allegedly
`
`supporting the claimed “second georeferenced map”: “[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.” (’251
`
`patent File History, pp. 504-505 (citing the ’724 patent, 18:57-19:7.)
`
`Looking next to extrinsic evidence, in a district court case currently pending
`
`in the Eastern District of Texas, Patent Owner again 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.”
`
`(Exhibit 1010, Infringement Complaint, p. 18, ¶49.)
`
`The manner in which Patent Owner is attempting to apply this claim element
`
`in the district court proceeding is evidence of the broadest reasonable interpretation
`
`of the claimed “sending … a request for second georeferenced map data.” The
`
`Federal Circuit has even stated that such extrinsic evidence should be considered
`
`- 13 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`when determining the proper scope of a particular claim limitation. See, e.g.,
`
`Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 955 (Fed. Cir.
`
`Jul. 10, 2017) (nonprecedential) (stating that the Board must provide a rationale for
`
`its findings when Patent Owner provides arguments in its infringement contentions
`
`that were “opposite of what [was] argue[d] on appeal”.)
`
`While this evidence is insufficient to determine the exact scope of the
`
`claimed “second georeferenced map,” it does provide some guidance. For
`
`example, a POSA would understand from this intrinsic and extrinsic evidence that
`
`the claimed “second georeferenced map” includes an aerial photograph, a satellite
`
`image, and a moved map relative to the “first georeferenced map” (e.g., a map
`
`showing a geographical area that was not included in the “first georeferenced
`
`map”). (Williams, ¶17.)
`
`V. GROUND OF REJECTION
`Claims 13-19 and 21 are unpatentable for at least the reasons set forth
`
`below. (Williams, ¶¶65-197.)
`
`A. Claim 1 is Obvious Over Fumarolo-782 in View of Fumarolo-844,
`Muramatsu, and Liu.
` Overview
`a)
`Fumarolo-782 in view of Fumarolo-844
`Fumarolo-782, like the ’251 patent, is directed to establishing a network that
`
`allows for groups of wireless devices to share location information and “display[] a
`
`- 14 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`map to [a wireless device] user indicating locations of communication units in at
`
`least a portion of the communication system.” (Exhibit 1005, Fumarolo-782, 3:24-
`
`26.) Fumarolo-782 explains that its system can be used in a “911 system” to
`
`“communicat[e] unit location, communicat[e] unit status, and incident location on
`
`the map.” (Id., 1:36-45.) As such, an emergency dispatcher “can quickly determine
`
`which communication unit users (e.g., policemen, firemen, paramedics, and so
`
`forth) would be in the best situation to respond to the incident.” (Id.)
`
`Fumarolo-782 specifically discloses that, during operation, a first wireless
`
`device “receives location coordinates of the communication units 105-113 on a
`
`periodic basis.” (Id., 8:35-48.) The wireless device then “display[s] the locations of
`
`the communication units 105-113 on the map 300 together with buttons 302-305,
`
`401-404, 406, an
`
`icon, or a pull-down menu
`
`identifying
`
`the
`
`types of
`
`communications and/or the modes of transmission supported by the system 100.”
`
`(Id.) Subsequently, the wireless device “receives a selection from the map … of at
`
`least one communication unit and an indication of the user’s desire to
`
`communicate with the selected communication unit or units.” (Id., 3:26-31.) Based
`
`on the selection, the wireless device then communicates with other communication
`
`units via “a voice communication” and/or “a data communication.” (Id., 5:53-60.)
`
`Fumarolo-782 explains that the selection of one or more other wireless devices, as
`
`- 15 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`well as the communication with the selected devices can take place all from within
`
`a single map interface. (Id., 3:26-31 and 5:53-60.)
`
`Moreover, Fumarolo-782 discloses a system for communicating among
`
`wireless devices belonging to different groups, such as a “fire department
`
`talkgroup” and a “police department talkgroup.” (Id., 6:28-39.) While Fumarolo-
`
`782 is silent regarding how these talkgroups are formed, Fumarolo-844 specifically
`
`describes the formation of talkgroups.
`
`Fumarolo-844, like Fumarolo-782, describes “a method and apparatus for
`
`dynamically grouping communication units
`
`(105-113) operating
`
`in a
`
`communication system (100).” (Exhibit 1006, Fumarolo-844, Abstract.) Fumarolo-
`
`844 explains that a first wireless device “receives the user’s selection of
`
`communication units from [a] map and an identification of at least one talkgroup
`
`with which the selected units are to become members. The communication units
`
`may be selected individually, as a group …, or both.” (Id.) Subsequently, the first
`
`wireless device “automatically groups the selected units into the indicated
`
`talkgroup.” (Id.) A POSA would have been motivated to combine Fumarolo-782
`
`and Fumarolo-844 for several reasons including:
`
`• Same field of invention and address similar problems. Both are in
`
`the same field (map-based systems for providing location and
`
`communication information of communication units for emergency
`
`- 16 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`responders) and address the same problem—setting up a network to
`
`facilitate quick and efficient communication among wireless devices
`
`using an interactive map interface. (Williams, ¶76.) In addition,
`
`Fumarolo-782 discloses that wireless devices can be organized into
`
`different talkgroups, but is silent as to the formation of those
`
`talkgroups. (Id., ¶77.) Therefore, a POSA wanting to implement
`
`Fumarolo-782’s system would have looked to Fumarolo-844 for
`
`techniques for forming Fumarolo-782’s talkgroups. (Id., ¶78.) For
`
`this additional reason, a POSA would have been motivated to
`
`combine Fumarolo-782 with Fumarolo-844.
`
`• Related Applications. A POSA would have also recognized that
`
`Fumarolo-844’s grouping functionality could have been combined
`
`with Fumarolo-782’s system with a reasonable expectation of success
`
`at least because both references: (i) share the same inventors; (ii)
`
`share the same assignee; (iii) were filed on the same day; (iv) have
`
`overlapping specifications and figures; and (v) describe substantially
`
`similar systems. (Id., ¶79.) Moreover, a POSA would have understood
`
`that Fumarolo-844’s grouping functionality is merely an extension of
`
`the disclosure provided
`
`in Fumarolo-782, and as such,
`
`the
`
`incorporation of Fumarolo-844’s functionality into Fumarolo-782’s
`
`- 17 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`system would not have required significant modification to Fumarolo-
`
`782’s system. (Id., ¶80.)
`
`b)
`Fumarolo-782 and Fumarolo-844 in view of Muramatsu
`To the extent the combination of Fumarolo-782 and Fumarolo-844 is
`
`determined not to explicitly disclose sending/receiving location information
`
`to/from “a server,” Muramatsu discloses this limitation.
`
`Muramatsu, like Fumarolo-782 and Fumarolo-844, also describes sharing
`
`location information among multiple wireless devices, where each device
`
`“comprises a GPS module for receiving signals from GPS satellites to determine
`
`the present position, … a display for displaying various data on the screen, and a
`
`wireless communicator.” (Exhibit 1007, Muramatsu, ¶0012.) Muramatsu explains
`
`that a first wireless device is configured to transmit its location information to a
`
`“navigation server,” and “receive[] and download[] from the navigation server the
`
`map information including the destination and present position, based on which
`
`icon symbols representing the destination and present position are respectively
`
`indicated in the map displayed on the screen.” (Id.)
`
`A POSA would have been motivated to incorporate Muramatsu’s navigation
`
`server into the combined system of Fumarolo-782 and Fumarolo-844 for several
`
`reasons including:
`
`- 18 -
`
`

`

`Inter Partes Review of U.S. Patent No. 9,445,251
`
`• Same field of inv