UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Google LLC
`
`Petitioner
`
`v.
`
`Ikorongo Technology LLC,
`
`Patent Owner
`
`U.S. Patent No. RE45,543
`Filing Date: May 14, 2013
`Issue Date: Jun. 2, 2015
`
`____________________
`
`Case No. IPR2021-00127
`
`
`
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`LYFT 1003
`
`1
`
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Google LLC
`
`Petitioner
`
`v.
`
`Ikorongo Technology LLC,
`
`Patent Owner
`
`U.S. Patent No. RE45,543
`Filing Date: May 14, 2013
`Issue Date: Jun. 2, 2015
`
`____________________
`
`Case No. IPR2021-00127
`
`
`
`DECLARATION OF DAVID HILLIARD WILLIAMS IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`
`LYFT 1003
`
`1
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`INTRODUCTION
`II. QUALIFICATIONS
`III. MATERIALS CONSIDERED
`IV. LEGAL PRINCIPLES
`V.
`LEVEL OF ORDINARY SKILL IN THE ART
`VI. CLAIM CONSTRUCTION
`VII. BACKGROUND OF LOCATION-DETERMINING AND
`LOCATION-SHARING TECHNOLOGIES
`A.
`The use of software registration, including for data collection
`and sharing purposes was well known prior to the ’543 patent
`priority date.
`B. A wide variety of location determination methods and
`technologies were well known at the time of the ’543 patent’s
`earliest priority date, as was the automatic and passive
`collection and use of such data for tracking purposes.
`The ability to share information related to location/location-
`related experiences was known in the art at the time of the ’543
`patent’s earliest priority date.
`VIII. OVERVIEW OF PRIOR ART
`A. Overview of Callegari
`B. Overview of Friedman
`C. Overview of Eschenbach
`IX. THE ’543 PATENT
`A. Overview of the ’543 Patent
`B.
`The Prosecution History of the ’543 Patent
`
`C.
`
`13
`15
`21
`24
`28
`30
`
`31
`
`32
`
`41
`
`47
`71
`71
`81
`82
`83
`83
`86
`
`2
`
`
`
`B.
`C.
`
`2.
`
`3.
`
`C.
`Summary of the Claims
`STATEMENT OF OPINIONS
`X.
`XI. CALLEGARI AND FRIEDMAN DISCLOSE THE CORE
`ELEMENTS OF THE CLAIMS
`A.
`Core Element A: “registering a location-aware device with a
`server”
`Core Element B: “accessing lists of other users”
`Core Element C: “defining rights for sharing data with the other
`users”
`Core Element D: “collecting data at the device”
`D.
`Core Element E: “reporting data to a server”
`E.
`Core Element F: “sharing data with the other users”
`F.
`XII. GROUND 1: CLAIM 76 IS UNPATENTABLE OVER CALLEGARI
`A.
`Claim 76 (Core Elements A-B-C-D-E-F)
`1.
`[76p] “A system for collecting and sharing visited
`geographic location data, comprising:”
`[76a] “a location-aware device adapted to:” (Core
`Element A)
`[76b] “record geographic location data while visiting
`geographic locations using a satellite-based location
`fixing protocol” (Core Element D)
`[76c] “enable access to one or more lists of other users to
`identify one or more other users with whom the
`geographic location data may be shared;” (Core Element
`B)
`[76d] “enable definition of rights of the one or more
`other users to access the geographic location data, and”
`(Core Element C)
`
`4.
`
`5.
`
`87
`88
`
`89
`
`89
`95
`
`97
`98
`101
`102
`103
`103
`
`103
`
`104
`
`104
`
`105
`
`105
`
`3
`
`
`
`6.
`
`7.
`8.
`
`9.
`
`[76e] “send at least a portion of the geographic location
`data to a tracking server; and” (Core Element E)
`[76f] “the tracking server adapted to:” (Core Element E)
`[76g] “receive the at least a portion of the geographic
`location data from the location-aware device; and” (Core
`Element E)
`[76h] “share the at least a portion of the geographic
`location data with the one or more other users in
`accordance with the rights of the one or more other
`users.” (Core Element F)
`XIII. GROUND 2: CLAIMS 32, 34, 36, 39, 41, 43-49, 51, 53-62, AND 72
`ARE UNPATENTABLE OVER CALLEGARI IN VIEW OF
`FRIEDMAN
`A. A POSA Would Have Combined Callegari and Friedman
`1.
`A POSA would have understood that Callegari’s
`consumer device and presence server would have
`processors executing software stored in memory, as
`disclosed by Friedman
`A POSA would have combined Friedman’s registration
`server into Callegari’s system to form a distributed
`system
`Claims 45-49, and 51 (Core Elements A-B-C-D-E)
`1.
`[45-49p, 51p] “A non-transitory computer-readable
`medium storing software for instructing a controller of a
`location-aware device that is capable of being registered
`with a registration server to:” (Core Element A)
`[45-49a, 51a] “enable access to one or more lists of other
`users to identify one or more other users with whom
`visited geographic location data is capable of being
`shared;” (Core Element B)
`
`B.
`
`2.
`
`2.
`
`105
`105
`
`106
`
`106
`
`106
`106
`
`107
`
`108
`112
`
`112
`
`114
`
`4
`
`
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`10.
`
`11.
`
`C.
`
`[45-49b, 51b] “enable definition of access rights for the
`one or more other users to enable access to the visited
`geographic location data;” (Core Element C)
`[45-49c, 51c] “collect the visited geographic location
`data for geographic locations visited by the location-
`aware device using a client-side application; and” (Core
`Element D)
`[45-49d, 51d] “report information indicating at least a
`portion of the visited geographic location data to a
`tracking server.” (Core Element E)
`[45e] “wherein…receive, via a user interface of the
`location-aware device, input that defines at least one user
`of the one or more other users from the one or more lists
`of other users that is to have access to the visited
`geographic location data.”
`[46e] “wherein…receive, via a user interface of the
`location-aware device, input that defines categories of the
`visited geographic location data that can be shared with
`the other user.”
`[47e] “wherein the one or more lists of other users
`comprises an Instant Messaging buddy list of the user…” 122
`[48e] “wherein the one or more lists of other users
`comprises a contact list…”
`[49e] “wherein the one or more lists of other users
`comprises an e-mail contact list of the user…”
`[51e] “wherein the visited geographic location data
`further defines comments on one or more of the
`geographic locations visited by the location-aware
`device.”
`Claim 56 (Core Elements A-B-C-D-E)
`
`125
`126
`
`114
`
`114
`
`115
`
`115
`
`119
`
`123
`
`124
`
`5
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`[56p] “A non-transitory computer-readable medium
`storing software for instructing a controller of a device
`to:”
`[56a] “communicate with a registration server to register
`with the registration server to collect visited geographic
`location data from a client-side application while visiting
`geographic locations with a location-aware device that
`records the geographic locations using a satellite-based
`location-fixing protocol;” (Core Elements A & D)
`[56b] “enable a user to select one or more other users
`with whom the visited geographic location data may be
`shared from one or more lists of other users;” (Core
`Element B)
`[56c] “enable the user to define rights of the one or more
`other users to access the visited geographic location data;
`and” (Core Element C)
`[56d] “report information indicating at least a portion of
`the visited geographic location data for the one or more
`other users to a tracking server;” (Core Element E)
`Claim 32, 39, and 54 (Core Elements A-B-C-D-E-F)
`1.
`[32p], [39p], [54p] “A computer-implemented method of
`sharing computer usage experiences, including:”
`[32a], [39a], [54a] “sending registration information of a
`user to a registration server to collect and share visited
`geographic location data using a client-side application
`while visiting geographic locations with a location-aware
`device that records the visited geographic locations using
`a satellite-based location fixing protocol;” (Core
`Elements A, D, & F)
`[32b], [39b], [54b] “enabling access to one or more
`messaging buddy lists of the user to identify one or more
`buddies with whom the visited geographic location data
`may be shared;” (Core Element B)
`
`D.
`
`2.
`
`3.
`
`126
`
`127
`
`127
`
`127
`
`128
`128
`
`128
`
`129
`
`129
`
`6
`
`
`
`E.
`
`F.
`G.
`H.
`
`4.
`
`5.
`
`2.
`
`[32c], [39c], [54c] “enabling definition of access rights
`for the one or more buddies to access the visited
`geographic location data; and” (Core Element C)
`[32d], [39d], [54d] “sending information indicating at
`least a portion of the visited geographic location data to a
`tracking server to enable sharing of the information with
`the one or more buddies in accordance with the defined
`rights.” (Core Element E)
`Claims 34 and 41 - “wherein the visited geographic location
`data comprises the [visited] geographic locations and a
`comment on the [visited] geographic locations.” (Core
`Elements D & E)
`Claims 36 and 43 - “. . . display of advertising information.”
`Claim 44 - “. . . wherein the advertising is capable of moving.”
`Claims 53 and 55 (Core Elements A-B-C-D-E-F)
`1.
`[53p], [55p] “A method of operation of a server to share
`computer usage experiences, comprising the following
`computer implemented steps:”
`[53a], [55a] “receiving, a registration for automatic client
`side collection and sharing of visited geographic location
`data from a client-side application while visiting
`geographic locations with a location-aware device that
`records the visited geographic locations using a satellite-
`based location-fixing protocol;” (Core Elements A & D)
`[53b], [55b] “enabling access to one or more messaging
`buddy lists and selection of one or more buddies with
`whom the visited geographic location data may be shared
`from the one or more messaging buddy lists;” (Core
`Element B)
`[53c], [55c] “obtaining defined rights of the one or more
`buddies to access the visited geographic location data;
`and” (Core Element B)
`
`3.
`
`4.
`
`130
`
`130
`
`130
`131
`132
`132
`
`133
`
`134
`
`136
`
`137
`
`7
`
`
`
`I.
`
`J.
`
`5.
`
`2.
`
`3.
`
`[53d], [55d] “reporting information indicating at least a
`portion of the visited geographic location data for the one
`or more buddies to access according to the rights defined
`for the one or more buddies.” (Core Elements E & F)
`Claim 57 (Core Elements A-B-C-D-E-F)
`1.
`[57p] “A method of operation of a server computer
`comprising:”
`[57a] “receiving registration information from a location-
`aware device;” (Core Element A)
`[57b] “receiving information indicating visited
`geographic location data from the location-aware device,
`the visited geographic location data being data defining
`geographic locations collected at the location-aware
`device from a client-side application, wherein the
`location-aware device records the geographic locations
`using a satellite-based location-fixing protocol;” (Core
`Elements D & E)
`[57c] “obtaining access rights for one or more other users
`to allow for access to the visited geographic location
`data, the one or more other users being one or more other
`users from one or more lists of other users with whom the
`visited geographic location data is to be shared; and”
`(Core Elements B & C)
`[57d] “sharing at least a portion of the visited geographic
`location data with the one or more other users according
`to the access rights defined for the one or more other
`users.” (Core Element F)
`Claim 58 - “wherein the access rights for the one or more other
`users to access the visited geographic location data comprises,
`for each other users of at least a subset of the one or more other
`users, information that defines one or more categories of te
`visited geographic location data to be shared with the other
`user.”
`
`4.
`
`5.
`
`138
`138
`
`138
`
`139
`
`139
`
`140
`
`140
`
`140
`
`8
`
`
`
`K.
`
`L.
`
`N.
`
`O.
`
`Claim 59 “. . . access rights . . . defines at least one other user . .
`. to have access to the category of the visited geographic
`location data.”
`Claim 60 - “. . . an Instant Messaging buddy list of the user of
`the location-aware device.”
`M. Claim 61 - “. . . a contact list maintained on the location-aware
`device.”
`Claim 62 - “. . . an e-mail contact list of the user of the location-
`aware device.”
`Claim 72 (Core Elements A-B-C-D-E)
`1.
`[72p] “A location-aware mobile device having a
`controller and memory, wherein the controller is
`configured to:”
`[72a] “send location information comprising geographic
`data recorded by the location-aware mobile device using
`a satellite-based location-fixing protocol;” (Core
`Elements D & E)
`[72b] “enable access to one or more lists of other users to
`identify one or more other users with whom the visited
`geographic location data may be shared;” (Core Element
`B)
`[72c] “enable definition of rights of the one or more other
`users to access the visited geographic location data; and”
`(Core Element C)
`[72d] “send information indicating at least a portion of
`the visited geographic location data to a server” (Core
`Element E)
`XIV. GROUND 3: CLAIM 38 IS UNPATENTABLE OVER CALLEGARI
`IN VIEW OF FRIEDMAN AND ESCHENBACH
`
`2.
`
`3.
`
`4.
`
`5.
`
`141
`
`141
`
`142
`
`142
`143
`
`143
`
`143
`
`144
`
`144
`
`144
`
`144
`
`9
`
`
`
`A.
`
`Claim 38 - “wherein the satellite-based location-fixing protocol
`is selected from a group consisting of a GPS protocol and a
`DGPS protocol;”
`B. A POSA Would Have Combined Callegari, Friedman, and
`Eschenbach
`1.
`Based on Callegari, a POSA would have been motivated
`to look for ways to implement a GPS to determine the
`location of the consumer device
`Based on Eschenbach, a POSA would have recognized
`that using a reference receiver and almanac data to
`correct GPS location data improves location data
`resolution
`XV. CONCLUSION
`
`2.
`
`145
`
`147
`
`149
`
`149
`151
`
`
`
`
`
`
`
`10
`
`
`
`
`
`Exhibit
`Ex-1001
`Ex-1002
`Ex-1003
`Ex-1004
`Ex-1005
`
`Ex-1006
`Ex-1007
`Ex-1008
`Ex-1009
`Ex-1010
`Ex-1011
`Ex-1012
`Ex-1013
`Ex-1014
`Ex-1015
`Ex-1016
`Ex-1017
`Ex-1018
`Ex-1019
`Ex-1020
`Ex-1021
`Ex-1022
`Ex-1023
`Ex-1024
`Ex-1025
`Ex-1026
`Ex-1027
`Ex-1028
`Ex-1029
`Ex-1030
`
`Ex-1031
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. RE45,543 (the ’543 patent)
`Prosecution File History of U.S. Patent No. RE45,543
`Declaration of David Hilliard Williams
`Curriculum Vitae of David Hilliard Williams
`U.S. Patent Application Publication No. 2003/0055983 to Callegari
`(“Callegari”)
`U.S. Provisional Patent Application No. 60/277174
`U.S. Provisional Patent Application No. 60/277187
`U.S. Provisional Patent Application No. 60/277200
`U.S. Patent No. 6,714,791 to Friedman (“Friedman”)
`U.S. Patent No. 6,373,429 to Eschenbach (“Eschenbach”)
`U.S. Patent No. 7,080,139
`U.S. Patent No. 6,052,122
`U.S. Patent No. 7,970,390
`U.S. Patent No. 6,466,788
`U.S. Patent App. Pub. No. 2003/0022684A1
`U.S. Patent No. 6,618,593
`U.S. Patent No. 7,739,139
`U.S. Patent No. 8,762,471
`U.S. Patent No. 8,589,247
`U.S. Patent No. 6,240,069
`U.S. Patent No. 7,047,030
`U.S. Patent No. 8,103,729
`U.S. Patent No. 7,953,815
`U.S. Patent No. 6,438,579
`U.S. Patent No. 6,332,127
`U.S. Patent No. 8,295,835
`U.S. Patent No. 6,968,179
`U.S. Patent No. 6,944,447
`U.S. Patent No. 5,493,692
`Goran M. Djuknic & Robert E. Richton, Geolocation and Assisted
`GPS, COMPUT., Feb. 2001, at 123.
`Jim Waldo et al., SUN MICROSYSTEMS LABORATORIES, A Note on
`Distributed Computing (1994).
`
`11
`
`
`
`Ex-1032
`
`Ex-1033
`
`Ex-1034
`
`Ex-1035
`Ex-1036
`Ex-1037
`
`Ex-1038
`
`Ex-1039
`Ex-1040
`
`Ex-1041
`
`Ex-1042
`
`Ex-1043
`
`Ex-1044
`
`Ex-1045
`Ex-1046
`Ex-1047
`Ex-1048
`Ex-1049
`Ex-1050
`Ex-1051
`
`Niranjan G. Shivaratri et al., Load Distributing for Locally
`Distributed Systems, COMPUT., Dec. 1992, at 33.
`Jim Gray, AN APPROACH TO DECENTRALIZED COMPUTER SYSTEMS
`(1985).
`Flaviu Cristian, Understanding Fault-Tolerant Distributed Systems,
`COMMUNICATIONS OF THE ACM, Feb. 1991, at 56.
`U.S. Patent No. 6,799,277
`WO 01/74034
`Microsoft Campus Agreement: How to Get Started (February 9,
`2001), available at
`https://www.uprm.edu/cms/index.php?a=file&fid=126
`Platform Services, OPENWAVE,
`https://web.archive.org/web/20020206231928/http:/www.openwave.
`com/products/platform_services/.
`U.S. Patent No. 7,376,433
`Jay Farrell & Tony Givargis, Differential GPS Reference Station
`Algorithm—Design and Analysis, 8 IEEE TRANSACTIONS ON
`CONTROL SYS. TECH. 519 (2000).
`François J.N. Cosquer & Paulo Veríssimo, The Impact of Group
`Communication Paradigms on Groupware Support, in
`PROCEEDINGS OF THE FIFTH IEEE COMPUTER SOC. WORKSHOP ON
`FUTURE TRENDS OF DISTRIBUTED COMPUTING SYS. 207 (1995).
`M. Kolland et al., Information Sharing in Collaborative
`Environments, in PROCEEDINGS THIRD WORKSHOP ON ENABLING
`TECH.: INFRASTRUCTURE FOR COLLABORATIVE ENTERPRISES 140
`(1994).
`Zygmunt J. Haas & Sanjoy Paul, Limited-lifetime Shared-access in
`Mobile Systems, 3 1995 IEEE INT’L CONF. ON COMM. 1404 (1995).
`Mahadev Satyanarayanan, Accessing Information on Demand at Any
`Location: Mobile Information Access, IEEE PERS. COMM., Feb.
`1996, at 26.
`Reserved
`Reserved
`U.S. Patent No. 7,133,685
`3GPP Location Standards Release 4.1 (March 2001)
`U.S. Patent App. No. 2001/0036224 to Demello (“Demello”)
`U.S. Patent No. 6,578,072 to Watanabe (“Watanabe”)
`U.S. Patent No. 6,480,885 to Olivier (“Olivier”)
`
`12
`
`
`
`Ex-1052
`Ex-1053
`
`Inter Partes Review IPR2020-01379
`U.S. Patent No. 8,099,667
`
`13
`
`
`
`I, David Hilliard Williams, declare as follows:
`
`I.
`
`INTRODUCTION
`I have been retained on behalf of Google LLC (“Google”) for the
`1.
`
`above-captioned inter partes review (IPR) 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. RE45,543 (“the ’543
`
`patent”) titled “Method and Apparatus for Selectively Sharing and Passively
`
`Tracking Communication Device Experiences” by Darren P. Briggs, Brady O.
`
`Bruce, Michael W. Mitchell, and Emile L. Reed, IV, and that the ’543 patent is
`
`currently assigned to Ikorongo Technology, LLC.
`
`2.
`
`I have reviewed and am familiar with the specification of the ’543
`
`patent filed on May 14, 2013. I understand that the ’543 patent has been provided as
`
`Ex-1001. I will cite to the specification using the following format: Ex-1001, ’543
`
`patent, 1:1-10. This example citation points to the ’543 patent specification at
`
`column 1, lines 1-10.
`
`3.
`
`I have reviewed and am familiar with the file history of the ’543 patent.
`
`I understand that the file history has been provided as Ex-1002.
`
`14
`
`
`
`4.
`
`I understand that the ’543 patent has a filing date of May 14, 2013, but
`
`claims priority to the filing date of its parent application, U.S. Patent No. 7,080,139,
`
`April 24, 2001. I am informed by Google’s counsel that April 24, 2001 is the ’543
`
`patent’s earliest possible 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 ’543 patent
`
`and/or in my declaration below:
`
`• U.S. Patent Application Publication No. 2003/0055983 to Jeff
`
`Callegari (Ex-1005), filed on March 19, 2002, issued on March 20,
`
`2003, and entitled to the priority date of March 19, 2001 based on
`
`Provisional Application Nos. 60/277,174 (Ex-1006), 60/277,187 (Ex-
`
`1007), and 60/277,200 (Ex-1008).
`
`• U.S. Patent No. 6,714,791 to Jackie Friedman (Ex-1009), filed
`
`February 23, 2001 and issued March 30, 2004.
`
`• U.S. Patent No. 6,373,429 to Ralph F. Eschenbach (Ex-1010), filed
`
`February 6, 2001 and issued April 16, 2002.
`
`6.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ’543 patent and the above-noted references that form the
`
`15
`
`
`
`basis for the grounds of rejection set forth in the Petition for Inter Partes Review of
`
`the ’543 patent.
`
`II. QUALIFICATIONS
`In formulating my opinions, I have relied upon my training, knowledge,
`7.
`
`and experience in the relevant art. A copy of my current curriculum vitae is provided
`
`as Ex-1004, and it provides a comprehensive description of my academic and
`
`employment history over the last thirty-plus years.
`
`8.
`
`I have over 30 years of experience in wireless location services,
`
`including experience designing, implementing, and managing numerous location-
`
`based service (LBS) applications such as mobile social networking, family tracking,
`
`and mobile resource management, as well as working in all fields within the location
`
`services ecosystem including all forms of location determination technologies, map
`
`data, handset technologies, and associated Information Technology systems
`
`including identification, authentication, privacy, security, and other related
`
`capabilities such as network engineering and operations.
`
`9.
`
`I am currently the President of the company E911-LBS Consulting, and
`
`I have been with the company since 2002. As the President of E911-LBS Consulting,
`
`I provide services across the entire wireless value chain, particularly with respect to
`
`16
`
`
`
`technology and business strategic planning and product design and development
`
`associated with LBS, Global Positioning Satellite (GPS) systems, E911, WiFi-Based
`
`and other medium/long-range Real-Time Location Systems (RTLS), Radio
`
`Frequency Identification (RFID), Bluetooth, Near Field Communications (NFC),
`
`and beacon-based and other short-range communications/location systems, 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, in the 1995 to 2000 timeframe, as an Associate Partner in
`
`the Communications & High Technology Practice of Accenture (one of the world’s
`
`leading technology companies), I focused on using wireless location technologies to
`
`provide services to the public sector and commercial markets. In particular, from
`
`1998 to 2000, I led the development of the LBS product/technology strategy and
`
`roadmap for Nextel Communications, Inc. My work with Nextel resulted in some of
`
`the earliest LBS applications in the U.S. market and included extensive research into
`
`17
`
`
`
`the potential use of various technologies in providing and enabling a wide array of
`
`location-based services, including Mobile Resource Management (MRM) worker
`
`tracking and vehicle/fleet management applications. This work also including
`
`leading the development of the underlying network and Information Technology
`
`architectures that would be required to support the LBS applications product strategy
`
`and roadmap.
`
`12.
`
`In 2003, I led the development of part of AT&T Wireless’s E911
`
`infrastructure, including the development of systems, processes, and reporting
`
`infrastructure to manage and track the deployment of time difference of arrival-
`
`based location determination technologies. I managed the testing and Federal
`
`Communications Commission (FCC) reporting of network location inaccuracies,
`
`with a particular focus on detecting and troubleshooting out-of-norm technology
`
`deployment and inaccurate location conditions.
`
`13. From 2005 to 2007, I worked with NAVTEQ (now HERE)—the
`
`leading provider of map data and services essential to creating LBS applications—
`
`to develop the company’s web developer website content and tools. Specifically, I
`
`designed and managed the site map and overall content, including the development
`
`of comprehensive technical and business web content for all NAVTEQ map product
`
`18
`
`
`
`and service lines. Through the developer site, application developers and business
`
`managers became intimately familiar with map data, Geographical Information
`
`System (GIS) platforms, and location-based services to successfully develop and
`
`launch their LBS applications. For example, I developed the content to highlight key
`
`types of map data and to provide technical details on how NAVTEQ tools can be
`
`used in LBS design for various consumer and business applications.
`
`14.
`
`I also have extensive LBS application product design and
`
`implementation experience, which includes data privacy and security management.
`
`For example, from 2007 to 2010, I managed the design, development, and launch of
`
`several consumer and business-oriented LBS applications for AT&T Mobility.
`
`These LBS application included mobile social networking, family tracking, local
`
`search, 411-with-LBS, mobile resource management, and asset tracking. I also
`
`developed corporate-wide location data privacy policies and associated system
`
`implementation for all LBS customers. My AT&T work also extensively involved
`
`various aspects of worker and vehicle/fleet management tracking. In particular, I
`
`was the Product Manager for the several of the joint AT&T-Telenav Mobile
`
`Resource Management applications, as well as various fleet management solutions.
`
`19
`
`
`
`15. These roles and work required extensive knowledge of how the various
`
`applications worked, and even required design modifications in order for it to “fit
`
`into” AT&T’s network and IT infrastructure, as well as to implement AT&T’s
`
`privacy and security policies. The work also included designing/modifying AT&T’s
`
`network and IT infrastructure to allow/enable the applications to seamless work with
`
`AT&T’s location infrastructure and various IT systems used for functions including
`
`Sales, Customer Care, Fulfillment, Billing/Accounts Receivable, and various
`
`network and IT operations. Among associated activities, my efforts included closely
`
`working with AT&T Legal to develop and implement AT&T’s location privacy
`
`policies. These efforts in both data privacy people tracking resulted in a patent: U.S.
`
`Patent 8,613,109, titled “Method and Apparatus for Providing Mobile Social
`
`Networking Privacy,” that issued on December 17, 2013, of which I was the only
`
`non-employee inventor.
`
`16.
`
`In addition to the Location-Based Services applications, enabling
`
`location
`
`technologies, wireless communications, and privacy and security
`
`experience and expertise described above, I also have many years of Information
`
`Technology experience. For example, as a consultant in the Information Technology
`
`practices of Deloitte Consulting (originally Touche Ross), Booz Allen & Hamilton,
`
`20
`
`
`
`and Andersen Consulting (now Accenture), I served in key technology development
`
`and technology leadership roles in numerous projects designing and implementing
`
`mainframe, mini-computer, and client-server based computing systems across a
`
`wide variety of industries and a wide variety of functions/applications. I also led the
`
`design and development of a number of different communications networks
`
`associated with those computing systems, including wide- and local-area networks,
`
`utilizing both wired and wireless technologies, involving private and public (e.g.
`
`Internet-based) communications backbones. This communications system expertise
`
`includes underlying expertise in the electrical characteristics of communications
`
`signals, extending back to the early 1980s with my Electrical Engineering degree
`
`from Purdue University in 1983 and my work as an EE in the design of the Analog-
`
`to-Digital Signal Converter unit for the F-15 fighter jet radar system while with
`
`Hughes Aircraft Company Radar Systems Division from 1983-1985.
`
`17.
`
`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
`
`21
`
`
`
`• The Definitive Guide to Mobile Positioning and Location
`
`Management (co-author).
`
`18.
`
`I received a B.S. degree in Electrical Engineering from Purdue
`
`University in 1983 with top honors. I received an MBA degree in Information
`
`Systems Management from The University of Texas at Austin in 1987, also with top
`
`honors.
`
`19. My curriculum vitae contains further details on my education,
`
`experience, publications, and other qualifications to render an expert option. Ex-
`
`1004. My work on this case is being billed at a flat rate of $425 per hour, with
`
`reimbursement for actual expenses. My compensation is not contingent upon the
`
`outcome of this inter partes review proceeding.
`
`III. MATERIALS CONSIDERED
`In forming my opinions, I have reviewed the following documents, and
`20.
`
`any other document cited in this declaration:
`
`Exhibit
`Ex-1001
`Ex-1002
`Ex-1003
`Ex-1004
`Ex-1005
`
`Description
`U.S. Patent No. RE45,543 (the ’543 patent)
`Prosecution File History of U.S. Patent No. RE45,543
`Declaration of David Hilliard Williams
`Curriculum Vitae of David Hilliard Williams
`U.S. Patent Application Publication No. 2003/0055983 to Callegari
`(“Callegari”)
`
`22
`
`
`
`Ex-1006
`Ex-1007
`Ex-1008
`Ex-1009
`Ex-1010
`Ex-1011
`Ex-1012
`Ex-1013
`Ex-1014
`Ex-1015
`Ex-1016
`Ex-1017
`Ex-1018
`Ex-1019
`Ex-1020
`Ex-1021
`Ex-1022
`Ex-1023
`Ex-1024
`Ex-1025
`Ex-1026
`Ex-1027
`Ex-1028
`Ex-1029
`Ex-1030
`
`Ex-1031
`
`Ex-1032
`
`Ex-1033
`
`Ex-1034
`
`Ex-1035
`
`U.S. Provisional Patent Application No. 60/277174
`U.S. Provisional Patent Application No. 60/277187
`U.S. Provisional Patent Application No. 60/277200
`U.S. Patent No. 6,714,791 to Friedman (“Friedman”)
`U.S. Patent No. 6,373,429 to Eschenbach (“Eschenbach”)
`U.S. Patent No. 7,080,139
`U.S. Patent No. 6,052,122
`U.S. Patent No. 7,970,390
`U.S. Patent No. 6,466,788
`U.S. Patent App. Pub. No. 2003/0022684A1
`U.S. Patent No. 6,618,593
`U.S. Patent No. 7,739,139
`U.S. Patent No. 8,762,471
`U.S. Patent No. 8,589,247
`U.S. Patent No. 6,240,069
`U.S. Patent No. 7,047,030
`U.S. Patent No. 8,103,729
`U.S. Patent No. 7,953,815
`U.S. Patent No. 6,438,579
`U.S. Patent No. 6,332,127
`U.S. Patent No. 8,295,835
`U.S. Patent No. 6,968,179
`U.S. Patent No. 6,944,447
`U.S. Patent No. 5,493,692
`Goran M. Djuknic & Robert E. Richton, Geolocation and Assisted
`GPS, COMPUT., Feb. 2001, at 123.
`Jim Waldo et al., SUN MICROSYSTEMS LABORATORIES, A Note on
`Distributed Computing (1994).
`Niranjan G. Shivaratri et al., Load Distributing for Locally
`Distributed Systems, COMPUT., Dec. 1992, at 33.
`Jim Gray, AN APPROACH TO DECENTRALIZED COMPUTER SYSTEMS
`(1985).
`Flaviu Cristian, Understanding Fault-Tolerant Distributed Systems,
`COMMUNICATIONS OF THE ACM, Feb. 1991, at 56.
`U.S. Patent No. 6,799,277
`
`23
`
`
`
`Ex-1036
`Ex-1037
`
`Ex-1038
`
`Ex-1039
`Ex-1040
`
`Ex-1041
`
`Ex-1042
`
`Ex-1043
`
`Ex-1044
`
`Ex-1045
`Ex-1046
`Ex-1047
`Ex-1048
`Ex-1049
`Ex-1050
`Ex-1051
`Ex-1052
`Ex-1053
`
`
`WO 01/74034
`Microsoft Campus Agreement: How to Get Started (February 9,
`2001), available at
`https://www.uprm.edu/cms/index.php?a=file&fid=126
`Platform Services, OPENWAVE,
`https://web.archive.org/web/20020206231928/http:/www.openwave.
`com/products/platform_services/.
`U.S. Patent No. 7,376,433
`Jay Farrell & Tony Givargis, Differential GPS Reference Station
`Algorithm—Design and Analysis, 8 IEEE TRANSACTIONS ON
`CONTROL SYS. TECH. 519 (2000).
`François J.N. Cosquer & Paulo Veríssimo, The Impact of Group
`Communication Paradigms on Groupware Support, in
`PROCEEDINGS OF THE FIFTH IEEE COMPUTER SOC. WORKSHOP ON
`FUTURE TRENDS OF DISTRIBUTED COMPUTING SYS. 207 (1995).
`M. Kolland et al., Information Sharing in Collaborative
`Environments, in PROCEEDINGS THIRD WORKSHOP ON ENABLING
`TECH.: INFRASTRUCTURE FOR COLLABORATIVE ENTERPRISES 140
`(1994).
`Zygmunt J. Haas & Sanjoy Paul, Limited-lifetime Shared-access in
`Mobile Systems, 3 1995 IEEE INT’L CONF. ON COMM. 1404 (1995).
`Mahadev Satyanarayanan, Accessing Information on Demand at Any
`Location: Mobile Information Access, IEEE PERS. COMM., Feb.
`1996, at 26.
`Reserved
`Reserved
`U.S. Patent No. 7,133,685
`3GPP Location Standards Release 4.1 (March 2001)
`U.S. Patent App. No. 2001/0036224 to Demello (“Demello”)
`U.S. Patent No. 6,578,072 to Watanabe (“Watanabe”)
`U.S. Patent No. 6,480,885 to Olivier (“Olivier”)
`Inter Partes Review IPR2020-01379
`U.S. Patent No. 8,099,667
`
`24
`
`
`
`21.
`
`I have also relied on my education, experience, research, training, and
`
`knowledge in the relevant art, and my understanding of any applicable legal
`
`principles described in this declaration.
`
`1.
`
`All of the opinions contained in this declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. My opinions
`
`have also been guided by my understanding of how a person of ordinary skill in the
`
`art would have understood the claims of the ’543 patent at the time of the alleged
`
`invention. For purposes of this declaration, I have been asked to assume that the
`
`date of the alleged invention is the earliest claimed priority date: April 21, 2001.
`
`2.
`
`I reserve the right to supplement and amend any of my opinions in
`
`this declaration based on documents, testimony, and other information that
`
`becomes available to me after the date of this declaration.
`
`IV. LEGAL PRINCIPLES
`22. For purposes of this declaration, I have been asked to opine only on
`
`issues regarding obviousness under 35 U.S.C. § 103. I have been
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
