Uber Technologies Inc.
`v.
`LBT IP II LLC
`
`Petitioner’s Presentation For IPR2022-00880 and IPR2022-00926
`U.S. Patent No. 7,598,855 and 8,531,289
`September 14, 2023
`
`Demonstrative Exhibit Not Evidence
`
`1
`
`Petitioner Uber Ex-1058, 0001
`
`
`v.
`LBT IP II LLC
`
`Petitioner’s Presentation For IPR2022-00880 and IPR2022-00926
`U.S. Patent No. 7,598,855 and 8,531,289
`September 14, 2023
`
`Demonstrative Exhibit Not Evidence
`
`1
`
`Petitioner Uber Ex-1058, 0001
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`2
`
`Petitioner Uber Ex-1058, 0002
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`3
`
`Petitioner Uber Ex-1058, 0003
`
`
`
`’855 patent’s location tracking method
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cover
`
`4
`
`Petitioner Uber Ex-1058, 0004
`
`
`
`’855 patent’s location tracking method
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Fig. 1B, Cl. 11 (annotated), cited in ’855 Petition (Paper 1) at 5-6
`5
`
`Petitioner Uber Ex-1058, 0005
`
`
`
`Grounds instituted for review
`
`Institution decision:
`
`Demonstrative Exhibit Not Evidence
`
`’855 DI (Paper 8) at 7
`
`6
`
`Petitioner Uber Ex-1058, 0006
`
`
`
`Hashimoto’s location tracking system
`
`Demonstrative Exhibit Not Evidence
`
`Hashimoto (Ex-1005) at Fig. 1 (annotated), cited in ’855 Petition (Paper 1) at 9-10, 24; Ex-1001 at Cl. 11
`(annotated)
`7
`
`Petitioner Uber Ex-1058, 0007
`
`
`
`Hashimoto’s location tracking method
`
`Demonstrative Exhibit Not Evidence
`
`Hashimoto (Ex-1005) at Figs. 2, 6 (annotated), cited in ’855 Petition (Paper 1) at 11, 20, 37-38
`
`8
`
`Petitioner Uber Ex-1058, 0008
`
`
`
`Hashimoto’s location tracking method
`
`Demonstrative Exhibit Not Evidence
`
`’855 Petition (Paper 1) at 37-38
`
`9
`
`Combined Fig. 2 and Fig. 6 (excerpted)
`
`Petitioner Uber Ex-1058, 0009
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`10
`
`Petitioner Uber Ex-1058, 0010
`
`
`
`Hashimoto teaches “a first signal from a monitoring station”
`
`“first signal from a
`monitoring station”
`
`Demonstrative Exhibit Not Evidence
`
`’855 Petition (Paper 1) at 24-26, 37-42
`
`11
`
`Combined Fig. 2 and Fig. 6 (excerpted)
`
`Petitioner Uber Ex-1058, 0011
`
`
`
`Gist of PO’s argument
`
`PO: The “first signal” must contain location information
`
`Response: PO’s argument relies on features not actually required by the claims
`
`Response: Hashimoto’s “call signal” is just like the first signal in the ’855 patent
`
`Demonstrative Exhibit Not Evidence
`
`12
`
`Petitioner Uber Ex-1058, 0012
`
`
`
`All agree: no terms in the ’855 patent require construction
`
`Petitioner:
`
`Patent Owner:
`
`Demonstrative Exhibit Not Evidence
`
`Petition (Paper 1) at 8; POR (Paper 12) at 5
`
`13
`
`Petitioner Uber Ex-1058, 0013
`
`
`
`Despite “agreement,” PO improperly reads requirements into the claim
`
`‘855, Claim 11:
`
`Petitioner Construction
`Plain and ordinary meaning
`
`Patent Owner New Construction
`“The claimed first signal must include information from
`which location may be determined”
`
`Demonstrative Exhibit Not Evidence
`
`Petition (Paper 1) at 8; PO Sur-reply (Paper 23) at 2
`
`14
`
`Petitioner Uber Ex-1058, 0014
`
`
`
`The claimed first signal does not recite any specific information
`
`PO chose to claim broadly—without stating that the first
`signal contains any specific information
`
`The first signal is usable as part of a location determining
`process, e.g. to initiate the location determining process
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cl. 11 (annotated); Uber Reply (Paper 16) at 2-3
`
`15
`
`Petitioner Uber Ex-1058, 0015
`
`
`
`The “first signal” must be used
`as part of the location determination process
`
`Petitioner’s plain
`meaning:
`
`Demonstrative Exhibit Not Evidence
`
`Uber Reply (Paper 16) at 2
`16
`
`Petitioner Uber Ex-1058, 0016
`
`
`
`’855 patent confirms that the first signal
`does not need to include location information
`
`No example “first signal” in the ’855 patent contains any
`location information
`
`Ex-1001 at 8:4-7
`
`The only example information discussed as contained in a
`“first signal” are “identification codes,” which are not location
`information
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at 8:4-7, Cl. 11 (annotated); PO Prelim. Resp. (Paper 7) at 6-7; Uber Reply (Paper 16) at 2-3
`
`17
`
`Petitioner Uber Ex-1058, 0017
`
`
`
`The Board correctly explained the plain meaning at institution
`
`Board addressed
`PO argument in DI:
`
`Demonstrative Exhibit Not Evidence
`
`DI (Paper 8) at 32
`18
`
`Petitioner Uber Ex-1058, 0018
`
`
`
`PO adds extra words to the claim
`
`Patent Owner Construction
`
`Demonstrative Exhibit Not Evidence
`
`POR (Paper 12) at 22; PO Sur-reply (Paper 23) at 2; Ex-1001 at Claim 1 (excerpted)
`19
`
`Petitioner Uber Ex-1058, 0019
`
`
`
`PO’s citation to Figure 7A does not support its argument
`
`Merely repeats the
`claim language
`
`Ex-1001 at 15:1-13
`
`PO’s construction would exclude the only example first signal
`described in the ’855 patent because that example does not include
`any location information
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at 15:1-13, Fig. 7A; POR (Paper 12) at 57< PO Sur-Reply (Paper 23) at 12-13, 15-17; Ex-1041, 66:7-67:11
`
`20
`
`Petitioner Uber Ex-1058, 0020
`
`
`
`Hashimoto teaches the first signal as described in the ’855 patent
`
`’855 patent:
`
`Hashimoto:
`
`Institution Decision:
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001, 8:4-7; ’855 Petition (Paper 1) at 19-25, 37-42; Uber Reply (Paper 16) at 4-6; ’855 DI (Paper 8) at 31-32
`
`21
`
`Executing the elements of “obtain current position” in S37 is at least
`“in part based on” availability of the call signal at S36
`
`Petitioner Uber Ex-1058, 0021
`
`
`
`Petitioner’s new sur-reply arguments
`around elements 11[A] and 11[B] are both too late and wrong
`
`PO Sur-Reply:
`
`11[A]
`11[B]
`
`11[Ci]
`
`PO Sur-Reply (Paper 23) at 3
`
`On sur-reply, PO shifts its argument to an alleged “broad reading”
`of “in part based on,” rather than any proposed construction of the
`“first signal”
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cl. 11; PO Sur-Reply (Paper 23) at 2-3
`
`22
`
`Petitioner Uber Ex-1058, 0022
`
`
`
`Petitioner’s new sur-reply arguments
`around elements 11[A] and 11[B] are too late
`
`POR:
`
`11[A]
`11[B]
`
`11[Ci]
`
`PO never presented any
`argument that Hashimoto
`does not disclose elements
`11[A] and 11[B], or tried to
`construe “in part based on”
`
`POR (Paper 12)
`
`Ex-1001 at Cl. 11
`
`“sur-reply that raises a new issue ... may not be considered.”
`2019 Consolidated Trial Practice Guide, page 74
`
`Demonstrative Exhibit Not Evidence
`
`23
`
`Petitioner Uber Ex-1058, 0023
`
`
`
`Petitioner’s new sur-reply arguments
`around elements 11[A] and 11[B] are wrong
`
`PO Sur-Reply:
`
`11[A]
`11[B]
`
`11[Ci]
`
`PO Sur-Reply (Paper 23) at 3
`
`Hashimoto discloses elements 11[A] and 11[B], separate and
`apart from the claimed “first signal” in Element 11[Ci]
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cl. 11; PO Sur-Reply (Paper 23) at 2-3
`
`24
`
`Petitioner Uber Ex-1058, 0024
`
`
`
`Hashimoto separately discloses element 11[A]
`
`11[A]
`11[B]
`
`11[Ci]
`
`Hashimoto discloses elements 11[A] and 11[B], separate and apart from the claimed “first signal” in Element 11[Ci]
`Ex-1001 at Cl. 11; Hashimoto (Ex-1005) at Figs. 2, 6 (annotated); ’855 Petition (Paper 1) at 19-20
`
`Demonstrative Exhibit Not Evidence
`
`25
`
`Combined Fig. 2 and Fig. 6 (excerpted)
`
`Petitioner Uber Ex-1058, 0025
`
`
`
`Hashimoto separately discloses element 11[B]
`
`11[A]
`11[B]
`
`11[Ci]
`
`Hashimoto discloses elements 11[A] and 11[B], separate and apart from the claimed “first signal” in Element 11[Ci]
`Ex-1001 at Cl. 11; Hashimoto (Ex-1005) at Fig. 1 (annotated); ’855 Petition (Paper 1) at 21-23
`
`Demonstrative Exhibit Not Evidence
`
`26
`
`Petitioner Uber Ex-1058, 0026
`
`
`
`Hashimoto separately discloses element 11[Ci]
`
`11[A]
`11[B]
`
`11[Ci]
`
`Hashimoto discloses elements 11[A] and 11[B], separate and apart from the claimed “first signal” in Element 11[Ci]
`Ex-1001 at Cl. 11; Hashimoto (Ex-1005) at Figs. 2, 6 (annotated); ’855 Petition (Paper 1) at 19-25
`
`Demonstrative Exhibit Not Evidence
`
`27
`
`Combined Fig. 2 and Fig. 6 (excerpted)
`
`Petitioner Uber Ex-1058, 0027
`
`
`
`PO sur-reply misstates the argument:
`Hashimoto determines location when only the “first signal” is available
`PO Sur-Reply:
`Reply:
`
`PO Sur-Reply (Paper 23) at 3
`
`PO Sur-Reply (Paper 23) at 4
`
`PO Sur-Reply (Paper 23) at 6
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 3-6; Ex-1043 ¶¶10, 17; Uber Reply (Paper 16) at 4-6; ’855 Petition (Paper 1) at 21-25
`
`28
`
`Petitioner Uber Ex-1058, 0028
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`29
`
`Petitioner Uber Ex-1058, 0029
`
`
`
`No Dispute: “defined selection criteria” may be “availability” of a signal
`
`’855 Petition:
`
`PO Sur-Reply:
`
`PO Sur-Reply (Paper 23) at 7
`
`’855 Petition (Paper 1) at 36
`
`Demonstrative Exhibit Not Evidence
`
`’855 Petition (Paper 1) at 36; Uber Reply (Paper 16) at 7; PO Sur-Reply (Paper 23) at 7; DI (Paper 8) at 31-32
`
`30
`
`Petitioner Uber Ex-1058, 0030
`
`
`
`Hashimoto teaches a tracking device that determines
`which of the first, second, third, and fourth signal is available
`
`Combined Fig. 2 and Fig. 6 (excerpted)
`“Availability” selection criteria evaluated by controller 22 in portable terminal 11
`’855 Petition (Paper 1) at 37-42; Uber Reply (Paper 16) at 7-16
`
`Demonstrative Exhibit Not Evidence
`
`31
`
`Petitioner Uber Ex-1058, 0031
`
`
`
`Gist of PO’s argument
`
`PO: The device must always receive all 4 signals
`
`Response: PO’s argument relies on features not actually required by the claims;
`the claims require transmitting, not necessarily receiving
`
`PO: Hashimoto’s “changeover processes” is different than the claims
`
`Response: Even under PO’s erroneous view of the claims, Hashimoto discloses
`evaluating all 4 signals
`
`Demonstrative Exhibit Not Evidence
`
`32
`
`Petitioner Uber Ex-1058, 0032
`
`
`
`The claim recites “transmitting,” not “receiving”
`
`Institution Decision:
`
`’855 Specification:
`
`DI (Paper 8) at 31
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at 15:6-9, Cl. 11 (annotated); ’855 Petition (Paper 1) at 36-42; Uber Reply (Paper 16) at 7-9
`
`33
`
`Ex-1001 at 15:6-9
`Not all four signals must be received. For example, unavailable
`signals may have been “transmitted,” but cannot be received
`
`Petitioner Uber Ex-1058, 0033
`
`
`
`Hashimoto discloses the claim even under PO’s narrow view
`
`PO Sur-Reply:
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 23
`
`34
`
`In PO’s view, all four signals must be evaluated
`
`Petitioner Uber Ex-1058, 0034
`
`
`
`Hashimoto discloses the claim even under PO’s narrow view
`
`PO’s expert testimony:
`
`Demonstrative Exhibit Not Evidence
`
`Ex-2010 ¶86, Discussed at Reply (Paper 16) at 12-13
`
`35
`
`In PO’s view, all four signals must be evaluated
`
`Petitioner Uber Ex-1058, 0035
`
`
`
`Hashimoto discloses the claim even under PO’s narrow view
`
`PO’s expert testimony:
`
`Hashimoto:
`
`Hashimoto discloses the exact scenario PO describes as practicing the claims, all four signals are evaluated
`Ex-2010 ¶86, Discussed at Reply (Paper 16) at 12-13
`
`Demonstrative Exhibit Not Evidence
`
`36
`
`Petitioner Uber Ex-1058, 0036
`
`
`
`PO “concedes” the argument:
`Hashimoto discloses the claim even under PO’s narrow view
`
`PO Sur-Reply:
`
`Despite being “highly specific,” PO concedes that Hashimoto discloses the narrow scenario PO relies on
`PO sur-reply (Paper 23) at 21
`
`Demonstrative Exhibit Not Evidence
`
`37
`
`Petitioner Uber Ex-1058, 0037
`
`
`
`PO’s attack on Hashimoto’s alleged purpose is wrong
`
`PO Sur-Reply:
`
`’855 Specification:
`
`PO Sur-Reply (Paper 23) at 23
`
`Ex-1001 at 5:57-62
`
`Hashimoto:
`
`Hashimoto uses multiple signals for the same purpose
`as the ’855 patent
`
`Hashimoto (Ex-1005) at 2:27-32
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 23; Ex-1001 at 5:57-62; Hashimoto (Ex-1005) at 2:27-32
`
`38
`
`Petitioner Uber Ex-1058, 0038
`
`
`
`S36 evaluates whether a call signal is “available”
`
`PO Sur-Reply:
`
`Hashimoto:
`
`PO Sur-Reply (Paper 23) at 8
`
`Combined Fig. 2 and Fig. 6 (excerpted)
`
`Hashimoto (Ex-1005) at 9:55-58
`
`Demonstrative Exhibit Not Evidence
`
`PO’s focus on S35 is misplaced and improperly ignores S36
`PO Response (Paper 12) at 41-43; PO Sur-Reply (Paper 23) at 7-9; Hashimoto (Ex-1005) at 9:55-58, Figs. 2, 6 (annotated)
`
`39
`
`Petitioner Uber Ex-1058, 0039
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`40
`
`Petitioner Uber Ex-1058, 0040
`
`
`
`Hashimoto teaches at least two
`analysis steps performed at the central station: S39 and S44
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1005, Fig 6; Discussed at Reply (Paper 16) at 16
`
`41
`
`Petitioner Uber Ex-1058, 0041
`
`
`
`Gist of PO’s argument
`
`PO: S39 is not done in the same timing iteration as S38
`
`Response: the claim has no positive requirement for when the analysis is done
`
`PO: Searching for map data based on a current position at S44 is not
`“analysis”
`
`Response: searching for map data based on a position extracted from a signal is
`“analysis” as claimed
`
`Demonstrative Exhibit Not Evidence
`
`42
`
`Petitioner Uber Ex-1058, 0042
`
`
`
`Claim 11 does not require “analysis” to be performed
`in the same timing iteration as the “transmitting” or “determining” steps
`
`No requirements as to:
`• when the analysis is done
`• where the data is transmitted from
`• what type of analysis is done to
`“determine a location”
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cl. 11; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 17-18
`
`43
`
`Petitioner Uber Ex-1058, 0043
`
`
`
`Hashimoto discloses transmitting location data
`to the monitoring station at both S31 and S38
`
`Hashimoto (Ex-1005) at 9:5-11
`
`Hashimoto (Ex-1005) at 9:58-62
`
`Demonstrative Exhibit Not Evidence
`
`“Every position” is logged at S32
`Hashimoto (Ex-1005) at 9:5-11, 9:58-62, Fig. 6; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 16-18
`
`44
`
`Petitioner Uber Ex-1058, 0044
`
`
`
`Hashimoto discloses transmitting location data
`to the monitoring station at both S31 and S38
`
`Mr. Andrews Declaration:
`
`Demonstrative Exhibit Not Evidence
`
`“Every position” is logged at S32
`Hashimoto (Ex-1005) at Fig. 6; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 16-18; Ex-1043, ¶20
`
`45
`
`Petitioner Uber Ex-1058, 0045
`
`
`
`Hashimoto performs the claimed “analysis” at S39
`
`S39 analyzes “every position” in S32’s log (including from S38) to determine position
`
`Demonstrative Exhibit Not Evidence
`
`Hashimoto (Ex-1005) at Fig. 6; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 16-18
`
`46
`
`Petitioner Uber Ex-1058, 0046
`
`
`
`Petitioner’s position is consistent with that taken in district court
`
`PO Sur-Reply:
`
`Uber Reply:
`
`PO Sur-Reply (Paper 23) at 18
`
`Uber Reply (Paper 16) at 17-18
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 18; Uber Reply (Paper 16) at 17-18
`
`47
`
`Petitioner Uber Ex-1058, 0047
`
`
`
`Hashimoto also performs the claimed “analysis” at S44
`
`Demonstrative Exhibit Not Evidence
`
`Hashimoto (Ex-1005) at Fig. 6; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 19-21
`
`48
`
`Petitioner Uber Ex-1058, 0048
`
`
`
`S44 analyzes the transmitted signal
`to extract the location of the tracking device
`
`Hashimoto:
`
`Hashimoto (Ex-1005) at 10:25-31
`
`Extracting a “current position” from a received signal is “analysis” as claimed
`
`Demonstrative Exhibit Not Evidence
`
`Hashimoto (Ex-1005) at 10:25-31; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 19-21
`
`49
`
`Petitioner Uber Ex-1058, 0049
`
`
`
`S44 performs at least the same level of data analysis
`as that described in the ’855 patent
`
`’855 Specification:
`
`Ex-1001 at 13:41-46
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at 13:41-46, Claim 11; ’855 Petition (Paper 1) at 44-46; Uber Reply (Paper 16) at 19-21
`
`50
`
`Petitioner Uber Ex-1058, 0050
`
`
`
`S44 analyzes the transmitted signal
`to extract the location of the tracking device
`Mr. Andrews Testimony:
`
`Demonstrative Exhibit Not Evidence
`
`Reply (Paper 16), at 20-21, citing Ex-1043, ¶22
`
`51
`
`Petitioner Uber Ex-1058, 0051
`
`
`
`S44 Argument is not new
`
`PO Sur-Reply:
`
`’855 Petition:
`
`PO Sur-Reply (Paper 23) at 15
`
`’855 Petition (Paper 1) at 45 (citing Hashimoto (Ex-1005) at 10:25-31)
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 15; ’855 Petition (Paper 1) at 45
`
`52
`
`Petitioner Uber Ex-1058, 0052
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`53
`
`Petitioner Uber Ex-1058, 0053
`
`
`
`Hockley improves location determination ability of Hashimoto
`
`’855 Petition:
`
`’855 Petition (Paper 1) at 16
`
`Demonstrative Exhibit Not Evidence
`
`’855 Petition (Paper 1) at 34-35
`
`’855 Petition (Paper 1) at 16-17, 34-35; Uber Reply (Paper 16) at 21-24
`
`54
`
`Petitioner Uber Ex-1058, 0054
`
`
`
`A POSITA would have been able to combine Hashimoto and Hockley
`
`Demonstrative Exhibit Not Evidence
`
`’855 Petition (Paper 1) at 16-17, 34-35; Uber Reply (Paper 16) at 21-24; Andrews’s Reply Declaration (Ex-1043) ¶¶23-27
`
`55
`
`Mr. Andrews’s Reply Declaration (Ex-1043) ¶27
`
`Petitioner Uber Ex-1058, 0055
`
`
`
`PO’s attack on POSITA’s ability to
`combine Hashimoto and Hockley is wrong
`
`PO Sur-Reply:
`
`Uber Reply:
`
`PO Sur-Reply (Paper 23) at 24
`
`Uber Reply (Paper 16) at 24
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 24; Uber Reply (Paper 16) at 21-24; Andrews’s Reply Declaration (Ex-1043) ¶¶23-27
`
`56
`
`Petitioner Uber Ex-1058, 0056
`
`
`
`PO’s attack on a POSITA’s ability to
`implement device-to-device communication in Hashimoto is wrong
`
`PO Sur-Reply:
`
`Hashimoto:
`
`PO Sur-Reply (Paper 23) at 24
`
`PO Sur-Reply (Paper 23) at 25
`
`Hashimoto (Ex-1005) at Fig. 1 (cited in ’855 Petition (Paper 1) at 27, 31)
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 24-25; Hashimoto (Ex-1005) at Fig. 1; ’855 Petition (Paper 1) at 27, 31
`
`57
`
`Petitioner Uber Ex-1058, 0057
`
`
`
`Luccketti does not teach away from combining with Hashimoto
`
`Uber Reply:
`
`Uber Reply (Paper 16) at 25
`
`Demonstrative Exhibit Not Evidence
`
`Uber Reply (Paper 16) at 25
`
`58
`
`Petitioner Uber Ex-1058, 0058
`
`
`
`PO’s attack on the size of Hashimoto’s tracking device is wrong
`
`PO Sur-Reply:
`
`Implementing Luccketti’s user identification in
`Hashimoto’s tracking device does not change the size of
`the tracking devices disclosed in Hashimoto or Luccketti.
`
`Also, Hashimoto’s tracking device is small enough for a
`child to carry:
`
`PO Sur-Reply (Paper 23) at 27
`
`Hashimoto (Ex-1005) at 4: 31-35, 8:51-54, 10:36-42, 15:1-7
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 23) at 27; Hashimoto (Ex-1005) at 4: 31-35, 8:51-54, 10:36-42, 15:1-7; ; Reply (Paper 16), at 24-26
`
`59
`
`Petitioner Uber Ex-1058, 0059
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`60
`
`Petitioner Uber Ex-1058, 0060
`
`
`
`’289 patent’s location tracking system and device
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cover
`
`61
`
`Petitioner Uber Ex-1058, 0061
`
`
`
`’289 patent’s location tracking system and device
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Fig. 2A, Cl. 8 (annotated), cited in ’289 Petition (Paper 1) at 5-6
`62
`
`Petitioner Uber Ex-1058, 0062
`
`
`
`Grounds instituted for review
`
`Institution decision:
`
`Demonstrative Exhibit Not Evidence
`
`’289 DI (Paper 9) at 6
`
`63
`
`Petitioner Uber Ex-1058, 0063
`
`
`
`Robert’s location tracking system and device
`
`Demonstrative Exhibit Not Evidence
`
`Robert (Ex-1012) at Fig. 1, cited in ’289 Petition (Paper 1) at 10-11
`
`64
`
`Petitioner Uber Ex-1058, 0064
`
`
`
`Girerd’s location tracking system and device
`
`Demonstrative Exhibit Not Evidence
`
`Girerd (Ex-1011) at Fig. 1A (annotated), cited in ’289 Petition (Paper 1) at 13-14
`
`65
`
`Petitioner Uber Ex-1058, 0065
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`66
`
`Petitioner Uber Ex-1058, 0066
`
`
`
`Robert discloses a “first identification code”
`contained in “communication signal 28”
`
`‘289 Claim 8:
`
`Robert Fig 3:
`
`Robert Spec:
`
`Demonstrative Exhibit Not Evidence
`
`Robert (Ex-1012) at 7:41-46, Fig. 1; Uber Petition (Paper 1) at 18-21; Reply (Paper 17), 10-12
`
`67
`
`Petitioner Uber Ex-1058, 0067
`
`
`
`Gist of PO’s argument
`
`PO: The “first identification code” incudes a negative limitation, so it
`cannot identify the second tracking device
`
`Response: There is no basis for importing a negative limitation into the claims
`
`Response: Robert discloses a “first identification code” as described by the
`claims and specification
`
`Demonstrative Exhibit Not Evidence
`
`68
`
`Petitioner Uber Ex-1058, 0068
`
`
`
`PO expressly asks for a negative limitation in “first identification code”
`
`Petitioner’s Construction
`Plain and ordinary meaning
`
`PO’s Construction
`“PO does seek a determination that the ‘first identification code’
`does not identify a second tracking device.”
`
`Demonstrative Exhibit Not Evidence
`
`’289 Petition (Paper 1) at 9; Uber Reply (Paper 17) at 4-9; PO Response (Paper 13) at 10-14; PO Sur-Reply (Paper 24) at 6-13
`
`69
`
`Petitioner Uber Ex-1058, 0069
`
`
`
`The claim terms have their plain and ordinary meanings
`
`Claim limitations:
`
`Petitioner’s claim
`construction position:
`
`Demonstrative Exhibit Not Evidence
`
`***
`
`***
`
`Uber Reply (Paper 17) at 4
`
`’289 Petition (Paper 1) at 9; Uber Reply (Paper 17) at 4-9
`
`70
`
`Petitioner Uber Ex-1058, 0070
`
`
`
`“First” and “second” are merely ordinal terms,
`which have well-understood meanings in claim drafting
`
`Claim limitations:
`
`***
`
`***
`
`Institution Decision:
`
`Uber Reply:
`
`DI (Paper 9) at 9-10, n.3
`
`Uber Reply (Paper 17) at 4
`
`Demonstrative Exhibit Not Evidence
`
`’289 Petition (Paper 1) at 9; Uber Reply (Paper 17) at 4-9; DI (Paper 9) at 9-10, n.3
`
`71
`
`Petitioner Uber Ex-1058, 0071
`
`
`
`The “first identification code” may be any of the exemplary types of
`identification codes described in the ’289 Specification
`’289 Specification:
`
`Uber Reply:
`
`Ex-1001 at 8:27-32
`
`Ex-1001 at 13:61-64
`
`Uber Reply (Paper 17) at 5
`
`Ex-1001 at 10:55-59
`The ’289 specification does not anywhere limit the first identification code to only the first tracking device or its user
`Uber Reply (Paper 17) at 5; Ex-1001 at 8:27-32, 10:55-59, 13:61-64
`
`Demonstrative Exhibit Not Evidence
`
`72
`
`Petitioner Uber Ex-1058, 0072
`
`
`
`The “first identification code” may identify any of the
`“pooled” devices in the ’289 Specification
`’289 Specification:
`
`’289 Figure 4:
`
`Mr. Andrews reply declaration:
`
`Ex-1001 at 7:41-49
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1043, ¶10, cited at Reply (Paper 17), at 5
`
`73
`
`Petitioner Uber Ex-1058, 0073
`
`
`
`PO adds a negative limitation to the claim
`
`Patent Owner Construction
`
`Demonstrative Exhibit Not Evidence
`
`POR (Paper 13) at 11-14; PO Sur-reply (Paper 6-13) at 2; Ex-1001 at Claim 8 (excerpted)
`74
`
`Petitioner Uber Ex-1058, 0074
`
`
`
`There is no express written description support
`for the negative limitation
`
`Uber Reply:
`
`PO Sur-Reply:
`
`Uber Reply (Paper 17) at 5
`
`This is the point: The specification is silent on which (if any) tracking device the identification codes must or must not refer to
`
`Demonstrative Exhibit Not Evidence
`
`Uber Reply (Paper 17) at 5-7; PO Sur-Reply (Paper 24) at 11
`
`75
`
`Petitioner Uber Ex-1058, 0075
`
`
`
`PO mischaracterizes the specification
`
`’289 Specification:
`
`PO Sur-Reply:
`
`Ex-1001 at 8:27-32; Fig 2A
`In this example, the “user identification code” does not identify the tracked device (402) or its user,
`it identifies user 504 doing the tracking
`Petition (Paper 1) at 6-7; Uber Reply (Paper 17) at 5-7; PO Sur-Reply (Paper 24) at 11
`
`Demonstrative Exhibit Not Evidence
`
`76
`
`Petitioner Uber Ex-1058, 0076
`
`
`
`Robert discloses a “first identification code” as claimed
`
`’289 Claim 8:
`
`Robert Fig. 3:
`
`Robert Spec:
`
`Demonstrative Exhibit Not Evidence
`
`Robert (Ex-1012) at 7:41-46, Fig. 1; Uber Petition (Paper 1) at 18-21; Reply (Paper 17), 10-12
`77
`
`Petitioner Uber Ex-1058, 0077
`
`
`
`Robert discloses a “first identification code” as claimed
`
`’289 Claim 8:
`
`Robert Fig. 4:
`
`Robert Spec:
`
`Demonstrative Exhibit Not Evidence
`
`Robert (Ex-1012) at 7:41-46, Fig. 4; Uber Petition (Paper 1) at 18, 26
`78
`
`Petitioner Uber Ex-1058, 0078
`
`
`
`PO’s attack on alleged security measures is both
`a red hearing and wrong
`
`Robert Fig 1:
`
`PO Sur-Reply:
`
`PO Sur-Reply (Paper 24) at 7
`
`The “need” is to determine if stations 12 and 14
`are “designated to participate in the tracking
`and positioning effort”
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 24) at 7; Robert (Ex-1012) at Fig. 1; Uber Petition (Paper 1) at 18, 26; Reply (Paper 17), at 10
`
`79
`
`Petitioner Uber Ex-1058, 0079
`
`
`
`The claims do not have an “origination” requirement,
`only a “transmission” requirement
`
`Uber Reply:
`
`Uber Reply (Paper 17) at 11
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1001 at Cl. 8; Uber Reply (Paper 17) at 11
`
`80
`
`Petitioner Uber Ex-1058, 0080
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
`
`Combinability of prior art references
`Girerd (Ground 3)
`
`Demonstrative Exhibit Not Evidence
`
`81
`
`Petitioner Uber Ex-1058, 0081
`
`
`
`“In part responsive to” has its plain meaning
`
`Petitioner’s Construction
`Plain and ordinary meaning,
`e.g. at least a partial causal
`relationship
`
`PO’s implied construction and expert opinion
`An implied “recentness” requirement
`
`“My opinion is that ‘in part responsive to’ conveys a
`sense of a recent previous step.” - Ex-1042, 281:14-283:3
`
`Demonstrative Exhibit Not Evidence
`
`Uber Reply (Paper 17) at 13-14; PO Response (Paper 13) at 11-14; PO Sur-Reply (Paper 24) at 13-17; Ex-1042, 281:14-283:3
`
`82
`
`Petitioner Uber Ex-1058, 0082
`
`
`
`“In part responsive to” imposes no “recentness” requirement
`
`Uber Reply:
`
`Uber Reply (Paper 17) at 13
`
`Uber Reply (Paper 17) at 13
`
`Demonstrative Exhibit Not Evidence
`
`’289 Petition (Paper 1) at 29; Uber Reply (Paper 17) at 12-13
`
`83
`
`Petitioner Uber Ex-1058, 0083
`
`
`
`Location is determined in Robert’s Figure 4 step 8
`“in part responsive to” the earlier steps 3 and 4
`
`‘289 Claim 8:
`
`Robert Fig. 4:
`
`Demonstrative Exhibit Not Evidence
`
`Ex-1012, Fig. 4; Uber Petition (Paper 1) at 25-32
`
`84
`
`Petitioner Uber Ex-1058, 0084
`
`
`
`The ’289’s figures depict “in part responsive to”
`the same way Robert does
`’289 Fig. 6B
`(excerpt):
`
`‘289 Claim 8:
`
`Demonstrative Exhibit Not Evidence
`
`EX-1001, Fig. 6B; Uber Petition (Paper 1) at 25-32
`
`85
`
`Petitioner Uber Ex-1058, 0085
`
`
`
`Petitioner’s position is the same as it has always been
`
`PO Sur-Reply:
`
`’289 Petition:
`
`PO Sur-Reply (Paper 24) at 13
`
`’289 Petition (Paper 1) at 29
`
`Demonstrative Exhibit Not Evidence
`
`PO Sur-Reply (Paper 24) at 13; ’289 Petition (Paper 1) at 29
`
`86
`
`Petitioner Uber Ex-1058, 0086
`
`
`
`Overview
`
`’855 Patent
`Alleged Invention
`The prior art teaches
`a first signal from a monitoring station
`
`
` determining which of the first signal, the second signal, the third signal, and the fourth signal match defined selection criteria stored in the tracking device
`
`transmitting the location data to the monitoring station for analysis to determine a location of the tracking device
`
`Combination of prior art references
`’289 Patent
`Alleged Invention
`Grounds 1 and 2 - The Robert prior art teaches
`first identification code
`
`
`
`
`in part responsive to verification of the first identification code
`
`a monitoring station connected to the user terminal
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