`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`APPLE, INC.
`Petitioner
`v.
`
`MULLEN INDUSTRIES LLC
`Patent Owner
`
`
`
`
`
`Inter Partes Review No.
`IPR2022-_____
`Patent No. US 11,122,418
`Filing Date: July 12, 2006
`Issue Date: September 14, 2021
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
`
`TABLE OF CONTENTS
`
` 
`
` 
`
` 
`
`Introduction ...................................................................................................... 1 
`IPR Requirements ............................................................................................ 1 
`A. 
`Standing (37 C.F.R. § 42.104(a)) .......................................................... 1 
`B. 
`Challenge Under 37 C.F.R. § 42.104(b) ............................................... 2 
`  Background ...................................................................................................... 2 
`A. 
`Priority Date and Family ....................................................................... 2 
`B. 
`Summary of the ’418 Patent .................................................................. 3 
`C. 
`Relevant Prosecution History of the ’418 Patent .................................. 5 
`  Expert Testimony, Level of Skill in the Art, and Claim Construction ............ 5 
`A.  Declaration Evidence ............................................................................ 5 
`B. 
`Level of Ordinary Skill in the Art ......................................................... 6 
`C. 
`Claim Construction ............................................................................... 6 
`The Prior Art .................................................................................................... 7 
`A. 
`Sheha ..................................................................................................... 7 
`B. 
`Enzmann ................................................................................................ 8 
`C. 
`Tanaka ................................................................................................... 9 
`D. 
`Ryden ................................................................................................... 11 
`E. 
`Ganesh ................................................................................................. 11 
`  Motivation to Combine .................................................................................. 14 
`A.  Motivation to Combine Sheha, Tanaka, Ryden, and Ganesh ............. 14 
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
`
`
`B. 
`
`B. 
`
`C. 
`
`D. 
`
`E. 
`
`F. 
`
`B.  Motivation to Combine Enzmann, Tanaka, Ryden, Ganesh, and
`Sheha ................................................................................................... 17 
`  The ’418 patent is invalid in view of the prior art. ........................................ 20 
`A.  Ground 1: Sheha alone or in combination with Tanaka,
`Enzmann, Ryden, and/or Ganesh renders obvious claims 1-30
`under 35 U.S.C. § 103. ........................................................................ 20 
`Ground 2: Enzmann alone or in combination with Tanaka,
`Ryden, Ganesh, and/or Sheha renders obvious claims 1-30
`under 35 U.S.C. § 103 ......................................................................... 39 
`  Secondary Considerations Cannot Overcome the Strong Evidence of
`Obviousness ................................................................................................... 60 
`  This Petition Should Not Be Discretionarily Denied .................................... 61 
`A. 
`Factor 1: Whether the Court Granted a Stay or Evidence Exists
`that One May be Granted if a Proceeding is Instituted. ...................... 61 
`Factor 2: Proximity of the Court’s Trial Date to the Board’s
`Projected Statutory Deadline for a Final Written ................................ 61 
`Factor 3: Investment in the Parallel Proceeding by the Court
`and the Parties. .................................................................................... 64 
`Factor 4: Overlap Between Issues Raised in the Petition and in
`the Parallel Proceeding. ....................................................................... 64 
`Factor 5: Whether the Petitioner and the Defendant in the
`Parallel Proceeding are the Same Party. ............................................. 65 
`Factor 6: Other Circumstances that Impact the Board’s Exercise
`of Discretion, Including the Merits. .................................................... 65 
`Conclusion ..................................................................................................... 66 
`  Mandatory Notices (37 C.F.R. § 42.8(b)) ..................................................... 66 
`A. 
`Real Party-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................... 66 
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 66 
`C.  Designation of Lead and Backup Counsel (37 C.F.R. §
`42.8(b)(3)) and Service Information (37 C.F.R. § 42.8(b)(4)). .......... 66 
`Payment of Fees (37 C.F.R. § 42.103) ................................................ 67 
`Power of Attorney (37 C.F.R. § 42.10) ............................................... 67 
`
`D. 
`E. 
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`EXHIBIT LIST
`
`Exhibit No. Description
`1001-1005
`[ Reserved ]
`1006
`U.S. Patent No. 11,122,418 (“the ’418 Patent”)
`1007-1015
`[ Reserved ]
`1016
`Prosecution History of U.S. Patent No. 11,122,418
`1017-1019
`[ Reserved ]
`1020
`Curriculum Vitae of David Williams
`1021
`Declaration of David Williams
`1021-6
`Appendix 6 to the Declaration of David Williams
`1022-1029
`[ Reserved ]
`Complaint from in Mullen Industries LLC v. Apple Inc., Case
`1030
`No. 6:22-cv-00145 (WDTX) (the “Parallel Litigation”)
`1031
`Infringement Contentions from the Parallel Litigation
`1032
`Scheduling Order in the Parallel Litigation
`District Court Trial Dates Tend to Slip After
`1033
`PTAB Discretionary Denials
`1034
`Fintiv Order Setting Jury Selection and Trial
`1035
`Tillis Ltr to USPTO re Fintiv Modification
`1036
`Vidal Memo re Interim Procedure for Discretionary Denials
`Federal Court Management Statistics as of June 30, 2022
`1037
`(referenced in Vidal Memo fn. 4)
`1038-1039
`[ Reserved ]
`1040
`U.S. Patent No. 7,130,630 to Enzmann et al (“Enzmann”)
`1041
`U.S. Patent No. 7,333,820 to Sheha et al (“Sheha”)
`U.S. Provisional Patent Application 60/305,975 to Sheha et al
`1042
`(“Sheha Provisional”)
`1043-1048
`[ Reserved ]
`1049
`U.S. Patent No. 7,013,146 to Ganesh (“Ganesh”)
`1050-1056
`[ Reserved ]
`1057
`U.S. Patent No. 7,233,795 to Ryden (“Ryden”)
`U.S. Provisional Patent Application 60/277,117 to Ryden
`1058
`(“Ryden Provisional”)
`1059
`[ Reserved ]
`1060
`U.S. Patent No. 6,819,919 to Tanaka (“Tanaka”)
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
`
`
`Introduction
`Apple Inc. (“Petitioner”) hereby petitions for inter partes review (“IPR”) of
`
`claims 1-30 of U.S. Patent No. 11,122,418 (“the ’418 Patent”), assigned to Mullen
`
`Industries LLC (“Patent Owner”). A copy of the ’418 Patent and its prosecution
`
`history are attached as Exhibits 1006 and 1016.
`
`The ’418 Patent describes and claims enabling one wireless device to request
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`and receive the location of another wireless device, if the requesting device has
`
`permission to obtain the target device’s location, and to display a corresponding
`
`map. However, location-sharing between wireless devices and displaying
`
`corresponding maps was well-known before the earliest priority date of the ’418
`
`Patent. Thus, the ’418 Patent claims do not recite any inventive concepts and are
`
`invalid in view of the prior art discussed below.
`
`Accordingly, the Board should cancel claims 1-30 of the ’418 Patent.
`
`
`
`IPR Requirements
`A.
`Standing (37 C.F.R. § 42.104(a))
`Petitioner certifies the ’418 Patent is available for IPR and Petitioner is not
`
`barred or estopped from requesting IPR. The ’418 Patent issued on September 14,
`
`2021, and this Petition is filed within one year of service of the Complaint against
`
`Petitioner alleging infringement of the ’418 Patent and is not barred under 35
`
`U.S.C. §315(b). Ex. 1030, Complaint filed February 9, 2022.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
`B. Challenge Under 37 C.F.R. § 42.104(b)
`Pursuant to 35 U.S.C. § 311 and 37 C.F.R. § 42.104(b), Petitioner requests
`
`cancellation of claims 1-30 under 35 U.S.C. § 103 based on the following prior art
`
`and grounds:
`
` US 7,333,820 to Sheha (“Sheha”)
`
` US 7,130,630 to Enzmann (“Enzmann”)
`
` US 7,013,148 to Ganesh (“Ganesh”)
`
` US 7,233,795 to Ryden (“Ryden”)
`
` US 6,819,919 to Tanaka (“Tanaka”)
`
`References
`Ground 35 U.S.C. Claims
`Sheha in view of Tanaka, Ryden, and Ganesh
`1
`§ 103
`1-30
`1-30 Enzmann in view of Tanaka, Ryden, Ganesh,
`2
`§ 103
`and Sheha
`
`The record establishes a reasonable likelihood of prevailing as to each
`
`ground of invalidity with respect to the Challenged Claims.
`
` Background
`A.
`Priority Date and Family
`The ’418 Patent was filed on July 12, 2006 as a continuation of US 9,635,540,
`
`filed March 25, 2003, claiming priority to US Provisional Application 60/367,967,
`
`filed March 25, 2002. Exs. 1006. Thus, the earliest effective filing date of the ’418
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`Patent is March 25, 2002. The ’418 patent is therefore subject to pre-AIA §§ 102
`
`and 103.
`
`B.
`Summary of the ’418 Patent
`The ’418 Patent describes determining and sharing a wireless device’s
`
`location, e.g., using Global Positioning System (“GPS”). Ex. 1006, 1:18-28. It
`
`alleges that device location is rarely used, and so it describes allowing one
`
`cellphone to obtain location information from another. Ex. 1006, 1:31-33, 1:38-43.
`
`To allow location sharing, the ’418 Patent describes that cellphones can
`
`share their locations with a remote system, allowing other users to obtain the
`
`locations. Ex. 1006, 5:11-30. However, the ’418 Patent allows a user to restrict
`
`access to their location indefinitely or for a period of time to authorized users. Id at
`
`Abstract, 1:55-65.
`
`Figure 2 depicts a method to obtain another user’s location, including
`
`sending a request for a location, determining whether the user is authorized, and, if
`
`so, providing the location to the requestor.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`After obtaining another user’s location, various navigational information
`
`may be provided, such as a map showing the location or directional information,
`
`alerts indicating another user is within a range of the requestor or that the
`
`requestor’s dating profile matches that of another nearby user. Ex. 1006, 2:3-8,
`
`5:64-6:19, 7:31-8:5. Determining a location of the cellphone while it is off or based
`
`on location history is also mentioned. Ex. 1006, 11:3-14.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
`
`
`C. Relevant Prosecution History of the ’418 Patent
`U.S. Patent Application No. 11/485,161, which issued as the ’418 Patent,
`
`was rejected eighteen times before allowance. Late in prosecution, Applicant
`
`amended its method claims to be system claims and introduced numerous
`
`limitations reciting various devices or information, e.g., locations and permissions,
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`“operable of” of some functionality. Ex. 1016, 65-72.
`
`However, despite these amendments, Applicant was unable to obtain
`
`allowance until amending claim 3 (now claim 1) to recite the “first wireless device
`
`is operable of providing a first map provided with respect to said location.” Ex.
`
`1016, 34. The other independent claims were similarly amended. The Examiner
`
`provided no reasons for allowance but had maintained essentially the same
`
`rejections based on the Barclay reference (US 2003/0119522) for eleven years and
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`fourteen rejections until the amendment quoted above.
`
` Expert Testimony, Level of Skill in the Art, and Claim Construction
`A. Declaration Evidence
`This petition is supported by the declaration of expert David H. Williams,
`
`whose qualifications and experience are set forth in his declaration and curriculum
`
`vitae. Exs. 1020-1021.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
`B.
`Level of Ordinary Skill in the Art
`The ’418 Patent describes and claims systems for determining locations of
`
`wireless devices and providing those locations to requesting devices based on
`
`corresponding permissions. A person of ordinary skill in the art (“POSITA”) of the
`
`’418 Patent would have had at least a Bachelor of Science degree in computer
`
`science, computer engineering, electrical engineering or a similar degree with one
`
`or two years of experience with wireless networks and devices, such as cellphones
`
`and personal digital assistants (“PDAs”) as well as wireless positioning
`
`technologies such as GPS or triangulation. Ex. 1021, ⁋⁋ 42-45. Additional practical
`
`experience would substitute for lack of a formal degree. Id.
`
`C. Claim Construction
`The claim terms of the ’418 Patent are construed under the Phillips standard,
`
`considering the plain meaning of the claim terms to a POSITA, in light of the
`
`language of the claims, the specification, and the file history.1 None of the claim
`
`terms of the ’418 Patent need be construed.
`
`
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`1 Petitioner is not conceding that each claim satisfies all statutory requirements,
`
`including §§101 and 112, nor is Petitioner waiving any arguments that can only be
`
`raised in district court.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
` The Prior Art
`None of the prior art relied on within this Petition appears on the face of the
`
`’418 patent. Ex. 1006, pp. 1-3.
`
`A.
`Sheha
`Sheha was filed on July 11, 2002 and claims priority to the Sheha
`
`Provisional filed on July 17, 2001. Ex. 1041, 1042. Thus, Sheha is prior art to the
`
`’418 patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Sheha describes enabling functionality like mapping, routing, and direction
`
`finding by allowing mobile devices, such as cellphones or PDAs, to share their
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`locations with other authorized mobile devices. Ex. 1041, 2:60-64, 10:66-9. The
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`mobile devices may determine their own positions, e.g., using GPS, and report
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`them to an online database and application server (“ODAS”), which stores them.
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`Ex. 1041, 10:5-16, 10:66-11:54. The mobile devices may also provide groups of
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`authorized users to the ODAS identifying who may obtain their respective location
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`information. Ex. 1041, 11:51-12:1.
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`A mobile device may request the location of a target mobile device and, if
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`authorized, receive the position from the ODAS, including displaying a map
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`illustrating the location of one or both mobile devices and navigational
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`information. Ex. 1041, 9:23-39. Figure 3 illustrates an example system enabling
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`such functionality between mobile devices via a wireless network and an ODAS.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
`
`
`
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`B.
`Enzmann
`Enzmann was filed on December 19, 2000 and issued as U.S. Patent No.
`
`7,130,630 on October 31, 2006. Ex. 1040. Thus, Enzmann is prior art to the ’418
`
`patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Enzmann describes tracking wireless devices within a wireless network. Ex.
`
`1040, Abstract. The Enzmann system can either determine or request the location
`
`of wireless devices, which can be provided to authorized requesting devices. Ex.
`
`1040, 7:63-8:36. A wireless device may request the location of another wireless
`
`device from a location service, which provides the location to the requesting device
`
`if it is authorized. Ex. 1040, 2:16-41, 3:1-16. If the requesting device is not
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`authorized, the location service can request authorization from the target device,
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`which may be granted or denied. Ex. 1040, 2:42-51, 3:24-27.
`
`Figure 3 depicts an example system to enable such functionality.
`
`
`
`C. Tanaka
`Tanaka was filed on October 18, 2000 and issued as U.S. Patent No.
`
`6,819,919 on November 16, 2004. Ex. 1060. Thus, Tanaka is prior art to the ’418
`
`patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Tanaka describes allowing wireless users to identify other nearby wireless
`
`users and provide corresponding alerts. Ex. 1060, Abstract, claim 20. Tanaka’s
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`system allows users to create profiles with their wireless devices and upload the
`
`profiles to a central server. Ex. 1060, 5:56-6:3. Users may then request searches
`
`including a search radius and one or more profile items of interest. Ex. 1060, 6:10-
`
`7:1. The Tanaka system responds to the requests with other users’ profiles
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`matching the search criteria. Ex. 1060, 6:60-7:5. Further, Tanaka’s system
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`monitors for other users coming into range of the user and alerting them when a
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`new match occurs. Ex. 1060, claim 20.
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`Ex. 1060, Fig. 4.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`
`D. Ryden
`Ryden was filed on March 19, 2002 and claims priority to the Ryden
`
`Provisional filed on March 19, 2001. Exs. 1057, 1058. Thus, Ryden is prior art to
`
`the ’418 patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Ryden describes obtaining locations of mobile devices to enable them to
`
`identify and communicate with other nearby devices. Ex. 1057, 3:61-4:39. Each
`
`device may have a conventional telephone number, but each may be contacted
`
`using a separate geographical number (“G#”) based on the target device’s location.
`
`Ex. 1057, 4:40-5:24. Ryden contemplates enabling communications with vehicles,
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`such as aircraft, ships, or cars, that can be located, but whose identity is unknown.
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`Ex. 1057, 13:50-14:40. Further, Ryden describes determining certain movement-
`
`based information about wireless devices, such as direction or speed, which can be
`
`used to prevent collisions or provide routing or driving directions. Ex. 1057, 18:41-
`
`50, 19:34-47, 19:49-20:14.
`
`E. Ganesh
`Ganesh was filed on December 21, 2001 and issued as U.S. Patent No.
`
`7,013,148 on March 14, 2006. Ex. 1049. Thus, Ganesh is prior art to the ’418
`
`patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Ganesh describes providing the location of a mobile device to an authorized
`
`requesting party. Ex. 1049, Abstract, 1:14-18. Ganesh explains that automatic
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`location techniques had been developed for emergency uses under the Federal
`
`Communications Commissions’ E-911 requirements, and that both network and
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`handset-based technologies were being developed to implement this requirement.
`
`Ex. 1049, 1:56-2:12. Ganesh describes applying these techniques for non-
`
`emergency uses, while preventing unauthorized access to location information. Ex.
`
`1049, 2:45-60. In Ganesh’s system, the approximate location of a mobile device
`
`can be obtained using a call history database and call records to identify cell sites
`
`and sectors in communication with the device during the call. Ex. 1049, 4:29-35,
`
`7:3-20. Further, a more accurate location can be obtained using the automatic
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`location techniques for E-911, such as built-in GPS receivers. Ex. 1049, 7:32-65.
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`For secure location sharing, Ganesh requires requesting parties to submit
`
`log-in information and identify the target device, after which the system
`
`determines if the requestor is authorized. Ex. 1049, 5:1-6:32. If the requestor is not
`
`authorized, or is otherwise denied access, they receive access denial page 86
`
`shown below, which includes reasons for the denial, and a query to request
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`location information at a later time. Ex. 1049, 6:33-54, Fig. 6.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`If a requestor is authorized to receive location information, Ganesh discloses
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`displaying the target device’s location on a map in Figure 7, marked by star 106.
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`Ex. 1049, 8:6-14.
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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` Motivation to Combine
`A. Motivation to Combine Sheha, Tanaka, Ryden, and Ganesh
`As discussed above, the ’418 Patent relates to determining locations of
`
`wireless devices, sharing those locations with authorized users, and displaying
`
`corresponding mapping information. Section III.B. Each of Sheha, Tanaka, Ryden
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`and Ganesh also relates to these same functionalities. Ex. 1021, ⁋⁋ 153-156. Sheha
`
`describes enabling a mobile device to request the location of another mobile device
`
`and obtain and display driving directions to the other mobile device. Section V.A.
`
`Similarly, Tanaka describes a system allowing a user to search for other nearby
`
`users matching certain location-based profile filters. Section V.C. Finally, Ryden
`
`describes a system enabling users to identify nearby mobile devices, their locations
`
`and destinations, and obtain directions to the other devices. Section V.D. Thus,
`
`each of these references is within the same field of endeavor as the ’418 Patent. Ex.
`
`1021, ⁋⁋ 153-156.
`
`A POSITA would have been motivated to combine the teachings of Sheha
`
`with those of Tanaka, Ryden and Ganesh, either individually or collectively, to
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`include additional functionalities that were commonly used to identify other users
`
`to locate as well as to determine locations, maps, or provide directions. Ex. 1021,
`
`⁋⁋ 153-156, 197-200, 203-207.
`
`With respect to Tanaka, there are many reasons why one would want to
`
`determine another person’s location, including to obtain directions or determine if
`
`a friend is nearby for a social visit. Ex. 1021, ⁋⁋ 204-205. Further, using location
`
`information to learn about people nearby that may be a good business, social, or
`
`romantic match would have been of interest for a user of a location system like
`
`Sheha’s. Id.; Ex. 1060, 1:31-62. A POSITA would have been motivated to
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
`
`incorporate Tanaka’s geographic search and alert functionality to enhance Sheha’s
`
`location services to enable a user to find and meet new people that may be of
`
`interest. Ex. 1021, ⁋⁋ 203-207. Each of Sheha and Tanaka discuss that their
`
`systems can locate other users based on their mobile devices, thus a POSITA
`
`would expect to successfully incorporate such functionality. Ex. 1021, ⁋ 206.
`
`Further, a POSITA would have been motivated to incorporate Ryden’s speed
`
`and direction determination capabilities into Sheha’s system to provide such
`
`standard navigation information using Sheha’s mapping functionality. Ex. 1021, ⁋⁋
`
`197-200. And with respect to Ryden, a person meeting another person who is using
`
`a mobile device and may be moving would want to know about the other person’s
`
`movement, such as where they are heading and how fast. Ex. 1021, ⁋⁋ 197-198,
`
`Ex. 1041, 11:10-54. Such functionality would help them more efficiently meet. Ex.
`
`1021, ⁋ 198. Further, because Ryden operates in a similar environment as Sheha
`
`using similar location information, a POSITA would have an expectation of
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`success to integrate Ryden’s functionality. Ex. 1021, ⁋⁋ 199-200.
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`With respect to Ganesh, a POSITA would have found it desirable to enhance
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`Sheha’s system to provide more comprehensive location capabilities, including
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`Ganesh’s teachings of techniques for providing locations based on call history. Ex.
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`1021, ⁋⁋ 173-179. While an exact position may be desirable, a most-recent position
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`based on a prior call can still provide useful location information for a user, such as
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`U.S. Patent No. 11,122,418
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`for a search-and-rescue team or for a parent locating a child, which was already a
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`focus of E-911 systems. Ex. 1021, ⁋ 154, Ex. 1049, 1:36-2:41. A POSITA would
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`have had a reasonable expectation of success in incorporating this functionality
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`from Ganesh because extending Sheha’s system to store past call history with
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`corresponding location information, as in Ganesh, would have involved only a
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`minor upgrade to Sheha’s ODAS. Ex. 1021, ⁋ 177.
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`For at least these reasons, a POSITA would have been motivated to combine
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`Sheha with Tanaka, Ryden, and/or Ganesh.
`
`B. Motivation to Combine Enzmann, Tanaka, Ryden, Ganesh, and
`Sheha
`Like Sheha and the ’418 Patent, Enzmann also relates to determining
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`locations of wireless devices and sharing those locations with other authorized
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`users. Section V.B. And as discussed above, Tanaka, Ryden, and Ganesh are
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`directed to similar technology as the ’418 Patent. Ex. 1021, ⁋ 155; see also Section
`
`VI.A. Many of the motivations to combine discussed above with respect to Sheha
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`and Tanaka, Ryden, and Ganesh apply equally to Enzmann.
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`As with Sheha, Enzmann allows a user to request the location of another
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`wireless device. In addition to being the same field of endeavor, a POSITA would
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`have been motivated to combine the teachings of Enzmann with those of Tanaka,
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`Ryden, Ganesh, and Sheha either individually or collectively, to include additional
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`functionalities that were commonly used to identify other users to locate as well as
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`to determine locations, maps, or provide directions. Ex. 1021, ⁋⁋ 153-156, 173-
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`179, 197-201, 203-207.
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`With respect to Tanaka, there are many reasons why one would want to
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`determine another person’s location, including to obtain directions or determine if
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`a friend is nearby for a social visit. Ex. 1021, ⁋⁋ 203-204; Ex. 1040, 9:15-27.
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`Further, using location information to learn about people in the area that may be a
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`good business, social, or romantic match would have been of significant interest
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`for a user of a location system like Enzmann’s. Ex. 1021, ⁋⁋ 203-204, Ex. 1060,
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`1:31-62, Ex. 1040, 9:4-30. A POSITA would have been motivated to incorporate
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`Tanaka’s user filtering and alert functionality to enhance Enzmann’s location
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`services to enable a user to find and meeting new people that may be of interest.
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`Ex. 1021, ⁋ 203-206. Each of Enzmann and Tanaka discuss that their systems can
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`locate other users based on their mobile devices. Ex. 1021, ⁋ 205. And a POSITA
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`would have had a reasonable expectation of success given the similarities of the
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`two systems. Ex. 1021-6, ⁋ 206.
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`With respect to Ryden, a person obtaining directions to another person using
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`a mobile device and possibly moving would naturally want to know about the other
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`person’s movement or of a target mobile device, such as the direction and speed,
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`which can help the two people more efficiently meet. Ex. 1021, ⁋⁋ 197-200. A
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`POSITA would have a reasonable expectation of success at least because of the
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`similarities of the two systems. Ex. 1021, ⁋ 199.
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`With respect to Ganesh, a POSITA would have desired enhancing
`
`Enzmann’s system to provide more comprehensive location capabilities, including
`
`Ganesh’s techniques for providing locations based on call history. Ex. 1021, ⁋⁋
`
`173-175. While an exact position may be ideally desirable, a most-recent position
`
`based on a prior call can still provide useful location information about a user, such
`
`as for a search-and-rescue team or for a parent trying to locate a child, an existing
`
`focus of E-911 systems. Ex. 1021, ⁋ 154; Ex. 1049, 1:36-2:41. A POSITA would
`
`have had a reasonable expectation of success incorporating this functionality
`
`because extending Enzmann’s system to store past call history with corresponding
`
`location information, as in Ganesh, would have involved only a minor upgrade to
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`Enzmann’s location server 100, memory storage 128, or location database 300. Ex.
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`1021, ⁋ 177.
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`With respect to Sheha, both Enzmann and Sheha describe systems to allow
`
`users to request the location of another user’s wireless device. Ex. 1021, ⁋ 155.
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`Moreover, Enzmann describes providing location information in a “displayable”
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`form. Ex. 1021, ⁋ 81. Sheha explains one kind of displayable location information,
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`displaying maps and other related location and navigational information. Ex. 1021,
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`⁋ 201. Thus, a POSITA would have been motivated to combine Enzmann with
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`Sheha to enable the display of displayable location information. Ex. 1021, ⁋ 201.
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`Further, a POSITA would expect a reasonable chance of success given the
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`similarities between the two systems. Ex. 1021, ⁋ 201.
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`For at least these reasons, a POSITA would have been motivated to combine
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`Enzmann with Tanaka, Ryden, Ganesh and/or Sheha.
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` The ’418 patent is invalid in view of the prior art.
`A. Ground 1: Sheha alone or in combination with Tanaka, Enzmann,
`Ryden, and/or Ganesh renders obvious claims 1-30 under 35
`U.S.C. § 103.
`1.
`Claim 12
`Claim 1pre recites “A system comprising” and Sheha discloses systems
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`enabling users of telephone devices, landline or wireless, to determine and share
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`their own location with other telephone devices, and request the locations of other
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`telephone devices. Ex. 1021-6, ⁋ 13. As discussed below, Sheha discloses claim 1.
`
`Ex. 1021-6, ⁋ 28.
`
`a.
`Claim 1a
`Sheha discloses claim 1a. Ex. 1021-6, ⁋ 16. Sheha’s system can “determine
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`either or both of the local and remote devices’ position information.” Ex. 1041,
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`4:13-18. A mobile-to-mobile configuration is illustrated in Figure 3: both mobile
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`
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`2 A claim listing is provided in Appendix A to this petition.
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`U.S. Patent No. 11,122,418
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`devices 18b-c wirelessly communicate 20b-c with the wireless network 22. Ex.
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`1021-6, ⁋⁋ 14-15, Ex. 1041, Fig. 3.
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`
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`Sheha discloses the mobile devices in Figure 3 can be cellphones. Ex. 1021-6, ⁋
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`15, Ex. 1041, 10:66-11:3. Sheha further discloses that either the mobile devices
`
`themselves or the network can determine their positions. Ex. 1021-6, ⁋ 15, Ex.
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`1041, 10:5-16, 11:15-20. After a position is determined, it is supplied to and stored
`
`by the ODAS. Ex. 1021-6, ⁋ 15, Ex. 1041, 11:3-8, 11:44-51, Figure 3. As shown in
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`Figure 3 above, the ODAS is remote from the mobile devices. Ex. 1021-6, ⁋ 15.
`
`b.
`Claim 1b
`Sheha discloses claim 1b. Ex. 1021-6, ⁋ 18. Sheha’s system allows one
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`wireless device to request the position of another wireless device “without having
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`Petition for Inter Partes Review
`U.S. Patent No. 11,122,418
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`to initiate a telephone call.” Ex. 1041, 4:59-5:3, 11:55-58. To do so, the ODAS
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`obtains location information from the target mobile device (the “first wireless
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`device”) and provides it to the requesting mobile device (the “second wireless
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`device”). Ex. 1021-6, ⁋ 17; Ex. 1041, 12:1-7, 12:42-44. Thus, the requesting
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`mobile device has no “call for communication” with the identified mobile device,
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`instead sending the request to the ODAS. Ex. 1021-6, ⁋ 17, Ex. 1041 11:55-12:7.
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`c.
`Claim 1c
`Sheha discloses claim 1c. Ex. 1021-6, ⁋ 20. It describes ways for a mobile
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`device to provide permission to another mobile device to request its location. Ex.
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`1021-6, ⁋ 19. For example, the Sheha system can query the target mobile device,
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`which can have privacy settings allowing the device to “prevent or limit other
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`calling devices from obtaining position information,” for permission to respond to
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`the position request. Ex. 1021-6, ⁋ 19, Ex. 1041, 4:59-66, 5:21-41, 10:17-26. Thus,
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`a mobile device can provide permission for a requesting device to access its
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`location. Ex. 1021-6, ⁋ 19.
`
`d.
`Claim 1d
`Sheha discloses claim 1d. Ex. 1021-6, ⁋ 22. Sheha describes that position
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`information correlating position to a telephone number can be stored in a group
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`database remote from the wireless devices, and further can establish which users
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`may access such information. Ex. 1021-6, ⁋ 21; Ex. 1041, 11:55-12:7. For
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