`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE, INC.
`Petitioner
`v.
`
`MULLEN INDUSTRIES LLC
`Patent Owner
`
`
`
`
`
`Inter Partes Review No.
`IPR2022-_____
`Patent No. 8,374,575
`Filing Date: March 22, 2006
`Issue Date: February 12, 2013
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`
`TABLE OF CONTENTS
`
` 
`
` 
`
` 
`
`Introduction ...................................................................................................... 1 
`IPR Requirements ............................................................................................ 2 
`A. 
`Standing (37 C.F.R. § 42.104(a)) .......................................................... 2 
`B. 
`Challenge Under 37 C.F.R. § 42.104(b) ............................................... 2 
`  Background ...................................................................................................... 3 
`A. 
`Priority Date and Family ....................................................................... 3 
`B. 
`Summary of the ’575 Patent .................................................................. 3 
`C. 
`Relevant Prosecution History of the ’575 Patent .................................. 6 
`  Expert Testimony, Level of Skill in the Art, and Claim Construction ............ 7 
`A.  Declaration Evidence ............................................................................ 7 
`B. 
`Level of Ordinary Skill in the Art ......................................................... 7 
`C. 
`Claim Construction ............................................................................... 8 
`Prior Art ........................................................................................................... 8 
`A. 
`Sheha ..................................................................................................... 9 
`B. 
`Enzmann .............................................................................................. 12 
`C. 
`Tanaka ................................................................................................. 13 
`D.  Maruyama ............................................................................................ 15 
`E. 
`Preston ................................................................................................. 16 
`  Motivation to Combine Sheha and Enzmann with Tanaka, Preston, and
`Maruyama ...................................................................................................... 17 
`  The ’575 Patent is invalid in view of the prior art ......................................... 20 
`
`i
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`B. 
`
`A.  Ground 1: Sheha alone or in combination with Tanaka and/or
`Preston makes obvious claims 1-46 under 35 U.S.C. §§ 102,
`103. ...................................................................................................... 20 
`Ground 2: Enzmann alone or in combination with Maruyama,
`Tanaka, and Preston anticipates or makes obvious claims 1-46
`under 35 U.S.C. §§ 102, 103. .............................................................. 47 
`  Secondary Considerations Cannot Overcome the Strong Evidence of
`Obviousness ................................................................................................... 72 
`  This Petition Should Not Be Discretionarily Denied .................................... 73 
`Conclusion ..................................................................................................... 78 
`  Mandatory Notices ......................................................................................... 78 
`A. 
`Real Parties in Interest (37 C.F.R. § 42.8(b)(1)) ................................. 78 
`B. 
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................ 79 
`C. 
`Payment of Fees (37 C.F.R. § 42.103) ................................................ 79 
`D. 
`Power of Attorney (37 C.F.R. § 42.10) ............................................... 79 
`E. 
`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))............ 79 
`
` 
`
`
`
`ii
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`Exhibit No.
`1001
`1002-1010
`1011
`1012-1019
`1020
`1021
`1021-1
`1022-1029
`1030
`1031
`1032
`1033
`
`1034
`1035
`1036
`
`1037
`
`1038-1010
`1040
`1041
`1042
`
`1043-1051
`1052
`1053-1055
`
`EXHIBIT LIST
` Description
`U.S. Patent No. 8,374,575 (“the ’575 Patent”)
`[ Reserved ]
`Prosecution History of U.S. Patent No. 8,374,575
`[ Reserved ]
`Curriculum Vitae of David H. Williams
`Declaration of David H. Williams
`Appendix 1 to the Declaration of David H. Williams
`[ Reserved ]
`Mullen v. Apple – Complaint
`Mullen v. Apple – Infringement Contentions
`Mullen v. Apple – Scheduling Order
`District Court Trial Dates Tend to Slip After
`PTAB Discretionary Denials
`Fintiv Order Setting Jury Selection and Trial
`Tillis Ltr to USPTO re Fintiv Modification
`Vidal Memo re Interim Procedure for Discretionary Denials
`Federal Court Management Statistics as of June 30, 2022
`(referenced in Vidal Memo fn. 4)
`[ Reserved ]
`U.S. Patent No. 7,130,630 to Enzmann et al (“Enzmann”)
`U.S. Patent No. 7,333,820 to Sheha et al (“Sheha”)
`U.S. Provisional Patent Application 60/305,975 to Sheha et al
`(“Sheha Provisional”)
`[ Reserved ]
`U.S. Patent No. 6,430,498 to Maruyama (“Maruyama”)
`[ Reserved ]
`
`iii
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`Exhibit No.
`1056
`1057-1059
`1060
`
` Description
`U.S. Patent No. 6,236,652 to Preston (“Preston”)
`[ Reserved ]
`U.S. Patent No. 6,819,919 to Tanaka (“Tanaka”)
`
`iv
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`
`
`Introduction
`Apple Inc. (“Petitioner”) hereby petitions for inter partes review (“IPR”) of
`
`claims 1-46 of U.S. Patent No. 8,374,575 (“the ’575 Patent” or “the Challenged
`
`Patent”), assigned to Mullen Industries LLC (“Patent Owner”). A copy of the ’575
`
`Patent and its prosecution history are attached as Exhibits 1001 and 1011.
`
`The ’575 Patent claims methods to enable one wireless device (the “requesting
`
`device”) to request and receive the location of another wireless device (the “target
`
`device”), with the permission of the target device, and to provide directions between
`
`the locations of the requesting and target devices. However, location sharing
`
`between wireless devices was well-known at the time the earliest priority application
`
`for the ’575 Patent was filed.
`
`Despite prosecuting the application for seven years, the applicant was unable
`
`to persuade the USPTO that location sharing was patentable. Instead, the claims
`
`were allowed only after the applicant added requirements that the location
`
`information be transmitted from the target device to the server, and changing the list
`
`of users authorized to receive location information. These concepts, however, were
`
`well known aspects of location sharing in wireless networks well before the earliest
`
`priority date of the ’575 Patent. Thus, the claims of the ’575 Patent do not recite any
`
`inventive concepts and are invalid in view of the prior art as set forth in detail below.
`
`1
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`Petitioner respectfully requests that the Board cancel claims 1-46 of the ’575
`
`Patent.
`
`
`
`IPR Requirements
`A.
`Standing (37 C.F.R. § 42.104(a))
`Petitioner certifies that the ’575 Patent is available for IPR and that
`
`Petitioner is not barred or estopped from requesting IPR. The ’575 Patent issued on
`
`February 12, 2013, and this Petition is filed within one year of service of the
`
`Complaint against Petitioner alleging infringement of the ’575 Patent (see Ex.
`
`1030, confirming the Complaint was filed on February 9, 2022) and is not barred
`
`under 35 U.S.C. §315(b).
`
`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), this petition requests
`
`cancellation of claims 1-46 as anticipated under 35 U.S.C. § 102 and/or rendered
`
`obvious under 35 U.S.C. § 103 based on the following prior art references:
`
` US 7,333,820 to Sheha (“Sheha”)
`
` US 7,130,630 to Enzmann (“Enzmann”)
`
` US 6,819,919 to Tanaka (“Tanaka”)
`
` US 6,430,498 to Maruyama (“Maruyama”)
`
` US 6,236,652 to Preston (“Preston”)
`
`The statutory grounds for the challenge of each claim are set forth below
`
`2
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`Ground
`1
`2
`
`35 U.S.C.
`§§ 102,103
`§§ 102, 103
`
`References
`Sheha, Tanaka, and Preston
`Enzmann, Maruyama, Tanaka,
`and Preston
`The record establishes a reasonable likelihood of prevailing as to each
`
`Claims
`1-46
`1-46
`
`ground of invalidity regarding the Challenged Claims.
`
` Background
`A.
`Priority Date and Family
`The ’575 Patent was filed on March 22, 2006 and claims priority as a
`
`continuation of US 9,635,540, which was filed on March 25, 2003, which claims
`
`priority to US Provisional Application No. 60/367,967, which was filed on March
`
`25, 2002. Thus, the earliest possible effective filing date of the ’575 Patent is March
`
`25, 2002. The ’575 Patent is therefore subject to pre-AIA §§ 102 and 103.
`
`B.
`Summary of the ’575 Patent
`Generally, the ’575 Patent relates to systems and methods for remotely
`
`determining a device’s location, such as via the Global Positioning System
`
`(“GPS”). Ex. 1001, 1:18-27. It alleges that device locationing is rarely used, and so
`
`it purports to provide functionality to allow one cellphone to obtain location
`
`information from another user’s cellphone. Ex. 1001, 1:31-33, 1:38-43.
`
`To allow location sharing, the ’575 Patent describes that cellphones can
`
`share their locations with a remote system, from which other users can obtain the
`
`locations. Ex. 1001, 5:11-30. However, the ’575 Patent allows a user to restrict
`
`3
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`access to their location by identifying authorized users. Id. Thus, users may specify
`
`which other users may obtain their location information. Ex. 1001, 3:22-30.
`
`Figure 2 depicts a method to obtain another user’s location, which generally
`
`includes sending a request for a location, determining whether the user is
`
`authorized, and, if so, providing the location to the requestor.
`
`
`
`
`
`To perform this functionality, the ’575 Patent describes that a user may be
`
`required to manually enter a login and password, which may then be used to
`
`4
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`identify the user and establish whether they are authorized to obtain the requested
`
`location information. Ex. 1001, 9:63-10:6. After supplying the login and password
`
`as well as the request, the device may provide a screen to indicate the request is
`
`being processed and then may provide a further display screen once the location
`
`information has been received. Ex. 1001, 7:14-25 Fig. 5-6.
`
`The ’575 Patent describes that location information retrieved for a target
`
`user may be displayed on a display screen, as shown in Figure 6 below. Ex. 1001,
`
`7:25-29. This location information can include directional information indicating
`
`the direction the user is facing in, as well as arrows indicating the location of the
`
`5
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`target user relative to the requesting user. Ex. 1001, 7:41-50.
`
`
`
`C. Relevant Prosecution History of the ’575 Patent
`During its prosecution, U.S. Patent Application No. 11/387,384 which
`
`issued as the ’575 Patent, was rejected seven times, including three final rejections,
`
`before ultimately being allowed. The Applicant amended its claims to require a
`
`step of “changing, at the direction of said first wireless telephone” the list of users
`
`allowed to access location information. Ex. 1011, pp. 161-172. The Applicant
`
`asserted that that the prior art taught only passively “maintaining” a list of users,
`
`not allowing the wireless telephone to change it. Ex. 1011, p. 174. The Applicant
`
`6
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`also argued that the prior art did not disclose transmitting location data from the
`
`first wireless telephone to a remote server. Ex. 1011, pp. 348-350.
`
`Despite these amendments, Applicant was unable to persuade the examiner
`
`that any claims were allowable until a June 20, 2011 interview, where the
`
`Applicant agreed to add “determining a second location associated with one of said
`
`plurality of wireless telephones” and “providing directional information to said one
`
`of said plurality of wireless telephones, wherein said directional information is
`
`representative of directions between said location and said second location” to
`
`pending independent claim 3, and similar limitations to the other pending
`
`independent claims. Ex. 1011, pp. 369-377. No reasons for allowance, were
`
`provided.
`
` Expert Testimony, Level of Skill in the Art, and Claim Construction
`A. Declaration Evidence
`This petition is supported by the declaration of David H. Williams, Ex.
`
`1020, 1021, 1021-1.
`
`B.
`Level of Ordinary Skill in the Art
`The ’575 Patent describes and claims functionality 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
`
`’575 Patent would have had at least a bachelor of science degree in computer
`
`7
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`science, computer engineering, electrical engineering or a similar degree with one
`
`or two years of experience with wireless networks and devices, such as cell phones
`
`and personal digital assistants (“PDAs”) as well as wireless positioning
`
`technologies such as GPS or triangulation. Ex. 1021 ¶ 43. Additional practical
`
`experience would substitute for lack of a formal degree. Id. ¶ 44.
`
`C. Claim Construction
`The claim terms of the ’575 Patent are construed under the Phillips standard,
`
`considering the plain meaning of the claim terms to a person of ordinary skill in the
`
`art, in light of the language of the claims, the specification, and the file history.1
`
`None of the claim terms of the ’575 Patent need be construed by the Board.
`
`
`
`Prior Art
`Of the prior art references discussed below, Sheha, Tanaka, Maruyama, and
`
`Preston do not appear on the face of the ’575 Patent. Enzmann was disclosed
`
`during prosecution of the ’575 Patent but not cited or relied on by the Examiner.
`
`
`
`1 Petitioner is not conceding that each claim satisfies all statutory requirements,
`
`such as §§101 and 112, nor is Petitioner waiving any arguments concerning claim
`
`scope or grounds that can only be raised in district court.
`
`8
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`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
`
`’575 Patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Sheha describes a system to enable functionality like mapping, routing, and
`
`direction finding by allowing mobile devices, such as cellular phones or PDAs, to
`
`share their locations with other authorized mobile devices. Ex. 1041, 2:60-64,
`
`10:66-9. The mobile devices may determine their own positions, using an
`
`integrated GPS receiver or network-assisted position information, and report their
`
`positions to an online database and application server or “ODAS,” which stores
`
`them. Id., 10:5-16, 10:66-11:54. The mobile devices may also provide groups of
`
`authorized users to the ODAS identifying who may obtain their respective location
`
`information. Id., 11:51-12:1.
`
`Using the Sheha system, a mobile device may request the location of a target
`
`mobile device and, if authorized, receive the position from the ODAS, which may
`
`include a map illustrating the location of one or both mobile devices, route
`
`information, driving directions, and heading information that may be displayed to
`
`the user. Ex. 1041, 9:23-39. Figure 3 illustrates an example enabling such
`
`functionality between two mobile devices 18b-c via a wireless network 22 and an
`
`ODAS 3.
`
`9
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`Figure 5 illustrates a map displaying directions between the caller 33 and the
`
`user’s current location 34, which can be displayed on mobile devices. Ex. 1041,
`
`4:52-58. This map window can also display the identification of both devices in
`
`area 32. Id., 9:23-39.
`
`
`
`10
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`
`
`
`
`
`
`11
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`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 ’575
`
`Patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Enzmann describes a system for tracking the location of wireless devices
`
`within a wireless network. Ex. 1040, Abstract. The wireless devices determine
`
`their locations and provide them to a location query service, which stores them in a
`
`datastore. Id., 4:24-29. A requesting device may request a target device’s location
`
`from a location query service, which determines whether the requesting device is
`
`authorized to receive location information and, if so, provides the location to the
`
`requesting device. Id., 2:16-41, 3:1-16. If the requesting device is not authorized,
`
`the location query service can request authorization from the target wireless
`
`device, which may grant or deny the request. Id., 1040, 2:42-51, 3:24-27.
`
`Figure 3 in Enzmann depicts an example system configuration to enable
`
`such functionality.
`
`12
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`
`
`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 ’575
`
`Patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Tanaka describes a system that allows wireless users to identify other
`
`wireless users who are nearby and alert them to these nearby users. Ex. 1060,
`
`Abstract, claim 20. Tanaka’s system allows users to create and upload user profiles
`
`to a central server. Id., 5:56-6:3. Users may then issue searches to the Tanaka
`
`system that establish a search radius and one or more profile items of interest. Id.,
`
`13
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`6:10-7:1. The Tanaka system then responds to the search request with user profiles
`
`that match the search criteria and the user is able to identify any that may be of
`
`interest. Id., 6:60-7:5. In addition, the Tanaka system can monitor for other users
`
`that come into range of the user and alert them when there is a new match. Id.
`
`claim 20.
`
`Ex. 1060, Fig. 4.
`
`
`
`14
`
`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`D. Maruyama
`Maruyama was filed on July 11, 2000 and claims priority to a Japanese
`
`application filed on July 12, 1999. Ex. 1052. Thus, Maruyama is prior art to the
`
`’575 Patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Maruyama describes a wireless network system supplying location-related
`
`information to mobile devices for navigation, including walking to meet another
`
`mobile device user. Ex. 1052, 1:5-13, 3:30-34, Fig. 5. In Maruyama’s system, the
`
`mobile devices obtain their own location information using methods such as GPS,
`
`and supply this information to a server, which obtains map information and
`
`computes navigation information before returning it to the mobile device for
`
`display. Id., 3:36-55, 4:6-11. Maruyama discloses presenting navigation
`
`information in a compressed format using circular markers, arrows, and distance
`
`displays that can be displayed on the small screens in extant wireless devices. Id.,
`
`3:12-20, 8:36-45. Maruyama discloses providing walking navigation to allow two
`
`mobile users to navigate to meet with one another, as shown in Figure 5 below
`
`with users 10a and 10b. Id., 7:65-8:12. Each user’s mobile device uses markers to
`
`show the locations of both users, and displays the direction and distance to the
`
`other mobile device. Id., 8:36-45.
`
`15
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`
`
`
`E.
`Preston
`Preston was filed on November 2, 1999 and claims priority to the Preston
`
`Provisional filed on November 2, 1998. Ex. 1056. Thus, Preston is prior art to the
`
`’575 Patent under at least pre-AIA 35 U.S.C. § 102(e).
`
`Preston describes methods for improving communications with and between
`
`mobile devices using a dynamic location-based Internet addressing scheme that is
`
`backward compatible with existing Internet protocols. Ex. 1056, 1:7-14. Each
`
`mobile device in Preston’s system assigns its own IP address, a “geoIP” address
`
`that includes location information. Id., 5:60-6:4. In Figure 4, Preston shows a
`
`16
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`display with data fields for input and output, including the mobile device user’s
`
`latitude and longitude, and an “Unresolved Dynamic IP” address that changes
`
`constantly as a function of the user’s latitude and longitude. Upon a server request,
`
`or manual operation, the unresolved dynamic IP is resolved to a dynamic user IP
`
`address and a unique DNS, thereby providing location information to the network
`
`and other devices. Id., 7:13-60. This location information can be used for
`
`emergency purposes such as 911 calls, or for location-based messaging services.
`
`Id., 7:61-8:12.
`
`
` Motivation to Combine Sheha and Enzmann with Tanaka, Preston, and
`Maruyama
`The ’575 Patent is related to wireless devices and using those wireless
`
`devices to determine locations of selected users. Ex. 1021-1, ¶¶ 2-6, see also
`
`Section III.B, supra. Further, the claims of the ’575 Patent relate to changing a list
`
`17
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`of authorized users, providing directional information between users, and
`
`displaying user locations. Ex. 1021-1, Section II; see also Section III.B, supra.
`
`Sheha, Enzmann, Tanaka, Preston, and Maruyama are all directed to mobile
`
`devices or positioning. Ex. 1021, ¶ 155; see also Section V, supra.
`
`Regarding Tanaka, a POSITA would have found it desirable to incorporate
`
`Tanaka’s user profile filtering and alert functionality into the Sheha and Enzmann
`
`systems, to enhance Sheha and Enzmann’s’s locationing services with notifications
`
`when one or more of the other wireless users is nearby, allowing users to obtain
`
`directions, locate nearby friends for a social visit, or find potential business, social,
`
`or romantic matches in the area. Ex. 1021 ¶¶ 203-206. In addition, a POSITA
`
`would have found it desirable to incorporate related user interface functionality
`
`described in Tanaka into Sheha and Enzmann to allow a user to provide an easy an
`
`intuitive way to send or receive location information, such as Tanaka’s disclosure
`
`of tapping on a map or location to send a location update. Id. ¶ 207. A POSITA
`
`would have had a reasonable expectation of success in combining Sheha or
`
`Enzmann with Tanaka because Tanaka is related to shared location services like
`
`Sheha and Enzmann, wireless device location information for is already available
`
`to authorized requestors in the Sheha and Enzmann systems, and incorporating
`
`functionality from one such system into another similar system would have
`
`18
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`

`

`Petition for Inter Partes Review
`U.S. Patent No. 8,374,575
`
`involved only ordinary software development efforts, which would have been
`
`within the capabilities of the POSITA. Id. ¶¶ 204-207.
`
`Regarding Preston, because neither Sheha nor Enzmann limit their systems
`
`to a particular location technique, a POSITA would have been motivated to use
`
`any type of network-assisted location technique with these systems to meet
`
`particular needs, including the IP-address-based location technique taught by
`
`Preston. Ex. 1021 ¶ 196. A POSITA would understand that because it uses an IP
`
`address to obtain a geographical location, Preston’s technique would allow location
`
`determination when GPS or other network location techniques were not available.
`
`Id. A POSITA would have had a reasonable expectation of success of
`
`incorporating such functionality into Sheha and Enzmann because each already
`
`employs network communications and the IP and GeoIP protocols are simply
`
`additional known network protocols that could be added to these systems. Id.
`
`Regarding Maruyama, a POSITA would have been motivated to incorporate
`
`its direction and navigation features with Enzmann’s locationing services because
`
`location systems like Enzmann were commonly used with navigation systems such
`
`as the system taught by Maruyama to obtain driving directions or route
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`information. Ex. 1021, ¶¶ 184-185. Adding navigation functionality to the
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`Enzmann system would involve providing any suitable navigation information,
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`such as directional and distance information or displaying the location on a map as
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`described in Maruyama. Id. A POSITA would have had a reasonable expectation
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`of success incorporating Maruyama’s navigation functionality into Enzmann
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`because it would have been straightforward to incorporate such basic navigation
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`functionality into the Enzmann system, and required only routine software
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`development efforts to integrate a navigation system to use the location
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`information stored and available within the Enzmann system. Id. ¶ 186.
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`For at least these reasons, a POSITA would be motivated to combine Sheha
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`with Tanaka and/or Preston, and Enzmann with Maruyama, Tanaka, and/or
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`Preston.
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` The ’575 Patent is invalid in view of the prior art
`A. Ground 1: Sheha alone or in combination with Tanaka and/or
`Preston makes obvious claims 1-46 under 35 U.S.C. §§ 102, 103.
`1.
`Claim 1: “The method comprising:”
`Sheha anticipates claim 1. Ex. 1021-1, ¶¶ 11-21. Sheha describes a
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`“method” for “providing real-time position information of one party to another
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`party by utilizing … a mobile telecommunications network.” Ex. 1041, Abstract;
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`Ex. 1021-1, ¶ 12.
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`2.
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`Claim 1a: “obtaining a location of a first wireless
`telephone”
`Sheha discloses claim 1a. Ex. 1021-1, ¶¶ 13-14. For example, Sheha
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`describes that its system can “determine either or both of the local and remote
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`devices’ position information.” Ex. 1041, 4:13-18; Ex. 1021-1, ¶ 12. A mobile-to-
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`mobile configuration is illustrated in Figure 3, where both mobile devices 18b-c
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`wirelessly communicate 20b-c with the wireless network 22. Ex. 1041, 10:67-
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`11:35, Fig. 3; Ex. 1021-1, ¶¶ 13-14.
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`Mobile devices 18b-c can be cellular telephones. Ex. 1041, 10:66-11:3; Ex.
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`1021-1 ¶ 14. Sheha discloses that the mobile devices can determine their own
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`positions. Ex. 1041, 10:5-16, 11:15-20; Ex. 1021-1 ¶ 14. After a mobile device
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`determines its position, it is supplied to an online database and application server
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`or ODAS 3, where it is stored. Ex. 1041, 11:3-8, 11:44-51, Figure 3; Ex. 1021-1 ¶
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`14.
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`3.
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`Claim 1b: “transmitting said location from said first
`wireless telephone to a remote server”
`Sheha discloses claim 1b. In Sheha, after a mobile device determines its
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`position, it “forwards its current position information back to the [remote server]
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`ODAS.” Ex. 1041, 11:3-8, 11:12-15, 11:33-37; Ex. 1021-1, ¶ 15.
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`4.
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`Claim 1c: “changing, at the direction of said first wireless
`telephone, a list of users on said remote server for a profile
`associated with said first wireless telephone that are allowed
`to access said location, wherein each user of said list of users
`is representative of one of a plurality of wireless telephones”
`Sheha discloses claim 1c. Sheha discloses that each device may have privacy
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`settings stored at the server and changed at the direction of the first wireless device
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`that “allow the device to prevent or limit other calling devices from obtaining
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`position information.” Ex. 1041, 5:38-46, 11:63-12:4; Ex. 1021-1, ¶ 16.
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`According to Sheha, “users can define a group of specific users that have access to
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`this information…by utilizing a group database and authorization and
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`authentication protocols to identify users that are permitted to access this
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`information.” Ex. 1041, 11:61-12:1. Each identified user is representative of one of
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`a plurality of wireless telephones, as Sheha references defining a list of “users” and
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`“calling devices” interchangeably. Ex. 1041, 5:38-46, 11:63-12:4; Ex. 1021-1 ¶ 16.
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`Sheha describes such functionality for mobile-to-mobile as well as landline-
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`to-landline scenarios. Ex. 1041, 12:4-7; Ex. 1021-1, ¶ 17. Because Sheha discloses
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`that wireless telephone user has the authority to “define” a list of users who are
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`allowed to access their location and change access permissions anytime, Sheha
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`discloses that the list may also be changed at the direction of the first wireless
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`telephone. Ex. 1041, 5:9-20; 11:61-12:1; Ex. 1021-1, ¶ 17.
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`5.
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`Claim 1d: “transmitting said location from said remote
`server to at least one of said users of said list of users”
`Sheha discloses claim 1d. As discussed above regarding claim 1a, a mobile
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`device can request the location of another mobile device. Sheha discloses that
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`“[w]hen a mobile device’s position information is requested, the system, based on
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`privacy settings, responds with the appropriate position information to the
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`requesting user’s device.” Ex. 1041, 12:1-7; see also id., 4:59-5:1-2. Therefore,
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`Sheha discloses transmitting the location of the target device from the server to the
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`requesting device. Ex. 1021-1, ¶ 19.
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`6.
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`Claim 1e: “determining a second location associated with
`one of said plurality of wireless telephones”
`Sheha discloses claim 1e. As discussed above regarding claim 1a, Sheha
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`discloses a system where both the local and remote devices determine their
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`locations. Ex. 1041, 4:13-18, Fig. 3. In particular, Sheha discloses that mobile
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`device 18 b determines its position and updates its reported position in the ODAS
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`prior to initiating a call with mobile device 18 c. Ex. 1041, 10:66-11:9, 11:15-20
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`(explaining the “position information is calculated” by mobile device 18 b).
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`7.
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`Claim 1f: “providing directional information to said one of
`said plurality of wireless telephones, wherein said
`directional information is representative of directions
`between said location and said second location.”
`Sheha discloses claim 1f. Sheha discloses providing first and second
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`wireless phones with directional information representative of directions between
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`their respective locations. Ex. 1041, Abstract, 5:21-26; Ex. 1021-1 ¶ 20. Sheha
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`discloses using a remote mobile device’s location “to obtain driving directions to
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`that device,” such that if both wireless telephones grant access to their respective
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`position information, this “can be used for real-time driving directions or
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`collaboration purposes.” Ex. 1041, 5:21-26, 5:32-34; Ex. 1021-1 ¶ 20. Finally,
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`Sheha discloses that the server, ODAS, can calculate and provide this directional
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`information. Ex. 1041, 12:32-37; Ex. 1021-1 ¶ 20.
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`This functionality is illustrated in Sheha Figure 5, which shows a “Map
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`Caller-ID” screen with directional information representative of directions, driving
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`route 29 and driving directions 35 between the location 34 of the remote mobile
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`device 34 and location 33 of the user’s mobile device. Ex. 1041, 9:23-28; Ex.
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`1021-1 ¶ 20.
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`8.
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`Claim 2: “The method of claim 1, wherein said changing
`comprises adding an additional user to said list of users.”
`Sheha discloses that a first wireless telephone can direct the server to change
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`a list of users allowed to access location information which is stored on the remote
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`server, as described above in claim 1c. This “changing” operation includes adding
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`an additional user to said list of users, as users are added to the list in order to
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`define or create the