Case 2:17-cv-00513-JRG Document 335-3 Filed 01/30/19 Page 1 of 39 PageID #: 20439
`Case 2:17-cv-00513-JRG Document 335-3 Filed 01/30/19 Page 1 of 39 PageID #: 20439
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`EXHIBIT 3
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`EXHIBIT 3
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`Case 2:17-cv-00513-JRG Document 335-3 Filed 01/30/19 Page 1 of 39 PageID #: 20439
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`EXHIBIT 3
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`Case 2:17-cv-00513-JRG Document 335-3 Filed 01/30/19 Page 2 of 39 PageID #: 20440
`Trials@uspto.gov
`Paper 9
`Tel: 571-272-7822
`Entered: December 4, 2018
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01080
`Patent 9,408,055 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, CHRISTA P. ZADO, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Instituting Inter Partes Review
`35 U.S.C. § 314
`
`
`
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`IPR2018-01080
`Patent 9,408,055 B2
`
`I. INTRODUCTION
`
`Google LLC (“Petitioner”) filed a request for inter partes review of
`claims 1–2, 5–7, 14–15, 17, 21–25, 27–28, 30, 32–34, 36–37, 40–43, 45, 49,
`and 54 (the “challenged claims”) of U.S. Patent No. 9,408,055 B2 (Ex. 1001,
`“the ’055 patent”). Paper 2 (“Pet.”). AGIS Software Development, LLC
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Petitioner filed a Reply. Paper 8 (“Reply”).
`Under 35 U.S.C. § 314, an inter partes review must not be instituted
`“unless . . . the information presented in the petition . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon
`considering the evidence presented and the arguments made, we determine
`Petitioner has demonstrated a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one of the challenged claims.
`Accordingly, we institute an inter partes review.
`
`A. Related Proceedings
`Petitioner advises that the ’055 patent has been asserted in five district
`court cases in the Eastern District of Texas, namely, AGIS Software
`Development LLC v. Huawei Device USA Inc., TXED-2- 17-cv-00513, filed
`June 21, 2017; AGIS Software Development LLC v. HTC Corporation,
`TXED-2-17-cv- 00514, filed June 21, 2017; AGIS Software Development
`LLC v. LG Electronics, Inc., TXED-2-17-cv-00515, filed June 21, 2017;
`AGIS Software Development LLC v. Apple Inc., TXED-2-17-cv-00516, filed
`June 21, 2017; and AGIS Software Development LLC v. ZTE Corporation,
`TXED-2-17-cv-00517, filed June 21, 2017. Pet. 76.
`
`2
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`Petitioner also advises that the ’055 patent is being challenged in
`IPR2018-00818, in which institution was denied. Id.
`Patent Owner acknowledges the same proceedings. Paper 4, 3–4.
`
`B. The ’055 Patent
`The ’055 patent specification (the “Specification”) generally discloses
`rapidly establishing an ad hoc network of devices (e.g., smartphones, PDAs,
`or personal computers) with users, such as first responders, logging onto a
`network using the network’s name and security key (a common “password”
`for everyone). Ex. 1001, Title, Abstract, 10:55–57 (devices sign in with “the
`same ad hoc event name and password”). Once logged on, the users’
`devices exchange each other’s location information via a remote server, and
`each participant’s location is displayed as a user-selectable symbol correctly
`positioned on an interactive display of a georeferenced map. Id. at 6:47–
`7:40; Fig. 1. Users may communicate or send data to another user by
`selecting the user’s symbol and the desired action. Id.
`Figure 1 of the ’055 patent is set out below.
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`3
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`Figure 1, shown above, depicts a user’s digital device 10 (cellular
`phone/PDA/GPS) having a touch screen 16 displaying a geographical map
`16b with georeferenced entities 30, 34. Id. at 5:21–42, 6:49–65.
`
`C. Challenged Claims
`Claims 1, 28, 41, and 54 of the challenged claims are independent and
`are substantially similar with some differences. Claim 1 is illustrative.
`1. A method comprising:
`[1.1] performing by a first device:
`obtaining contact information of a plurality of
`second devices, wherein the contact information
`comprises respective telephone numbers of the
`second devices;
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`[1.2] facilitating initiation of Internet Protocol (IP)
`based communication between the first device and
`the respective second devices by using respective
`telephone numbers to send, from the first device to
`the second devices, respective Short Message
`Service (SMS) messages including a telephone
`number of the first device and information usable b
`the respective second device to send IP-based
`communication to the first device;
`[1.3] receiving respective IP-based responses to the
`SMS messages, wherein the IP-based responses to
`the SMS messages include location information of
`the respective second devices;
`[1.4] transmitting IP-based messages including a
`location of the first device to the respective second
`devices;
`[1.5] presenting, via an interactive display of the
`first device, an interactive map and a plurality of
`user selectable symbols corresponding to the
`plurality of second devices, wherein the symbols are
`positioned on the map at respective positions
`corresponding to the respective locations of the
`second devices;
`the
`interaction with
`[1.6]
`identifying user
`interactive display selecting one or more of the user-
`selectable symbols corresponding to one or more of
`the second devices and user interaction with the
`display specifying an action and, based thereon,
`sending data to the one or more second devices;
`[1.7] receiving user input via user interaction with
`the interactive display of the first device, the user
`input specifying a
`location and a symbol
`corresponding to an entity other than the first device
`and the second devices; and
`[1.8] based on the user input, adding the user-
`specified symbol to the interactive display at a
`position on the interactive map corresponding to the
`
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`user-specified location, and transmitting the user-
`specified symbol and location to the second devices
`for addition of the user-specified symbol to
`respective interactive displays of the second devices
`at respective positions on respective interactive
`maps corresponding to the user-specified location.
`Ex. 1001, 14:38–15:16 (numbers and brackets added).
`D. Relevant References
`Petitioner relies upon the following references that are pertinent to our
`analysis:
`(1) U.S. Patent No. 6,366,782 B1, issued Apr. 2, 2002 (“Fumarolo”)
`(Ex. 1005);
`(2) U.S. Patent Application No. 2004/0054428 A1, published Mar. 18,
`2004 (“Sheha”) (Ex. 1006); and
`(3) U.S. Patent Application No. 2004/0157590 A1, published Aug. 12,
`2004 (“Lazaridis”) (Ex. 1007).
`
`E. Asserted Grounds of Unpatentability
` Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. § 103 over the asserted prior art. Pet. 20. In particular, Petitioner
`asserts the following grounds. Id.
`
`Ground
`
`1
`
`2
`
`3
`
`Patent Claims
`1–2, 5–6, 7, 14–15, 17,
`21–25, 28, 30, 32–34,
`36, 40–43, 45, 49, and
`54
`27
`
`37
`
`Asserted Prior Art
`Fumarolo, Sheha, and
`Lazaridis
`
`Fumarolo, Sheha,
`Lazaridis, and Liu
`Fumarolo, Sheha,
`Lazaridis, and Van
`Bosch
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`II. DISCUSSION
`
`A. Level of Ordinary Skill
`In determining whether an invention would have been obvious at the
`time it was made, we consider the level of ordinary skill in the pertinent art
`at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17
`(1966). “The importance of resolving the level of ordinary skill in the art
`lies in the necessity of maintaining objectivity in the obviousness inquiry.”
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991).
`Petitioner asserts that a person of ordinary skill in the art in the field
`of the ’055 patent
`would have had either: (1) a Bachelor of Science
`degree in Electrical Engineering or an equivalent
`field, with three to five years of academic or
`industry experience in the wireless/mobile location
`industry or comparable industry experience; or (2)
`a Master of Science degree
`in Electrical
`Engineering or an equivalent field, with two to four
`years of academic or industry experience in the
`same field.
`Pet. 20 (citing Ex. 1003 ¶ 26).
`Patent Owner does not provide any view as to the level of ordinary
`skill in the art. See generally Prelim. Resp. 1–32.
`For purposes of this decision, and based on the record before us, we
`adopt Petitioner’s assessment of the level of ordinary skill in the art.
`
`B. Claim Construction
`In this inter partes review, claim terms in an unexpired patent are
`given their broadest reasonable construction in light of the specification of
`the patent. 37 C.F.R. § 42.100(b). Consistent with that standard, we assign
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`claim terms their ordinary and customary meaning, as would be understood
`by one of ordinary skill in the art at the time of the invention, in the context
`of the entire patent disclosure. See In re Translogic Tech., Inc., 504 F.3d
`1249, 1257 (Fed. Cir. 2007). Only those terms that are in controversy need
`be construed, and only to the extent necessary to resolve the controversy.
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Patent Owner contends the Petition should be denied on grounds that
`the Petition fails to satisfy the requirements of 37 C.F.R. § 42.104(b)(3);
`namely, that Petitioner has failed to identify for the Board how each claim
`term is to be construed, that Petitioner’s proposed constructions here are
`inconsistent with those proposed in district court proceedings, and that
`Petitioner’s alleged lack of candor violates 37 C.F.R. § 42.11, § 11.18(b)(2).
`See Prelim. Resp. 4–16.
`Patent Owner argues that Petitioner has taken inconsistent positions
`on claim construction in this proceeding compared to those taken in district
`court. Id. at 4–13. For example, in this proceeding, Patent Owner asserts
`Petitioner contends that each term should be given its plain and ordinary
`meaning. Id. at 5. In contrast, Patent Owner asserts, “Defendants Huawei
`and LG, who are real parties in interest to this Petition, contend in the
`District Court Litigation that numerous limitations of apparatus claims 28–
`40 are (1) governed by 35 U.S.C. § 112(f) and (2) indefinite. 1 Id. at 5–6.
`Patent Owner also argues, “Petitioner has failed to meet its burden
`
`
`1 The Petition acknowledges,“[t]he real parties in interest are Google LLC;
`Huawei Device USA Inc.; Huawei Device Co., Ltd.; Huawei Device
`(Dongguan) Co., Ltd.; Huawei Technologies USA Inc.; Huawei
`Technologies Co., Ltd.; and LG Electronics, Inc.” Pet. 75.
`
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`under 37 C.F.R. § 42.104(b)(3) to identify for the Board how the ‘SMS
`messages’ (all claims), ‘the other symbol’ (claims 2, 42), and ‘user selection
`of the sub-net’ (claims 7, 34) terms are to be construed in this proceeding.
`Prelim. Resp. 12. Patent Owner argues that pursuant to 37 C.F.R. §§ 42.11,
`11.18(b)(2), “Petitioner’s lack of candor in identifying the correct
`constructions for the Board, and withholding seemingly inconsistent claim
`constructions from the record, is in direct contravention of the rules
`requiring those disclosures in the content of the petition and warrants denial
`of the Petition.” Id. at 15.
`In reply, Petitioner denies Patent Owner’s contentions, arguing that
`the Petition complies with the applicable rules, and that Patent Owner is not
`advancing its argument in good faith because we have rejected the same
`argument by Patent Owner in another proceeding and Patent Owner has not
`withdrawn the argument here. See Reply 1–3 (citing Apple, Inc. v. AGIS
`Software Development, LLC, IPR2018-00818, Paper 9 at 7–10 (Oct. 3,
`2018)).
`Petitioner complies with the applicable provisions of our rules by
`identifying claim constructions it proposes as the basis for requesting review
`of the challenged claims. See Western Digital Corp. v. Spex Techs, Inc.,
`IPR2018-00084, Paper 14 at 10–12 (April 25, 2018) (rejecting the same
`argument made here, and distinguishing Toyota Motor Corp. v. Blitzsafe
`Texas LLC, Paper 12, IPR2016-00422 (July 6, 2016)).
`Also, the standards used for claim construction and the burdens of
`proof are different in district court than they are in this proceeding, such that
`different constructions may be appropriate depending on the context. In
`district court proceedings, claims in issued patents are construed using the
`framework set forth in Phillips v. AWH Corp., which emphasizes
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`considering the plain meaning of the claim terms themselves in light of the
`intrinsic record. In re CSB-Sys. Int’l, Inc., 832 F.3d 1335, 1341 (Fed. Cir.
`2016) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1312–15 (Fed. Cir.
`2005) (en banc)). In this proceeding, the Board uses the broadest reasonable
`construction consistent with the specification. See Cuozzo Speed Tech., LLC
`v. Lee, 136 S. Ct. 2131 (2016) (affirming the use of broadest reasonable
`construction standard in AIA proceedings despite the possibility of
`inconsistent results in district court litigation).
`In addition, Fed. R. Civ. P. 8(d)(3) allows a party to take different,
`alternative, or even inconsistent positions. See Bancorp Services v. Sun Life
`Assur. Co. of Canada, 687 F.3d 1266, 1280 (Fed. Cir. 2012) (citing Fed. R.
`Civ. P. 8(d)(3), and holding the party was entitled to take inconsistent
`positions); Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.
`Cir. 2010) (claims are indefinite, and in the alternative, anticipated); Nippon
`Suisan Kaisha Ltd. v. Pronova Biopharma Norge, AS, PGR2017-00033,
`Paper 7 (Jan. 17, 2018) (instituting review of alternative positions of
`indefiniteness and anticipation/obviousness).
`Here, Petitioner proposes, “each term should be given its plain and
`ordinary meaning.” Pet. 19. Patent Owner objects to Petitioner’s position,
`but does not propose constructions for any of the claim terms. See Prelim.
`Resp. 5–16. For purposes of this decision, we do not find it necessary to
`construe expressly any claim terms.
`For the reasons stated above, we decline to deny the Petition for the
`alleged deficiency in compliance with 37 C.F.R. §§ 42.104(b)(3), 42.11,
`11.18(b)(2), as requested by Patent Owner.
`C. Fumarolo (Ex. 1005)
`Fumarolo describes a dispatch system with a display-based terminal,
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`such as a CAD (Computer Aided Dispatch) terminal, having an integrated
`mapping program to communicate directly with communication units from a
`single map environment. Ex. 1005, Abstract, 1:18–22, 2:52–56. Fumarolo
`explains that when such a system receives incident information from a 911
`system that is coupled to the CAD system, a dispatcher “can quickly
`determine which communication unit users (e.g., policemen, firemen,
`paramedics, and so forth) would be in the best situation to respond to the
`incident.” Id. at 1:43–45. Fumarolo further explains the locations of the
`communication units are typically provided to the CAD system on a periodic
`basis by an automatic vehicle location (AVL) system that is coupled to the
`CAD system via a dedicated communication link.
`Figure 1 of Fumarolo is shown below.
`
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`
`Figure 1, shown above, depicts Fumarolo’s communication system
`that includes a display based terminal 101 in communication 116 with a
`wireless infrastructure 103 through an interface 129. See Ex. 1006, 4:23–38.
`The wireless infrastructure 103 permits communication 114 with a plurality
`of mobile wireless units 105–113. Id. at 4:6–22. Fumarolo explains that
`terminal 101’s processor 121 “receives location coordinates of the
`communication units 105–113 on a periodic basis from the AVL system
`115, from the communication units 105–113 themselves, or from the
`wireless infrastructure 103 in accordance with known techniques.” Id. at
`8:37–43. Processor 121 then instructs GUI 119 to “display the locations of
`
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`the communication units 105–113 on the map . . . or a pulldown menu
`identifying the types of communications and/or the modes of transmission
`supported by the system 100.” Id. at 43–48. Terminal 101 displays a map to
`the user indicating locations of communication units in at least a portion of
`the communication system. Id. at 3:23–26. Terminal 101 then “receives a
`selection from the map [from the user] . . . of at least one communication
`unit and an indication of the user’s desire to communicate with the selected
`communication unit or units.” Id. at 3:26–31. Based on the selection,
`terminal 101 may communicate with the communication units via
`“individual or private communication,” “group communication,” “voice
`communication,” “data communication,” or some combination thereof. Id.
`at 5:53–60.
`
`D. Sheha (Ex. 1006)
`Sheha is directed to a method and apparatus for sending and retrieving
`location relevant information to a user by selecting and designating a point
`of interest that is displayed on a graphical user interface and sending the
`location information associated with that point of interest to a receiver that is
`also selected using the graphical user interface. Ex. 1006, Abstract. Sheha
`explains that “providing a solution enabling users to graphically send,
`request, and plan, in real-time, location-relevant information between users
`and devices would prove especially useful for wireless devices that
`incorporate positioning technologies, such as Global Positioning Satellite
`(GPS) devices,” typically used in industrial applications such as Automatic
`Vehicle Location (AVL) or Feet Tracking. Id. at ¶¶ 7, 18. Sheha also
`explains the “invention allows users to send map identifiers using the real-
`time communication system . . . to other users in their roster list or, in an ad-
`hoc manner, to other users identified by a unique identifier, such as an e-
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`mail address, telephone number, or the like.” Id. at ¶ 99. Sheha explains
`that the invention “may be practiced by using communication devices such
`as a personal computer, a personal digital assistance, in-vehicle navigation
`systems, or a mobile telephone.” Id. at Abstract.
`
`E. Lazaridis (Ex. 1007)
`Lazaridis describes a system “for allowing mobile stations to
`exchange identification information using a predetermined communication
`path for the purpose of obtaining identification information to use in
`establishing a different communication path for communicating.” Ex. 1007,
`Abstract.
`Figure 3 of Lazaridis, shown below, depicts such a system.
`
`
`Figure 3 of Lazaridis, shown above, is a block diagram of a system for
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`exchanging mobile station identification information through an SMS
`service. Id. at ¶ 11. As Lazaridis explains, the current IP address of the first
`mobile station 300 is sent in an SMS message 310, which is addressed to the
`second mobile station 301. Once the second mobile station 301 has received
`an SMS message 310 containing identification information for the first
`mobile station 300, the current IP address associated with the first mobile
`station 300 is known to the second mobile station 301, which can send data
`to the first mobile station 300. Id. at ¶ 31.
`
`F. Principles of Law on Obviousness
`Section 103(a) forbids issuance of a patent when “the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.” In Graham, the Court set out a framework for
`applying the statutory language of § 103: under § 103, the scope and content
`of the prior art are to be determined; differences between the prior art and
`the claims at issue are to be ascertained; and the level of ordinary skill in the
`pertinent art resolved.
`The Supreme Court has made clear that we apply “an expansive and
`flexible approach” to the question of obviousness. KSR Int’l Co. v. Teleflex,
`Inc., 550 U.S. 398, 415 (2007). Whether a patent claiming the combination
`of prior art elements would have been obvious is determined by whether the
`improvement is more than the predictable use of prior art elements according
`to their established functions. Id. at 417. Reaching this conclusion,
`however, requires more than a mere showing that the prior art includes
`separate references covering each separate limitation in a claim under
`examination. Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed.
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`Cir. 2011). Rather, obviousness requires the additional showing that a
`person of ordinary skill at the time of the invention would have selected and
`combined those prior art elements in the normal course of research and
`development to yield the claimed invention. Id.
`
`G. Patentability Analysis
`Petitioner contends independent claims 1, 28, and 41 are obvious over
`the teachings of Fumarolo, Sheha, and Lazaridis, either alone or in
`combination. Pet. 22. Independent claim 54, having an additional
`limitation, is argued separately by Petitioner. See Pet. 46–48. Claims 1, 28,
`and 41 and are substantially similar. Independent claim 1, a method claim,
`is exemplary.
`We have considered the evidence and arguments provided by
`Petitioner to demonstrate that the combination of Fumarolo, Sheha, and
`Lazaridis teaches or suggests the limitations of claim 1, and we find that
`Petitioner has made a sufficient showing for purposes of institution. We
`discuss limitations 1.1, 1.2, 1.4, and 1.8 and Petitioner’s rationale to
`combine the relevant prior art below.
`1. Analysis of Claim 1 Limitations
`[1.1] performing by a first device:
`obtaining contact information of a plurality
`of second devices, wherein the contact
`information comprises respective telephone
`numbers of the second devices;
`With respect to this limitation, Petitioner maps the recited “first
`device” to Fumarolo’s “display-based terminal.” Pet. 22. As Fumarolo
`explains, “[t]he communication system 100 includes a display-based
`terminal 101, a wireless infrastructure 103, and a plurality of communication
`units 105-113 that communicate with the wireless infrastructure 103 over
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`one or more communication resources 114.” See Ex. 1005, 3:61–65. Figure
`1 of Fumarolo, depicting the communication system, is shown below.
`
`
`Figure 1 of Fumarolo, shown above, depicts the components of
`Fumarolo’s communication system. Petitioner points out that Fumarolo’s
`display-based terminal 101 displays “a map to the terminal user indicating
`locations of communication units in at least a portion of a communication
`system.” Pet. 23 (citing Ex. 1005, 12:58–62). Petitioner also points out that
`Fumarolo teaches the “display-based terminal” may be implemented as a
`“remote terminal.” Id. (citing Ex. 1005, 4:66–5:21).
` Petitioner argues the recited “plurality of second devices” maps to
`Fumarolo’s “communication units,” as shown in annotated Figure 3 below.
`Id. at 24.
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`Fumarolo’s Figure 3, annotated by Petitioner shown above, depicts a
`distribution of Fumarolo’s “communication units.” Petitioner argues each
`communication unit in Fumarolo is associated with an “individual
`identification.” Id. at 23 (citing Ex. 1005, 9:64–65, 14:11–16, 9:48–49; Ex.
`1003 ¶ 77). When needed, Petitioner argues, “individual identification is
`obtained from memory of the display-based terminal.” Id. at 24 (citing Ex.
`1005, 9:29–35, 9:44–49, 14:11–19).
`Petitioner argues Fumarolo’s “individual identification” is an example
`of the recited “contact information,” because it is used by the display-based
`terminal 101 (the “first device”) to contact the communication units 105–113
`(the “plurality of second devices”). Id. at 23–24 (citing Ex. 1005, 8:53–9:6,
`9:29–35; Ex. 1003 ¶ 77). Petitioner argues that to the extent Fumarolo “is
`determined not to explicitly disclose the claimed ‘respective telephone
`numbers,’ Sheha discloses this limitation.” Id. at 25.
`Petitioner argues, “Sheha discloses a method for displaying locations
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`Patent 9,408,055 B2
`of communication devices (e.g., phones and vehicles) on a map of a display
`device.” Id. at 25 (citing Ex. 1006 ¶¶ 19, 22, 84, Fig. 2). Petitioner argues
`Sheha’s map is interactive, allowing displayed objects to be selected. Id.
`(citing Ex. 1006 ¶¶ 25, 27). Petitioner also argues Sheha’s displayed objects
`are associated with unique identifiers such as a telephone number. Id.
`(citing Ex. 1006 ¶¶ 99, 22; Ex. 1003 ¶ 80). Petitioner argues, “Sheha
`therefore discloses communication units having ‘respective telephone
`numbers.’” Id. (citing Ex. 1003 ¶ 81).
` Petitioner also argues Sheha discusses “mobile devices” in the
`context of dispatcher applications. Id. (citing Ex. 1006 ¶ 7). This
`implementation, Petitioner argues, “represents a simple substitution of one
`known element (i.e., Fumarolo’s two-way wireless data terminal) for another
`(Sheha’s mobile wireless phone).” Id. (citing Ex. 1003 ¶ 83). Petitioner
`points out that Fumarolo’s “communication units” may include “two-way
`wireless data terminals.” Id. at 24 (citing Ex. 1006, 4:6–8).
`Patent Owner argues the prior art does not disclose or suggest the
`recited “first device.” Prelim. Resp. 26–27. Patent Owner argues,
`“Petitioner does not provide any evidentiary basis (that is not based on a
`conflation with the fixed terminal 101) in Fumarolo to suggest that any of
`the communication units 105-113 possess any display, software, and/or
`characteristics of the fixed terminal 101.” Id. at 22. Patent Owner also
`argues Petitioner mischaracterizes Fumarolo’s fixed terminal 101 as a
`“wireless device.” Id. (citing Pet. 9). Fumarolo’s terminal 101, Patent
`Owner argues, is a resource-abundant “fixed computer-aided dispatch
`(CAD) terminal”––not a mobile wireless device like a cell phone. Id. (citing
`Ex. 1006, 3:21–31, 4:23–38).
`Patent Owner also argues, “Petitioner has not shown how the prior art
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`Patent 9,408,055 B2
`discloses or suggests a first device that obtains respective telephone numbers
`of second devices.” Id. at 28. Patent Owner argues, “Petitioner has not
`shown that Fumarolo’s communication units 105–113 obtain telephone
`numbers. Instead, Fumarolo describes a dispatch system in which the
`dispatch terminal 101 automatically accesses a pre-stored identifier of a
`chosen communication unit 105-113.” Id. (citing Ex. 1005, 9:29–35).
`One problem with Patent Owner’s argument, however, is that the
`claim recites “a first device: obtaining contact information of a plurality of
`second devices, wherein the contact information comprises respective
`telephone numbers of the second devices.” Petitioner maps the recited “first
`device” to Fumarolo’s “display-based terminal” 101 and the recited
`“plurality of second devices” to Fumarolo’s “communication units” 105-
`113. See Pet. 22, 24. Thus, for purposes of this limitation, Petitioner needs
`to show that Fumarolo’s “display-based terminal” obtains the respective
`telephone numbers of Fumarolo’s “communication units,” not the other way
`around as Patent Owner seems to argue.
`Here, Petitioner argues each “communication unit” in Fumarolo is
`associated with an “individual identification.” Pet. 23 (citing Ex. 1005,
`9:64–65, 14:11–16, 9:48–49; Ex. 1003 ¶ 77). When needed, this “individual
`identification is obtained from memory of the display-based terminal.” Id. at
`24 (emphasis added) (citing Ex. 1005, 9:29–35, 9:44–49, 14:11–19). Thus,
`Petitioner has explained how Fumarolo’s “display-based terminal” (the
`recited “first device”) obtains the “individual identification” of the
`“communication units” (the recited “plurality of second devices”).
`Petitioner further argues Fumarolo’s “individual identification” is an
`example of the recited “contact information” because it is used by the
`display-based terminal (the “first device”) to contact the communication
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`Patent 9,408,055 B2
`units (the “plurality of second devices”). Id. at 23–24 (citing Ex. 1005,
`8:53–9:6, 9:29–35; Ex. 1003 ¶ 77). Petitioner argues that to the extent
`Fumarolo “is determined not to explicitly disclose the claimed ‘respective
`telephone numbers,’ Sheha discloses this limitation.” Id. at 25.
`Patent Owner argues that Petitioner “does not explain how Sheha
`discloses or suggests a first device that obtains respective telephone numbers
`of second devices.” Prelim. Resp. 28. Patent Owner argues, Petitioner
`“states simply ‘Sheha also explains that these displayed objects are
`associated with unique identifiers such as telephone number.’” Id. at 28–29
`(citing Pet. 25). This statement, Patent Owner argues, and Sheha itself,
`“does not specify how or whether the telephone numbers are obtained by a
`first device, as required by the claims.” Id. at 29.
`Petitioner’s declarant, Mr. David Williams, however, explains that the
`type of location-based service described in Sheha is similar to the one in
`Fumarolo. Ex. 1003 ¶ 83. Mr. Williams testifies a person of ordinary skill
`in the art “would have recognized that Sheha’s implementation of wireless
`devices could be equally applied to Fumarolo’s AVL and dispatch
`application.” Id. Mr. Williams testifies that a person of ordinary skill in the
`art would have been able to substitute Fumarolo’s two-way wireless data
`terminals (i.e., “communication units”) with Sheha’s “mobile wireless
`phone.” Id.
`Mr. Williams further testifies that “after incorporating wireless phones
`into Fumarolo’s system, it would have further been obvious to a [person or
`ordinary skill in the art] to have implemented Fumarolo’s ‘individual
`identification’ (that identifies Fumarolo’s communication units) as a
`telephone number.” Id. at ¶ 84. “As Sheha explains and as would be readily
`known to a [person or ordinary skill in the art], telephone numbers are
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`Patent 9,
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