Trials@uspto.gov
`571-272-7822
`
`Paper9
`Entered: April 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL ANDAPPEAL BOARD
`
`APPLEINC.
`Corrected Petitioner,
`
`Vv.
`
`EVOLUTIONARYINTELLIGENCE,LLC,
`Patent Owner.
`
`Case IPR2014-00085
`Patent 7,010,536
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. MCNAMARA, NEIL T. POWELL,
`and GREGG I. ANDERSONAdministrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper9
`Entered: April 25, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL ANDAPPEAL BOARD
`
`APPLEINC.
`Corrected Petitioner,
`
`Vv.
`
`EVOLUTIONARYINTELLIGENCE,LLC,
`Patent Owner.
`
`Case IPR2014-00085
`Patent 7,010,536
`
`Before KALYAN K. DESHPANDE, TREVOR M. JEFFERSON,
`BRIAN J. MCNAMARA, NEIL T. POWELL,
`and GREGG I. ANDERSONAdministrative Patent Judges.
`
`ANDERSON,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`
`
`Case IPR2014-00085
`Patent 7,010,536
`
`.
`
`I. INTRODUCTION
`
`On October 23, 2013, Apple Inc. (“Apple”or “Petitioner’) filed a
`
`Corrected Petition for Inter Partes Review of claims 2-16 of U.S. Patent No.
`
`7,010,536 (Ex. 1001, “the ’536 Patent”)'. Paper 3 (“Corrected Pet.”). On
`
`January 29, 2014, Evolutionary Intelligence, LLC (“Evolutionary
`
`Intelligence” or “Patent Owner”), filed a preliminary response. Paper 7
`
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314.
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a), which provides as follows:
`
`THRESHOLD.—TheDirector maynot authorize an inter
`partes review to be instituted unless the Director determines
`that the information presentedin the petition filed under section
`' 311 and any response filed under section 313 showsthat there
`is a reasonablelikelihood that the petitioner would prevail with
`respect to at least 1 of the claims challengedin the petition.
`Upon consideration ofthe Corrected Petition and preliminary
`response, we determine that the information presented in the Corrected
`Petition does not establish that there is a reasonable likelihood that Petitioner
`would prevail in showing unpatentability of any of the challenged claims.
`
`Accordingly, pursuant to 35 U.S.C. § 314, we do notinstitute an inter partes
`review of the ’536 Patent.
`|
`A. Related Proceedings
`Corrected Petitioner states that on October 23, 2012, it was served
`
`with a complaint alleging infringement of the ’536 Patent in Civil Action
`
`' Petitionerinitially filed a Corrected Petition intended for a different inter
`partes review on October 22, 2013 and corrected the error on October23,
`2013. The Corrected Petition has been accorded a filing date of October 23,
`2013.
`.
`
`2
`
`
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`Case IPR2014-00085
`Patent 7,010,536
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`No. 6:12-cv-00783-LED in the Eastern District of Texas, which was
`transferred to the Northern District of California as Civil Action No.3: 13-
`cv-4201-WHA.:Corrected Pet. 4. The 536 patent is also the subject of
`several other lawsuits againstthird parties. Jd. at 5.
`
`B. The ’536 Patent
`
`The ’536 patent is directed towards developing intelligence in a
`
`computeror digital network by creating and manipulating information
`
`containers with dynamicinteractive registers in a computer network. Ex.
`
`1001, 1:11-20; 3:1-5. The system includes an input device, an output
`
`device, a processor,-a memory unit, a data storage device, and a means of
`
`communicating with other computers.
`
`/d. at 3:6-11. The memory unit
`
`includes an information container made interactive with, among other
`
`elements, dynamicregisters, a search engine, gateways, a data collection and
`| reporting means, an analysis engine, and an executing engine. Jd. at
`
`3:15-23.
`The °536 patent describes a containeras an interactive nestable logical
`
`domain, including dynamic interactive evolving registers, and which
`
`maintains a unique network-widelifelong identity. Jd. at 3:29-35. A
`
`container, at minimum,includesa logically encapsulated portion of
`cyberspace, a register, and a gateway. Id. at 9:2-4. Registers determine the
`interaction of that container with other containers, system components,
`system gateways, events, and processes on the computer network.
`/d. at
`|
`3:43-46. Container registers may be values alone or contain code to
`establish certain parameters in interaction with other containers or gateways.
`Id. at 9:19-22, Gateways are structurally integrated into each container or
`strategically placed at container transit points. [d. at 4:54-57. Gateways
`
`3
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`
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`Case IPR2014-00085
`Patent 7,010,536
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`govern the interaction of containers encapsulated within their domain by
`readingandstoring register information of containers entering andexiting
`that container. Id. at 4:58-66; 15:46-49.
`The system for creating and manipulating information containersis
`
`set forth in Figure 2B as follows:
`
`Figure 2B illustrates a computer network showing nested containers,
`
`computer servers, and gatewaysat Site 1 through Site 7. Jd. at 10:59-62.
`
`AnyofSites 1 through 7 may interact dynamically within the system; for
`example, Site 1 shows a single workstation with a container and gateway
`" connected to an Intranet. Jd. at 10:64-67. Site 2 shows a server with a
`gateway in relationship to various containers. Id. at1 1:2-3. Site 3 shows an
`Internet web page with a containerresiding on it. /d. at 11:3-4. Site 4 shows
`a personal computer with containers and a gateway connectedto the
`Internet: Jd. at 11:4-6. Site 5 shows a configuration of multiple servers and
`containers on a Wide Area Network.
`/d. at 11:6-7. Site 6 showsa work
`station with a gateway and containers within a container connected to a
`
`_
`
`Wide Area Network. Jd. at 11:7-9. Site 7 shows an independent gateway,
`
`4
`
`
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`Case IPR2014-00085
`Patent 7,010,536
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`capable of acting as a data collection and data reporting site as it gathers data
`from theregisters of transiting containers, and as an agent of the execution
`engineas it alters the registers .of transient containers. /d. at 11:8-13.
`
`An example of the configuration the containers may have is provided
`
`in Figure 4 as follows:
`
`:
`
`Container Registre £01000 to 125000
`
`1m
`
`
`
`Q
`
`Figure 4 shows an example of container 100 that includes
`
`containerized elements 01, registers 120, and gateway 200. Ex. 1001, 12:65-
`
`67. Registers 120 included in container 100 include, inter alia, active time -
`register 102000, passive time register 103000,neutral time register 104000,
`active space register 111000, passive space register 112000, neutral space
`
`register 113000, and acquire register 123000. Jd. at 14:31-39.
`
`
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`Case IPR2014-00085
`Patent 7,010,536
`
`C. Illustrative Claim
`Claims 2 and ‘16 are the two independentclaims challenged. Claim 2
`is reproduced below:
`
`2. An apparatus for transmitting, receiving and
`manipulating information on a computer system, the apparatus
`including a plurality of containers, each container being a
`logically defined data enclosure and comprising:
`
`an information element having information;
`
`aplurality of registers, the plurality of registers forming
`_
`' part of the container and including
`
`a first register for storing a unique container
`identification value,
`
`a secondregister having a representation
`designating space and governing interactions of the
`container with other containers, systems or processes
`accordingto utility of information in the information
`elementrelative to an external-to-the-apparatus three
`dimensionalspace,
`
`an active spaceregister for identifying space in
`whichthe container will act upon other containers,
`processes, systems or gateways,
`
`a passiveresister for identifying space, in which -
`the container can be acted uponby othercontainers,
`processes, systems, or gateways,
`
`a neutral spaceregister for identifying space in
`whichthe container mayinteract with other containers,
`processes, systems, or gateways; and
`
`a gatewayattachedto and formingpart of the container,
`the gateway controlling the interaction of the container with
`other containers, systems, or processes.
`
`6
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`Case IPR2014-00085
`Patent 7,010,536
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`D. Prior Art Relied Upon
`
`eetcre
`
`Reser
`
`Corrected Petitioner relies upon the following prior art references:
`
`
`
`
`
`US 5,684,476
`US5,938,721
`
`
`
`
`
`slimes
`
`fee exhibia
`
`Dec. 30, 1993
`Oct. 24, 1996
`
`Ex. 1005
`Ex. 1006
`
`
`
`|
`The Alleged Grounds of Unpatentability
`E.
`Corrected Petitioner alleges the following grounds of unpatentability:
`
`2, 4-8, 13 and16|35 U.S.C. § 103(a)
`
`
`
`
`2-14 and 16
`
`35 U.S.C. § 102(e)
`
`Anderson
`
`
`2-14 and 16
`
`
`35 U.S.C. § 102(e)
`
`
`
`
`
`
`.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);.
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). The termsalso are given their ordinary and customary meaning as
`
`would be understood by oneofordinary skill in the art in the context of the
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`
`
`
`Case IPR2014-00085
`Patent 7,010,536
`
`1. “container”
`
`Independentclaims 2 and16 recite the term “container,” as do various
`_
`dependentclaims,e.g., claims 5 and 7. As discussed above, the ’536 patent
`
`specification describes a containeras an interactive nestable logical domain,
`including dynamic interactive evolving registers, and which maintains a
`unique network-widelifelong identity. Ex. 1001, 3:29-35. Petitioner cites
`to the ’536 patent specification explaining that a “container”is “a logically
`defined data enclosure which encapsulates any elementor digital segment
`
`(text, graphic, photograph, audio, video, or other), or set of digital segments,
`or referring now to FIG. 3C, any system componentorprocess, orother
`containers or sets of containers.” Corrected Pet. 8-9 (citing Ex. 1001, 8:64-
`
`9:2). Petitioner then argues that the broadest reasonable interpretation of
`
`“container”is “‘a logically defined data structure that contains a whole or
`
`partial digital element(e.g., text, graphic, photograph, audio, video, or
`
`other), or set of digital segments, or any system componentor process, or
`
`other containers or sets of containers.” Jd. at 9 (citing Ex. 1003, |] 54-55).
`Patent Ownerproposesthat the broadest reasonable construction of |
`“container” is “a logically defined data enclosure which encapsulates any
`
`_elementor digital segment(text, graphic, photographic, audio, video, or
`
`other), or set of digital elements.” Prelim. Resp. 25.
`
`Patent Owner, however, arguesthat defining “container” as something
`
`that “contains,” as Petitioner proposes, is circular and unhelpful. Prelim.
`
`Resp. 26. Further, Patent OwnerarguesPetitioner’s proposed construction
`
`ignores the relationship between “containers” and “encapsulation.” Jd.
`
`Patent Owneralso argues “encapsulation”refers to “treat[ing] a collection of
`
`structured information as a whole without affecting or taking notice ofits
`
`
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`— Case IPR2014-00085
`Patent 7,010,536
`
`internal structure” and “encapsulated”further refers “tothe process of
`wrapping data in protocolsthat allow its transmission from one network to
`
`another, as occurs when a webpageis sent using HTML.” /d. (citing Ex.
`
`2001).
`
`Weare not persuaded by Patent Owner’s arguments. The ’536 patent
`
`disclosesthat a container “at minimum includesin its construction a
`logically encapsulated portion of cyberspace, a register and a gateway” and a
`container “at minimum encapsulates a single digital bit, a single natural
`numberorthe logical description of another container, and at maximum all
`defined cyberspace, existing, growing and to be discovered, including but
`notlimited to all containers, defined and to be defined in cyberspace.” Ex.
`
`1001, 9:2-9. The ’536 patent doesnot limit the terms “logically defined” or
`
`“encapsulated”to “structured information as a whole”regardless ofits
`
`internal structure or “wrapping data” in preparation for transmission. The
`
`claims also do not require such limitations. Accordingly, we do not agree
`
`with Patent Ownerthat “logically defined” or “encapsulated” require
`anything more than “contained within.””
`
`Accordingly, based on the proposed construction of “container” by
`
`both Petitioner and Patent Owner, and for the purposesof this decision, we
`
`construe “container” to mean “a logically defined data enclosure which
`
`encapsulates any element or digital segment(text, graphic, photograph,:
`audio, video, or other), or set of digital elements.”
`
`Related U.S. Patent No. 7,702,682 B2, the patent at issue in IPR2014-
`00079 and IPR2014-00080,recites the terms “logically defined” and/or
`“encapsulated” in independent claims 1 and 19-23. Ourinterpretation of
`these terms is consistent with our analysis in IPR2014-00079 and IPR2014-
`00080.
`.
`
`
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`Case IPR2014-00085
`Patent 7,010,536
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`2. “register”
`Independent claims'2 and 16 recite “a plurality of registers, the
`
`plurality of registers forming part of the container.” Petitioner proposesthat
`
`the plain meaning of“register”is “value and/or code associated with a
`
`container” based on the contextof “register” in the ’536 patent specification,
`
`where container registers ‘““may be values alone or contain codetoestablish
`
`certain parameters in interaction with other containers 100 or gateways 200.”
`
`Corrected Pet. 9-10 (citing Ex. 1001, 9:19-23).
`
`Patent Ownerarguesthat the term “register” encompasses “a group of
`
`(usually) bistable devices that are used to store information within a
`
`computer system for high speed access” and “‘a memory location within a
`
`microprocessor, used to store values and external memory addresses while
`
`the microprocessor performslogical and arithmetic operations on them.”
`Prelim. Resp. 27 (citing Exs. 2002, 2003). Based on these dictionary
`definitions, Patent Ownerproposesthat “register” means“a memory
`location within a computerthat stores data.” Jd. at 28. Patent Owner
`
`acknowledgesthat its proposed construction is similar to Petitioner’s
`
`construction, but argues that Petitioner’s construction is unreasonably broad
`and may encompass unpatentable subject matter. Id. at 28.
`Wedisagree with Patent Owner. Specifically,we do not agree with
`
`‘Patent Ownerthat “register” must require “a memory location within a
`
`computer.” The ’536 patent specification and claims do not impose such a
`limit to the meaning of “register.” The ’536 patent describes “container:
`
`registers” as follows:
`Containerregisters 120 are interactive dynamic values appendedto
`the logical enclosure of an information container 100, and serve to
`govern the interaction of that container 100 with other containers 100,
`
`10
`
`
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`Case IPR2014-00085
`Patent 7,010,536
`
`container gateways 200 and the system 10, and to record thehistorical
`interaction of that container 100 on the system 10. Container registers
`120 maybe values alone or contain code to establish certain
`parameters in interaction with other containers 100 or gateways 200.
`
`Ex. 1001, 9:14-23. We see no reasonto limit the scope of “register” to
`
`include limitations neither described by the specification nor required by the
`claims. Therefore, we are persuaded byPetitioner’s argumentthat the
`broadest reasonable construction of “register,” as it is used in the ’536 patent
`is “value or‘code associated with a container.”
`_
`
`B. The Declaration ofDr. Houh in the Corrected Petition
`
`The Petition for inter partes review filed on October 22, 2013 (Paper
`
`1, “Pet.””) was identical to the Petition in IPR2013-000086. The sole
`
`challenge to patentability in the Petition filed on October 22, 2013 was that
`
`claims are unpatentable under 35 U.S.C. § 102(e) based on US5,836,529, to
`Gibbsfiled October 31, 1995. Pet. 8-30.? The Petition filed on October 22,
`2013, cites the Declaration ofHenry Houh (Ex. 1003). Dr. Houh’s
`declaration is limited to a discussion of Gibbs, and contains no discussion or
`
`analysis of any otherpriorart.
`On October 23, 2013, Petitioner filed a Corrected Petition. The
`
`Corrected Petition challenges the patentability of claims 2-14 and 16 based
`on Anderson, Dussell, and general knowledgein the field. Corrected Pet. 8-
`51. Dr. Houh’s declaration is Exhibit 1003 to the Petition and the Corrected
`Petition and doesnot address either Anderson or Dussell. Ex. 1003 Jf 66-
`
`194.
`
`> The Corrected Petition does not include page numbers. Wehaveassigned
`page numbers beginning with page | at heading I-A. and concluding with
`page 31 at heading V. Theassigned page numbers appear to correspondto
`page numbersin the Table of Contents.
`11
`
`
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`Case IPR2014-00085
`Patent 7,010,536
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`In Captioncall, LLC v. Ultratec, Inc., IPR2013-00544,slip op. at 14-
`
`15 (PTAB March5, 2014)(Paper6), the Boardheld that the information
`presented in the petition, even without an expert declaration, established a
`
`reasonable likelihood that Petitioner would prevail on the asserted grounds
`of unpatentability. Similarly, in this case, we analyze the CorrectedPetition
`to determineifthe arguments made regarding thereferencesaresufficientto
`establish a reasonable likelihood that Petitioner will prevail on the asserted
`_groundsonat least one claim of the ’536 patent.
`
`For reasons detailed below, weare not persuadedthat Petitioner has’
`shown that it is reasonably likely to prevail with respect to at least one ofthe
`claims. 37 C.F.R. § 42.20(c). A petition “must specify where each element
`of the claim is found in the prior art patents or printed publications relied
`upon[,]” andit “must include .
`.
`. a detailed explanation of the significance
`
`of the evidence including material facts[.]” 37 C.F.R. § 42.104(b)(4); 37
`
`C.F.R. § 42.22(a). “The Board may exclude or give no weight to the
`
`evidence wherea party hasfailed to state its relevance or to identify specific
`portions of the evidence that support the challenge.” 37 C.F.R.
`- § 42.104(b)(5).
`
`C. Anticipation by Anderson
`
`The Corrected Petition directs us to the declaration of Dr. Houh for a
`summary of Anderson (Ex. 1005). Corrected Pet. 15 (citing Ex. 1003 9 70-
`96). Dr. Hough does not address Anderson.
`
`12
`
`
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`Case IPR2014-00085
`Patent 7,010,536
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`Overview ofAnderson
`
`Anderson discloses a location system for a farm implementtraveling
`in an agricultural field. Ex. 1005, 4:9-18. The location system provides a
`real-time farm implementposition indication so that data from a location
`indexed database can be used to control the vehicle’s actions. /d. The
`database includes a geographical information system (GIS) whichstores a
`map ofthearea in whichthe vehicle will operate. /d. at 8:1-4. The GIS
`databasealso stores information such as weed maps, soil attributes, soil test
`results, pest infestation, climate, terrain, hydrography, agricultural chemical
`
`needs, and previousyields to a fine resolution. /d. at 8:23-38. This data is
`
`used to regulate location-specific application of agricultural chemicals and
`seed. Id.
`|
`
`Figure 1 of Andersonis reproduced below.
`
`FIG,
`
`] et
`
`FLUX
`COMPASS
`GPS
`RECEIVES
`
`12
`
`20
`
`24
`
`,
`42
`
`GUN
`
`—»
`INCLINOMETER
`(OPTIONAL)
`
`23
`
`29
`
`22
`
`.
`
`44 8
`
`,
`
`18
`
`POSITION
`
`31
`
`27
`
`10
`
`2
`
`
`INFORMATION 35
`
`GEOGRAPHIC
`
`
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`Case IPR2014-00085
`Patent 7,010,536
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`As shownin Figure 1, global positioning system (GPS) receiver 20is also
`mounted on the vehicle. Ex. 1005, 4:43-49. GPS receiver 20 derives speed
`
`information, representing the current speed of the vehicle, and provides a
`
`_ GPSspeedsignalon line 22, representative of the current speed of the
`
`vehicle to position computer 18 via communication link 23. Jd. The
`
`- position computer automatically detects operator moves varying from a
`
`heading established by the flux compass, and the operatoris directed on a
`
`planned path throughthe field. Id. at 11:37-40.
`
`Claims 2-14 and 16
`
`Claim 2 recites in the preamble “[A]Jn apparatus for transmitting,
`receiving and manipulating information on a computersystem, the apparatus —
`including a plurality ofcontainers, each container being a logically defined
`data enclosure.”
`Petitioner’s general statements about Anderson donot specify whatin
`Andersonactually discloses the claimed “container.” Corrected Pet. 15-16.
`
`Petitioner’s references to paragraphs 97-103 of the declaration of Dr. Houh,
`
`which discuss Gibbs, are not relevant to Anderson. Neither the Corrected
`Petition nor Dr. Houh’s declaration specifically identifies what portion of
`Anderson arguably meets the container limitation, or any other limitation of
`claim 2.
`Patent Owner argues the Corrected Petition does not show howthe
`container limitation is met by Anderson. Prelim. Resp. 35. Patent Owner
`
`contends the Corrected Petition:
`
`* The preamble forms an antecedent basis for “containers” as used in the
`claims and will be given weight. See, Eaton Corp. v. Rockwell Int'l Corp.,
`323 F.3d 1332, 1339 (Fed. Cir. 2003).
`14
`
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`Case IPR2014-00085
`Patent 7,010,536
`
`cites various disclosures.of Anderson(e.g., vehicles, sensors, a GIS
`database), but never identifies exactly which oftheseis “the
`container’ to whichall the other elements of the claim aretied.
`Corrected Petition at 15-16. Although the Corrected Petition
`references “data structures, such as the GIS database,” the Corrected
`Petition fails to establish that Anderson discloses an apparatus with a
`“plurality” of GIS databases as required by the claims. See id.
`
`“ Weagree that Petitioner has failed to state Anderson’s relevanceor to
`
`identify specific portions of Anderson that support the challenge. 37 C.F.R.
`
`§ 42.104(b)(5). Even if the GIS database is arguably a container, which
`seemsto bethe closest disclosure ofAnderson to the container limitation,
`there is only one GIS database and notthe plurality required by the claims at
`issue.
`|
`
`The Corrected Petition generally does not cite specifically to any
`
`disclosure in Anderson for any ofthe limitations of claim 2. Absent such
`
`specificity, Petitioner has not establishedit is likely to prevail in
`
`demonstrating the unpatentability of claim 2.
`
`Claim 16 recites the same “container” limitation, and Petitionerrelies
`on the sameevidence. Corrected Pet. 29. For the samereasons discussed
`above, Petitioner has not shownit is reasonably likely to prevail in
`demonstrating that claim 16 is anticipated by Anderson. Claims 3-14
`depend from claim 2 and necessarily require the same containerlimitation,
`
`whichPetitioner has not shownis present in Anderson.
`
`15
`
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`Patent 7,010,536
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`For the reasons discussed above, we are not persuadedthat Petitioner
`
`has showna reasonable likelihood that any of claims 2-14 and 16 would be
`unpatentable as anticipated by Anderson.
`-C. Obviousness over Anderson
`
`Petitioner relies on the same evidence as discussed in connection with
`
`its anticipation contentions as to claims 2, 4-8, 13 and 16. Corrected Pet. 30.
`
`For the reasons discussed above, Petitioner has not shown a reasonable
`likelihood of demonstrating that any of claims 2, 4-8, 13 and 16 is
`
`unpatentable as obvious over Anderson.
`D. Anticipation by Dussell
`
`The Corrected Petition directs us to the declaration of Dr. Houh for a
`summary of Dussell (Ex. 1006). Corrected Pet. 38 (citing Ex. 1003 {J 198-
`
`221). Dr. Houh’s declaration ends at paragraph 195 and doesnot address
`
`Dussell. See Ex. 1003.
`
`Overview ofDussell
`
`Dussell describes a computer assisted method of scheduling tasks.
`Ex. 1006 at 1:58-59. A task description is stored in a database accessible by
`~ amobile computer system. /d. at Abstract. The mobile computer system
`receives positioning informationcorresponding to its geographic location
`and indexes the database based on the positioning information when the
`information indicates that the mobile computer system is in a geographic
`
`location that facilitates completion of a task associated with the task
`
`description. Jd.
`
`16
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`Patent 7,010,536
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`Figure 1 of Dussell is reproduced below. Fig. 1
`
`Figure 1 showsdigital system 5 having database 10, mobile computer
`system 20 and location determination unit 30. Ex. 1006 at 3:27-29. The
`database may be a separate database maintained at some location remote
`
`from the mobile computer system or it may be a local database maintained
`
`within mobile computer system. Jd. at 3:29-32. The location determination
`" unit may be a Global Positioning System (GPS)receiver or otherunit
`
`capable of determining a geographic location of accompanying antenna32.
`
`Id. at 3:36-39.
`
`Claims 2-14 and 16
`
`Petitioner argues that Dussell discloses a database that contains
`records containing task descriptions and other information. Corrected Pet.
`38-39 (citing to non-existent paragraphs 198-205 in declaration ofDr.
`Houh). “Each of these records, along with the databaseitself, is a logically
`
`|
`
`117
`
`
`
`Case IPR2014-00085
`Patent 7,010,536
`
`defined data enclosure.” Jd. at 39. After discussing the location device and
`the receipt of location information by the database, Petitioner asserts that Ex.
`1006 thus discloses the claimed apparatus, including a plurality of
`_
`|
`containers. Id.
`
`Patent Ownerasserts that when discussing the “plurality of
`containers”or “the container,”the Corrected Petition “generically
`
`references ‘records.’” Prelim. Resp. 40-41. Patent Owner further contends:
`
`the Petition never identifies exactly which “records” in Dussell it is
`reading the “container” limitation onto. Jd. The réasonis, simply,
`that Dussell never identifies any database structures onto which to
`read these limitations. Dussell discloses the general concept of
`coupling a geographic database to a personal device assistant (PDA)
`with a geographic coordinate (“geocode”) index — nothing more. See
`Ex. 1006 at 7:13-32 (describing adding the geographic index onto
`prior art “to-do” software for PDAs). As such, it cannot, and does
`not, disclose any structure that correspondsto the “container” of claim
`2.
`
`Td.
`
`Petitioner also relies on the records of Dussell generally to meet the
`plurality of registers” limitation of claim 2. “Ex. 1006 [Dussell] describes a
`database containing many records which themselves contain information on |
`task descriptions and the corresponding locations associated with those task
`descriptions. Ex. 1003 J§ 198-204, 217-219.”° Corrected Pet. 40. The
`
`same disclosure of Dussell cannot be used to meet separate elements of the
`
`-same claim. See Becton Dickinson and Co.v. Tyco Healthcare Group LP,
`
`616 F.3d 1249, 1254 (Fed. Cir. 2010) (noting where a claim lists elements
`separately, “the clear implication of the claim language”is that those
`
`> As previously noted, the Houhdeclaration ends at paragraph 195. The
`paragraphscited by Petitioner do not exist in the record before us.
`18
`
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`Case IPR2014-00085
`Patent 7,010,536
`elements are “distinct components” ofthe patented invention) (internal
`citations omitted).
`
`Therecords relied on to meet both the “container” and “plurality of
`registers” limitations have not beensufficiently identified in Dussell. Even
`assuming the records of Dussell upon which Petitioner relies for each
`limitation are different; Petitioner has not cited to the subject matter in
`
`Dussell that explains what the recordsare, so that a determination can be
`
`made as to whetherthe limitations are sufficiently described.
`
`The Corrected Petition does not cite to any specific disclosure in .
`
`Dussell that meetsthe limitations of claim 2. As previouslystated, this is, in
`part, a result of reliance on the deficient declaration of Dr. Houh.
`Regardless ofthe reason, absent such specificity, Petitioner has not metits
`
`burden.
`
`Petitioner has not established a reasonable likelihood that claim 2 is
`
`unpatentable. Claim 16 has the same “container” and “plurality of registers”
`
`limitations as claim 2, and Petitioner relies on the same evidence. Corrected
`Pet. 50. For the same reasons previously discussed, Petitioner has not
`shownit is reasonably likely to prevail in demonstrating anticipation of
`
`claim 16 by Dussell. Claims 3-14 depend from claim 2 and necessarily
`
`require the samecontainerlimitation, which is lacking from Dussell.
`
`Therefore, Petitioner has not shown a reasonable likelihood that any
`
`of claims 2-14 and 16 would be unpatentable as anticipated by Dussell.
`
`III. CONCLUSION
`
`For the foregoing reasons, we are not persuadedthat the information
`
`presented in the Corrected Petition establishes a reasonable likelihood that
`
`19
`
`
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`Case IPR2014-00085
`Patent 7,010,536_
`
`Petitioner would prevail in establishing the unpatentability of any challenged
`claim ofthe ”536 Patent.
`
`Accordingly,it is
`
`ORDER
`
`ORDEREDthe Corrected Petition for inter partes review based on
`
`- Petitioner’s challenges to the patentability of claims 2-14 and 16 of the °536
`
`Patent is denied.
`
`For PETITIONER:
`
`Jeffrey P. Kushan
`Douglas I. Lewis
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`dilewis@sidley.com
`
`For PATENT OWNER:
`
`Anthony Patek
`Todd Kennedy
`pto@eutridesafier.com
`todd@gutridesafier.com
`
`20
`
`
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