Trials@uspto.gov
`Tel: 571-272-7822
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`
`
`
`
`Paper 36
`Entered: March 29, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01965
`Patent 7,884,713 B1
`____________
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`

`

`IPR2015-01965
`Patent 7,884,713 B1
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`I. INTRODUCTION
`
`In its Petition requesting an inter partes review, Alarm.com Inc.
`
`(“Petitioner”) asserted the unpatentability of claims 1–54 of U.S. Patent No.
`
`7,884,713 B1 (Ex. 1001, “the ’713 patent”), owned by Vivint, Inc. (“Patent
`
`Owner”). Paper 1 (“Pet.”), 4. The Petition identifies Alarm.com Inc. and
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`Alarm.com Holdings, Inc. as real parties in interest. Id. at 1. On March 30,
`
`2016, we issued a Decision granting institution of inter partes review of
`
`claims 1–54 of the ’713 patent. Paper 12 (“Dec. on Inst.”), 36. Patent
`
`Owner then filed a Patent Owner Response to the Petition (Paper 19, “PO
`
`Resp.”), and Petitioner replied (Paper 21, “Pet. Reply”). A consolidated
`
`hearing for the instant proceeding and related Case IPR2015-01977 was held
`
`on November 30, 2016. A transcript (Paper 35, “Tr.”) of that hearing is
`
`included in the record.
`
`We have jurisdiction under 35 U.S.C. § 6, and this Final Written
`
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73,
`
`addresses issues and arguments raised during the review. For the reasons
`
`discussed below, we determine that Petitioner has met its burden to prove,
`
`by a preponderance of the evidence, that claims 1–54 (“the challenged
`
`claims”) of the ’713 patent are unpatentable on the grounds upon which we
`
`instituted inter partes review.
`
`A. Applied References and Declaration
`
`Petitioner relies upon the following references, file history, and
`
`declaration in support of its grounds for challenging claims 1–54 of the ’713
`
`patent:
`
`
`
`
`
`2
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`

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`IPR2015-01965
`Patent 7,884,713 B1
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`
`
`1006
`
`Exhibit References, File History, and Declaration
`1003
`File History of Patent No. US 7,884,713 B2
`1005
`U.S. Patent Application Publication No. 2005/0012611 A1,
`publ’d Jan. 20, 2005 (“Osman”)
`U.S. Patent No. 6,680,675 B1, filed June 21, 2000, and issued
`Jan. 20, 2004 (“Suzuki”)
`U.S. Patent Application Publication No. 2004/0230685 A1,
`publ’d Nov. 18, 2004 (“Seligmann”)
`Declaration of Vernon Thomas Rhyne, Ph.D., P.E., R.P.A.
`
`1008
`
`1010
`
`Pet. ii.
`
`B. Asserted Grounds of Unpatentability
`
`We instituted inter partes review of the challenged claims based on
`
`the following grounds (Dec. on Inst. 36; see Pet. 5–6):
`
`Reference(s)
`Osman
`
`Claims Challenged
`Basis
`§ 102(b) 1–3, 7, 9–12, 14–21, 25, 27–30, 32–
`39,1 43, 45–48, and 50–54
`§ 103(a) 4–8, 22–26, and 40–44
`Osman and Suzuki
`Osman and Seligmann § 103(a) 13, 31, and 49
`
`C.
`
`Related Proceedings
`
`
`
`The ’713 patent is involved in a U.S. district court case captioned
`
`Vivint, Inc. v. Alarm.com Inc., No. 2:15-cv-00392-CW (D. Utah 2015).
`
`
`1 Although challenged in the Petition (Pet. 19, 33) and addressed in the
`Decision on Institution (Dec. on Inst. 1, 15), we inadvertently omitted claim
`39 from our listing of the claims on which we instituted this inter partes
`review. Id. at 36; see id. at 25. Despite this omission, both parties
`recognized that claim 39 was under review. PO Resp. 1 (“The Board
`instituted trial on claims 1-54 of U.S. Patent 7,884,713 (“’713 patent”) on
`anticipation and obviousness grounds.”); Pet. Reply 2 (“The Board should
`cancel claims 1-3, 9-16, 19-21, 27-34, 37-39 and 45-52. For the reasons set
`forth in the Petition and the Institution Decision, Osman alone or in
`combination with other references invalidates these claims.”).
`
`3
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`IPR2015-01965
`Patent 7,884,713 B1
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`Pet. 1; Paper 9, 2. Concurrently with the instant Petition, Petitioner filed a
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`second petition, Case IPR2015-01967, challenging claims 1–54 of the ’713
`
`patent on different grounds. Pet. 1. We denied institution of an inter partes
`
`review in that proceeding. Alarm.com Inc. v. Vivint, Inc., Case IPR2015-
`
`01967 (PTAB Mar. 30, 2016) (Paper 12). Petitioner also filed other
`
`petitions challenging the patentability of certain subsets of claims in the
`
`following patents owned by Patent Owner: (1) U.S. Patent No. 6,147,601
`
`(Cases IPR2015-02004, IPR2016-00116, IPR2016-00155, and
`
`IPR2016-01080); (2) U.S. Patent No. 6,462,654 B1 (Cases IPR2015-02003,
`
`IPR2016-00161, IPR2016-01110, and IPR2016-01124); (3) U.S. Patent No.
`
`6,535,123 B2 (Cases IPR2015-01995, IPR2016-00173, and
`
`IPR2016-01126); (4) U.S. Patent No. 6,717,513 B1 (Cases IPR2015-01997,
`
`IPR2016-00129, and IPR2016-01091); and (5) U.S. Patent No. 6,924,727
`
`B2 (Cases IPR2015-01977 and IPR2015-02008). See Paper 17, 1–2; Paper
`
`18, 1–2.
`
`II. THE ’713 PATENT (EX. 1001)
`
`A.
`
`Subject Matter
`
`The ’713 patent relates generally to methods, systems, and computer
`
`program products for “processing an alert” (Ex. 1001, col. 6, l. 62), based on
`
`“location-aware information processing” (id. at col. 1, ll. 17–18). More
`
`specifically, the independent claims are directed to “techniques for alerting a
`
`user based in whole or in part on a location.” Id. at col. 1, ll. 18–20; claims
`
`1, 19, and 37. The claimed subject matter is directed to allowing a user to
`
`enter or to receive a message, such as a reminder, when the user is at or near
`
`a particular location. See id. Figs. 2–4.
`
`
`
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`
`4
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`IPR2015-01965
`Patent 7,884,713 B1
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`Figure 2 of the ’713 patent is reproduced below:
`
`
`
`Figure 2 is a flow diagram of a method for creating an alert according to
`
`some of the disclosed embodiments. Id. at col. 1, ll. 42–43.
`
`An alert refers herein to a location and optional time specification
`at which a notification such as a reminder may be made, with
`optional metadata such as a message, a region such as a radius
`from a location, and/or an indication that a region associated with
`the alert has been left since the alert was created.
`
`Id. at col. 2, ll. 48–53 (emphasis added).
`
`As depicted in Figure 2, a method for creating an alert, according to
`
`some disclosed embodiments, may include receipt of an alert request in step
`
`201. Id. at col. 4, ll. 4–6. For example, receiving an alert request may
`
`involve presenting a user interface, such as a selectable menu item or a
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`5
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`IPR2015-01965
`Patent 7,884,713 B1
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`button, and indicating that an alert, such as a reminder, should be issued
`
`“when the user is at or near the current location, for example by indicating
`
`‘next time I am here’ or similar text associated with a user interface element,
`
`and to receive a selection of a user interface element indicating a choice
`
`associated with the alert.” Id. at col. 4, ll. 6–13.
`
`A current location then may be determined in step 202. Id. at col. 4,
`
`ll. 20–29. For example, determining a current location may be achieved by
`
`sensing the current location using location sensor 103 of Figure 1, such as a
`
`global positioning system (“GPS”) receiver or a cellular receiver. Id. at
`
`col. 2, ll. 35–47. Moreover, in step 205, the user may adjust the location
`
`associated with the alert. Id. at col. 5, ll. 4–11. In particular, “a boundary of
`
`a region within which the alert may trigger may be displayed, and
`
`modifications such as dragging the boundary may be received and
`
`processed.” Id. at col. 5, ll. 11–14.
`
`One or more messages may be received in step 203. Id. at col. 4,
`
`ll. 30–37. For example, a message may consist of text or a voice recording,
`
`which may be shown or played when the alert is triggered. The message
`
`may be received in conjunction with the alert request (step 201). Id. In step
`
`204, various metadata may be received or determined. Id. at col. 4, ll. 38–
`
`58. For example, such metadata may include a minimum elapsed time
`
`specification after which the alert is to be checked and/or issued; a region
`
`associated with the current location within which the alert is to be checked
`
`and/or issued, such as a radius around the current location; a time of day or
`
`range of time of day, such as a starting and ending time; or a day of the
`
`week. Id.
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`6
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`IPR2015-01965
`Patent 7,884,713 B1
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`In step 206, the location, message, and metadata may be associated
`
`together, for example, by storing them in memory (e.g., in alert store 104 of
`
`Figure 1). Id. at col 5, ll. 15–17. Thus, in step 207, the alert may be created
`
`using the associated location, message, and metadata, with or without
`
`modifications. Id. at col. 5, ll. 18–19.
`
`Figure 3 of the ’713 patent, in which the flow path of Figure 2
`
`continues, is reproduced below:
`
`Figure 3 depicts the portion of the flow path relating to the triggering of an
`
`alert. Id. at col. 1, ll. 46–47. In particular, in step 301, the current location is
`
`determined. Id. at col. 5, ll. 22–27. In step 302, it may be determined
`
`
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`7
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`IPR2015-01965
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`whether any alerts match the current location. Id. at col. 5, ll. 28–32. For
`
`example, the stored alerts may be reviewed to determine whether the current
`
`location is within a region, such as those set in step 204 of Figure 2,
`
`associated with each alert. Id. at col. 5, ll. 32–33.
`
`If no alerts are identified that match the current location in step 305, a
`
`“wait” (step 304) may be performed. Id. at col. 5, ll. 45–54. After such a
`
`wait, a new current location may be determined and steps 302–305 may be
`
`repeated. Id. If one or more alerts match the current location, a matching
`
`alert may be selected from those matching alerts in step 306. Id. at col. 5,
`
`ll. 55–58. In steps 307–309, the alert’s metadata may be evaluated and, if
`
`specified metadata criteria are “fulfilled,” the alert may be triggered. Id. at
`
`col. 5, l. 59–col. 6, ll. 38.
`
`B.
`
`Illustrative Claim
`
`Of the challenged claims, claims 1, 19, and 37 are independent.
`
`Ex. 1001, col. 6, l. 62–col. 7, l. 10 (claim 1), col. 7, l. 64–col. 8, l. 15 (claim
`
`19), col. 9, ll. 5–22 (claim 37). Claim 1 is illustrative and is reproduced
`
`below:
`
`alert;
`
`1. A method for processing an alert, comprising:
`
`receiving a specification of a first location;
`
`creating an alert;
`
`associating the specification of the first location with the
`
`determining a first current location as a second location,
`wherein determining the second location follows receiving the
`specification of the first location and precedes determining a
`third location;
`
`determining that the second location does not match the
`specification of the first location;
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`8
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`IPR2015-01965
`Patent 7,884,713 B1
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`determining a second current location as the third location;
`
`third
`the
`that
`determining
`specification of the first location; and
`
`location matches
`
`the
`
`presenting information relating to the alert.
`
`Ex. 1001, col. 6, l. 62–col. 7, l. 10. Claim 1 is a method claim; claim 19 is a
`
`system claim, including a processor configured to perform steps
`
`substantially similar to those recited in claim 1; and claim 37 is a computer
`
`program product claim, including a computer readable storage medium
`
`comprising instructions for performing the steps of claim 1. Claims 2–18
`
`depend directly or indirectly from claim 1 (id. at col. 7, ll. 11–63); claims
`
`20–36 depend directly or indirectly from claim 19 (id. at col. 8, l. 16–col. 9,
`
`l. 4); and claims 38–54 depend directly or indirectly from claim 37 (id. at
`
`col. 9, l. 23–col. 10, l. 42).
`
`III. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under the broadest
`
`reasonable interpretation standard, claim terms are generally given their
`
`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art in the context of the entire disclosure. See In re Translogic
`
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition for
`
`a claim term must be set forth with reasonable clarity, deliberateness, and
`
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`
`absence of such a definition, limitations are not to be read from the
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`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
`
`(Fed. Cir. 1993).
`
`A. Level of Skill in the Art
`
`Petitioner argues that “[a] person of ordinary skill in the art of
`
`computer messaging at the time of the alleged invention would have had at
`
`least a Bachelor’s degree in computer science, electrical or computer
`
`engineering, or equivalent coursework, and at least one year of experience
`
`in computer messaging systems.” Pet. 15 (emphasis added). This definition
`
`differs slightly from the definition provided by Petitioner’s declarant, Dr.
`
`Rhyne. Ex. 1010 ¶ 20 (“at least two years of experience in computer
`
`messaging systems” (emphasis added)).
`
`Patent Owner’s declarant, Mr. Williams, contends that “a person of
`
`ordinary skill in the art would have a Bachelor of Science degree in
`
`Electrical Engineering, Computer Engineering, Computer Science, or
`
`equivalent coursework, as well as at least two years of experience in
`
`location-aware information systems.”2 Ex. 2001 ¶ 24. Moreover, Patent
`
`Owner contends that experience in “location-aware information systems,” as
`
`opposed to “computer messaging systems,” is significant. PO Resp. 2–3.
`
`
`2 Mr. Williams testifies that location-based service systems for location-
`aware applications are included within alert-based systems, which we find to
`be subsumed within the broader field of computer messaging systems.
`Ex. 2001 ¶ 7; see id. ¶ 15 (“These books extensively discuss location-related
`alerts in a variety of contexts. For example, The Definitive Guide to GPS,
`RFID, Wi-Fi, and Other Wireless Location-Based Services (2006 version)
`has over two dozen references to various types of alerts in location-based
`services such as, for example, geo-fencing alerts, navigation alerts, medical
`alerts, amber alerts, campus alerts, telemetry alerts, child location alerts,
`group 911 alerts, and retail/product proximity alerts.”).
`
`10
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`IPR2015-01965
`Patent 7,884,713 B1
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`Consequently, Patent Owner contends that Dr. Rhyne’s testimony cannot be
`
`credited “because he has no experience with location-aware information
`
`processing—the general technology field of the ’713 patent.” Id.; see id. at
`
`30–31 (arguing the same). Although Patent Owner acknowledges that Dr.
`
`Rhyne has experience working with “GPS, Loran, Transit, and Omega”
`
`location determining systems (id. at 31; see Ex. 1010 ¶ 14; Ex. 1029 ¶¶ 7–9),
`
`and that at least GPS is a location determining and sensing technology and
`
`service (see Ex. 2001 ¶ 25), Patent Owner notes that Dr. Rhyne’s experience
`
`occurred as much as twenty years before the filing of the application that
`
`issued as the ’713 patent (PO Resp. 31–32). Nevertheless, Patent Owner
`
`fails to explain why this timeframe of Dr. Rhyne’s experience is significant
`
`in the context of the challenged claims or the applied references in this
`
`proceeding, much less how the timeframe of Dr. Rhyne’s experience affects
`
`his qualifications to testify regarding what a person of ordinary skill in the
`
`art would have understood at or around the time the application that issued
`
`as the ’713 patent was filed. Id.
`
`Thus, after considering the parties’ assessments of the level of skill in
`
`the art and the evidence of record, we do not observe a meaningful
`
`difference between the parties’ assessments. We further note that either
`
`assessment appears consistent with the level of skill in the art at the time of
`
`the invention as reflected in the references applied in the instant
`
`
`
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`11
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`IPR2015-01965
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`proceeding.3 See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
`
`2001). Moreover, after considering the qualifications of each party’s
`
`declarant, we are persuaded both declarants meet or exceed the
`
`qualifications set forth in either proposed assessment at the time in question,
`
`and our analysis in this Final Written Decision is supported by either
`
`assessment. See Ex. 1010 ¶¶ 6–18; Ex. 1029 ¶¶ 7–9; Ex. 2001 ¶¶ 7–16.
`
`Nevertheless, to the extent that it is necessary for us to determine a level of
`
`skill in the art, we accept Patent Owner’s assessment of the level of skill in
`
`the art, but note that our conclusions would be the same under Petitioner’s
`
`assessment.
`
`B. Previously Disputed Terms
`
`Petitioner proposes constructions based on the broadest reasonable
`
`interpretation standard for two sets of terms: (a) “presenting information
`
`relating to the alert” (claims 1 and 37) and “present information relating to
`
`the alert” (claim 19); and (b) “receiving a message” (claim 8 and 44) and
`
`“receive a message” (claim 26). See Pet. 15–17. Patent Owner challenged
`
`Petitioner’s constructions in its Preliminary Response (see Paper 10 (“Prelim
`
`Resp.), 6–7), but did not renew those challenges in its Patent Owner
`
`
`3 E.g., Ex. 1005 ¶ 3 (“The invention relates to a method of reminding a user
`subscribed to a communication network, as well as to a location reminder
`service architecture for reminding a user subscribed to a communication
`network.” (emphasis added)); Ex. 1006, col. 1, ll. 7–11 (“The present
`invention relates generally to electronic notification systems, and more
`particularly, to an electronic system and method for providing an alert of an
`entry in a to-do list when a user is within a pre-defined proximity location to
`perform the to-do list item.” (emphases added)); Ex. 1008 ¶ 1 (“The present
`invention relates to personal digital assistants in general, and, in particular,
`to reminders about tasks in a to-do list.”).
`
`12
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`IPR2015-01965
`Patent 7,884,713 B1
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`Response (see Paper 13, 3 (“The patent owner is cautioned that any
`
`arguments for patentability not raised in the response will be deemed
`
`waived.”)). Therefore, on this record, we maintain the following
`
`constructions that we adopted for purposes of the Decision on Institution.
`
`See Dec. on Inst. 10–13.
`
`1. “presenting information relating to the alert” (claims 1 and 37)
`and “present information relating to the alert” (claim 19)
`
`We remain persuaded by Petitioner’s arguments and evidence
`
`regarding the construction of these terms and adopt our analysis of that
`
`construction as set forth in the Decision on Institution. Dec. on Inst. 10–12.
`
`On this record, and in view of Patent Owner’s decision not to renew its
`
`challenge to the construction of these terms (Paper 13, 3), we maintain our
`
`determination that the broadest reasonable interpretation of the term
`
`“presenting information relating to the alert” or “present information relating
`
`to the alert” is “(i) presenting/present an indication that an alert has
`
`triggered; (ii) presenting/present information relating to the alert; or
`
`(iii) presenting/present the indication that the alert has triggered and the
`
`information relating to the alert.”
`
`2. “receiving a message” (claim 8 and 44) and “receive a
`message” (claim 26)
`
`We remain persuaded by Petitioner’s arguments and evidence
`
`regarding the construction of these terms and adopt our analysis of that
`
`construction as set forth in the Decision on Institution. Dec. on Inst. 12–13;
`
`see Paper 14, 1–2. On this record, and in view of Patent Owner’s decision
`
`not to renew its challenge to the construction of these terms (Paper 13, 3),
`
`we maintain our determination that the broadest reasonable interpretation of
`
`13
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`IPR2015-01965
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`the term “receiving a message” or “receive a message” is “delivering/deliver
`
`a message.”
`
`C. Currently Disputed Term
`
`1. “map”(claims 17, 18, 35, 36, 53, and 54)
`
`Challenged claims 17, 35, and 53 depend from independent claims 1,
`
`19, and 37, respectively; and each of these dependent claims recites
`
`“wherein receiving the specification of the first location includes displaying
`
`a map and enabling placement of a marker at a location thereon.” See, e.g.,
`
`Ex. 1001, col. 7, ll. 56–58 (claim 17, emphasis added). Neither Petitioner
`
`nor Patent Owner proposed a construction for the term “map” during the
`
`preliminary proceeding. See Pet. 15–17; Prelim. Resp. 4–9. Nevertheless,
`
`we determined that construction of this term was appropriate. See Dec. on
`
`Inst. 23 (construing the term “map” consistent with at least one dictionary
`
`definition; citing Ex. 3001).
`
`As with any claim term, we begin our construction with the language
`
`of the claim. Here, the claims including the term “map” provide little to
`
`illuminate its construction. The claims merely recite (1) that the “map” may
`
`be displayed, (2) that a “marker” may be placed at a “location” on the
`
`“map,” and (3) that the displayed map may include a “boundary of a region
`
`thereon.” E.g., Ex. 1001, col. 7, ll. 56–62 (claims 17 and 18). None of these
`
`recitations defines the term “map,” other than to make clear that a map may
`
`have a “marker” and a “boundary” placed upon it. The claims further recite
`
`that the methods (claim 1), systems (claim 19), or computer program
`
`products (claim 37) may “receiv[e] modifications to the boundary.” Id. at
`
`col. 7, ll. 61–62 (claim 18), col. 9, ll. 3–4 (claim 36), col. 10, ll. 41–42
`
`(claim 54). However, this limitation does not require that the displayed
`
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`IPR2015-01965
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`“boundary” is altered to reflect these modifications or that the received
`
`modifications are displayed on the “map.” The Specification of the ’713
`
`patent explains that “modifications such as dragging the boundary may be
`
`received and processed,” but this is only an exemplary means for receiving
`
`boundary modifications, and the claims do not require that the modifications
`
`be “processed,” in addition to being “received.” Id. at col. 5, ll. 13–14
`
`(emphases added).
`
`We next turn to the Specification for guidance in construing the term
`
`“map.” In construing this term, we apply the broadest reasonable
`
`interpretation of the words “in their ordinary usage as they would be
`
`understood by one of ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that may be afforded by
`
`the written description contained in the . . . specification.” In re Morris, 127
`
`F.3d 1048, 1054 (Fed. Cir. 1997). As noted in our Decision on Institution,
`
`the Specification of the ’713 patent does not provide a definition for the term
`
`“map” and, apart from the claims themselves, there is only a single reference
`
`to the term “map” in the Specification. Dec. on Inst. 23 (citing Ex. 1001,
`
`col. 5, ll. 8–11).
`
`The Specification of the ’713 patent describes that
`
`a map may be displayed with the current location indicated by a
`marker, and a drag event dragging the marker to an adjusted
`location may be received. In another example, a boundary of a
`region within which the alert may trigger may be displayed, and
`modifications such as dragging the boundary may be received
`and processed.
`
`Ex. 1001, col. 5, ll. 8–14 (emphasis added). We further note that the
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`Specification of the ’713 patent does not provide an exemplary depiction of
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`a “map.” See id., Figs. 1–4. In addition, after reviewing the prosecution
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`history provided by Petitioner (Ex. 1003), we find no further discussion of
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`the meaning of the term “map,” beyond that provided in the Specification
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`and the challenged claims. Thus, neither the Specification of the ’713 patent
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`nor the prosecution history of the ’713 patent significantly illuminates the
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`construction of the term “map.”
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`As noted above, when construing claim terms, we apply the broadest
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`reasonable interpretation of the words in their ordinary usage, as those
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`words would be understood by one of ordinary skill in the art. Morris, 127
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`F.3d at 1054. In the absence of a clear construction of the term “map” based
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`on the intrinsic evidence, we noted in our Decision on Institution that a
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`relevant dictionary broadly defines the word “map” as “a representation,
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`usu. on a flat surface, of selected features of all or a part of the earth or a
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`portion of the heavens, shown in their respective relationships according to
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`some convention of representation” or “any maplike delineation or
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`representation.” Dec. on Inst. 23 (citing RANDOM HOUSE WEBSTER’S
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`COLLEGE DICTIONARY 808 (2d Random House ed. 1999) (emphasis added)
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`(Ex. 3001)); see Nix v. Hedden, 149 U.S. 304, 307 (1893) (citations omitted)
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`(admitting dictionaries to understand the ordinary meaning of terms “not as
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`evidence, but only as aids to the memory and understanding of the court”);
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`Agfa Corp. v. Creo Products, Inc., 451 F.3d 1366, 1376 (Fed. Cir. 2006)
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`(noting that dictionaries may be helpful when claim construction involves
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`“little more than the application of widely accepted meaning of commonly
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`understood words”); see also Phillips v. AWH Corp., 415 F.3d 1303, 1322–
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`23 (Fed. Cir. 2005) (en banc) (“[J]udges . . . may also rely on dictionary
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`definitions when construing claim terms, so long as the dictionary definition
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`does not contradict any definition found in or ascertained by a reading of the
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`patent documents.” (citation omitted)). We found that the quoted dictionary
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`definition is consistent with the use of the word “map” in the Specification
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`of the ’713 patent. Id. Thus, for purposes of the Decision on Institution, and
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`on the then-existing record, we found that the above-quoted definition is the
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`broadest reasonable interpretation of the term “map,” consistent with usage
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`of that tem in the Specification (Ex. 1001, col. 5, ll. 8–14); claims 17, 18, 35,
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`36, 53, and 54; and prosecution history (Ex. 1003), and with the
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`understanding of a person of ordinary skill in the art (see Ex. 1010 ¶¶ 20, 63,
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`123–124, 126–127, 181–184, 228–229, 230–231; see also Ex. 1009 ¶ 46
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`(describing “map” options)).
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`In its Patent Owner Response, Patent Owner contends that our
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`construction of the term “map” is too broad. PO Resp. 4–5 (citing Dec. on
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`Inst. 23). In particular, Patent Owner contends that “[t]he maplike
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`delineation or the maplike representation refers to scale information, which
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`is required in all maps: ‘some indication of the scale must be included in the
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`information presented on any map.’” Id. at 5 (quoting Ex. 2003, p. 92
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`(emphasis added); citing Ex. 2001 ¶¶ 32–33). Patent Owner further
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`contends that, “[f]or a map to be useful, the map must include scale
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`information because maps are necessarily smaller than the areas mapped.”
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`Id. (emphasis added; citing Ex. 2001 ¶ 33). According to Patent Owner,
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`such scale information may be provided expressly, such as by means of a
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`legend on the “map” or implicitly by the relative spacing of map elements,
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`such that a scale may be estimated. Id. (citing Ex. 2001 ¶¶ 33–40). Thus,
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`we understand that Patent Owner would construe the term “map” as
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`essentially “a representation of selected features of all or a part of the earth
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`or a portion of the heavens, shown in their respective relationships according
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`to some convention of representation including to an explicit or implicit
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`scale.”
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`In support of its contentions, Patent Owner relies on the teachings of
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`Ex. 2003 (Robinson et al., ELEMENTS OF CARTOGRAPHY (6th ed. 1953)
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`(“Robinson”)) and the testimony of Mr. Williams. Robinson states that:
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`Maps, to be useful, are necessarily smaller than the areas
`mapped. Consequently, every map must state the ratio or
`proportion between measurements on the map to those on the
`earth. This ratio is called the map scale and should be the first
`thing the map user notices. Map scale is an elusive thing
`because, as we saw in Chapter 5, transformation from globe to
`map means that the map’s scale will vary from place to place. It
`can even vary in different directions at one place.
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`Ex. 2003, p. 924 (emphasis added); see PO Resp. 5. Moreover, Robinson
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`states that “[t]he scale of a map may be shown in many ways. It can be
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`specifically indicated by some statement or graphic device. Or it may be
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`shown indirectly by the spacing of parallels and meridians and even subtly
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`by the size and character of marks on the map.” Ex. 2003, p. 92 (emphasis
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`added).
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`The broadest reasonable interpretation of the claims must be
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`consistent with the interpretation that those skilled in the art would reach. In
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`re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Patent Owner relies on
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`Mr. Williams’s testimony to link the statements in Robinson to the
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`
`
`
`
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`4 All references to the pages numbers in Robinson are the original page
`numbers located in the top left-hand or right-hand corner of each page in
`Exhibit 2003.
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`knowledge of a person of ordinary skill in the art.5 In particular, Mr.
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`Williams testifies that “[t]he maplike delineation or the maplike
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`representation refers to scale information, which is required in all maps.”
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`Ex. 2001 ¶ 32. Mr. Williams then quotes extensively from Robinson in
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`support of his testimony. Id. ¶¶ 33–39; see also id. ¶ 6 (“All opinions are
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`from the perspective of a person having ordinary skill in the art at the time of
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`the invention, whether I explicitly mention this or not and whether or not I
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`provide my statements in the first person.”). Mr. Williams concludes that, if
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`the “map” does not include an explicit scale, the scale may be “estimated”
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`based on the known distance between points or the know area of a region.
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`Id. ¶ 40; see Ex. 2003, p. 93 (“Sometimes you may want to determine the
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`scale of a map on which no scale is given. Or, you may want to discover the
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`scale of part of a map (since, as noted earlier, the scale is never the same
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`over an entire flat map).”). Thus, Patent Owner contends that, based on the
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`alleged understanding of a person of ordinary skill in the art, a “map” should
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`be construed to require inclusion of an explicit or implicit scale.
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`Petitioner argues that our construction proposed in the Decision on
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`Institution is the broadest reasonable interpretation of the term “map” (Pet.
`
`
`5 We note a certain degree of irony in Patent Owner’s reliance on a reference
`published more than fifty years (PO Resp. ii (Robinson first published in
`1953)) before the earliest filing date of the ’713 patent to demonstrate the
`knowledge of a person of ordinary skill in the art, yet at the same time
`challenging the relevance of experience gained by Petitioner’s declarant
`twenty years before the earliest filing date (id. at 31–32). Here, we do not
`rely on the age of the reference or the experience, but rather its relevance
`(i.e., Dr. Rhyne’s experience with GPS and the Robinson reference’s focus
`on cartography) in assessing the knowledge of a person of ordinary skill in
`the art.
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`Reply 3) and that Patent Owner’s proposed construction for the term “map”
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`improperly incorporates limitations into the claims (id. at 2–7). In
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`particular, Petitioner argues that “Patentees import a non-existent ‘scale’
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`requirement into the Board’s construction of ‘map’ but the Board’s
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`construction was correct.” Id. at 3.
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`Specifically, Petitioner presents three arguments against Patent
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`Owner’s construction of the term “map.” First, Mr. Williams did not
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`consider the broadest reasonable interpretation standard when considering
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`the construction of the term “maps.” Id. at 4. We agree with Petitioner that
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`“no part of the specification, claims or prosecution history mentions a scale
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`requirement. In addition, adding the concept of scale to any constr