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`571-272-7822
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`IPR2015-01965, Paper No. 35
`IPR2015-01977, Paper No. 43
`December 27, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ALARM.COM INC.,
`Petitioner,
`
`v.
`
`VIVINT, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01965 (Patent 7,884,713 B1)
`Case IPR2015-01977 (Patent 6,924,727 B2)
`____________
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`Held: November 30, 2016
`____________
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`
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`BEFORE: MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
` The above-entitled matter came on for hearing on Wednesday,
`November 30, 2016, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2015-01965, Paper No. 35
`IPR2015-01977, Paper No. 43
`December 27, 2016
`
`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)
`Case IPR2015-01977 (Patent 6,924,727 B2)
`____________
`
`Held: November 30, 2016
`____________
`
`
`
`
`
`BEFORE: MICHAEL R. ZECHER, JAMES B. ARPIN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
` The above-entitled matter came on for hearing on Wednesday,
`November 30, 2016, commencing at 1:00 p.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case IPR2015-01965 (Patent 7,884,713 B1)
`Case IPR2015-01977 (Patent 6,924,727 B2)
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`APPEARANCES:
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`ON BEHALF OF THE PETITIONER:
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`ON BEHALF OF PATENT OWNER:
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`WILLIAM H. MANDIR, ESQ.
`BRIAN K. SHELTON, ESQ.
`Sughrue Mion, PLLC
`2100 Pennsylvania Avenue, NW
`Washington, DC 20037-3213
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`and
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`ROGER BROOKS, ESQ.
`TEENA-ANN V. SANKOORIKAL, ESQ.
`MAX W. ABEND, ESQ.
`MARC J. KHADPE, ESQ.
`Cravath, Swaine & Moore LLP
`Worldwide Plaza
`825 Eighth Avenue
`New York, New York 10019-7475
`
`ROBERT GREENE STERNE, ESQ.
`JASON D. EISENBERG, ESQ.
`MICHAEL V. MESSINGER, ESQ.
`JAY L. BIRD, ESQ.
`CHRISTIAN A. CAMARCE, ESQ.
`LESTIN KENTON, ESQ.
`Sterne Kessler Goldstein Fox
`1100 New York Avenue, NW
`Washington, DC 20005
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`
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`Case IPR2015-01965 (Patent 7,884,713 B1)
`Case IPR2015-01977 (Patent 6,924,727 B2)
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`
`P R O C E E D I N G S
`- - - - -
`JUDGE ZECHER: Good afternoon. I’m Judge Zecher,
`I’m here with my colleagues, Judge Arpin and Judge Boudreau.
`This is an oral argument for case IPR2015-01965. The patent
`involved is Patent Number 7,884,713. This is also an oral
`argument for IPR2015-01977. The patent involved there is
`Patent Number 6,924,727. So, those will be the two cases we
`will be hearing today.
`We did want to as a matter of housekeeping deal with
`an email that we received this morning from the parties regarding
`three other cases in this same family. Just so I’m clear,
`Mr. Sterne sent an email this morning regarding case numbers
`IPR2016-0116, 00161, and 00173. There is a request in there for
`certain remedies that they believe is necessary or they would like
`the Board to authorize with respect to a Reply reportedly
`exceeding the proper scope of the Patent Owner Response.
`The panel has had an opportunity to discuss this prior to
`the hearing, and we just wanted to inform the parties that we’re
`not going to authorize a conference call on that at this time. It
`appears that a deposition or that cross-examination of the reply
`declarant has yet to be taken and an opportunity for a motion for
`observation is still there. So, once the parties have completed that
`process, and, if they still believe that there’s some due process
`concerns, they’re free to return to us and ask if there’s any other
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`remedies that may be had, but, at this time, we think it’s a little
`premature to authorize either a surreply or the striking or a
`motion to request expungement of the Reply, as well as a one to
`two-page nonargument brief.
`That being said, let’s move on to the cases at hand here.
`The first case we’re going to hear this afternoon is the 1965 case.
`I think I would like to begin with the parties introducing
`themselves. Let’s start with Petitioner.
`MR. MANDIR: Good afternoon, Your Honor, William
`Mandir for the Petitioner Alarm.com from Sughrue. With me is
`my colleague, Brian Shelton.
`JUDGE ARPIN: Excuse me, Judge Zecher, could you
`please ask the counsel to step to the podium, because we can’t
`hear them at the satellite offices unless they are standing at the
`podium.
`JUDGE ZECHER: Just a few issues, particularly with
`this hearing. Obviously you can see that my two counterparts are
`not here, so they won’t be able to hear you unless you speak into
`the microphone. And then similarly, if we have exhibits that
`you’re going to show on the screen here, make sure you use the
`appropriate slide number so they can follow along. But go ahead.
`MR. MANDIR: Sure. Good afternoon. William
`Mandir from Sughrue Mion for the Petitioner, Alarm.com. With
`me from my firm is Brian Shelton. Also with us today is Dan
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`Ramos, who is the executive vice president from Alarm.com, and
`I’ll let my co-counsel introduce themselves.
`MR. BROOKS: Good afternoon. Roger Brooks with
`Cravath, Swaine & Moore for Alarm.com, and with me is my
`partner, Teena Sankoorikal, who will be arguing the first of the
`petitions.
`JUDGE ZECHER: Thank you very much.
`For Patent Owner?
`MR. STERNE: Good afternoon, Your Honor. Robert
`Sterne from Sterne, Kessler, Goldstein & Fox in Washington,
`D.C. With me is my partner, Michael Messinger, and Christian
`Camarce from my firm. They will be arguing the first case, Your
`Honor, and I will be arguing the second case. So, I will introduce
`you now to Mr. Messinger.
`JUDGE ZECHER: Thank you.
`MR. MESSINGER: Good afternoon, Your Honor.
`Michael Messinger representing Patent Owner Vivint.
`JUDGE ZECHER: Okay.
`MR. MESSINGER: And with me is Christian Camarce
`
`as well.
`
`JUDGE ZECHER: Thank you. So, we received the
`parties’ email the other day regarding the structure of this
`hearing. The first case will be 20 minutes each side, for each
`party, and the second case is 40 minutes. So, we will give the
`floor to Petitioners, and you may begin.
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`Case IPR2015-01977 (Patent 6,924,727 B2)
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`Just off the bat, did you want to reserve any time for
`rebuttal here?
`MS. SANKOORIKAL: Yes, Your Honor. May I
`reserve two minutes, please?
`JUDGE ZECHER: Certainly.
`MS. SANKOORIKAL: Your Honor, I also have a set
`of the slides. May I approach with the slides?
`JUDGE ZECHER: Yes.
`MS. SANKOORIKAL: Alarm.com requested IPR of
`all 54 claims of the Emigh ’713 patent, and IPR was granted with
`respect to all claims. IPR was granted on three grounds, as
`identified in slide 2, and, with respect to grounds 1 and 2, I will
`address issues with respect to those two grounds in particular.
`There are very few issues left in this IPR. Vivint
`actually following the Institution Decision did not provide any
`further argument or evidence concerning claims 1 through 3, 9 to
`16, 19 to 21, 27 to 34, 37 to 39, and 45 to 52. For that reason, as
`well as the reasons articulated in the Institution Decision, as well
`as in the petition, those claims should be cancelled.
`As a result, there are only two substantive issues that
`remain, and the first is whether Osman, the anticipation ground
`mentioned in ground 1 on the previous slide, teaches the map
`limitations of claims 17 and 18, 35, 36 and 53 and 54. And
`specifically, that relates to whether a map is displayed, and
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`whether Osman teaches defining a region, a spatial boundary, as
`well as modifications to that region.
`And the second issue relates to whether Osman teaches
`away from a combination with Suzuki, and that relates to claims
`4 through 8, 22 to 26 and 40 to 44.
`With regard to the ’713 patent, as I note in slide 4, there
`are 54 claims that fall into three substantively identical groups.
`The first 18 claims are the method claims, the system claims are
`19 to 36 and the software claims are 37 to 54. And, at its essence,
`the Emigh patent covers a system, method, and software for
`alerting a user, based at least in part on his or her location.
`Now, turning to the first issue, whether Osman teaches
`the map issues in claim 17 and 18, 35, 36 and 53 and 54, the
`disputed term “map” appears in all of those claims. Prior to
`institution, as indicated in slide 5, neither party offered a
`construction of the term “map.”
`The Board correctly construed the term “map” in its
`institution decision on page 23 as “a representation usually on a
`flat surface, of selected features of all or part of the Earth or a
`portion of the heavens shown in their respective relationships
`according to some convention or representation or any maplike
`delineation or representation.” And in reaching that construction,
`the Board quoted the Random House Webster’s College
`Dictionary.
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`Case IPR2015-01977 (Patent 6,924,727 B2)
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`JUDGE ARPIN: Counselor, with regard to the
`dictionary definition that we quoted, the line in the first part of
`the definition says, “shown in their respective relationships
`according to some convention or representation.” Is that a
`reference to a scale?
`MS. SANKOORIKAL: No, that is not a reference to a
`scale. For instance, the Mercator projection shows various
`continents, for instance, in their respective relationships, but they
`are not drawn to scale, and that is considered mapping, and
`perhaps the most famous map.
`Now, with regard to the construction, Petitioner agrees
`with the Board’s construction, and including specifically that
`there is no requirement for “scale.” Vivint disagrees with the
`construction to the extent that “scale” is not included in that
`construction, and specifically, Vivint contends that “scale” needs
`to be expressed either explicitly on the map or it should be
`implicitly derived, either based on two -- the distance between
`two points, a known distance, or based on a known area. And as
`support for that position, Vivint cites a cartography book, The
`Elements of Cartography.
`Now, as a starting point for why Vivint’s construction is
`incorrect, we look to the intrinsic evidence, and there’s very little
`in the record as to -- there are very few references to “map” to
`start with. In the specification, the only appearance and reference
`to “map” occurs in column 5, and the description is lines 8 to 14,
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`and there’s very little guidance as to what the construction ought
`to be. And “map,” of course, is included in the disputed claims.
`There is no reference in the claims, in the specification,
`or in the prosecution history to “scale” whatsoever. So, the
`intrinsic evidence supports the Board’s construction and
`Petitioner’s contention that “scale” should not be included in a
`construction of “map.”
`Then looking at the extrinsic evidence, Vivint’s
`contention, as I’ve mentioned, is -- and their support,
`Mr. Williams, their expert, and Vivint cited a cartography book,
`The Elements of Cartography, which is Exhibit 2003. Petitioner
`contends that that is not the appropriate extrinsic evidence to
`consider. In this instance, both Mr. Williams and Dr. Rhyne
`identified a POSA as either some form of an engineer, or a
`computer scientist, and that POSA, those POSA would consider
`dictionaries, either technical, standard dictionaries, rather than a
`cartography book.
`And in taking a look at various dictionary definitions,
`including the one the Board used for the construction, the New
`Oxford Dictionary of English, Webster’s New World College
`Dictionary, the New World Dictionary of the American
`Language, as well as the scientific dictionary, the McGraw-Hill
`Dictionary of Scientific and Technical Terms, none of those
`dictionaries require “scale” as part of a definition of “map.”
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`So, the extrinsic evidence also suggests -- supports the
`Board’s construction and Petitioner’s contention that “scale”
`should not be included in a construction of ”map.”
`JUDGE ARPIN: Counselor, turning to your slide 7, the
`New Oxford Dictionary of English Definition talks about the
`diagram or collection of data showing the spatial arrangement or
`distribution, again I ask a question similar to the one I asked
`before, is the showing of a spatial arrangement an implicit scale?
`MS. SANKOORIKAL: No, I don’t agree that it’s an
`implicit scale. It simply needs to be a representation, much like
`the Mercator projection. It is a spatial arrangement that is not
`drawn to scale, nor can scale be derived from that representation.
`So, spatial arrangement simply refers to the items that are
`represented being put in the right place as opposed to any -- any
`implicit or explicit scale being included as that representation.
`JUDGE ARPIN: But, counselor, finally, turning to
`again your slide 7, and the McGraw-Hill Dictionary definition at
`the bottom of the slide, it talks about the showing of relative size
`and position. Does the showing of relative size show an implicit
`scale? And I ask this question in connection with the drawing
`that’s shown in the -- in the exhibit, I think it was 2003, the
`cartography handbook or textbook that showed a map of
`Australia with the various positions of points on that map as an
`example of implicit scale.
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`MS. SANKOORIKAL: That may be a -- a
`representation of implicit scale, but under the definition showing
`relative size and position, that doesn’t imply that it is accurate. It
`merely is a representation that you show the correct position, and
`some indication of size, but that doesn’t mean that it is actually
`drawn to scale.
`JUDGE ARPIN: Thank you. Please proceed.
`MS. SANKOORIKAL: Now, representations -- images
`from Mr. Williams’s book The Definitive Guide to GPS, RFID,
`WiFi and Other Wireless Location-Based Services, this is Exhibit
`1021, also support a construction of “map” that does not include
`“scale.”
`I have provided two such representations. On the left,
`we see a representation of Germantown, Maryland points of
`interest, and on the right, a depiction of the Phoenix Zoo. As to
`both, the source lines indicate that both are “maps”; however,
`when asked during his deposition whether either was a map,
`Mr. Williams admitted that he was unable to determine that
`because based on what he was seeing, he did not have an express
`scale, and he did not know the implicit scale, and, therefore, he
`couldn’t determine whether either was a map, but the source lines
`indicate that those were both considered “maps,” which supports
`the Board’s construction and Petitioner’s contention that “scale”
`should not be included.
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`Another reason why Vivint’s proposed construction
`should be rejected is because Mr. Williams didn’t apply the BRI
`standard as indicated in slide 9. Now, applying the BRI standard
`to a construction of “map,” to include “scale,” would actually
`narrow the construction of “map,” and, as a result, “scale” should
`not be included for that additional reason.
`Finally, Vivint’s proposed addition of “scale” to the
`construction should also be rejected because Mr. Williams could
`not apply that to his -- apply that construction successfully, and
`consistently. He was shown a number of images during his
`deposition. I have provided two of them in slide 10. On the left
`is a city -- is a map provided by the U.S. State Department of the
`city of Beijing. On the right is a depiction of a map from the
`Shimabara ’168 patent, which predates the Emigh patent.
`As to both, Mr. Williams stated that he was unable to
`determine whether either was a map because neither, as indicated,
`provides scale explicitly and he did not have enough information
`to determine any implicit scale. So, as a result, he was unable to
`determine whether either was a map. And the significance of that
`is the purpose of claim construction is to allow a POSA to
`determine the metes and bounds of a claim, the scope of a claim.
`And if a POSA is unable to do that, that leads to claims of
`indeterminate scope, and for that additional reason, the addition
`of “scale” should be rejected from a construction of “map.”
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`JUDGE ARPIN: Counselor, assuming that we find that
`some sort of scale, either implicit or explicit, is part of a map,
`does the Osman reference show a map meeting that definition, or
`meeting that construction?
`MS. SANKOORIKAL: Yes, it does, Your Honor.
`Turning to slide 14, Mr. Williams during his deposition stated
`that if -- with regard to Figures 8 and 9, and Figure 8 is displayed
`on slide 14, that he would have an implicit scale if they had a
`known distance between two points or a known radius. So,
`clearly Figure 8A does not have explicit scale. So, the question
`then comes down to whether there’s implicit scale, and there is
`implicit scale. The user specifies a reminder radius, and by
`specifying the radius, we have a known distance between two
`points, and as a result, we have implicit scale. And that is drawn
`to scale. It is a circle, which is mathematically defined, according
`to the radius. So, yes, even under Vivint’s construction, Osman
`displays a map.
`Turning to whether Osman displays a map under the
`Board’s construction, Osman also does that. Figures 8A and 8B
`show a reminder point with regard to a reminder boundary, in
`their respective positions, their respective relationships to each
`other. Paragraph 32 specifically talks about allowing the user to
`define a reminder location and a reminder range, and then goes
`on to say that this is subsequently explained in greater detail, in
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`paragraph 33, on -- with regard to figures 8A and 8B, and I’m
`referring to slide 12.
`Further support for the fact that the map is displayed in
`Osman is found in paragraph 34, where Osman specifically
`teaches other shapes, such as ellipsoids, spline shapes, polygonal
`shapes, or combinations thereof. A POSA would know that a
`user would be highly unlikely -- a user would not be able to
`define such shapes mathematically. Instead, a user would have to
`draw those shapes.
`And Mr. Williams conceded as much during his
`deposition. He was asked whether he could define such shapes
`mathematically, specifically with regard to a polygon, he said he
`couldn’t do it off the top of his head. But when he was asked
`whether he could draw it, he said he could, which is further
`support for the display of a map in Osman, because those shapes
`would not be known to a user or a user would not be able to
`display -- to define them mathematically. So, for that reason,
`Osman teaches a map and the display of a map.
`Turning to the second aspect of issue one, which is
`whether Osman teaches defining a reminder boundary and editing
`a reminder boundary, Osman does so. Osman in paragraph 32, as
`indicated in slide 12, talks specifically about defining a reminder
`profile. In paragraph 31, on slide 15, Osman teaches that a user
`can edit his reminder profile via man-made interface, and the
`choice of edit and define are two different words, and edit is
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`colloquially understood to mean modify, as Mr. Williams
`admitted. And, therefore, on the face, Osman teaches the editing
`of a reminder boundary.
`Further support for modifications to the reminder
`boundary is found later in paragraph 31, where there’s express
`reference to the use of a mouse or a stylus with a touch screen
`display.
`Now, with regard to slide 15, Dr. Rhyne in particular
`commented that a stylus and touch screen as disclosed in Osman
`were commonly used to interact with a graphical user interface,
`for instance to edit or draw the boundary of a reminder profile.
`So, for those reasons, Osman also teaches both defining and
`modifying the reminder boundary.
`Turning to the second issue, which is whether Osman
`teaches away from a combination with Suzuki, much like Osman,
`Suzuki teaches methods and systems for notifying a user of a --
`providing an alert based on location in the Suzuki context, based
`on to-do list items.
`Vivint’s contention is that Osman includes principles of
`operation that teach away from the use of radio interface
`resources. Petitioner disagrees with that contention. At the
`outset, to square away some terminology, messaging is used in
`the context of Emigh, and, in that context, Emigh is talking about
`the actual notification, when the user returns to the third location,
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`Case IPR2015-01965 (Patent 7,884,713 B1)
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`which matches the first location, the user receives some sort of an
`alert or notification, a text message.
`In the context of whether Osman teaches away from
`Suzuki, it not – it’s not the issue of the message, but rather the
`use of the cellular air waves, cellular messaging. And the
`question is whether Osman teaches away from the use of cellular
`messaging. And Petitioner – Petitioner’s contention is that it does
`not, for at least three reasons.
`First, Petitioner does not contend that cellular
`messaging is necessary for the combination of Osman and
`Suzuki. All that Petitioner is arguing is that the useful aspects of
`presentation of an alert from Suzuki be incorporated into Osman,
`and no such cellular messaging is required.
`Now, recognizing – as a second point, recognizing that
`Osman does include its principles of operation, and does include
`language about conserving radio resources, Osman still teaches
`an embodiment that includes cellular messaging. In fact, on slide
`18, specifically at paragraph 19, Osman expressly teaches the use
`of the network to store the user’s request for being reminded in a
`database, and then also specifies that it could be included is the
`actual message or notification, much like in claim 8, and then
`further says that the wireless network supplies a reminder
`indication to the user.
`So, Osman actually, notwithstanding its principles of
`operation, has a specific embodiment that utilizes cellular
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`messaging. And even if that weren’t the case, Suzuki includes
`numerous embodiments where all of the logic is performed
`internal to the device where cellular messaging is not required,
`and an example is provided on slide 19, which is -- which is
`claim 2. And in claim 2, all of the logic associated with
`providing the alert to a user is internal to the device, and there are
`other examples that we’ve provided in the Reply at page 20.
`For instance, column 3, lines 48 to 50, where Suzuki
`states “the present system and method incorporates a single
`mobile terminal for personal use,” or at column 5, lines 7 to 13,
`“in the situation where a central host computer 14 is not used.”
`And in that instance, cellular messaging, the use of cellular air
`waves would not be used, and it would all be internal to the
`device.
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`And Mr. Williams conceded both of these points. On
`Osman’s messaging, Mr. Williams, during his deposition, in slide
`20, on the left side of 20, admitted that the use of cellular
`messaging is an optional thing. It’s the last line, line 12 of the
`deposition excerpt that I’ve provided. And with regard to
`Suzuki’s embodiments and internal operation, without the use of
`cellular messaging, Mr. Williams admitted in the right side that
`all that would be performed within the mobile user terminal.
`So, for all of these reasons, Osman does not teach away
`from a combination with Suzuki with regard to claims 4 through
`8, 22 to 26 and 40 to 44.
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`And as I mentioned earlier, Vivint doesn’t dispute many
`of the – doesn’t raise any arguments with the majority of claims
`in the -- in Emigh, and all of those should be cancelled. And
`since Osman teaches the map limitations of claims 16 to 17, 35 to
`36, and 53 to 54, those should be cancelled as well.
`JUDGE ARPIN: Counselor, does Osman teach
`avoiding or not using messaging at all?
`MS. SANKOORIKAL: It teaches avoiding. It does not
`teach away. It doesn’t teach -- it doesn’t teach not using at all. In
`fact, paragraph 19 specifically uses cellular messaging. So, in
`certain circumstances, it is useful to not use radio -- the radio air
`waves, but it doesn’t expressly say it should never be used, and,
`in fact, embraces it in paragraph 19 of Osman.
`JUDGE ARPIN: So, it’s a goal or a preference not a
`proscription?
`MS. SANKOORIKAL: That is correct.
`JUDGE ARPIN: Thank you. Please continue.
`MS. SANKOORIKAL: Thank you.
`MR. MESSINGER: May it please the Board. There’s a
`common error that runs through Alarm.com’s anticipation
`arguments that I want to highlight. You know, and it stems from
`Alarm misreading two use cases, basically patent illustrations,
`Figures 8A and 8B, misreading those figures in Osman as
`displaying maps. And this breaks down in two ways. The first is
`that Alarm doesn’t even show that Figures 8A and 8B are
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`displayed in Osman; and then the second, which was touched on
`earlier, is that Figures 8A and 8B, they’re maps that Osman has
`not even show -- that Alarm has not even shown that Figures 8A
`and 8B are maps with the features shown in their respective
`relationships, according to a convention or sort of map-like
`delineation, under the Board’s claim construction.
`So, for those two ways, Alarm has fallen short. And I’ll
`address both, but I want to touch on the importance of the map
`displaying feature in the ’713 patent, since it wasn’t highlighted
`earlier. If we look at slide 24, the ’713 patent includes claims that
`for the first time allowed users the flexibility to set up and modify
`alert triggering locations on a map display. And this is
`significant.
`If you look in Figure 1, it has an alert input user
`interface 108, and that’s what allows the user to view a map
`display, modify the boundary, that’s discussed further in column
`5, lines 11 to 14, and it’s this map displaying an alert input user
`interface that goes well beyond the simple alert location
`processing and the generic interface in Osman and Suzuki.
`So, let’s look at sort of how Alarm fails to show that
`Osman displays Figures 8A and 8B. It’s most evident in the
`petition, if we can look at the Petition, page 28, it’s telling.
`Alarm is relying on paragraphs 31, 32, 34 and Figure 8A, as you
`can see on page 28 there, but this text only describes an interface
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`for a profile editor. Nowhere does it describe that 8A and 8B are
`actually displayed, much less displayed as a map.
`And then when you go further, there’s actually no
`description --
`JUDGE ARPIN: Counselor?
`MR. MESSINGER: Yes?
`JUDGE ARPIN: If they’re not displayed, how could
`you edit them with a stylus?
`MR. MESSINGER: That’s a good question, Your
`Honor. We have testimony from Dr. Williams under questioning,
`this is an input, for example, through a stylus on a touch screen,
`like you say, that input could be just text. That could be inputting
`an actual spatial reminder range. And you can see Williams’s
`deposition transcript, Exhibit 1015, page 125, 5 to 10, and so
`what it -- we recognize, Your Honor, that it could be an input
`text, inputting the spatial reminder range. What it does not teach
`is what Alarm relies on it for. Alarm is relying on it to show that
`Figures 8A and 8B are actually displayed. And that’s what
`they’re reading on the displaying a map limitation.
`That’s not what’s present. All that’s taught in those
`paragraphs there are that an input can be to a reminder profile.
`JUDGE ARPIN: But, counselor, it doesn’t say that it’s
`not displayed either. It doesn’t say anything about how the stylus
`is used. Are we then left with how a person of ordinary skill in
`the art would read the art?
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`MR. MESSINGER: And anticipation requires more
`than that, Your Honor. I think we can agree, it doesn’t explicitly
`state that Figures 8A aren’t displayed, and so then the issue is
`whether or not it’s necessarily inherent. And Alarm has provided
`no evidence that it’s necessarily inherent in that, especially given
`the fact that we have testimony and evidence that one way input
`could be done is through text. That doesn’t require that a map be
`displayed, and it certainly doesn’t require that Figures 8A and 8B
`are actually displayed.
`In fact, our position is, Your Honor, and this is
`consistent with Mr. Williams’s testimony, is that Figures 8A and
`8B are provided in Osman as patent illustrations of use cases. In
`fact, you can actually look, if we turn to slide -- slide 12.
`JUDGE ARPIN: Well, counselor, I want to respond to
`or ask you a little bit further about a point you just made. You
`noted that this is an anticipation rejection with regard to the -- to
`at least some of the claims, but it’s an obviousness rejection with
`regard to others. Is your argument then split depending on
`whether it’s anticipation or obviousness?
`MR. MESSINGER: Yes, you’re correct -- correct,
`Your Honor. The claims that we’re talking about now are claims
`17, 18, 35, 36, and 53, 54, which have the displaying a map
`limitation. There’s a separate set of claims, claims 8, 26 and 44,
`that are instituted for trial here based on obviousness, and those
`involve Osman and Suzuki, and I’ll touch on that later, why that
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`combination is improper because of the explicit teaching in
`Osman on “no message delivery.”
`But for the purposes here of displaying a map
`limitation, that only applies to the set of claims 17, 18 and 35, 36,
`53, 54.
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`JUDGE ARPIN: In our decision to institute on page 14,
`in our discussion of the anticipation law, we say that, “however, it
`is proper to take into account not only the specific teachings of
`the reference, but also the inferences that one skilled in the art
`would reaso
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