Trials@uspto.gov
`571-272-7822
`
` Paper 20
`Entered: November 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GEOTAB INC., AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioners,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DeFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
` Paper 20
`Entered: November 29, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`GEOTAB INC., AND
`TV MANAGEMENT, INC., D/B/A GPS NORTH AMERICA,
`Petitioners,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`__________________________
`
`Before WILLIAM V. SAINDON, CARL M. DeFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`HAGY, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`Case IPR2016-01063
`Patent 8,717,166 B2
`
`
`I. INTRODUCTION
`Petitioners1 request an inter partes review of claims 1–10, 13–16, and
`19–25 of U.S. Patent No. 8,717,166 B2 (Ex. 1001, “the ’166 patent”). Paper
`5 (“Pet.”). Patent Owner filed a Preliminary Response to the Petition. Paper
`14 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” See also 37 C.F.R. § 42.4(a). Upon
`consideration of the Petition and Patent Owner’s Preliminary Response, we
`institute an inter partes review on all challenged claims of the ’166 patent.
`Our factual findings and conclusions at this stage of the proceeding
`are based on the evidentiary record developed thus far. This is not a final
`decision as to the patentability of claims for which inter partes review is
`instituted. Our final decision will be based on the record as fully developed
`during trial.
`
`A. Related Matters
`Petitioners represent that the ’166 patent has been asserted in the
`
`following cases in the Eastern District of Texas: PerdiemCo LLC v. Geotab
`Inc. et al, Case No. 2:15-cv-00726; PerdiemCo, LLC. v. Industrack LLC,
`Case No. 2:15-cv-00727; PerdiemCo, LLC. v. Omnivations II, LLC D/B/A
`Fleetronix, Case No. 2:15-cv-00729; PerdiemCo, LLC. v. Teletrac, Inc. et
`
`
`1 On August 15, 2016, Petitioners Teletrac Inc. and Navman Wireless North
`America, Ltd., moved to terminate the proceedings with respect to
`themselves only. Paper 11. The Board granted that motion on August 24,
`2016, leaving as Petitioners Geotab Inc. and TV Management, Inc., d/b/a
`GPS North America. Paper 13.
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`al; Case No. 2:15-cv-00730; Perdiem Co LLC v. GPS Logic, LLC; Case No.
`2:15-cv-01216; PerdiemCo LLC v. TV Management, Inc. d/b/a GPS North
`America, Case No. 2:15-cv-01217; PerdiemCo, LLC. v. thingtech LLC, Case
`No. 2:15-cv-01218; PerdiemCo, LLC. v. LiveViewGPS, Inc., Case No. 2:15-
`cv-01219. Pet. 2.
`
`Patent Owner represents that the ’166 patent “was formerly the
`subject of co-pending litigation” in PerdiemCo, LLC v. Industrack LLC, et
`al., Case No. 2:15-cv-727-JRG-RSP (E.D. Tex.) and PerdiemCo, LLC v.
`GPSLogic, LLC et al., No. 2:15-cv-16616-JRG-RSP (E.D. Tex.),2 but states
`that “[Patent Owner] is not currently pursuing any of the ’166 claims in
`those co-pending litigations.” Prelim. Resp. 1.
`
`Petitioners have also filed petitions challenging Patent Owner’s U.S.
`patent nos. 8,223,012 (IPR2016-01061); 8,493,207 (IPR2016-01062);
`9,003,499 (IPR2016-01064); and 9,071,931 (IPR2016-01278).
`
`Petitioners also identify pending U.S. patent application
`nos.14/629,343 and 14/629,347 as related to the ’166 patent. Pet. 3.
`
`
`B. The ’166 Patent (Ex. 1001)
`The ’166 patent describes a system that conveys information related to
`an object to one or more users in an “information-sharing environment.”
`Ex. 1001 at 2:6–7, 5:36–47. According to the ’166 patent, various
`technologies (such as Global Positioning Systems (“GPS”)) may be used to
`track the location of objects. Id. at 6:18–20. The objects tracked may be
`people (such as a child), vehicles (such as a semi truck or a car), or other
`
`
`2 Patent Owner includes an apparent typographical error in identifying this
`matter; the correct cause number is 2:15-cv-01216. Pet. 2.
`3
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`objects or animals (such as a crate or a dog). Id. at 6:33–36; see also Fig. 1.
`The objects may be tracked relative to “user-defined zones.” Id. at 2:6–14.
`The system also monitors “events,” which are, for example, instances when
`a tracked object enters or exits a zone. Id. at 2:8–12.
`An “information-sharing environment” (ISE) as described in the ’166
`patent may include a family or group of friends or it may be larger (e.g., a
`company). Id. at 5:36–42. Multiple ISEs may co-exist within a larger ISE.
`Id. at 5:42–47. An administrator with privileges may configure an ISE by
`specifying authorized users and giving these authorized users their own
`privileges. Id. at 5:48-51. Various levels of administrator privileges may
`exist. Id. at 5:60–63. Each ISE may be administered to manage conveyance
`of information among computing devices based on “user identification
`codes” and/or “group codes.” Id. at 6:7–9, 7:55–60. Such codes “may be
`managed by a control station or may be established based on unique user
`identification,” and can be associated with “one or more groups, and one or
`more information access privilege classifications, etc.” Id. at 7:11–17.
`Based on these codes, conveyance of specified object location information
`may be limited to specified users. Id. at 7:55–8:3.
`The ’166 patent describes an example scenario in which a mother
`desires to track her teenage daughter’s activities for the day by tracking the
`location of the daughter’s car relative to several defined zones. Id. at 9:23–
`67. The mother sets up events so that, when her daughter’s car enters or
`leaves each defined zone, the mother will receive an alert (such as an email).
`Id. at 9:49–57. The mother may also enable the location information for her
`daughter’s tracked car to be conveyed to one or more other specified users,
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`such as the girl’s father, without them having knowledge of an access code.
`Id. at 11:1–9, 15–24.
`
`C. Challenged Claims
`Petitioners challenge claims 1–10, 13–16, and 19–25, of which claims
`1, 5, 19, 21, 22, and 25 are independent. Challenged claim 1 is reproduced
`below.3
`
`1. [a] A method for conveying information related to
`locations of a plurality of mobile devices of users in a plurality
`of user groups, comprising:
`[b] creating a plurality of information-sharing environments
`over a network of computing devices comprising interfaces
`for configuring
`the plurality of
`information-sharing
`environments for users based on varying
`levels of
`administrative privileges, [c] wherein the plurality of
`information-sharing
`environments
`comprise
`a
`first
`information-sharing environment and a plurality of second
`information-sharing environments, [d] said plurality of
`second
`information-sharing environments comprising a
`plurality of independently configurable location information
`sharing environments created within the first information
`sharing environment;
`[e] configuring the first information-sharing environment based
`on a first level of administrative privilege to associate one or
`more users that use the plurality of location information
`sharing environment with each one of the plurality of user
`groups;
`[f] configuring each one the plurality of location information-
`sharing environments for each user group independent of
`one another based on at least one second level of
`administrative privilege by specifying one or more levels of
`location information access privilege for at least one
`authorized user in each user group; and
`
`3 For expediency, Petitioners and Patent Owner both break claim 1 into
`limitations 1(a)-1(g). We adopt that format herein for ease of reference.
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`[g] managing conveyance of information related to location of
`the plurality of the mobile devices in the plurality of user
`groups based on a plurality of location information access
`privileges associated with a plurality of authorized users.
`
`
`D. Prior Art and Asserted Grounds
`Petitioners rely on two references as prior art:
`
`Fast et al., U.S. Patent No. 7,327,258 B2, filed January 31,
`(1)
`2005, and issued February 5, 2008 (“Fast”) (Ex. 1003), which Petitioners
`assert is prior art under 35 U.S.C. § 102(e) (Pet. 5); and
`
`(2) Zou et al., Pub. No. US 2005/0156715 A1, filed January 16,
`2004, and published July 21, 2005 (“Zou”) (Ex. 1005), which Petitioners
`assert is prior art under 35 U.S.C. § 102(a) (Pet. 5).
`
`Petitioners assert claims 1–10, 13–16, and 19–25 of the ’166 Patent
`are unpatentable on the following grounds:
`
`Reference(s)
`Fast
`Fast and Zou
`
`Basis
`§ 102
`§ 103
`
`Claim(s) Challenged
`1–10, 13–16, and 19–25
`1–10, 13–16, and 19–25
`
`Pet. 5.
`Petitioners also rely on the declaration of Dr. Stephen Heppe, an
`engineering consultant with a Ph.D. in electrical engineering. Ex. 1012 ¶ 2.
`
`
`II. ANALYSIS
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent. 37 C.F.R.
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`§ 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`(2016) (concluding the broadest reasonable construction “regulation
`represents a reasonable exercise of the rulemaking authority that Congress
`delegated to the Patent Office”). Claim terms are presumed to have their
`ordinary and customary meaning, as would be understood by a person of
`ordinary skill in the art in the context of the specification. See In re
`Translogic Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). That
`presumption may be rebutted by a term defined in the patent specification
`with reasonable clarity, deliberateness, and precision. 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 specification into the claims. In re Van Geuns,
`988 F.2d 1181, 1184 (Fed. Cir. 1993).
`1. “authorized user”
`The term “authorized user” appears in all of the independent claims of
`the ’166 patent. Petitioners propose the term “authorized user” be construed
`as “an individual who is given permission to access information.” Pet. 10.
`Patent Owner, on the other hand, proposes “authorized users should be
`construed as users who authorize users that receive information.” Prelim.
`Resp. 11.
`The specification describes users being “authorized” to receive
`information—for example, if their “user identification codes” are designated
`as being authorized to access that information:
`In one arrangement, an access code specifies the individual
`users and/or groups of users having access to the information to
`which the access code is associated. . . . The user identification
`code and group identification code(s) are compared to those
`included in the access code whereby a match would indicate the
`user is authorized to receive the information. As such, the
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`information is conveyed to those computing devices that are
`associated with the users having access to the information as
`specified by the access code.
`Ex. 1001 at 7:55–58, 7:64–8:3 (emphasis added). The specification further
`states, in one embodiment, “users may be granted access to the object
`location information based on the access code without having knowledge of
`the access code.” Id. at 11:6–9. The specification also states “an Internet
`service based on the present invention can be provided and administered
`such that anyone having access to the Internet can purchase the service and
`be an authorized user.” Id. at 5:63–66. Thus, the specification supports
`construing an “authorized user” as a “user who is given permission to access
`information.”
`
`On the other hand, Patent Owner cites nothing in the specification or
`elsewhere that requires interpreting an “authorized user” as limited to one
`who authorizes other users to receive information. We agree an authorized
`user may authorize other users to receive information by setting up the
`necessary access privileges (e.g., Ex. 1001 at 7:51–8:3, 11:21–24), but we
`disagree an “authorized user” is limited to that scenario, as Patent Owner
`proposes.
`We conclude the broadest reasonable interpretation of “authorized
`user” is “a user who is given permission to access information,” and we
`adopt that construction herein.
`2. “administrator”
`The term “administrator” appears only in claim 22 of the ’166 patent
`(as well as in the written description). Claim 22 recites:
`configuring
`the plurality of
`location
`information-sharing
`environments independent of one another for each user group
`based on a corresponding plurality of second levels of
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`administrative privileges, each one of the plurality of second
`levels of administrative privileges comprising a privilege to
`associate a corresponding administrator for a corresponding
`one of
`the plurality of
`location
`information-sharing
`the corresponding administrator having a
`environments,
`privilege to associate one or more users of mobile devices with
`the corresponding user group and specify at least one location
`information access privilege for an authorized user of the
`corresponding user group . . .
`Ex. 1001 at 26:47–59 (emphases added).
`Petitioners assert, “[A]n administrator includes a ‘user who performs
`administrative functions.’” Pet. 10. Petitioners further assert “under BRI, a
`particular user may be both an administrator and an authorized user.” Id.
`Patent Owner does not propose a definition of “administrator,” but argues
`“[t]he ’166 Patent describes [an] authorized user . . . to be mutually
`exclusive from the administrator by independent administrative privileges.”
`Prelim. Resp. 11 (citing Ex. 1001 at 5:26–38).
`We disagree with Patent Owner’s assertion that the ’166 patent
`specification supports construing an “administrator” as mutually exclusive to
`an “authorized user.” The specification describes “administrators” as being
`“given privileges to configure the information-sharing environment.” Ex.
`1001 at 5:48–50. The specification further describes scenarios in which the
`administrator creating a group is also a member of that group—for example,
`a parent: “After a group has been defined, the administrator can associate
`individual users with one or more of the defined groups. Similarly, a parent
`administering an information-sharing environment might define groups such
`as parents, teenagers, children, drivers, and so forth.” Id. at 13:31–34
`(emphases added). A fair reading of this passage is that the parent defining
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`the sub-groups within the family group is both the administrator and an
`authorized user in at least the “parent” group.
`We conclude the broadest reasonable interpretation of “administrator”
`is “an entity who performs administrative functions,” and we adopt that
`construction herein. We further conclude an “administrator” and an
`“authorized user,” construed according to their broadest reasonable
`interpretation, are not mutually exclusive.
`We do not need to further construe the claims to resolve the parties’
`present disputes. Thus, we decline to adopt further express constructions of
`claim terms at this time. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (noting that “claim terms need only be
`construed ‘to the extent necessary to resolve the controversy’”) (quoting
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999)).
`
`
`B. Description of the Asserted Prior Art
`Petitioners assert that the subject matter of one or more of claims 1–
`10, 13–16, and 19–25 is anticipated by Fast and/or obvious in view of Fast
`and Zou. Pet. 5. We provide an overview of each of these references before
`turning to the individual grounds.
`
`1. Fast
`Fast describes a system for monitoring various parameters (such as
`
`speed, position, and threshold boundaries) of mobile items attached to
`tracking devices called “beacons.” Ex. 1003 at Abstract, 1:61–63. Beacons
`communicate, inter alia, geographic location information to remote
`monitoring stations and/or devices through a server. Id. at 4:9–11, 8:38–9:9.
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`Beacons may be “carried or worn by a person or attached to an object.” Id.
`at 9:31–32.
`
`As an exemplary embodiment, Fast describes the Guardian Mobile
`Monitoring System (GMMS). Ex. 1001 at Fig. 23, 2:63–67, 3:9–35.
`According to Fast, the GMMS is a hierarchical system with multiple levels
`of users, including wholesalers, retailers, and subscribers. Id. at 18:25–37.
`These multiple levels are depicted in Figure 22 of Fast, below:
`
`
`
`
`Figure 22 of Fast, reproduced above, is a schematic diagram showing the
`interrelationship between the GMMS, individual wholesalers, individual
`retailers, and individual subscribers in monitoring mobile items. Ex. 1003 at
`2:58–62. The GMMS refers to the overall system, within which wholesalers
`work with operators to provide wholesale and retail mobile monitoring
`services to subscribers. Id. at 16:13–17.
`
`A subscriber may purchase multiple beacons to track multiple items
`using GMMS, such as individuals (e.g., members of a family) or objects
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`(e.g., vehicles). Ex. 1003 at 24:56–65, 33:1–17. The subscriber may create
`zones, such as “allowed or disallowed zones,” to allow monitoring of the
`tracked items in particular areas, which may be activated or deactivated
`according to a schedule. Id. at 20:63–67. Subscribers may set up the
`GMMS software to automatically notify them upon certain conditions, such
`as a beacon reaching a specified location. Id. at 12:40–44.
`
`According to Fast, the GMMS allows users to create various levels of
`access privileges. For example, a wholesaler may include an administrator,
`which has the highest level of access with unrestricted access to the
`wholesaler’s functions. Ex. 1003 at 38:26–45. Each wholesaler may have
`its own portal, accessible through the Internet, with access restricted to users
`that are authorized by system administrators. Id. at 16:5–11, 37:44–38:54,
`Figs. 14-1 and 14-2. Each wholesaler may provide monitoring services to
`multiple subscriber accounts. Id. at Fig. 22, 16:29–30.
`
`Also according to Fast, each subscriber account in GMMS may be
`given access to a dedicated portal, with a user ID and password required to
`log in, and may also have multiple users with various levels of access
`privileges. Id. at 6:21–23, 42:14–35, Figs. 16-1 and 16-2. The subscriber
`may be considered to have the highest level of access within that portal, and
`may allow restricted access to some functions of the portal by other users.
`Id. at 42:32–35. For example, a subscriber may designate a “guardian” to
`have temporary or permanent responsibility for an item—such as a
`“babysitter” designated to oversee a tracked child. Id. at 4:61–62, 43:1–11.
`
`Also using the GMMS subscriber portal, a subscriber may build
`scenarios to trigger alerts relating to tracked items. Id. at Figs. 11-1, 11-2,
`32:15–56. For example, a subscriber could build a scenario to send a
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`specified message to specified people if a certain tracked vehicle travels
`outside of a specified zone. Id. at 32:53–56; see also id. at 35:7–36:41.
`
`2. Zou
`Zou describes a fleet manager using mobile GPS tracking devices
`
`referred to as “telemetry devices.” Ex. 1005 at ¶ 9. Each telemetry device is
`assigned to a tracked object, id. at ¶ 12, communicating with a Network
`Operations Center (NOC), id. at ¶ 9; see also id. at Fig. 3. A user of the
`system communicates with the NOC over a network such as the Internet. Id.
`at Fig. 3. A user’s desktop client interfaces to the NOC through a
`presentation server. Id. at ¶ 113, Fig. 3. The presentation server provides
`functions including fleet and asset tracking and “general purpose I/O
`monitoring and control.” Id. at ¶ 111. The server also maintains a database
`“for user accounts and other related data (e.g., configuration data, user
`management information, device management, and data acquired from the
`devices 103).” Id. Zou’s user interfaces “manage and control user
`administration.” Id. at ¶ 9.
`
`Zou describes an “exemplary system” that “includes a GeoFence
`Violation Report.” Ex. 1005 at ¶ 171. According to Zou, “[t]his report will
`detail each time a vehicle entered or exited a GeoFence set for that vehicle.
`It will also report the date, time, speed, direction, and location of the vehicle
`when the GeoFence was violated.” Id. Zou also describes how users may
`“organize the exemplary system to meet specific needs. Options here allow
`the user to group vehicles into fleets, edit system user authority levels, and
`customize the way telemetry devices record and transmit data.” Ex. 1005 at
`¶ 189. Within a given fleet, a manager can select specific permissions for
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`authorizing users to view fleets, build alert templates, and manage other
`users. Id. at ¶¶ 191–193, 202, 203, Figs. 18a and 18e.
`
`C. Petitioners’ Asserted Grounds
`1. Anticipation of Claims 1–10, 13–16, and 19–25 by Fast
`Petitioners assert that Fast anticipates claims 1–10, 13–16, and 19–25
`
`of the ’166 patent. Pet. 5. We focus our analysis on independent claim 1.
`
`a. Claim 1
`Limitation 1(a) (preamble): “conveying information related to locations of
`a plurality of mobile devices of users in a plurality of user groups”
`Petitioners assert Fast discloses subscribers may configure the GMMS
`
`servers to convey the location information of beacons, which are mobile
`devices that may be associated with users. Pet. 18 (citing Ex. 1003 at 9:10–
`11, 9:55–61); see also Ex. 1003 at 4:9–17. Petitioners further argue Fast
`discloses each subscriber account is a user group, comprised of one or more
`users that include individuals who are being tracked (e.g., dependents) as
`well as those who are performing tracking functions. Pet. 19 (citing Ex.
`1003 at Fig. 1 and 24:57–65, Ex. 1012 at ¶ 63). Each subscriber account
`may be associated with one or more beacons to track the locations of, for
`example, a subscriber’s dependent child. Pet. 18–19 (citing Ex. 1003 at
`20:39–51, 24:56–65, Fig. 1). We find Petitioners’ arguments persuasive and
`supported by the cited disclosure.
`
`Patent Owner argues Fast does not teach limitation 1(a) because “Fast
`notification messages to guardians contain event information that do not
`convey location information.” Prelim. Resp. 31. We disagree. Fast teaches:
`The ultimate function of the Scenario Manager is to allow users
`to command the GMMS system to automatically monitor
`mobile events. An example would be “If the specified vehicle
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`is outside of the specified zone, at the specified time, send the
`specified message, to the specified people/places, using the
`specified communication methods.”
`Ex. 1003 at 32:51–56. Fast further teaches the “specified people” may
`include “an assigned guardian.” Id. at 21:5–7; 35:47–51. As such, on the
`current record, we are persuaded that sending a notification to a guardian
`that a tracked beacon is “outside of the specified zone” is a message that
`contains “information related to location” of the beacon, as recited in
`claim 1.
`
`Patent Owner also argues “Fast does not disclose beacon/dependents
`receiving location information from guardians.” Prelim. Resp. 31 (emphasis
`added). But, as just discussed above, the beacons in Fast convey
`“information related to location” to, for example, guardians. See Pet. 18–19.
`Patent Owner does not point to language in the claims requiring that location
`information go both ways—that is, that guardians must also convey location
`information to beacons / dependents.
`
`Petitioner has shown sufficiently for purposes of institution on this
`record that Fast teaches limitation 1(a) as claimed.
`Limitation 1(b): “creating a plurality of [ISEs] over a network of
`computing devices comprising interfaces for configuring the plurality of
`[ISEs] for users based on varying levels of administrative privileges”
`Petitioners assert more than one configuration of Fast anticipates
`
`claim 1. Pet. 17–18. Specifically, Petitioners assert anticipation by what
`they describe as the “Wholesaler-Subscriber Configuration” (Pet. 18–28) as
`well as by what they describe as the “Subscriber-Scenario Configuration”
`(Pet. 28–30). With regard to the “Wholesaler-Subscriber Configuration,”
`Petitioners assert that, “in Fast, the GMMS may be configured to create an
`unlimited number of Wholesalers and an unlimited number of Subscriber
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`Accounts.” Pet. 20 (citing Ex. 1003 at 38:49–54). Petitioners further assert,
`“The Wholesalers and Subscriber Accounts are ISEs because they are each a
`computing network where the conveyance of information from a server to a
`group of users’ computing devices can be controlled or configured.” Pet. 20.
`In addition, as Petitioners also assert, each wholesaler “is provided with its
`own wholesaler portal,” which “may have numerous users, each with a
`different level of access privilege.” Pet. 20 (citing Ex. 1003 at Fig. 14-2,
`16:7–9, 38:37–45). Similarly, as Petitioners further assert, subscribers also
`each have their own portal, which may have an unlimited number of users,
`and each subscriber may restrict access to some functions of the subscriber
`portal for other users. Pet. 20 (citing Ex. 1003 at 42:20–35, 42:47–52,
`42:53–60). With regard to the “Subscriber-Scenario Configuration,”
`Petitioners argue “the first ISE is the Subscriber Account,” and “the plurality
`of second ISEs are the scenarios specified . . . .” Pet. 29. On the current
`record, we find Petitioners’ arguments persuasive as to both argued
`configurations and supported by the cited disclosure.
`
`Patent Owner argues “[t]his limitation requires server computing
`devices,” which Patent Owner contends is not disclosed by Fast because
`“Fast servers do not determine occurrence of events.” Prelim. Resp. 32.
`Rather, according to Patent Owner, “Fast discloses automatic and manual
`threshold monitoring, neither of which occur at the GMMS servers,” but
`instead occur “at beacons remote from servers.” Id. (emphasis added).
`
`We are not persuaded by Patent Owner’s arguments because they are
`not commensurate with the scope of the claims. Claim 1 does not expressly
`recite “server computing devices” (in limitation 1(b) or elsewhere). In
`addition, Patent Owner does not point to any language in claim 1 that
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`Case IPR2016-01063
`Patent 8,717,166 B2
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`precludes an “information sharing environment,” which is recited, from
`including monitoring performed by the beacons and shared through servers
`to the users, as taught by Fast. For example, Fast’s Scenario Manager,
`running on a server, includes a scenario monitor that “listens for incoming
`trigger reports from all Beacons . . . .” Ex. 1003 at Figs. 2, 3-1, 3-2 and 12
`(depicting server environment and Scenario Manager module of subscriber
`portal), and 36:14–15. Fast further discloses “[p]rocessing the scenario
`involves executing the notification scheme associated with the trigger from
`the associated Beacon,” which “specifies what messages are sent to what
`entities using what notification methods.” Id. at 36:34–38.
`
`Petitioner has shown sufficiently for purposes of institution on this
`record that Fast teaches limitation 1(b) as claimed.
`
`Limitations 1(c),(d): “wherein the plurality of [ISEs] comprise a
`first [ISE] and a plurality of second [ISEs], said plurality of
`second [ISEs] comprising a plurality of independently configurable
`location [ISEs] created within the first [ISE]”
`Petitioners assert Fast discloses a first ISE as, at least, a wholesaler,
`
`and a plurality of second ISEs as the plurality of subscriber accounts that
`may be affiliated with a wholesaler. Pet. 21 (citing Ex. 1012 at ¶¶ 84–85);
`see also Fig. 22. Petitioners further assert that each of the subscriber
`accounts is “independently configurable” from the other subscriber accounts,
`wherein each account may designate its own users, beacons, access
`privileges, and scenarios. Pet. 21 (citing Ex. 1012 at ¶¶ 46–47, 92–95; Ex.
`1003 at 18:25–37). Petitioners further assert that the subscriber accounts are
`“location” ISEs “because users may be configured with various privileges to
`locate the position of a dependent within their respective accounts.” Pet. 21
`(citing Ex. 1012 at ¶¶ 75, 98); see also Ex. 1003 at 32:15–56, 42:36–43:11.
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`Case IPR2016-01063
`Patent 8,717,166 B2
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`On the current record, we find Petitioners’ arguments persuasive and
`supported by the cited disclosure.
`
`Patent Owner argues these limitations are not taught by Fast because
`“the claims require independent second ISE privileges that are independent
`of the first ISE,” whereas “[i]n Fast, administrators can specify users’
`privileges that were not authorized by the subscriber.” Prelim. Resp. 32–33.
`In other words, according to Patent Owner, Fast does not teach a second ISE
`“independently configurable” from the first ISE because the administrator of
`the first ISE may specify privileges for the second ISE.
`
`We do not find Patent Owner’s argument persuasive because, at the
`very least, it is not commensurate with the scope of the claim. The term
`“independently configurable” in limitation (d) does not distinguish the
`second ISE (the “location information sharing environment”) from the first
`ISE, but instead distinguishes each of the plurality of second ISEs from each
`other. Thus, Patent Owner does not persuasively point to any language in
`claim 1 that precludes an administrator of the first ISE from having input
`into the configuration of the second ISEs.
`
`Petitioner has shown sufficiently for purposes of institution on this
`record that Fast teaches limitations 1(c) and 1(d) as claimed.
`
`Limitation 1(e): “configuring the first [ISE] based on a first level of
`administrative privilege to associate one or more users that use the plurality
`of location [ISEs] with each one of the plurality of user groups”
`As noted above, we are persuaded Petitioners have sufficiently shown
`
`a wholesaler in Fast’s GMMS is a first ISE and the subscriber accounts are
`the second ISEs. Petitioners further assert Fast’s GMMS:
`allows users to configure the wholesaler (i.e., the first ISE)
`based on an administrative privilege specified for a user of the
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`wholesaler network (e.g., administrator), and the administrator
`may associate one or more users that use each of the Subscriber
`Accounts with each of the plurality of user groups (i.e., the
`administrator can create users for each Subscriber Account).
`Pet. 22 (citing Ex. 1012 at ¶ 98); see also Ex. 1003 at 38:46–54. As
`Petitioners further assert, Fast teaches a wholesaler can add, update, and
`delete the second ISEs (subscriber accounts) through the wholesaler portal.
`Pet. 23 (citing Ex. 1003 at 38:26–39, 38:50–54, and Fig. 14-1). Fast, thus,
`teaches a wholesaler has “a first level of administrative privilege” to add
`subscriber accounts and to add subscribers to those accounts. Pet. 23 (citing
`Ex. 1003 at 6:25–26, 19:60–62, 38:49–54; Ex. 1012 ¶¶ 100–102).
`Petitioners further assert “[w]hile the Subscriber Accounts are the second
`ISEs, each Subscriber’s users (e.g., family or company) are the plurality of
`user groups.” Pet. 22. We find Petitioners’ arguments persuasive and
`supported by the cited disclosure.
`
`Patent Owner argues limitation 1(e) requires the subscriber to convey
`location information to a dependent or guardian in the group, and, therefore,
`Fast fails to teach this limitation. Prelim. Resp. 32. We do not find this
`argument persuasive because, as stated above in connection with limitation
`1(a), Patent Owner has not pointed to any l
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