UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Under Armour, Inc.
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`
`
`
`Case: IPR2015-01532
`Patent No. U.S. 8,652,009
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 § C.F.R. 42.107(a)
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`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Under Armour, Inc.
`Petitioner
`
`v.
`
`adidas AG,
`Patent Owner
`
`
`
`
`
`
`
`Case: IPR2015-01532
`Patent No. U.S. 8,652,009
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 § C.F.R. 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`U.S. Pat. No. 8,652,009
`IPR2015-01532
`Preliminary Response
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`THE ‘009 PATENT ......................................................................................... 1
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`III. RELATED PROCEEDINGS .......................................................................... 3
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`IV. LEGAL STANDARDS ................................................................................... 3
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`A.
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`B.
`
`C.
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`Petitioner bears the burden of demonstrating that there is a
`reasonable likelihood that at least one of the claims challenged
`in the petition is unpatentable ................................................................ 3
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`Anticipation ........................................................................................... 4
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`The Law of Obviousness ....................................................................... 5
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`V.
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`CLAIM CONSTRUCTION ............................................................................ 7
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`A.
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`B.
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`Legal Standard ....................................................................................... 7
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`“recommending a route for traversal by the individual from the
`stored route data based on the position data” (claim 13) ...................... 8
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`VI. THE PETITION DOES NOT SATISFY ITS BURDEN UNDER
`35 U.S.C. § 314(A) ........................................................................................ 10
`
`A. Ground 1 – Bouve does not anticipate Challenged Claims 13,
`14, and 17 ............................................................................................ 10
`1.
`Petitioner has not demonstrated that Bouve discloses
`“receiving position data relating to a position of the
`individual.” ................................................................................ 10
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`i
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`Petitioner has not demonstrated that Bouve discloses
`“processing the position data with one or more
`processors and recommending a route for traversal by the
`individual from the stored route data based on the
`position data.” ........................................................................... 13
`Petitioner has not demonstrated that Bouve discloses
`“wherein the stored route data comprises a length of the
`route.” ........................................................................................ 15
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`2.
`
`3.
`
`B.
`
`C.
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`Ground 2 – The Combination of Bouve in view of DeLorme
`does not render Obvious Challenged Claims 13, 18, and 20 .............. 18
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`Ground 3 – Kim does not anticipate Challenged Claims 13, 14,
`15, 17, and 20 ...................................................................................... 20
`1.
`Petitioner has not demonstrated that Kim discloses
`“processing the position data with one or more
`processors and recommending a route for traversal by the
`individual from the stored route data based on the
`position data.” ........................................................................... 20
`Petitioner has not demonstrated that Kim discloses
`“wherein the stored route data comprises a length of the
`route.” ........................................................................................ 21
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`2.
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`VII. CONCLUSION .............................................................................................. 24
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`CERTIFICATE OF SERVICE ................................................................................ 26
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`ii
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`U.S. Pat. No. 8,652,009
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`Preliminary Response
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`I.
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`INTRODUCTION
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`The Board should not institute trial because the Petition fails to show a
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`reasonable likelihood that any of claims 13, 14, 15, 17, 18, and 20 (the
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`“Challenged Claims”) of U.S. Patent No. 8,652,009 (“the ‘009 patent”) are
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`unpatentable. 37 C.F.R. § 42.104(b)(4).
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`The Petition fails to apply the proper construction of the claim term
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`“recommending a route for traversal by the individual from the stored route data
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`based on the position data.” For this reason alone, the Petition fails. Additionally,
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`Petitioner has not demonstrated that additional key claim limitations in the
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`Challenged Claims are shown under the three proposed Grounds for Institution.
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`For at least these reasons, Petitioner has not met its burden under 35 U.S.C.
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`§ 314(a) and 37 C.F.R. § 42.108(c) to prove that there is a reasonable likelihood
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`that at least one of the Challenged Claims is unpatentable. Thus, the Board should
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`deny the Petition and decline to institute inter partes review of the Challenged
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`Claims.
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`II. THE ‘009 PATENT
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`The ‘009 patent describes, in relevant part, a method for recommending a
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`route for traversal by an individual. Independent claim 13 recites this method:
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`1
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`A method for recommending a route for traversal by an
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`individual, comprising:
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`storing data associated with one or more routes available to be
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`traversed by an individual;
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`receiving position data relating to a position of the individual;
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`and
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`processing the position data with one or more processors and
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`recommending a route for traversal by the individual from the
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`stored route data based on the position data.
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`Ex. 1001 at 72:21-29. Challenged claims 14, 15, 17, 18, and 20 provide additional
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`claim limitations specifying that the recommendation is based on the stored route
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`data, identifying what kind of route data is used for the recommendation, requiring
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`that the route data is associated with a route previously traversed by the individual,
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`and specifying that the position data is received with a GPS receiver. Id. at 72:33-
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`45.
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`The ‘009 patent issued from U.S. Patent Application No. 13/789,266 filed on
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`March 7, 2013. The ‘009 patent claims priority to U.S. Provisional Application
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`No. 60/270,400 filed on February 20, 2001.
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`2
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`III. RELATED PROCEEDINGS
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`The ‘009 patent has been asserted against Petitioner in the District of
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`Delaware in the litigation styled as: adidas AG, et. al. v. Under Armour, Inc. and
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`MapMyFitness, Inc., Case No. 14-130-GMS (D. Del.). Petitioner filed petitions to
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`institute inter partes reviews of 5 patents that are related to the ‘009 patent,
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`IPR2015-00697 (U.S. Patent No. 7,905,815), IPR2015-00698 (U.S. Patent No.
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`8,092,345) IPR2015-00700 (U.S. Patent No. 8,579,767), IPR2015-01528 (U.S.
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`Patent No. 8,721,502) and IPR2015-01531 (U.S. Patent No. 8,725,276), and three
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`other patents asserted in the litigation: IPR2015-00694 (U.S. Patent No.
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`7,292,867), IPR2015-00695 (U.S. Patent No. 7,805,149), and IPR2015-00696
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`(U.S. 8,068,858). Petitioner voluntarily dismissed IPR2015-01531 and filed a new
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`petition for inter partes review of the ‘276 patent with a case number IPR2015-
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`1891.
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`IV. LEGAL STANDARDS
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`A.
`
`Petitioner bears the burden of demonstrating that there is a
`reasonable likelihood that at least one of the claims challenged in
`the petition is unpatentable
`
`35 U.S.C. § 314(a) identifies the threshold standard that must be met to
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`institute an inter partes review:
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`3
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`(a) Threshold.— The Director may not authorize an inter partes
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`review to be instituted unless the Director determines that the
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`information presented in the petition filed under section 311 and
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`any response filed under section 313 shows that there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of
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`the claims challenged in the petition.
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`35 U.S.C. § 314(a) (emphasis added); see also 37 C.F.R. § 42.108(c).
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`B. Anticipation
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`“A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`reference.” Medtronic, Inc. v. Norred, M.D., IPR2014-00111, 2015 WL 1906726,
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`at *9 (P.T.A.B. Apr. 23, 2015) (quoting Verdegaal Bros. v. Union Oil Co., 814
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`F.2d 628, 631 (Fed. Cir. 1987)). “The identical invention must be shown in as
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`complete detail as is contained in the . . . claim.” Id. (quoting Richardson v. Suzuki
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`Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989)). “[U]nless a reference discloses
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`within the four corners of the document not only all of the limitations claimed but
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`also all of the limitations arranged or combined in the same way as recited in the
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`claim, it cannot be said to prove prior invention of the thing claimed and, thus,
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`cannot anticipate under 35 U.S.C. § 102.” Id. (quoting Net MoneyIN, Inc. v.
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`VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)).
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`C. The Law of Obviousness
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`An obviousness analysis under 35 U.S.C. § 103(a) examines the differences
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`between the claimed invention and the prior art to determine whether “the subject
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`matter as a whole would have been obvious at the time the invention was made” to
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`a person having ordinary skill in the art. Alza Corp. v. Mylan Labs., Inc., 464 F.3d
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`1286, 1289 (Fed. Cir. 2006). The factual underpinnings, often referred to as the
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`Graham factors, include 1) the scope and content of prior art; 2) the level of
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`ordinary skill in the art; 3) the differences between the claimed invention and the
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`prior art; and 4) evidence of secondary considerations of non-obviousness.
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`Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
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`“Rejections on obviousness cannot be sustained by mere conclusory
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`statements; instead, there must be some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988
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`(Fed. Cir. 2006)). See also Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
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`F.3d 1342, 1366 (Fed. Cir. 2012) (“Even if the references disclosed all of the
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`limitations of the asserted claims, which they do not, S & N still needed to proffer
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`evidence indicating why a person having ordinary skill in the art would combine
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`the references to arrive at the claimed invention.”). Instead, obviousness requires
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`the additional showing that a person of ordinary skill at the time of the invention
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`would have selected and combined those prior art elements in the normal course of
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`research and development to yield the claimed invention. KSR Int’l, 550 U.S. at
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`421. Petitions providing “unexplained citations [to references] are inadequate to
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`demonstrate a reason to modify the teachings of a particular reference or to
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`combine the teachings of two or more references to teach or suggest a limitation of
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`a challenged claim.” Gracenote, Inc. v. Iceberg Indus. LLC, IPR2013-00552, 2014
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`WL 1384070, at 10 (P.T.A.B. Mar. 7, 2014).
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`The Board emphasizes this requirement in Heart Failure Technologies, LLC
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`v. Cardiokinetix, Inc., IPR2013-00183, 2013 WL 4181227, at *5 (P.T.A.B. July
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`31, 2013). In Heart Failure Technologies, the Board denied an IPR petition,
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`stating:
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`The fact that Murphy, Khairkhahan, and Lane all concern human heart
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`repair is not in itself sufficient rationale for making the combination.
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`Many heart repair devices exist. That fact alone would not make it
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`obvious to combine their features. Petitioner must show some reason
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`why a person of ordinary skill in the art would have thought to
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`combine particular available elements of knowledge, as evidenced by
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`the prior art, to reach the claimed invention. See KSR Int’l Co. v.
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`Teleflex, Inc., 550 U.S. 398, 418 (2007). This, the Petitioner has not
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`done. That the references relied upon all relate to human heart repair
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`does not amount to “some articulated reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” See id.
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`(internal quotations omitted).
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`Id. (emphasis in original). See also The Scotts Co. LLC v. Encap LLC, IPR2013-
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`00491, 2013 WL 8595755, at *7 (P.T.A.B. Feb. 5, 2013).
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`It is also improper for Petitioner to use hindsight reconstruction for
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`obviousness based on Applicant’s own disclosure. In re NTP, Inc., 654 F.3d 1279,
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`1299 (Fed. Cir. 2011) (“Care must be taken to avoid hindsight reconstruction by
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`using ‘the patent in suit as a guide through the maze of prior art references,
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`combining the right references in the right way so as to achieve the result of the
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`claims in suit.’”).
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`V. CLAIM CONSTRUCTION
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`A. Legal Standard
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`The Petition must identify how each challenged claim is to be construed.
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`37 C.F.R. § 42.104(b)(3). Because the ‘009 Patent has not expired, all claims are
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`to be construed with the broadest reasonable interpretation in light of the
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`specification. See 37 C.F.R. § 42.100(b).
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`B.
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`“recommending a route for traversal by the individual from the
`stored route data based on the position data” (claim 13)
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`Claim 13 requires “receiving position data relating to a position of the user”
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`and “recommending a route for traversal . . . based on the position data.” The
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`broadest reasonable interpretation of “recommending a route for traversal . . .
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`based on the position data” in light of the specification is “recommending a route
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`for traversal based only on the received position data relating to a single position of
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`the user.”
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`The ‘009 Patent’s specification describes multiple guidance functions that
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`could be employed by its MPN system including “showing current position, speed,
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`and elevation, providing route guidance, collecting and annotating position and
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`speed data, and recommending an athletic training route.” Ex. 1001 at 17:10-13.
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`In one method, a user enters a desired destination and the MPN would then
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`calculate a route from the current location to the desired location. See id. at 40:52-
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`57; Fig. 43A.
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`Alternatively, the ‘009 Patent discusses collecting position information to be
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`used to recommend a route for a later session. Id. at 41:66-67. The MPN system
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`can store position information from one or more sessions and then construct map
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`data of routes that are available to the user. Id. at 41:67-42:3. The system may
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`collect information about the route, including elevation profile, distance of
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`individual segments, landmarks, or other information of interest. Id. at 42:6-10.
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`Based on the stored route data, the system can recommend a route to the user based
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`on desired workout intensity, elevation profile, distance, or “any other suitable
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`criteria, or combination of criteria, for route selection.” Id. at 42:10-18.
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`Thus, the Patentee plainly described various methods by which the MPN
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`system can provide route recommendations to a user. In drafting its claims, the
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`patentee could have claimed that route selection was based on two position
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`points—the current location of the user and the desired destination. However, that
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`is not what is claimed in claim 13. Claim 13 clearly recites recommending a route
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`based on “received position data relating to a position of the individual.” This
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`method is directly in line with the second route recommendation method identified
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`above based on position information collected and stored for use in recommending
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`a route in later sessions. See Ex. 1001 at 41:66-42:18.
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`Thus, the received position data that is used to recommend a route to the
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`user is position data relating to a single position of the individual. This position
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`could be the current location of the user or a future location. However, in either
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`scenario, the received position data relates to a single position.
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`9
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`Accordingly, the broadest reasonable interpretation of “recommending a
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`route for traversal . . . based on the position data” in light of the specification is
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`“recommending a route for traversal based only on the received position data
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`relating to a single position of the user.”
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`VI. THE PETITION DOES NOT SATISFY ITS BURDEN UNDER
`35 U.S.C. § 314(A)
`
`A. Ground 1 – Bouve does not anticipate Challenged Claims 13, 14,
`and 17
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`1.
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`Petitioner has not demonstrated that Bouve discloses “receiving
`position data relating to a position of the individual.”
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`Claim 13 of the ‘009 patent requires that one step in the method comprises
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`“receiving position data relating to a position of the individual.” Petitioner and Dr.
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`Burke have not demonstrated that Bouve discloses this claim limitation.
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`In support of its argument that Bouve satisfies this limitation, Petitioner
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`points to disclosures in Bouve relating to input devices used to provide first and
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`second geographic locations. Petition at 12-13. For instance, Bouve provides that
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`“[a] keyboard, voice recognition system or other input device is used to input first
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`and second geographic locations within the geographic region and between which
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`the user desires to travel.” Ex. 1004 at 2:10-13; see also id.at 2:49-60. According
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`to Petitioner, the described first and second locations correspond to the desired
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`beginning and ending locations for the desired travel. Petition at 12 (citing Ex.
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`10
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`1004 at 3:64-66). Petitioner further points to an embodiment in which the
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`disclosed system is incorporated into an automobile: “The vehicle system
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`preferably has a voice recognition device 12a so that the driver of the vehicle may
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`query the system and input data while maintaining proper control of the vehicle.”
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`Ex. 1004 at 5:6-9. Bouve further discloses that “[t]he vehicle system 30 is
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`particularly beneficial to a traveler desiring to select or change the route of travel
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`during the course of travel, or to inquire about Incidents or Conditions while
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`traveling.” Id. at 5:11-15. Based on these disclosures, Petitioner contends that
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`“one of ordinary skill in the art would understand that the ‘first geographic
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`location’ input by the user can include data relating to a current position of the
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`individual or a future position of the individual.”
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`Petitioner’s arguments fail for two reasons. First none of the disclosures
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`identified by Petitioner actually disclose that the first or second geographic
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`location is the “position of the individual” whether present or future. Nothing in
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`Bouve ties its routing features to a position of the individual. Although the vehicle
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`embodiment discloses that it “is particularly beneficial to a traveler desiring to
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`select or change the route of travel during the course of travel, or to inquire about
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`incidents or Conditions while traveling,” this disclosure does not require that the
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`user of the vehicle embodiment is interested in the route of travel of that user such
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`that the first or second location would correspond to the user’s current or future
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`position.
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`Recognizing that Bouve’s disclosures are facially deficient, Petitioner relies
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`on what “would be understood by a person of ordinary skill in the art.” However,
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`a proper anticipation rejection requires that “[t]he identical invention must be
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`shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki,
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`868 F.2d at 1226, 1236 (Fed. Cir. 1989). The Petition’s reliance on what a person
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`of skill in the art would have understood, as opposed to what is actually expressly
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`or inherently disclosed, does not establish that the identical invention is disclosed
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`in Bouve.
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`In support of its assertion regarding the understanding of a person of
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`ordinary skill in the art, Petitioner points to Paragraph 35 of Dr. Burke’s expert
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`Declaration, Exhibit 1003. However, this paragraph of Dr. Burke’s Declaration
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`follows several paragraphs discussing the disclosures in Bouve. As discussed
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`above, nothing in these disclosures demonstrates that Bouve’s system recites
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`“receiving position data relating to a position of the individual.” At best, Petitioner
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`appears to set forth an undeveloped inherency argument.
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`Petitioner, however, does not even attempt to satisfy the inherency
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`requirement that the claim limitation must be necessarily present and not shown
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`12
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`through mere “probabilities or possibilities.” Continental Can Co. v. Monsanto
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`Co., 948 F.2d 1264, 1268–69 (Fed. Cir. 1991). Petitioner provides no explanation
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`as to why a person of ordinary skill would necessarily conclude that the first or
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`second location be “related to a position of the user” and not find that it is more
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`than just a mere possibility that the first or second location could be “related to a
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`position of the user.”
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`For these reasons, the Petition has not established that this claim limitation is
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`anticipated by Bouve. Thus, Bouve does not anticipate claim 13, or any claim that
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`depends on claim 13 including challenged claims 14 and 17.
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`2.
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`that Bouve discloses
`Petitioner has not demonstrated
`“processing the position data with one or more processors and
`recommending a route for traversal by the individual from the
`stored route data based on the position data.”
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`Claim 13 also requires the method step of “processing the position data with
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`one or more processors and recommending a route for traversal by the individual
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`from the stored route data based on the position data.” Petitioner’s arguments
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`regarding this claim limitation ignore the proper construction of this claim
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`limitation.
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`Petitioner asserts that Bouve discloses this claim limitation wherein it
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`discloses a system for identifying a travel route between a first and second
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`geographic location. Petitioner points to a number of disclosures in Bouve
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`13
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`disclosing its system and method for route retrieval. See Petition at 13-15 (citing
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`Ex. 1004 at Abstract; 1:66-2:21; 5:11-15; 7:63-8:3). However, Bouve makes clear
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`that in order to return a list of one or more routes to a user, the user must input
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`position information for both a first and second geographic location. “Responsive
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`to the inputted geographical locations, a computer processing unit retrieves at least
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`one travel route between the first and second geographic locations, from the
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`stored plurality of travel routes.” Ex. 1004 at 2:13-16.
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`As discussed
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`above,
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`the broadest
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`reasonable
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`interpretation of
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`“recommending a route for traversal . . . based on the position data” in light of the
`
`specification is “recommending a route for traversal based only on the received
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`position data relating to a single position of the user.” Thus, Claim 13 recites a
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`route recommendation method based only on a single position. In contrast, Bouve
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`discloses that its route recommendation is based on the position data for two
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`positions—a first and second geographic location. Because the system and method
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`disclosed in Bouve requires data related to two positions to recommend a route, it
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`does not disclose recommending a route based only on the received position data
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`relating to a single position of the individual. Thus, Bouve discloses a
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`fundamentally different method of providing route information from the method
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`recited in claim 13.
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`14
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`For these reasons, Petitioner has not established that this claim limitation is
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`anticipated by Bouve. Thus, Bouve does not anticipate claim 13, or any claim that
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`depends on claim 13 including challenged claims 14 and 17.
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`3.
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`Petitioner has not demonstrated that Bouve discloses “wherein
`the stored route data comprises a length of the route.”
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`Claim 14 requires that the route recommendation is based on the stored route
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`data described in claim 13. Claim 17, which depends on claim 14, recites that the
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`stored route data used for recommending a route comprises “length of the route.”
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`Petitioner has not demonstrated that Bouve discloses this claim limitation.
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`Petitioner first points to disclosures in Bouve describing how in the prior art,
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`users had to manually determine the distance for a route. Petition at 17-18 (citing
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`Ex. 1004 at 1:28-35). Petitioner argues that Bouve improved upon the prior art by
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`describing a system that includes “software or other conventional means to
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`compute the mileage indication, along the retrieved travel route(s), for each
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`individual item of travel information which is retrieved from the data bases.”
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`Petition at 18 (citing Ex. 1004 at 8:18-22).
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`Petitioner then points to a number of other disclosures in which Bouve
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`describes how its system can calculate mileage or distance information between
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`points on the route. Petition at 18-19 (citing Ex. 1004 at 4:31-32; 6:30-39; 4:20-
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`34). However, Petitioner does not identify any disclosures in Bouve that show that
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`15
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`Preliminary Response
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`route length is a part of the route data stored in the databases disclosed by Bouve,
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`as required by the claim language. Instead, Petitioner relies on statements that
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`plainly provide that distances between points are computed by the system in
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`Bouve.
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`In its discussion of claim 13, Petitioner relies on a number of disclosures in
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`Bouve that it contends relate to “storing data associated with one or more routes.”
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`Specifically, Petitioner contends that Bouve discloses such stored route data where
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`it discloses “[o]ne or more data bases residing on the storage device have a
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`plurality of travel routes within a geographic region as well as one or more types of
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`travel information, such as eateries, hotels/motels, road construction areas,
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`weather, or other information useful to traveler, and associated with one or more of
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`the plurality of travel routes.” Ex. 1005 at 2:51-54.
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` However, with respect to Claim 17, Petitioner points to the following
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`paragraph relating to a portable computing embodiment from Bouve describing
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`how mileage information is computed :
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`The CPU 205 . . . retrieves the route(s) and travel information,
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`corresponding to the user input data, from data bases stored on device
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`200. The retrieved information is tabulated by CPU 205 and
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`transmitted along with computed mileage and/or
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`travel
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`time
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`16
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`indicators, via the communications network 250 to the hand-held
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`computing device 240 where it is proceed in processor 211 and
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`presented to the user by the presentation device 213.
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`Ex. 1005 at 6:30-39 (emphasis added). This disclosure in Bouve clearly and
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`plainly states that the mileage information is computed. This computed
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`information is distinct from the retrieved route and travel information stored in the
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`databases identified by Bouve and relied upon by Petitioner, as it must be
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`calculated. See also, id. at 4:12-24 (“The retrieved travel route(s) and Facility,
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`Landmark, Incident, and Condition information are tabulated by processor 11 and
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`may be stored in storage device 14. . . . The microprocessor 11 calculates mileage
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`and/or travel time indicators . . . along the retrieved travel route(s). The tabulated
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`information and mileage and/or travel time indicators are presented to the user . . .
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`.) (emphasis added). Thus, Bouve’s disclosures with regards to mileage
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`information does not disclose that the stored route Data comprises length of the
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`route.
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`Petitioner also points to disclosures in Bouve that permit the user to select a
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`route based on various types of routes, including “direct,” “highway,” “scenic,” or
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`“shortest route.” Petition at 19 (citing Ex. 1004 at 7:53-58). However, the cited
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`language from Bouve does not indicate that the “shortest route” is determined
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`17
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`based on stored route data. Thus, Petitioner’s reliance on this statement from
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`Bouve is misplaced.
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`For these reasons, Petitioner has not established that this claim limitation is
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`anticipated by Bouve. Thus, Bouve does not anticipate claim 17.
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`B. Ground 2 – The Combination of Bouve in view of DeLorme does
`not render Obvious Challenged Claims 13, 18, and 20
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`As discussed above, Petitioner has not demonstrated that Bouve discloses
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`the claim limitations “receiving position data relating to a position of the
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`individual” or “processing the position data with one or more processors and
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`recommending a route for traversal by the individual from the stored route data
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`based on the position data.” Recognizing that Bouve does not disclose these
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`limitations, Petitioner asserts that the combination of Bouve in view of DeLorme
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`would satisfy both of these claim limitations. Petition at 21-23.
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`However, Petitioner’s arguments focus exclusively on the claim limitation
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`“receiving position data relating to a position of the individual.” Petitioner
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`completely ignores the claim limitation “processing the position data with one or
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`more processors and recommending a route for traversal by the individual from the
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`stored route data based on the position data.” Like Bouve, DeLorme’s route
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`identification system also requires two points—a starting point and an ending
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`18
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`point—in order to return routes to a user. For instance, the full discussion of the
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`referenced portions of DeLorme provides as follows.
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`Processing starts either with routing 203 or multimedia 204. For
`example, as a leading step within the routing subsystem 205, a typical
`application, or episode of use, proceeds with waypoint input 231,
`typically selected by the user, including a starting place, a final
`destination and optionally one or more mid-points or intermediate
`locations where the user may stop or pass through in his or her
`travels. Waypoints include departure points and destinations as well
`as intermediate or mid-route waypoints. Waypoints are listed in the
`users intended order of travel. The system 200 facilitates waypoint
`input for routing functions by a variety of means, including database
`searches, as disclosed for input of points of interest (POIs) within the
`multimedia block 209. Waypoint input can also be derived from a
`GPS receiver interfacing with IRMIS, for example, to download the
`current position of the GPS receiver and input it as a starting point.
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`Ex. 1005 at 2:34-50 (emphasis added). Thus, like Bouve, DeLorme plainly
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`contemplates that routing functions require both a first and second location.
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`However, as discussed above, claim 13 of the ‘009 patent recites that route
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`recommendations are made based on received route data for a single location.
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`Petitioner makes no arguments to suggest that the combination of Bouve and
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`DeLorme would disclose providing a route recommendation based on a single
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`location.
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`For these reasons, Petitioner has not demonstrated that Bouve in view of
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`DeLorme would render claim 13 obvious. Further, it necessarily follows that
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`Petitioner also has not demonstrated that Bouve in view of DeLorme would render
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`19
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`obvious any claim that depends on claim 13, including challenged claims 18 and
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`20.
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`C. Ground 3 – Kim does not anticipate Challenged Claims 13, 14, 15,
`17, and 20
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`1.
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`Petitioner has not demonstrated that Kim discloses “processing
`the position data with one or more processors and
`recommending a route for traversal by the individual from the
`stored route data based on the position data.”
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`Similar to Petitioner’s analysis regarding Bouve, Petitioner’s analysis with
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`respect to Kim and this claim limitation wholly ignores the proper construction of
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`this term.
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`Petitioner argue
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