Trials@uspto.gov
`571-272-7822
`
`Paper 50
`
`Entered: December 5, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TV MANAGEMENT, INC., d/b/a GPS NORTH AMERICA,
`Petitioners,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01061
`Patent 8,223,012 B1
`____________
`
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`571-272-7822
`
`Paper 50
`
`Entered: December 5, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TV MANAGEMENT, INC., d/b/a GPS NORTH AMERICA,
`Petitioners,
`
`v.
`
`PERDIEMCO LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01061
`Patent 8,223,012 B1
`____________
`
`
`
`Before WILLIAM V. SAINDON, CARL M. DEFRANCO, and
`AMBER L. HAGY, Administrative Patent Judges.
`
`DEFRANCO, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`IPR2016-01061
`Patent 8,223,012 B1
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`
`I. INTRODUCTION
`PerDiemCo LLC (“PerDiem”) is the owner of U.S. Patent No.
`
`8,223,012 B1 (“the ’012 patent”). TV Management, Inc., d/b/a GPS North
`America (“GPSNA”) filed a Petition seeking inter partes review of claims
`1–13, 18, 19, 22–24, and 27 of the ’012 patent.1 Paper 5 (“Pet.”). We
`instituted inter partes review of all the challenged claims (Paper 21, “Inst.
`Dec.”) because GPSNA demonstrated a reasonable likelihood of prevailing
`on “at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
`After institution, PerDiem filed a Patent Owner Response (Paper 35,
`“PO Resp.”), and GPSNA followed with a Reply (Paper 39, “Pet. Reply”).
`Each party had an opportunity to present its case in a hearing conducted on
`September 12, 2017, a transcript of which is in the record. Paper 49 (“Tr.”).
`We have jurisdiction over these proceedings under 35 U.S.C. § 6.
`After considering the evidence and arguments of the parties, we determine
`that GPSNA has proven by a preponderance of the evidence that claims 1–
`13, 18, 19, 22–24, and 27 of the ’012 patent are unpatentable. See 35 U.S.C.
`§ 316(e). We issue this Final Written Decision pursuant to 35 U.S.C.
`§ 318(a).
`
`
`1 The Petition originally included three additional parties: Teletrac Inc.,
`Navman Wireless North America, Ltd., and Geotab Inc. Prior to institution,
`Teletrac and Navman filed a motion to terminate themselves from the
`proceeding (Paper 12), which we granted on August 24, 2016 (Paper 14).
`After institution, Geotab filed a motion to terminate itself from the
`proceeding (Paper 26), which we granted on December 29, 2016 (Paper 28).
`That left GPSNA as sole petitioner.
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`II. BACKGROUND
`
`Related Matters
`A.
`The ’012 patent is part of a family of eleven related patents, which
`
`includes U.S. Patent Nos. 8,149,113 (“the ’113 patent”), 8,493,207 (“the
`’207 patent”), 8,717,166 (“the ’166 patent”), 9,003,499 (“the ’499 patent”),
`9,071,931 (“the ’931 patent”), 9,119,033 (“the ’033 patent”), 9,319,471 (“the
`’471 patent”), 9,485,314 (“the ’314 patent”), 9,621,661 (“the ’661 patent”),
`and 9,680,941 (“the’941 patent”). We have previously instituted inter partes
`review (“IPR”) of all the patents from this family. Specifically, in addition
`to the instant IPR, pending before us are IPR2016-01064 (the ’499 patent),
`IPR2016-01278 (the ’931 patent), IPR2017-00968 (the ’314 patent),
`IPR2017-00969 (the ’113 patent), IPR2017-00973 (the ’471 patent),
`IPR2017-01007 (the ’033 patent), and IPR2017-01269 (the ’661 patent).2 In
`the 1064 and 1278 IPRs, GPSNA is the petitioner, as it is here, while in the
`968, 969, 973, 1007, and 1269 IPRs, Telular Corporation is the petitioner
`and GPSNA is named as a real party-in-interest.3
`The ’012 patent, along with the ’113, ’499, ’931, ’033, ’471, and ’314
`patents, is currently the subject of an infringement action brought by
`PerDiem against GPSNA in the U.S. District Court for the Eastern District
`of Texas (“the Texas action”). Paper 37 (identifying PerdiemCo LLC v.
`Telular Corp. et al., 2:16-cv-01408 (E.D. Tex.)). The Texas action is
`currently stayed pending resolution of this IPR and the related IPRs.
`
`
`2 We also instituted IPRs for the related ’207 and ’166 patents, but those
`IPRs were terminated after PerDiem filed a statutory disclaimer of all the
`challenged claims. IPR2016-01062 (Paper 29); IPR2016-01063 (Paper 30).
`3 Telular is named as a real party-in-interest in the instant IPR. Pet. 3.
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`B.
`
`The ’012 Patent
`The ’012 patent relates to a system for conveying information about
`the location of a person or object to a group of users based on “user
`identification codes” and “access control codes” associated with each user in
`the group. Ex. 1001, 1:13–22, 1:66–2:12. The group of users may, for
`example, be a family, a cadre of friends, or employees of a company. Id. at
`5:29–35. Global positioning technology is used to track the location of the
`person or object. Id. at 6:10–29, Fig. 1. The person or object may be
`tracked relative to “user-defined zones,” such that when the tracked person
`or object enters or leaves a zone, location information is conveyed to certain
`authorized users. Id. at 5:8–24, 8:67–9:5.
`An administrator, or other authorized user, may configure what
`location information is conveyed and to whom it is conveyed. Id. at 5:41–
`44. By associating an identification code and an access code with each user,
`the administrator can control who receives the location information. Id. at
`2:7–3:6, 6:66–8:25. For instance, a mother might track the location of her
`daughter’s car by equipping it with a tracking beacon and assigning it a user
`identification code. Id. at 9:14–58. With the identification code, the mother
`may then set up “events” so that when her daughter’s car enters or leaves a
`pre-defined zone, the mother will receive an alert via email. Id. at 9:33–48.
`The mother may also have the location of her daughter’s tracked car
`conveyed to another specified user, such as another guardian, by assigning
`them a different identification code and associating an access code with that
`that specific user’s identification code to allow them a certain level of access
`to the daughter’s location information. Id. at 11:1–44.
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`
`The Challenged Claims
`C.
`Of the challenged claims, three are independent—claims 1, 7, and 18.
`
`Claims 1 and 18 are directed to a “method” for conveying location
`information about a person or object to authorized users, while claim 7 is
`directed to an “apparatus” for doing the same. The remaining claims under
`challenge depend, directly or indirectly, from these three claims.
`
`Each of the independent claims requires that the conveyance of
`location information to authorized users be based on a “user identification
`code” and an “information access code.” Claim 1 is illustrative:
`1.
`A method for conveying user location information,
`comprising:
` interfacing with an administrator that authorizes a first
`user associated with a first user identification code to access an
`object location information from a location information source
`associated with a second user identification code that is different
`from the first identification code; and
` conveying the object location information to a third user
`based on an information access code specified by said first user,
`said information access code being associated with a third user
`identification code that is different from the first and second user
`identification codes.
`Ex. 1001, 22:55–67 (emphases added).
`D.
`The Instituted Grounds
`In its Petition, GPSNA raises two grounds of unpatentability, the first
`
`based on anticipation under 35 U.S.C. § 102, and the second based on
`obviousness under 35 U.S.C. § 103. Pet. 5. We instituted review of all the
`challenged claims in each ground, after finding that GPSNA met the
`
`
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`threshold of 35 U.S.C. § 314(a) for at least one of the challenged claims.
`Inst. Dec. 7–10. The grounds on which we instituted review are as follows:
`Prior Art
`Basis
`Claims Challenged
`Fast4
`§ 102
`1–10, 18, 19, 22–24, and 27
`Fast and Haney5
`§ 103
`1–13, 18, 19, 22–24, and 27
`
`
`
`Inst. Dec. 12. In further support of these grounds, GPSNA submits the
`declaration of Dr. Stephen Heppe, an expert witness retained by GPSNA for
`purposes of this review. Ex. 1009.
`III. ANALYSIS
`
`A.
`
`Claim Construction
`In an inter partes review, we give claim terms in an unexpired patent
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016). Under that standard, we ascribe claim terms their
`ordinary and customary meaning, as understood by a skilled artisan in the
`context of the entire disclosure in the specification. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Our construction of claim terms
`“cannot be divorced from the specification and the record evidence.”
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`(quoting In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)).
`In its Petition, GPSNA proposes a construction for three claim terms.
`Pet. 9–10. In our Institution Decision, we construed only one of those
`terms—“code.” Inst. Dec. 5–7. We observed that the term “code” is used
`throughout the claims in the context of either a “user identification code” or
`
`4 U.S. Patent No. 7,327,258 (Ex. 1003, “Fast”).
`5 U.S. Patent No. 7,353,034 (Ex. 1005, “Haney”).
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`an “information access code.” Id. at 5. Then, accounting for statements in
`the specification and prosecution history, we construed the term “code” to
`mean an identifier in the form of a name, number, or other series of letters,
`numbers, symbols, or other identifiers used for user identification and
`information access. Id. at 7. After institution, neither party disputed our
`construction of the term “code,” nor provided further argument or evidence
`as to its proper construction.
`We see no reason to change the construction provided in our
`Institution Decision. The specification of the ’012 patent explains that a
`“user identification code” includes “an identifier (e.g., a user account name
`or user number) and can be associated with one or more groups, and one or
`more information access privilege classifications, etc.” Ex. 1001, 7:6–9
`(emphasis added). Also, the specification expressly equates an access code
`with a “password” or an “access list.” Id. at 8:6–16 (“there are two
`conditions that must be met to gain access, being included on the access list
`and having knowledge of the password”). Thus, the specification supports a
`construction of “code” that encompasses an identifier in the form of a name,
`number, or password. Id.
`The specification also speaks to the overlapping nature of a user
`identification (“ID”) code and an information access code. For instance, the
`specification states that a user ID code may “comprise a first level of access
`control” (id. at 10:32–35), and vice versa, that an access code may
`“comprise[] a plurality of user identification codes” (id. at 23:1–2). The
`specification further explains that an access code may comprise user ID
`codes:
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`Such an access code would typically include specific user
`identification codes and/or group codes
`. . . The user
`identification code and group identification codes(s) are
`compared to those included in the access code whereby a match
`would indicate the user is authorized to receive the information.”
`Id. at 7:50–59 (emphasis added). Indeed, during prosecution of a related
`application, the patentee asserted that “the specification clearly supports an
`identification code as one type of access code.” Ex. 1007, 12–13. In that
`regard, an access code may comprise a user ID.
`In view of the claim language, the specification, and prosecution
`history, we construe the term “code” to mean an identifier, such as a name,
`number, password, or other series of letters, numbers, or symbols, that
`serves to distinguish users of the system and/or levels of information access.
`B.
`Anticipation by Fast
`
`1.
`Independent Claims 1, 7, and 18
`GPSNA challenges independent claims 1, 7, and 18, along with
`dependent claims 2–6, 8–10, 22–24, and 27, as anticipated by Fast. Pet. 12.
`For reasons discussed below, we conclude that GPSNA has shown by a
`preponderance of the evidence, including a detailed claim analysis and
`expert testimony, that Fast anticipates these challenged claims. Id. at 12–24,
`26–44; Reply 4–12; Ex. 1009.
`The challenged claims contemplate conveying location information
`among a plurality of users. For instance, claim 1 recites a method involving
`three users, each of whom is provided with a unique “user identification
`code.” The process begins with “a first user” interfacing with “an
`administrator” to gain access to location information about “a second user.”
`The location information is then conveyed to a “third user,” but only after
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`the first user specifies “an information access code” for the third user. Once
`this is done, the third user may access location information about the second
`user.
`In its Patent Owner Response, PerDiem summarizes the claimed
`invention as follows:
`A key aspect of the system is that a given user (“first user”) can
`define an “information access code” that specifies which users
`will be given access to the location information of a tracked
`object. The group of users who are given access to this location
`information is under the sole discretion of the “first user” who
`defines the information access code.
`PO Resp. 3. After describing the critical feature of the claimed invention,
`PerDiem then proceeds to argue independent claims 1, 7, and 18
`collectively, making no attempt to differentiate their scope. See PO Resp.
`10–16. Indeed, PerDiem concedes that independent claims 1, 7, and 18 are
`of similar scope because, in all three claims, the first user specifies which
`other users will be given access to location information. See PO Resp. 8
`(“Claim 18 is substantially identical to claim 1 in this regard.”); id. (“The
`final challenged independent claim (claim 7) is a bit different in terms of
`verbiage, but recites a similar concept.”); id. at 10 (“[A]ll these limitations
`require a flexible, user-defined system . . .”). That being the case, our
`analysis focuses on independent claim 1.
`Central to our analysis is PerDiem’s characterization of the claimed
`invention as “a flexible, user-defined system for conveying location
`information to groups of users.” PO Resp. 1 (emphasis added). As
`explained by PerDiem, “[t]he users themselves (as opposed to the
`administrator) are given the power to specify . . . what other users will be
`allowed access to location information.” Id. “This flexibility and user
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`control,” according to PerDiem, “is a hallmark of the invention, which the
`specification discusses again and again and which is claimed in every claim
`at issue in this IPR.” Id. PerDiem repeats this theme throughout its Patent
`Owner Response, arguing that “[t]his user-defined flexibility — i.e., the
`flexibility for users themselves to determine which other specific users will
`be granted access to location information — is a critical aspect of the
`invention” distinguishing it from Fast, which PerDiem contends is a
`“predefined hierarchical structure.” Id. at 6, 11 (emphasis added).
`In challenging claim 1 as anticipated by Fast, GPSNA points to Fast’s
`disclosure of a Guardian Mobile Monitoring System (“GMMS”) that uses
`“beacons” carried by family members or company personnel for purposes of
`tracking and monitoring their whereabouts. Pet. 12; see also Ex. 1003,
`3:12–22, 23:5–11, 33:1–17. As described, Fast’s GMMS is a “multi-user
`system,” meaning that “multiple users can interact with a single beacon
`simultaneously.” Id. at 24:43–65. Fast defines users to include
`“subscribers,” such as a parent wishing to monitor a child’s location, and
`“guardians,” such as a babysitter whom the parent wishes to receive
`information from the child’s beacon. Id. at 24:57–62, 34:16–27, 39:6–12,
`43:1–11. Fast also teaches that subscribers and other users interface with a
`“system administrator” in order to “access a dedicated portal [in GMMS]
`that offers many self-serve functions and preference settings.” Id. at 6:12–
`23.
`
`In sum, Fast discloses a subscriber (first user) interfacing with an
`administrator to gain access to the GMMS system. The subscriber may
`assign a beacon to a family member (second user) for monitoring their
`whereabouts. A guardian (third user) may also access the system so they too
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`may monitor the family member’s location. As such, we find that Fast
`teaches a method for conveying location information that entails first,
`second, and third users, as well as an administrator, as called for by claim 1.
`As for associating “user identification codes” with each user, PerDiem
`does not dispute that Fast discloses this aspect of claim 1. In particular, Fast
`teaches that the portal through which users access the system is password-
`protected, restricting access to only those subscribers and guardians assigned
`a “user identification” and “password,” as well as a separate “passcode.” Id.
`at 16:9–11, 37:44–66, 39:13–15, 42:14–20, Fig. 16-1. Once authorized, the
`subscriber or guardian can monitor the location of the tracked individual,
`whose “Beacon ID” is associated with the subscriber’s account. Id. at
`12:40–43, 25:56–60, 27:1–5, 32:51–56. GPSNA’s expert testifies that a
`skilled artisan would understand Fast as requiring a unique ID and/or
`passcode for each user and beacon of the system. Ex. 1009 ¶¶ 61, 77, 90.
`We find that testimony credible and award it substantial weight. Thus, we
`find Fast discloses the “user identification code” limitations of claim 1.
`Turning to the limitation in dispute—that the first user specify the
`“information access code” by which the third user may also receive location
`information about the second user—we find that Fast discloses this
`limitation as well. To begin, we note that Fast describes the GMMS system
`as putting “users and subscribers in a flexible relationship to enhance the
`ease in the system operation.” Id. at 2:7–9 (emphasis added). A benefit of
`that flexibility, Fast explains, is that “[s]cenarios for the beacons can be
`created and monitored” by the subscribers and users. Id. at 2:11–12
`(emphasis added). While Fast does disclose that users may select from
`“predefined scenarios,” it also discloses an option where users can create a
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`“new scenario” or “new notification scheme” for sharing location
`information among users. Id. at 35:7–67. In our view, those express
`disclosures support that Fast’s system is a flexible, user-defined system, not
`a rigid, predefined system, as PerDiem repeatedly asserts. See PO Resp. 11;
`see also id. at 1, 10, 15.
`More specifically, the ability to create new scenarios is done through a
`feature that Fast calls the “Scenario Manager,” which is “unique to the
`GMMS System.” Id. at 32:15–20. 32:15–35:6; 42:26–43:11. The Scenario
`Manager is a “user interface” in the subscriber’s portal that allows users “to
`create functional scenarios.” Id. at 32:29–33. The scenarios “can be edited,
`or new ones created, at any time through the subscriber’s portal.” Id. at
`32:33–37. The ability to create new scenarios includes “adding, deleting,
`and updating system Users.” Id. at 42:46–47. Importantly, for each user,
`Fast explains that “the subscriber can assign an access level [] indicating
`what functionality they will be restricted from using.” Id. at 42:47–49
`(emphasis added). In that regard, Fast explains that subscribers have the
`“highest level of access” to the portal such they may “restrict access to some
`functions of the portal by any other Users.” Id. at 42:31–34. Fast then gives
`specific examples of the subscriber assigning “guardians” a level of access
`to information about a tracked person. Id. at 34:21–27, 43:1–11. Those
`disclosures support a finding that the first user, i.e., the subscriber, in Fast
`determines the level of access of the third user, i.e., the guardian, as required
`by claim 1.
`As for making that determination based on an “information access
`code,” as also required by claim 1, Fast teaches that the subscriber assigns
`the level of access for each user “based on User type.” Ex. 1003, 42:26–28,
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`Fig. 16-1. According to Fast, for each user, “the subscriber can assign an
`access level 534 indicating what functionality they will be restricted from
`using,” and “[a] record of the access level of each User is kept in the list of
`User types 514.” Id. at 42:46–51, Figs. 16-1, 16-2 (steps 512, 514, 530, 532,
`534). That disclosure comports with the ’012 patent’s description of an
`access code as an “access list” which “specif[ies] one or more users and/or
`one or more groups that can enter the appropriate password in order to
`access the information.” Ex. 1001, 8:9–16. Thus, Fast’s “User type”
`represents an “information access code” because it is encoded in a way that
`allows the system to identify and distinguish a user’s level of access.6 We
`also credit the testimony of GPSNA’s expert, who explains that, in the
`context of Fast, an information access code is “an access level for the third
`user, specified by the subscriber, giving the third user access to this
`information (but perhaps withholding access to other information within the
`same account). Ex. 1009 ¶ 69 (citing Ex. 1003, 42:47–52). That evidence
`supports a finding that Fast discloses the “information access code”
`limitation of claim 1.
`We are not persuaded by PerDiem’s attempt to distinguish Fast’s
`disclosure of an information access code, i.e., user type, from the claimed
`invention by arguing that, in Fast, “the administrator specifies the user type,
`not the user.” PO Resp. 10. Although Fast discloses an embodiment where
`user types may be specified by an administrator (Ex. 1003, 37:59–38:54,
`Figs. 13, 14), it does not preclude other users, such as the subscriber, from
`
`
`6 This is consistent with our construction of “code,” discussed above, as “an
`identifier, such as a name, number, password . . . that serves to distinguish
`users of the system and/or levels of information access.”
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`further managing user types (id. at 42:14–52, Figs. 16-1, 16-2). Indeed,
`PerDiem ignores the fact that Fast describes specifically an embodiment
`where the “subscriber’s portal” is given the ability to “manage user types”
`and “assign access level to systems users.” Id. at 42:14–43:11, Figs. 16-1,
`16-2. According to Fast, the subscriber may perform “a number of different
`operations” including “the operation of managing the different User types.”
`Ex. 1003, 42:31–43. “The managing of User types,” Fast explains,
`“includes adding, deleting, and updating system Users.” Id. at 42:46–47.
`Those disclosures provide ample support for finding that Fast’s level of
`access, i.e., user type, is controlled by the subscriber, not the administrator.
`As such, we do not find persuasive PerDiem’s arguments that Fast is limited
`to the administrator controlling user type, as opposed to also contemplating
`the subscriber being in control. Nor do we lend much weight to PerDiem’s
`expert testimony on that issue, as it fails to address Fast’s express disclosure
`of subscriber control. See Ex. 2011 ¶ 19.
`In the end, we find that Fast’s system allows a “first user” (subscriber)
`to convey location information about a “second user” (family member) to a
`“third user” (guardian) based on an “information access code” (user
`type/level of access). In so finding, we conclude that GPSNA has
`demonstrated by preponderant evidence that Fast discloses all the limitations
`of claim 1, and, thus, anticipates claim 1 of the ’012 patent.
`PerDiem does not argue independent claims 7 and 18 separately from
`independent claim 1. See PO Resp. 8–9. For the same reasons discussed
`above with respect to claim 1, we also do not find PerDiem’s arguments
`persuasive for claims 7 and 18. Rather, after considering fully the evidence
`and arguments presented by GPSNA explaining how claims 7 and 18 are
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`also anticipated by Fast, we find GPSNA’s reasoning persuasive and adopt it
`as our own. Pet. 29–38, 40–42; Reply 4–12. Accordingly, we determine
`that the preponderance of the evidence weighs in favor of GPSNA’s case
`that, like claim 1, independent claims 7 and 18 are also unpatentable as
`anticipated by Fast.
`Dependent Claims 2–6, 8–10, 19, 22–24, and 27
`2.
`In addition, we have considered fully the evidence and arguments
`presented by GPSNA explaining how the challenged dependent claims are
`also anticipated by Fast. Pet. 26–29, 39–40, 42–44. PerDiem does not
`address the dependent claims anywhere in its Patent Owner Response,
`arguing exclusively the independent claims. See, e.g., PO Resp. 7–10, 13
`n.5, 16. We are persuaded by GPSNA’s evidence and arguments that Fast
`anticipates the challenged dependent claims, and we adopt GPSNA’s
`reasoning as our own. As such, we conclude that GPSNA has demonstrated,
`by a preponderance of the evidence, that dependent claims 2–6, 8–10, 19,
`22–24, and 27 are unpatentable as anticipated by Fast.
`C. Obviousness Over Fast and Haney
`GPSNA combines Fast with Haney to challenge not only claims 1–10,
`18, 19, 22–24, and 27, which are the same claims challenged on the basis of
`Fast alone, but also dependent claims 11–13. Pet. 44–59; Reply 12–16.
`According to GPSNA, this obviousness ground “builds on Ground 1’s
`explanation of Fast” by analyzing “how the addition of Haney’s teachings
`improve the functionality of Fast’s [tracking system].” Pet. 46.
`Given we have already determined that claims 1–10, 18, 19, 22–24,
`and 27 are unpatentable as anticipated by Fast, we need only address
`dependent claims 11–13. In combining Haney with Fast, GPSNA refers
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`back to its previous explanation of how Fast teaches pertinent limitations of
`the claims. Pet. 46. We have already found, as discussed above, that Fast
`discloses the limitations of base claim 7, from which claims 11–13 stem.7
`As such, our analysis focuses on whether the combination of Fast and Haney
`teaches the additional limitations of claims 11–13, and whether a skilled
`artisan would have combined Haney’s teachings with Fast to arrive at the
`claimed invention.
`Claims 11–13 require that location information conveyed to users
`includes “time” of an event and be associated with a “schedule.” GPSNA
`provides a detailed explanation of how Haney and Fast teach those “time”
`and “schedule” limitations. Pet. 56–58 (discussing Haney’s disclosure of
`“Bread Crumbs” that incorporate “timestamps” with position data, and
`Fast’s teaching of “Scenario Builder” that associates a schedule with
`tracking company employees). GPSNA further explains why a skilled
`artisan would have combined the teachings of Fast and Haney. Id. at 45–46.
`In particular, GPSNA points to Fast’s capability of tracking family members
`by means of mobile phones equipped with beacons. Id. at 45 (citing Ex.
`1003, 9:59–61). Likewise, according to GPSNA, Haney teaches mobile
`phones equipped with a Buddy Watch capability for a parent to monitor the
`location of a child. Id. at 46 (citing Ex. 1005, 1:14–15, 2:22–28). As such,
`GPSNA argues that the movement towards more intelligent cell phones
`would have provided reason for a skilled artisan to improve the notification
`function of Fast’s child tracking system with the timestamp feature of
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`7 Indeed, independent claim 7 appears to be broader in scope than
`independent claims 1 and 18 by contemplating only a “first user” and a
`“second user,” not three users.
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`Haney’s child tracking system. Id. We agree, particularly in view of the
`credible testimony of GPSNA’s expert that a skilled artisan would have had
`reason to combine the teachings of Fast and Haney “to improve the manner
`in which all cell phone users can be monitored by others, including for
`emergency purposes.” Ex. 1009 ¶ 52. That testimony demonstrates
`sufficient reason to combine the teachings of Fast and Haney.
`We have reviewed PerDiem’s arguments with respect to the
`combination of Fast and Haney, but do not find them persuasive. First,
`PerDiem does not dispute that the combination teaches the limitations of
`claims 11–13. Instead, PerDiem focuses on base claim 7 and argues that
`Haney fails to teach conveying location information based on an information
`access code specified by the first user. PO Resp. 16–17. However, as
`discussed above, we find that Fast teaches that limitation, thus, PerDiem’s
`argument is inapposite.
`Second, PerDiem argues that Fast and Haney cannot be combined
`because they “teach fundamentally different and incompatible ways of
`arranging and conveying information.” PO Resp. 20. In support, PerDiem
`proffers the testimony of its expert that a skilled artisan “would not have
`been motivated to combine a predefined hierarchical system like Fast with a
`user-defined, non-hierarchical system like Haney.” Id. (citing Ex. 2011
`¶¶ 22–24). We give that testimony little weight, as it fails to address Fast’s
`express disclosure that a subscriber has the flexibility to add, delete, and
`update users, such as guardians, and assign them different levels of access to
`the various functions and information in the subscriber’s portal. See, e.g.,
`Ex. 1003, 42:14-52, Fig. 16; Ex. 1014 ¶ 30. Those disclosures support a
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`user-defined capability for Fast’s location-monitoring system, even though
`some other aspects of the system may be pre-defined.
`Because PerDiem’s expert focuses solely on the pre-defined aspects
`of Fast’s system to the exclusion of the user-defined aspects, in particular,
`the capability of the subscriber to define levels of access of other users, we
`afford little weight to the testimony of PerDiem’s expert, as it ignores
`critical portions of the record evidence. Accordingly, PerDiem does not
`persuade us that Fast and Haney cannot be combined in the manner asserted.
`Rather, as discussed above, we credit the testimony of GPSNA’s expert that
`a skilled artisan would have had sufficient reason to incorporate Haney’s
`timestamp feature for location-tracking data into Fast’s similar location-
`tracking system. See Ex. 1009 ¶ 52.
`Lastly, PerDiem argues that secondary considerations—specifically,
`evidence of licensing of the ’012 patent—“amply rebuts the obviousness
`case.” PO Resp. 20. In particular, PerDiem submits a roster of companies
`“in the fleet-tracking industry” who have taken licenses to the ’012 patent.
`Id. at 21. According to PerDiem, this roster includes “all of the companies
`who brought this IPR proceeding.” Id. That evidence, PerDiem argues,
`shows that the ’012 patent is “a valuable invention worth licensing.” Id.
`To establish secondary considerations, a patent owner must show a
`nexus “between the evidence and the merits of the claimed invention.”
`Novartis AG v. Torrent Pharmaceuticals, 853 F.3d 1316, 1330 (Fed. Cir.
`2017) (quoting Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir.
`2010)). Here, the only evidence submitted by PerDiem in support of
`secondary considerations is a declaration from PerDiem’s counsel that the
`’012 patent, along with patents in the same family, have been licensed to the
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`companies that originally filed the Petition. Ex. 2012 ¶ 2; see also IPR2016-
`0164 (Ex. 2012). That evidence alone is not enough.
`As GPSNA notes, PerDiem fails to provide copies of any of the
`pertinent license agreements, despite GPSNA’s objection and repeated
`requests for copies of the agreements. Reply 19. Without more, we find that
`merely identifying the existence of license agreements to a family of
`patents—the terms of which are not in the record—provides little
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