UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________________
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`
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`FedEx Corp.,
`Petitioner
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`v.
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`Intellectual Ventures II LLC and Callahan Cellular L.L.C.,
`Patent Owner
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`_____________________________
`
`U.S. Patent No. 8,494,581
`_____________________________
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`Declaration of Tal Lavian, Ph.D.,
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 8,494,581
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`I.
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`II.
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`Patent No. 8,494,581
`Declaration of Tal Lavian
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`Table of Contents
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`Introduction ...................................................................................................... 6
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`Summary of My Opinions ............................................................................... 7
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`III. Qualifications and Background .....................................................................10
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`IV. Materials Considered .....................................................................................14
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`V.
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`Legal Standards .............................................................................................15
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`A.
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`B.
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`Claim Construction..............................................................................16
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`Obviousness Under 35 U.S.C. §103 ....................................................17
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`VI. Overview of the ’581 Patent ..........................................................................18
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`VII. Person of Ordinary Skill in the Art ................................................................21
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`VIII. Claim Construction ........................................................................................23
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`A.
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`B.
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`C.
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`D.
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`E.
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`F.
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`Claim 18: “means for establishing a two-way communication
`channel between a server and at least one handheld device
`located at a field geographically distant from the server” ..................23
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`Claim 18: “means for accessing a program stored at the server
`to enable an assessment at the field using the at least one
`handheld device” .................................................................................24
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`Claim 18: “means for managing data collected at the field using
`the at least one handheld device responsive to program” ...................25
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`Claim 18: “means for determining a geographic location of the
`at least one handheld device” ..............................................................26
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`Claim 18: “means for enabling communicating the data
`collected at the field and the geographic location of the at least
`one handheld device between the at least one handheld device
`and other devices or the server” ..........................................................26
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`Claim 19: “means for tracking a location of the at least one
`handheld device” .................................................................................27
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`G.
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`H.
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`I.
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`J.
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`K.
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`Claim 20: “means for enabling updating field operation
`assignments for each of the at least one handheld device” .................28
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`Claim 21: “means for enabling the at least one handheld device
`to identify service schedule requirements” .........................................28
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`Claim 22: “means for enabling synchronization of a service
`schedule on the at least one handheld device with inventory
`data stored in the server” .....................................................................29
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`Claim 23: “means for enabling troubleshooting a field problem
`and collecting data related to the field problem” ................................29
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`Claim 23: “means for collecting information related to the field
`problem responsive to the program using the at least one
`handheld device” .................................................................................30
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`L.
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`Claim 23: “means for enabling analysis of the information” .............31
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`M. Claim 23: “means for rendering post-analysis instructions from
`the at least one handheld device for use in resolving the field
`problem” ..............................................................................................31
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`N.
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`Claim 24: “means for providing data to the server for analysis,
`and means for retrieving enhanced data from the server for use
`in conducting the field assessment” ....................................................32
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`IX. Rappaport Renders Obvious Claims 1-15, 18, 19, 21, 23, and 24 ................34
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`A. Overview of Rappaport .......................................................................34
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`B.
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`C.
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`Rationale and Motivation to Combine Rappaport’s
`Embodiments .......................................................................................36
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`Rappaport Renders Obvious Each Element of Claims 1-19 and
`21-24 ....................................................................................................38
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`1.
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`2.
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`3.
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`Claim 1 ......................................................................................38
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`Claim 2 ......................................................................................57
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`Claim 3 ......................................................................................59
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`Claim 4 ......................................................................................61
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`Claim 5 ......................................................................................64
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`Claim 6 ......................................................................................64
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`Claim 7 ......................................................................................67
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`Claim 8 ......................................................................................74
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`Claim 9 ......................................................................................75
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`4.
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`5.
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`6.
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`7.
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`8.
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`9.
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`10. Claim 10 ....................................................................................76
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`11. Claim 11 ....................................................................................77
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`12. Claim 12 ....................................................................................78
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`13. Claim 13 ....................................................................................80
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`14. Claim 14 ....................................................................................81
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`15. Claim 15 ....................................................................................81
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`16. Claim 18 ....................................................................................83
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`17. Claim 19 ....................................................................................87
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`18. Claim 21 ....................................................................................87
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`19. Claim 23 ....................................................................................88
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`20. Claim 24 ....................................................................................91
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`X.
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`Rappaport and DeLorme Render Obvious Claim 16 ....................................93
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`A. Overview of DeLorme .........................................................................93
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`B.
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`One Skilled in the Art Would Have Found It Obvious to
`Combine Rappaport and DeLorme .....................................................94
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`C.
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`Rappaport and DeLorme Teach Each Feature of Claim 16 ................95
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`XI. Rappaport and Wright Render Obvious Claims 17 and 22 ...........................97
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`A. Overview of Wright .............................................................................97
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`B.
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`C.
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`Rationale and Motivation to Combine Rappaport and Wright ...........98
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`Rappaport and Wright Teach Each Feature of Claims 17 and 22 ....103
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`1.
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`2.
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`Claim 17 ..................................................................................103
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`Claim 22 ..................................................................................105
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`XII. Rappaport and Khalessi Render Obvious Claim 20 ...................................108
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`A. Overview of Khalessi ........................................................................108
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`B.
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`C.
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`Rationale and Motivation to Combine Rappaport and Khalessi ......109
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`Rappaport and Khalessi Teach Each Feature of Claim 20 ...............110
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`XIII. Conclusion ...................................................................................................113
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`I.
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`INTRODUCTION
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`Patent No. 8,494,581
`Declaration of Tal Lavian
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`1.
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`I, Tal Lavian, submit this declaration to state my opinions on the
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`matters described below.
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`2.
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`I have been retained by Petitioner as an independent expert in this
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`proceeding before the United States Patent and Trademark Office.
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`3.
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`I understand that this proceeding involves U.S. Patent No. 8,494,581
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`(“the ’581 patent”), and I have been asked to provide my opinions as to the
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`patentability of the claims of the ’581 patent. I understand that a copy of the ’581
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`patent has been provided as Exhibit 1001.
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`4.
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`This declaration sets forth my opinions that I have formed in this
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`proceeding based on my study of the evidence, my understanding as an expert in
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`the field, and my education, training, research, knowledge, and personal and
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`professional experience.
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`5.
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`I have been asked to provide my opinion on whether the claims of the
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`’581 patent would have been obvious based on certain prior art references. Based
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`on the combination of prior art references discussed in this declaration, it is my
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`opinion that one of ordinary skill in the art would find claims 1-24 of the ’581
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`patent to have been obvious.
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`II.
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`SUMMARY OF MY OPINIONS
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`6.
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`The ’581 patent describes a handheld device, such as the one shown
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`below in FIG. 1, that allows personnel in the field to collect data about a situation
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`and transmit that data back to a remote server. (Ex. 1001 at 1:23-31, 7:50-8:12,
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`claims 1, 7, 18.)
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`7.
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`The data includes field data collected by the device or input by the
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`user, as well as location data. (Id. at 7:55-8:12, claim 1.) The remote server can
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`process the received data and provide information and analysis back to the mobile
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`device in the field. (Id. at 8:4-8.)
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`8.
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`In my opinion, and as I show in my analysis in this declaration, the
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`system described and claimed in the ’581 patent was not new or was obvious as of
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`the ’581 patent’s priority date.
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`9.
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`For example, such a system was disclosed by the prior art reference,
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`Rappaport. As shown in FIG. 9 below, Rappaport discloses a handheld computer
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`operating in the field for collecting data (including location data), and then sending
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`the data to a remote server computer for processing, just like the ’581 patent. (Ex.
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`1002 at 18:7-18.)
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`10. As I discuss in detail below, Rappaport discloses or renders obvious
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`nearly every limitation of the ’581 patent claims, and the limitations that
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`Rappaport does not expressly disclose are rendered obvious either by Rappaport,
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`or by Rappaport and other prior art references discussed herein.
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`11. While the ’581 patent’s claims tack on functionality such as accessing
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`a program stored on the remote server (claim 1), downloading a program from the
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`remote server (claim 7), a wireless transmitter (claims 3, 4), a two-way
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`communication channel (claim 10), etc., all of this common functionality was well
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`known and rendered obvious by the prior art discussed herein.
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`12. Thus, as I explain below, each of the claim elements of the ’581
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`patent existed and was well-known in the prior art. Moreover, the prior art shows
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`that the ’581 patent claims nothing more than the combinations of familiar
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`elements in well-known methods. These combinations, derived from a finite
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`number of predictable solutions, are the product of ordinary skill and common
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`sense, not of any sort of innovation.
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`III. QUALIFICATIONS AND BACKGROUND
`I possess the knowledge, skills, experience, training and the education
`13.
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`to form an expert opinion and provide testimony in this case. A detailed record of
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`my professional qualifications, including a list of patents and academic and
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`professional publications, is set forth in my curriculum vitae attached to this
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`declaration as Appendix A.
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`14.
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`I expect to further testify, if asked, regarding the subject matter set
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`forth in this declaration.
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`15.
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`I have more than 25 years of experience in the networking,
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`telecommunications, Internet, and software fields. In 1987, I obtained a Bachelor
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`of Science (“B.Sc.”) in Mathematics and Computer Science from Tel Aviv
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`University, Israel. In 1996, I obtained a Master’s of Science (“M.Sc.”) degree in
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`Electrical Engineering, also from Tel Aviv University. I received a Ph.D. in
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`Computer Science from the University of California at Berkeley in 2006.
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`16.
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`I am currently employed by the University of California at Berkeley
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`and was appointed as a lecturer and Industry Fellow in the Center of
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`Entrepreneurship and Technology (“CET”) as part of UC Berkeley College of
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`Engineering. I have been with the University of California at Berkeley since 2000
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`where I served as Berkeley Industry Fellow, Lecturer, Visiting Scientist, Ph.D.
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`Candidate, and Nortel’s Scientist Liaison, where some positions and projects were
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`done concurrently, others sequentially.
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`17.
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`I have more than 25 years of experience as a scientist, educator and
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`technologist, and much of my experience relates to computer networking
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`technologies. For eleven years from 1996 to 2007, I worked for Bay Networks and
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`Nortel Networks. Bay Networks was in the business of making and selling
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`computer network hardware and software. Nortel Networks acquired Bay
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`Networks in 1998, and I continued to work at Nortel after the acquisition.
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`Throughout my tenure at Bay and Nortel, I held positions including Principal
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`Scientist, Principal Architect, Principal Engineer, Senior Software Engineer, and
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`led the development and research involving a number of networking technologies.
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`I led the efforts of Java technologies at Bay Networks and Nortel Networks. In
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`addition, during 1999-2001, I served as the President of the Silicon Valley Java
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`User Group with over 800 active members from many companies in the Silicon
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`Valley.
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`18. Prior to that, from 1994 to 1995, I worked as a software engineer and
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`team leader for Aptel Communications, designing and developing mobile wireless
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`devices and network software products. I developed a Personal Communication
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`System (PCS) including a two-ways mobile wireless messaging architecture. Part
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`of the solution was the development of a Personal Digital Assistant (PDA) on the
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`mobile side, and a central data handling service at the server side. The two-way
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`messaging system had similar characteristics to today’s short message service
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`(SMS) on smartphones.
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`19. As part of our testing tools, I developed a geographic communication
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`system that collected and transmitted the geographic physical location, and the
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`wireless signal received to determine the quality of the signal received in different
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`urban and metropolitan areas. The system was based on wireless mobile
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`transmitters/receivers and Global Positioning System (GPS) receivers installed on
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`vehicles. The information was transmitted to multiple urban base stations that
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`received the location and the quality of the wireless signal transmission.
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`20.
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`I also worked on development of two-way wireless OFDM
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`technology, in the 915 MHz band, under the FCC part 15. The technology was a
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`continuation of military research for low power, wideband OFDM to reduce
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`wireless transmission detectability.
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`21. From 1990 to 1993, I worked as a software engineer and team leader
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`at Scitex Ltd., where I developed system and network communications tools
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`(mostly in C and C++).
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`22.
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`I have extensive experience in the area of network communications
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`and Internet technologies including design and implementation of computer-based
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`systems for managing communications networks. While with Nortel Networks and
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`Bay Networks (mentioned above) my work involved the research and development
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`of these technologies. For example, I wrote software for Bay Networks and Nortel
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`Networks Web based network management for Bay Networks switches. I
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`developed Simple Network Management Protocol (SNMP) software for Bay
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`Network switches and software interfaces for Bay Networks’ Optivity Network
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`Management System. I wrote software for Java based device management
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`including software interface to the device management and network management
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`for the Accelar routing switch family network management system.
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`23.
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`I am named as a co-inventor on more than 100 issued patents and I
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`coauthored more than 25 scientific publications, journal articles, and peer-reviewed
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`papers. Furthermore, I am a Senior Member of the Institute of Electrical and
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`Electronics Engineers (“IEEE”).
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`24.
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`I currently serve as a Principal Scientist at my company Telecomm
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`Net Consulting Inc., where I develop network communication technologies and
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`provide research and consulting in advanced technologies, mainly in computer
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`networking and Internet technologies. In addition, I serve as a Co-Founder and
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`Chief Technology Officer (CTO) of VisuMenu, Inc., where I design and develop
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`architecture of visual IVR technologies for smartphones and wireless mobile
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`devices in the area of network communications. The system is based on cloud
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`networking and cloud computing utilizing Amazon Web Services.
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`25. Additional details of my background are set forth in my curriculum
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`vitae, attached as Appendix A to this Declaration, which provides a more complete
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`description of my educational background and work experience.
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`26.
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`I am being compensated for my time at the rate of $400 per hour for
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`my work. This compensation is in no way contingent upon the nature of my
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`findings, the presentation of my findings in testimony, or the outcome of this
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`proceeding.
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`27. The analysis below presents the technical subject matter described in
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`the ’581 patent, as well as some background known in the art at the priority date of
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`the ’581 patent. It also presents my opinions regarding the scope and patentability
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`of the ’581 patent based on certain references that I considered.
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`IV. MATERIALS CONSIDERED
`28. The analysis that I provide in this Declaration is based on my
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`education and experience in the telecommunications and information technology
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`industries, as well as the documents I have considered, including the ’581 patent,
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`which states on its face that it issued from an application filed on August 25, 2009,
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`in turn claiming priority back to an earliest application filed on September 18,
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`2000. For purposes of this Declaration, I have assumed September 18, 2000 as the
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`effective filing date for the ’581 patent. I have reviewed, considered, and cited to
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`the following documents in my analysis below:
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`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1007
`1008
`1011
`
`Title of Document
`U.S. Patent No. 8,494,581 to Frank A. Barbosa et al.
`U.S. Patent No. 6,971,063 to Rappaport et al. (“Rappaport”)
`U.S. Patent No. 6,321,158 to DeLorme et al. (“DeLorme”)
`U.S. Patent No. 5,857,201 to Wright, Jr. et al. (“Wright”)
`U.S. Patent No. 6,633,900 to Khalessi et al. (“Khalessi”)
`Prosecution History of U.S. Patent No. 8,494,581
`U.S. Patent No. 6,493,679 to Rappaport (“Rappaport ’679”)
`U.S. Patent No. 6,083,353 to Alexander, Jr. (“Alexander”)
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`V. LEGAL STANDARDS
`In forming my opinions and considering the subject matter of the ’581
`29.
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`patent and its claims in light of the prior art, I am relying on certain legal principles
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`that counsel in this case explained to me. My understanding of these concepts is
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`summarized below.
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`30.
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`I understand that the claims define the invention. I also understand
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`that an unpatentability analysis is a two-step process. First, the claims of the patent
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`are construed to determine their meaning and scope. Second, after the claims are
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`construed, the content of the prior art is compared to the construed claims.
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`31.
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`I understand that a claimed invention is only patentable when it is
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`new, useful, and non-obvious in light of the “prior art.” That is, the invention, as
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`defined by the claims of the patent, must not be anticipated by or rendered obvious
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`by the prior art.
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`32. For purposes of this declaration, I have been asked to opine only on
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`certain issues regarding the technology at issue, the level of ordinary skill in the
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`art, the scope of the ’581 patent claims, and obviousness. I have been informed of
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`the following legal standards, which I have applied in forming my opinions.
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`A. Claim Construction
`I understand that the United States Patent and Trademark Office
`33.
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`interprets claim terms of an unexpired patent based on the broadest reasonable
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`interpretation in light of the patent’s specification. Thus, I have been informed that
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`for each claim term construed in this proceeding, I should use the “broadest
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`reasonable interpretation” that would have been understood by one of ordinary
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`skill in the art when reading the specification and prosecution history of the ’581
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`patent at the time of the alleged invention of the ’581 patent.
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`34.
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`I understand that the use of the word “means” in a claim triggers a
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`rebuttable presumption that it is written in a “means-plus-function” format. I also
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`understand that means-plus-function claim terms are limited to the corresponding
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`structure, material, or acts described in the specification, and their equivalents, that
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`perform the claimed function. Further, I understand that when a means-plus-
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`function term refers to software, the corresponding structure may be in the form of
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`an algorithm, such as a flow chart.
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`B. Obviousness Under 35 U.S.C. §103
`I have been advised that a patent claim may be unpatentable as
`35.
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`obvious under 35 U.S.C. § 103 if the differences between the subject matter
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`patented and the prior art are such that the subject matter as a whole would have
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`been obvious to a person of ordinary skill in the art at the time the invention was
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`made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the field of the invention; (3) the
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`differences between the claimed invention and the prior art; and (4) any objective
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`evidence of non-obviousness.
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`36.
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`I also have been advised that combining familiar elements according
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`to known methods and in a predictable way is likely to suggest obviousness when
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`such a combination would yield predictable results.
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`Patent No. 8,494,581
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`VI. OVERVIEW OF THE ’581 PATENT
`37. The ’581 patent describes a system and method for managing mobile
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`field assets using handheld devices. (Ex. 1001 at Abstract.) The system disclosed
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`in the ’581 patent includes an enterprise computing device (i.e., a remote server)
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`and a handheld device with a communication module and a position module. (Id. at
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`6:21-23, 6:51-55.) The handheld device communicates in “[r]eal time” with the
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`computing device over a data network for “real-time access to remote programs,
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`assistance and/or information related to [] field operations[,] and asset (personnel
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`and inventory) resource management.” (Id. at Abstract.)
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`38.
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`Independent claim 1 captures this concept by reciting a method for
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`using the handheld device to access an assessment program on the computing
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`device and transfer field and location data to the computing device. (Id. at 13:36-50
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`(claim 1).) Independent claims 7 and 18 recite handheld devices suitable for
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`carrying out the method. (Id. at 14:1-14 (claim 7), and 14:55-15:2 (claim 18).)
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`39. With regard to FIG. 6 (reproduced below), the ’581 patent discloses
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`that field crew personnel can use a handheld device 10/10’ to access a remote
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`management system 58 “that can provide instructions (e.g., templates, task/punch
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`lists) and/or programs to a group of users.” (Id. at 7:35-36.) The programs are
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`“centrally stored within one or more databases 61/59” and are directly accessible to
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`the handheld device 10/10’ over the network 55 or indirectly accessible through
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`the remote management system 58. (Id. at 7:38-41.)
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`40. The handheld devices are “handheld or palm computer/PC, PDA,
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`smart phone, [or] mobile telephony devices,” and enable remote access to
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`industry/profession-specific applications so “users [can] be more productive while
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`operating in the field.” (Id. at 5:45-50.) These types of handheld devices were well
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`known at the time of the ’581 patent.
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`41. The ’581 patent explains that the handheld device is used to gather
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`data particular to an industry or profession and process it locally or transmit it to
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`the remote computing device for further processing. (Id. at 8:13-31.) The data
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`includes field data collected by the device or input by the user, as well as location
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`data. (Id. at 7:55-8:12.) In one instance, the data is transmitted to the remote
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`computing device to “undergo computing operations beyond the resident
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`capabilities of the handheld device,” where a “limited software program can be
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`used for gathering of data . . . [and a] larger software application and computing
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`resources [of the remote computing device] may be necessary to render a
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`comprehensive analysis.” (Id. at 8:20-31.) After the data is processed, the analysis
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`is sent back to the handheld device for use by the field crew. (Id. at 7:64-67.)
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`42. The claims of the ’581 patent recite performing these well-known
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`functions using a remote “assessment program” (id. at 13:36-50 (claim 1)), and a
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`downloaded “field management program.” (id. at 14:1-14 (claim 7)). These
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`programs are a set of instructions “stored in some other computer memory such as
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`a hard disk drive of a personal computer (PC)” or “downloaded from a server via
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`the Internet” for use by the device. (Id. at 6:16-21.)
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`43.
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`I have also reviewed the prosecution history of the ’581 patent. The
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`’581 patent was allowed after one prior art rejection from the Patent Office. (Ex.
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`1007 at 84-97.) In response to that rejection, the Applicant amended claim 1 (then
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`claim 21) as follows to clarify that the handheld device accesses a remote
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`assessment program: “using a handheld device to access an assessment program
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`stored in a memory of a computing device located geographically remote from the
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`handheld device.” (Id. at 65 (underlining reflects amended language).) The
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`Applicant then distinguished this step by arguing that accessing a remote program
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`is different than accessing a remote database: “[t]he distinction is between
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`accessing an assessment program and accessing a database storing data.” (Id. at 71-
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`72.)
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`VII. PERSON OF ORDINARY SKILL IN THE ART
`I am informed that patentability must be analyzed from the
`44.
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`perspective of “one of ordinary skill in the art” in the same field as the patents-in-
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`suit at the time of the invention. I am also informed that several factors are
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`considered in assessing the level of ordinary skill in the art, including (1) the types
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`of problems encountered in the art; (2) the prior art solutions to those problems;
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`(3) the rapidity with which innovations are made; (4) the sophistication of the
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`technology; and (5) the educational level of active workers in the field.
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`45. Based on my experience teaching, researching, designing, developing,
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`and consulting, and considering the factors identified above, I believe a person of
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`ordinary skill at the time of the alleged invention of the ’581 patent would have
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`held a bachelor’s degree in electrical engineering, computer engineering, computer
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`science, or the equivalent, and had at least two years of industry experience in the
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`field of mobile communications. In my opinion, one at this ordinary level of
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`experience would have been familiar with the typical components, processes, and
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`protocols used at the time of the alleged invention of the ’581 patent to
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`communicate between handheld/mobile devices and a server.
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`46. The ’581 patent disclosure supports my understanding of the level of
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`one skilled in the art. For example, the “Field of the Invention” section explains
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`that the alleged invention is related to managing mobile assets via communications
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`with various wireless/mobile devices such as PDAs, handheld computers, and two-
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`way pagers. (Ex. 1001 at 1:23-31.)
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`47. The “Background” section then describes some of the existing
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`technology and components that were used to communicate with these mobile
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`devices prior to the ’581 patent, and with which one skilled in the art would have
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`been familiar. (Id. at 2:10-3:24.) Finally, both the “Summary of the Invention”
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`section and the descriptions of the embodiments of the ’581 patent describe using
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`this technology to communicate between remote servers and the mobile devices.
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`(See, e.g., id. at 3:45-67.)
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`48. One skilled in the art would have been familiar with and understood
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`how to implement a system where a mobile device accesses data and/or programs
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`on a remote server computer using technology that is described as conventional in
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`the Background section of the ’581 patent. (E.g., id. at 2:10-3:24.)
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`49. As of the priority date of the application for the ’581 patent, I was at
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`least a person of ordinary skill in the art. I am also familiar with the knowledge of
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`the person of ordinary skill in the art as of the priority date of the ’581 patent. I am
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`able to opine on how the person of ordinary skill in the art would have understood
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`the disclosure and claims of the ’581 patent, the disclosures of the prior art, the
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`motivation to combine the prior art, and what combinations would have been
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`obvious to one of ordinary skill in the art.
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`VIII. CLAIM CONSTRUCTION
`In preparing this declaration, I interpreted the claim terms of the
`50.
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`’581 patent under the “broadest reasonable interpretation” claim construction
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`principles that I discussed above in the Legal Standards section.
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`51. Claims 18-24 of the ’581 patent each include limitations that use the
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`word “means.” I was asked to identify the structure in the specification of the
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`’581 patent that corresponds to each limitation in the ’581 patent that uses the word
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`“means.” Where the limitation corresponds to software, I have attempted to point
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`to algorithms or flow charts in the ’581 patent. My analysis is provided below.
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`A. Claim 18: “means for establishing a two-way communication
`channel between a server and at l