`
`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`Group Art Unit: To Be Assigned
`
`Examiner: To Be Assigned
`
`
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`In re Ex Parte Reexamination of:
`
`U.S. Patent No. 7,199,715
`
`Issued: April 3, 2007
`
`Named Inventors: Carla K. Fields, et al.
`
`Control Number: To Be Assigned
`
`Filed: March 1, 2005
`
`Title: SYSTEM AND METHOD FOR
`TRACKING ID TAGS USING A DATA
`STRUCTURE OF TAG READS
`
`
`
`Mail Stop Ex Parte Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Commissioner:
`
`
`REQUEST FOR EX PARTE REEXAMINATION
`
`
`
`FedEx Corporation (“FedEx” or “Requester”) respectfully request ex parte reexamination
`
`of U.S. Patent No. 7,199,715 (“the ’715 patent,” Ex. A), assigned to Intellectual Ventures II,
`
`LLC (“IV2” or “Patent Owner”). Prior art renders at least claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19,
`
`22, 23, and 25 of the ’715 patent unpatentable under 35 U.S.C. § 103.
`
`As Requester demonstrates below, this Request raises substantial new questions of
`
`patentability (“SNQs”) for the challenged claims. This Request presents one Ground: U.S. Patent
`
`No. 7,312,752 to Smith et al. (“Smith,” PA-1) in view of U.S. Patent No. 8,321,302 to Bauer et
`
`al. (“Bauer,“ PA-2) renders obvious claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and 25 under
`
`35 U.S.C. § 103.
`
`
`
`
`
`Exhibit 2012 Page 1
`
`IV Exhibit 2012
`FedEx v. IV
`Case IPR2017-00729
`
`

`

`
`
`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`The Examiner during original prosecution allowed the ’715 patent on the first office
`
`action without issuing a prior art rejection. The Examiner did not have Smith or Bauer before
`
`him during prosecution, and Smith discloses the claim features the Examiner identified as
`
`allowable in his reasons for allowance. Thus, this Request presents a substantial new question
`
`(SNQ) of patentability with respect to the prosecution history of the ’715 patent.
`
`Requester has filed two inter partes review (IPR) petitions challenging the ’715 patent.
`
`The first petition (D-1), however, applied a different prior art combination than this Request, and
`
`the Board denied that combination after finding that a person of ordinary skill in the art
`
`(“POSITA”) would not have combined the references. See D-2. While Requester also applied
`
`Smith and Bauer in the second IPR petition (D-3), on February 21, 2018, the Board
`
`administratively denied the second IPR petition under 35 U.S.C. § 325(d) without reaching the
`
`merits. D-5. Additionally, the second IPR petition did not expressly address the district court’s
`
`construction of “tool” (claim 11) because its claim construction order (E-4) issued after the
`
`petition was filed. This Request expressly addresses the district court’s construction. For these
`
`reasons, this Request presents SNQs with respect to the IPR history of the ’715 patent.
`
`Additionally, the prior art listed in the accompanying Information Disclosure Statement
`
`separately renders the challenged claims unpatentable.
`
`FedEx thus respectfully requests that the Office grant this request for ex parte
`
`reexamination of the ’715 patent, reexamine claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and
`
`25, and issue an initial Office Action rejecting these claims over at least the prior art discussed in
`
`this Request.
`
`ii
`
`Exhibit 2012 Page 2
`
`

`

`
`
`Attachments
`
`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`(1) Certificate of Service on Patent Owner.
`(2) Information Disclosure Statement and Form PTO/SB/08.
`
`
`Exhibits
`
`The ’715 Patent, Declaration, and Prosecution History
`
`U.S. Patent No. 7,199,715 to Fields et al. (“Fields” or “the ʼ715 patent”).
`Patent Prosecution History of the ’715 patent.
`Excerpts of Merriam Webster’s Collegiate Dictionary.
`
`Ex. A
`Ex. B
`Ex. C
`
`Prior Art
`
`PA-1
`PA-2
`
`PA-3
`
`PA-4
`
`
`’715 Patent Inter Partes Review Documents
`
`U.S. Patent No. 7,312,752 to Smith et al. (“Smith”).
`U.S. Patent No. 8,321,302 to Bauer et al. (“Bauer“).
`U.S. Patent No. 6,952,645 to Jones et al. (“Jones”).
`U.S. Patent No. 6,061,689 to Chang et al. (“Chang”).
`
`
`
`
`
`D-1: Petition for Inter Partes Review in IPR2017-00787, filed January 27, 2017.
`D-2:
`Institution Decision in IPR2017-00787, Paper 7, entered July 25, 2017.
`D-3: Petition for Inter Partes Review in IPR2017-02039, filed August 31, 2017.
`D-4: Declaration of Jason Hill, Ph.D., in Support of Petition for Inter Partes Review of
`U.S. Patent No. 7,199,715 in IPR2017-02039.
`Institution Decision in IPR2017-02039, Paper 9, entered February 21, 2018.
`
`D-5:
`
`Litigation Documents
`
`
`E-2:
`
`E-1: Complaint for Patent Infringement, Intellectual Ventures II LLC v. FedEx Corp.
`et al., No. 2:16-cv-00980 (Aug. 31, 2016), ECF No. 1.
`Intellectual Ventures II Claim Chart Alleging FedEx Infringement of the ’715
`patent.
`E-3: Exhibit C to Intellectual Ventures II Infringement Contentions of January 17,
`2017 in Intellectual Ventures II LLC v. FedEx Corp. et al., No. 2:16-cv-00980
`(Aug. 31, 2016).
`E-4: Memorandum Opinion and Order in Intellectual Ventures II LLC v. FedEx Corp.
`et al., No. 2:16-cv-00980 (Nov. 29, 2017) (Doc. 165).
`
`
`
`
`
`
`iii
`
`Exhibit 2012 Page 3
`
`

`

`
`
`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Request for Ex Parte Reexamination ...................................................................... 1
`
`Certification Regarding Statutory Estoppel Provisions .......................................... 1
`
`Litigation Involving the ’715 Patent ....................................................................... 2
`
`IPR Proceedings Against the ’715 Patent ............................................................... 2
`
`1.
`
`2.
`
`IPR2017-00787 ........................................................................................... 2
`
`IPR2017-02039 ........................................................................................... 2
`
`Request for Expedited Reexamination.................................................................... 3
`
`Reservation of Rights .............................................................................................. 3
`
`II.
`
`SUMMARY OF THE ARGUMENT ............................................................................... 3
`
`III.
`
`OVERVIEW OF THE ’715 PATENT ................................................................................ 4
`
`A.
`
`B.
`
`C.
`
`Specification ........................................................................................................... 4
`
`Claims ..................................................................................................................... 6
`
`Prosecution History ................................................................................................. 7
`
`IV.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART........................................................ 7
`
`V.
`
`CLAIM CONSTRUCTION ................................................................................................ 8
`
`A.
`
`B.
`
`“Supply chain” (Claims 4, 5, 7, 9, 14, 15, 17, 19, 23, and 25) ............................... 8
`
`“A tool for modifying part of the information stored in the database as a
`function of other information stored in the database whereby the modified
`information is used to track the tags through the business process” (Claim
`11) ........................................................................................................................... 9
`
`VI.
`
`IDENTIFICATION OF PRIOR ART AND EXISTENCE OF SUBSTANTIAL
`NEW QUESTIONS OF PATENTABILITY OF THE CLAIMS OF THE ’715
`PATENT ........................................................................................................................... 10
`
`A.
`
`B.
`
`Identification of the Prior Art ............................................................................... 10
`
`Summary of the Substantial New Questions of Patentability ............................... 11
`
`VII. PROPOSED REJECTION OF THE ’715 PATENT ........................................................ 13
`
`VIII. DETAILED EXPLANATION OF THE PROPOSED REJECTION OF THE
`CLAIMS OF THE ’715 PATENT .................................................................................... 13
`
`iv
`
`Exhibit 2012 Page 4
`
`

`

`Request for Ex Parte Reexamination
`
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`Overview of Smith ................................................................................................ 13
`
`
`
`Overview of Bauer ................................................................................................ 22
`
`It Would Have Been Obvious to Combine Smith and Bauer. ............................... 25
`
`Smith and Bauer render obvious claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22,
`23, and 25. ............................................................................................................. 29
`
`A.
`
`B.
`
`C.
`
`D.
`
`1.
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`9.
`
`Claim 1 ...................................................................................................... 29
`
`“A method of tracking tags at several successive points of a
`business process, said method comprising:” ............................................. 29
`
`“attempting to read each tag at each successive point;” ........................... 31
`
`“populating a database with information corresponding to the
`reading of each tag at each successive point and the time of each
`reading;” .................................................................................................... 33
`
`“modifying part of the information in the database as a function of
`other information in the database; and” .................................................... 39
`
`“using the modified information to track the tags through the
`business process.” ..................................................................................... 42
`
`Claim 4. ..................................................................................................... 45
`
`Claims 5 and 7 .......................................................................................... 52
`
`Claim 9 ...................................................................................................... 52
`
`Claim 11. ................................................................................................... 55
`
`Claims 14, 15, and 17. .............................................................................. 64
`
`Claim 19. ................................................................................................... 65
`
`Claim 22. ................................................................................................... 66
`
`Claims 23 and 25. ..................................................................................... 68
`
`IX.
`
`CONCLUSION ................................................................................................................. 69
`
`
`
`v
`
`Exhibit 2012 Page 5
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`A.
`
`Request for Ex Parte Reexamination
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`Requestor respectfully requests reexamination under 35 U.S.C. §§ 301-307 and 37 C.F.R.
`
`§ 1.510 et seq. of claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and 25 of U.S. Patent No.
`
`7,119,715 (Ex. A., “the ’715 patent”), and issuance of a reexamination certificate cancelling
`
`these claims. As explained below, the prior art references applied in this Request raise substantial
`
`new questions of patentability and render the above-noted claims unpatentable.
`
`Requestor certifies that a complete copy of this Request for Reexamination has been
`
`served via First Class Mail on the record Patent Owner of the ’715 patent, at the following
`
`address: Perkins Coie LLP - SEA General, P.O. Box 1247, Seattle, WA 98111-1247. A courtesy
`
`copy was also served on patent owner’s litigation counsel at the following address: Alan S.
`
`Kellman, Desmarais LLP, 230 Park Avenue, New York, NY 10169.
`
`Pursuant to 37 C.F.R. § 1.20(c)(1), Requester is submitting a fee of $12,000. To the
`
`extent that any additional fees are required to complete this Request, the Office is hereby
`
`authorized by the undersigned to charge Deposit Account No. 06-0916 for such fees.
`
`B.
`
`Certification Regarding Statutory Estoppel Provisions
`
`Requester certifies that the statutory provisions of both IPR and Post Grant Review do
`
`not bar or prohibit FedEx from requesting ex parte reexamination of the ’715 patent. While the
`
`’715 patent is involved in IPR2017-00787, this Request does not challenge the same set of
`
`claims as those at issue in the IPR. Additionally, the IPR proceeding is ongoing and has not
`
`reached a final written decision. The challenged claims are at issue in IPR2017-02039, but that
`
`proceeding is also ongoing. Thus, Requester is not barred or estopped from filing this Request
`
`under 35 U.S.C. § 325(d).
`
`
`
`1
`
`Exhibit 2012 Page 6
`
`

`

`
`
`C.
`
`Litigation Involving the ’715 Patent
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`Pursuant to MPEP § 2282, Requester is aware that Patent Owner has asserted the ’715
`
`patent in a lawsuit captioned Intellectual Ventures II LLC, v. FedEx Corporation, FedEx Custom
`
`Critical, Inc., FedEx Freight Inc., FedEx Ground Package System, Inc., FedEx Office and Print
`
`Services, Inc., Federal Express Corporation, Genco Distribution System, Inc., Case No. 2-16-cv-
`
`00980 (EDTX).
`
`D.
`
`IPR Proceedings Against the ’715 Patent
`
`1.
`
`IPR2017-00787
`
`Requester filed a first IPR petition challenging claims 1, 2, 4, 5, 7–9, 11, 12, 14, 15, 17–
`
`20, 22, 23, 25, 26, and 29 of the ’715 patent in IPR2017-00859. See D-1. The petition raised two
`
`challenges:
`
` Ground 1: U.S. Patent No. 6,952,645 to Jones et al. (“Jones,” PA-3) renders
`
`obvious claims 1, 2, 11, and 12 under 35 U.S.C. § 103(a).
`
` Ground 2: Jones in view of Bauer (PA-2) renders obvious claims 4, 5, 7-9, 14, 15,
`
`17-20, 22, 23, 25, 26, and 29 under 35 U.S.C. § 103(a).
`
`D-1, i-iii. The Board, however, only instituted review of Ground 1, claims 1, 2, 11, and 12. See
`
`D-2. The proceeding is ongoing.
`
`2.
`
`IPR2017-02039
`
`Although Requester disagreed with the Board’s reasoning for denying Ground 2,
`
`Requester filed a second IPR petition that addressed the Board’s reason for denying Ground 2.
`
`D-2. The second IPR petition raised just one ground: Smith (PA-1) in view of Bauer (PA-2)
`
`renders obvious claims 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and 25 under 35 U.S.C. § 103(a).
`
`This petition awaits the Board’s decision on institution.
`
`
`
`2
`
`Exhibit 2012 Page 7
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`As explained below, this Request raises SNQs for the challenged claims of the ’715
`
`patent with respect to the IPR history and the prosecution history of the ’715 patent.
`
`E.
`
`Request for Expedited Reexamination
`
`Due to the ongoing nature of the above-identified lawsuit, Requester respectfully urges
`
`that, pursuant to 35 U.S.C. § 305, this Request be granted and reexamination conducted not only
`
`with “special dispatch,” but also with “priority over all other cases” in accordance with MPEP
`
`§ 2261.
`
`F.
`
`Reservation of Rights
`
`Requester reserves all rights and defenses available, including, without limitation,
`
`defenses as to invalidity, unenforceability, and noninfringement regarding the ’715 patent. For
`
`example, the ex parte reexamination procedure does not permit challenges under 35 U.S.C.
`
`§ 112, so Requester has not included any indefiniteness arguments.
`
`II.
`
`SUMMARY OF THE ARGUMENT
`
`The claims of the ’715 patent relate to tracking tags in a business process. Ex. A,
`
`Abstract. Tracking includes, for example, receiving tag-read information from tags at successive
`
`points in the business process, time stamping these readings, and recording the information in a
`
`database. Id., 1:7 15. The claims also recite modifying information in the database as a function
`
`other information in the database, such as estimating the time of a missed tag. See, e.g., id., 2:1-
`
`18, 6:43-55, 7:1-9, 10:57-11:9. As explained below, Smith discloses a similar technique of
`
`tagging assets and tracking the tags through a facility, such as a hospital or other building,
`
`receiving location measurements and environmental measurements from the tags, storing them in
`
`a database, and modifying information in the database as a function of other information in the
`
`database. And Bauer discloses a similar system tracking tagged inventory items in different
`
`
`
`3
`
`Exhibit 2012 Page 8
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`business environments, such as retail stores, warehouses, and supermarkets. A POSITA would
`
`have been motivated to combine the references, and the similarity in the two systems would have
`
`provided a reasonable expectation of success in making the combination.
`
`III. OVERVIEW OF THE ’715 PATENT
`
`A.
`
`Specification
`
`The ’715 patent was filed on March 1, 2005, as U.S. Patent Application No. 11/069,788.
`
`EX-A, 1. The ’715 patent is directed to tracking tags as they travel along a business process. EX-
`
`1001, Abstract. The ’715 patent discloses that “a tag may be any device or marking.” Id., 3:45-
`
`52. The tags are tracked at successive points in the business process, as annotated in Figure 2:
`
`Ex. A, FIG. 2*1
`
`
`
`The ’715 patent explains that a processor 108 receives tag read information as the tags
`
`travel along the business process. Id., 4:3-10. The processor 108 analyzes recorded tag 102
`
`identifications with the read time the tag passes respective reader. Id., 3:63-65. It then populates
`
`
`
`
`1 Requester identifies annotated figures with “*”.
`
`
`
`4
`
`Exhibit 2012 Page 9
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`database 110 with tag read information. Id., 4:20-29. Thus, the ’715 patent’s methods include
`
`receiving tag read information from tags carried by packages through several points in the
`
`business process, time-stamping these readings, and recording the information in a database. Id.,
`
`1:7-15.
`
`The ’715 patent explains that the processor 108 may receive incomplete data for any
`
`given point along the business process, or not receive any tag read data at all. When this occurs,
`
`the ’715 patent discloses modifying information in the database as a function of other
`
`information in the database. Id., 3:55-62, 9:54-10:2. For example, as noted above, this may
`
`include filling data, or otherwise changing some data in the database as a place holder for missed
`
`reads, based on knowledge of the approximate travel time between successive points for tag
`
`readers, the intended route, subsequent tag read information reflecting that the tag has otherwise
`
`traveled along the intended route as expected, etc. Id.
`
`For example, the processor 108 may estimate the expected position of the missing tag
`
`based on “other information” in the database. Id., 6:43-55. Specifically, the processor 108 fills
`
`the cells in the database using the data modification tool 112 based on, e.g., other tag reads,
`
`estimated positioning, travel time, or distance. Id., 6:28-55. Table 4 of the ’715 patent provides
`
`such an example, where the processor 108 modifies the database for tags C and D to reflect an
`
`expected read time of 12:30 for the third read point based on such information:
`
`
`
`5
`
`Exhibit 2012 Page 10
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`Ex. A, Table 4*
`
`
`
`B.
`
`Claims
`
`The ’715 patent includes claims 1-29. Claims 1, 11, 19, 27, and 29 are independent. This
`
`Request challenges 1, 4, 5, 7, 9, 11, 14, 15, 17, 19, 22, 23, and 25, which includes independent
`
`claims 1, 11, and 19. The challenged claims are very broadly directed to the concepts described
`
`above which were well-known features of wireless tag tracking before the earliest claimed
`
`priority date of the ’715 patent. Independent claims 1, 11, and 19 are representative and broadly
`
`directed to modifying some tag-read information in a database based on other information in the
`
`database:
`
`1. A method of tracking tags at several successive points of a business process, said
`method comprising:
`
`attempting to read each tag at each successive point;
`
`populating a database with information corresponding to the reading of each
`tag at each successive point and the time of each reading;
`
`modifying part of the information in the database as a function of other
`information in the database; and
`
`using the modified information to track the tags through the business process.
`
`
`
`6
`
`Exhibit 2012 Page 11
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`11. A system of tracking tags at several successive points of a business process, said
`system comprising:
`
`a reader for reading each tag at each successive point and the time of each
`reading;
`
`a database;
`
`a processor responsive to the reader for storing in the database information
`corresponding to the reading of each tag at each successive point and the time of
`each reading; and
`
`a tool for modifying part of the information stored in the database as a
`function of other information stored in the database whereby the modified
`information is used to track the tags through the business process.
`
`Independent claim 19 embodies substantially the same concepts, and recites:
`
`19. A method of supplying products carrying tags wherein the products are handled in
`a supply chain during which the products and their tags pass several tag reading
`points, said method comprising:
`
`populating a database with information corresponding to the reading of each
`tag at each tag reading point and the time of each reading;
`
`modifying part of the information in the database as a function of other
`information in the database; and
`
`adjusting the supply chain as a function of the modified information.
`
`C.
`
`Prosecution History
`
`The Examiner of the ’715 patent allowed the application in the first Office Action
`
`without ever issuing an objection or rejection of the claims. See Ex. B at 99. The Examiner did
`
`not have Smith or Bauer before him during examination. See Ex. A, 1.
`
`IV.
`
`THE LEVEL OF ORDINARY SKILL IN THE ART
`
`A POSITA of the alleged invention of the ’715 patent would have held at least a
`
`bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or an
`
`equivalent or related field and at least two years of work experience or practical post-graduate
`
`work in the area of wireless tracking systems. Ex. C, ¶¶[008]-[013], [031]-[032]. In IPR2017-
`
`00787, the Board adopted this level of skill and the Patent Owner did not dispute it. D-2, 11.
`
`
`
`7
`
`Exhibit 2012 Page 12
`
`

`

`
`
`V.
`
`CLAIM CONSTRUCTION2
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`During examination, which includes ex parte reexamination, claims of an
`
`unexpired patent are given their broadest reasonable interpretation consistent with the
`
`specification. M.P.E.P. 2258(G) (“During reexamination ordered under 35 U.S.C. 304,
`
`and also during reexamination ordered under 35 U.S.C. 257, claims are given the
`
`broadest reasonable interpretation consistent with the specification and limitations in the
`
`specification are not read into the claims”) (citing In n re Yamamoto, 740 F.2d 1569, 222
`
`USPQ 934 (Fed. Cir. 1984)). Requester submits that, for the purposes of this Request, no
`
`explicit construction is needed for any claim term not addressed below.
`
`A.
`
` “Supply chain” (Claims 4, 5, 7, 9, 14, 15, 17, 19, 23, and 25)
`
`The broadest reasonable interpretation of “supply chain” includes inventory and
`
`inventory management because the ’715 patent describes inventory management as an aspect of
`
`supply chain management. D-4, ¶[020]. For example, claim 5 of the ’715 patent recites that
`
`“adjusting the supply chain comprises varying the supply of additional products to the supply
`
`chain” (emphasis added). Similarly, claim 7 recites that “adjusting the supply chain comprises
`
`adjusting the handling of the products during the supply chain as a function of the modified
`
`information in the database” (emphasis added). The specification of the ’715 patent similarly
`
`describes inventory management as a component of supply chain management. See, e.g., Ex. A,
`
`1:50-65 (explaining alleged invention may reduce “inventory (safety stock) by analyzing
`
`inventory movement to identify ways to reduce supply chain variability thereby enabling safety
`
`
`
`
`2 While additional claim terms may warrant construction, any such terms do not affect the
`analysis in this Request.
`
`
`
`8
`
`Exhibit 2012 Page 13
`
`

`

`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`stock reduction” (emphasis added)); see also id., 11:29-36; D-4, ¶[020]. Requester’s construction
`
`
`
`is consistent with Patent Owner’s allegations in the related litigation. See, e.g., E-3, 2-3 (alleging
`
`that supply chain management includes “keep[ing] track of its inventory”), 36 (sorting products),
`
`59 (computing the “quantity of products at a certain place in their respective lifecycles”).
`
`B.
`
`“A tool for modifying part of the information stored in the database as a
`function of other information stored in the database whereby the modified
`information is used to track the tags through the business process” (Claim
`11)
`
`
`
`As explained above, the Office applies the broadest reasonable interpretation standard to
`
`unexpired patent claims in reexamination. And for means-plus-function terms, “the ‘broadest
`
`reasonable interpretation’ that an examiner may give … is that statutorily mandated in paragraph
`
`six.” In re Donaldson Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994);
`
`M.P.E.P. § 2181. In the related litigation, the district court found that the claimed tool is such a
`
`means-plus-function term invoking 35 U.S.C. § 112, sixth paragraph. E-4, 65-69. Thus, under
`
`the district court’s rationale, the Office should construe the term as “the corresponding structure,
`
`material, or acts described in the specification and equivalents thereof,” 35 U.S.C. § 112(6), in
`
`applying the broadest reasonable interpretation standard.
`
`The district court found that the corresponding structure for performing the function of
`
`the claimed tool “is a processor configured to perform the steps of: (1) identifying cells where
`
`data is missing for a particular tag by a particular reader; (2) changing the information in the
`
`identified cell based on other information in other cells in the data structure; and (3) using the
`
`changed information to track the tags through the business process.” E-4, 68 (citing ’715 patent,
`
`6:43-55). The court also found that the function of the claimed tool is “modifying part of the
`
`information stored in the database as a function of other information stored in the database
`
`
`
`9
`
`Exhibit 2012 Page 14
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`whereby the modified information is used to track the tags through the business process.” E-4,
`
`68. For purposes of this Request only, Requester applies the district court’s construction of the
`
`claimed “tool” as the broadest reasonable interpretation:
`
`Function: The Court finds that the function is modifying part of the
`information stored in the database as a function of other
`information stored in the database whereby the modified
`information is used to track the tags through the business process.
`
`The Court finds that the corresponding structure is a processor
`configured to perform the steps of:
`
`(1) identifying cells where data is missing for a particular tag
`by a particular reader,
`
`(2) changing the information in the identified cell based on
`other information in other cells in the data structure, and
`
`(3) using the changed information to track the tags through the
`business process.
`
`E-4, 68-69. But even if the Examiner determines that a different construction should apply under
`
`the broadest reasonable interpretation standard, the Examiner’s construction cannot be narrower
`
`than the district court’ construction. As the Federal Circuit has explained, “[t]he broadest
`
`reasonable interpretation of a claim term may be the same as or broader than the construction of
`
`a term under the Philips standard. But it cannot be narrower.” Facebook, Inc. v. Pragmatus AV,
`
`LLC, 2014 WL 4454956, 4, 582 Fed. Appx. 864 (Fed. Cir. Sep. 11, 2014) (emphasis added).
`
`VI.
`
`IDENTIFICATION OF PRIOR ART AND EXISTENCE OF SUBSTANTIAL
`NEW QUESTIONS OF PATENTABILITY OF THE CLAIMS OF THE ’715
`PATENT
`
`A.
`
`Identification of the Prior Art
`
`The ’715 patent was filed as U.S. Application No. 11/069,788, on March 1, 2005. Ex. A,
`
`1. Reexamination of the ’715 patent is requested in view of the following patents that are prior
`
`
`
`10
`
`Exhibit 2012 Page 15
`
`

`

`
`
`art to the ’715 patent:
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
` PA-1 (Smith): U.S. Patent No. 7,312,752 to Smith et al. was filed October 18,
`2004 and issued on December 25, 2007, and thus qualifies as prior art under at
`least 35 U.S.C. § 102(e).
`
` PA-2 (Bauer): U.S. Patent No. 8,321,302 to Bauer et al. was filed January 23,
`2003 and issued November 27, 2012, and thus qualifies prior art under at least 35
`U.S.C. § 102(e).
`
`These prior art documents are listed on a form PTO/SB/08 filed concurrently herewith. Copies of
`
`all of the listed references are attached.
`
`Summary of the Substantial New Questions of Patentability
`
`B.
`
`Each of the above references is prior art to the ’715 patent, and the proposed ground
`
`rejection outlined below raises substantial new questions of patentability. For example, the
`
`Examiner of the ’715 patent allowed the application in the first action on the merits. Ex. B, 21.
`
`The Examiner only considered a handful of references, which did not include Smith or Bauer.
`
`Ex. A, 1.
`
`Moreover, the prior art in this Request addresses the reason the Examiner found the ’715
`
`patent claims allowable. In the 11/21/2006 Notice of Allowance, the Examiner found that
`
`“[t]racking tags at successive points in a business process is not new in the prior art,” but that
`
`“the prior art does not include a system that reads each tag in addition to populating a database
`
`with information corresponding to the reading of the tag and modifying part of the information
`
`as a function of other information and using this information to track the tags through a business
`
`process.” Ex. B, 29-30. As explained below, however, Smith discloses these features. If the
`
`Examiner had Smith during examination of the ’715 patent, the claims would not have issued.
`
`Thus, this Request presents an SNQ with respect to the original prosecution of the ’715 patent.
`
`
`
`11
`
`Exhibit 2012 Page 16
`
`

`

`
`
`Request for Ex Parte Reexamination
`Customer No. 22,852
`Attorney Docket No. 02100.0217-00000
`
`
`The Request also presents an SNQ with respect to IPR2017-00787. There, Requester
`
`filed an IPR petition with two grounds:
`
` Ground 1: Jones (PA-3) renders obvious claims 1, 2, 11, and 12 under 35 U.S.C.
`
`§ 103(a).
`
` Ground 2: Jones in view of Bauer (PA-2) renders obvious claims 4, 5, 7-9, 14,
`
`15, 17-20, 22, 23, 25, 26, and 29 under 35 U.S.C. § 103(a).
`
`See D-1 at i-iii. The Board instituted Ground 1 but denied Ground 2, and Ground 2 includes most
`
`of the ’715 patent claims challenged in this Request.
`
`The Board found that a POSITA would not have combined Jones and Bauer because
`
`“Jones is clear that [a] vehicle, not [a] package, is what is tracked.” D-2, 24. According to the
`
`Board, Jones does not describe the vehicles as “products in inventor