`Petitioner’sPetitioner’s
`
`DemonstrativesDemonstratives
`
`
`FedEx Corp. FedEx Corp.
`
`v.v.
`
`Intellectual Ventures II LLCIntellectual Ventures II LLC
`
`
`Case IPR2017‐00729Case IPR2017‐00729
`
`Patent 8,494,581Patent 8,494,581
`
`1
`
`
`
`
`
`Claims 1‐17 are obvious over Rappaport, DeLorme, & WrightClaims 1‐17 are obvious over Rappaport, DeLorme, & Wright
`
`Rappaport renders obvious claims 1‐15 of the ’581 patent
`– A skilled artisan would have been motivated to combine
`Rappaport’s features
`– Rappaport teaches or suggests each claim limitation
`
`Rappaport and DeLorme render obvious claim 16
`
`Rappaport and Wright render obvious claim 17
`
`Pet. at 16‐48, 57‐65; Reply at 1‐2.
`
`2
`
`
`
`
`
`Patent No. 8,494,581 ‐ OverviewPatent No. 8,494,581 ‐ Overview
`
`U.S. Patent No. 8,494,581
`System and Methods for Management of Mobile
`Field Assets via Wireless Handheld Devices
`
`’581 patent at 1:23‐31, Fig. 6; Petition at 4‐6.
`
`3
`
`
`
`
`
`Claim 1: A Method of Using a Handheld DeviceClaim 1: A Method of Using a Handheld Device
`
`’581 patent at Fig. 6 (annotated); Petition at 4‐7.
`
`4
`
`
`
`
`
`Claim 7: A Handheld DeviceClaim 7: A Handheld Device
`
`’581 patent at Fig. 6 (annotated); Petition at 4‐7.
`
`5
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`U.S. Patent No. 6,971,063
`System, Method, And Apparatus for Portable
`Design, Deployment, Test, and Optimization of a
`Communication Network
`
`Rappaport at cover, Fig. 9; Petition at 13‐15.
`
`6
`
`
`
`
`
`Obvious to Combine Rappaport’s EmbodimentsObvious to Combine Rappaport’s Embodiments
`
`Reasons it would have been obvious to combine Rappaport’s
`features:
`– Rappaport’s disclosed functionalities “are all aspects of the same
`handheld computer‐to‐server communication system.” Lav.
`Decl. ¶¶ 80‐82.
`– Consistent reference to a “handheld computer” to describe each
`functionality. Lav. Decl. ¶¶ 82‐83.
`– “[T]hose skilled in the art will recognize that the invention can be
`practiced with considerable variation . . . ” Rappaport at 19:9‐11;
`Lav. Decl. ¶¶ 84‐85.
`
`Petition at 13‐16; Lav. Decl. ¶¶ 76‐85; Rappaport at 19:9‐11, Fig. 1, 3, 9, 10.
`
`7
`
`
`
`
`
`Obvious to Combine Rappaport’s EmbodimentsObvious to Combine Rappaport’s Embodiments
`
`Patent Owner’s “practical limitations” argument is
`factually flawed:
`– Rappaport is not limited to its Palm IIIC embodiment
`
`. . .
`
`Rappaport
`
`Sharony Dep.
`
`Petition at 13‐16; Lav. Decl. ¶¶ 76‐85; Reply at 2‐9; Rappaport at 6:27‐41; Ex. 1012 at 9:15‐13:12.
`
`8
`
`
`
`
`
`Obvious to Combine Rappaport’s EmbodimentsObvious to Combine Rappaport’s Embodiments
`
`Patent Owner’s “practical limitations” argument is
`factually flawed:
`– Rappaport’s real‐time data collection and transfer precludes the
`Palm IIIC being the sole embodiment. Reply at 6.
`
`Rappaport
`
`Petition at 26‐27, 31‐32; I.D. at 15; Lav. Decl. ¶¶ 76‐85; Rappaport at 18:12‐18, 5:18‐23, Fig. 1, 3, 9, 10.
`
`9
`
`
`
`
`
`Obvious to Combine Rappaport’s EmbodimentsObvious to Combine Rappaport’s Embodiments
`
`Patent Owner’s “practical limitations” argument is
`legally flawed:
`
`“[A]ssertions that [one reference] cannot be incorporated in [another] are basically
`irrelevant, the criterion being not whether the references could be physically
`combined but whether the claimed inventions are rendered obvious by the teachings
`of the prior art as a whole .”
`
`In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (emphasis added).
`
`“[O]ur case law does not require that a particular combination must be the preferred,
`or the most desirable, combination described in the prior art in order to provide
`motivation for the current invention.”
`
`In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
`
`Reply at 3‐4, 7‐9.
`
`10
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “A method, comprising: using a handheld device to access an assessment
`program stored in a memory of a computing device located geographically
`remote from the handheld device”
`
`Rappaport
`
`Petition at 17‐20; Lav. Decl. ¶¶ 97‐107; Rappaport at 4:41‐60, 6:45‐53, 14:16‐54, 15:21‐53, 18:12‐18, Fig. 9.
`
`11
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “A method, comprising: using a handheld device to access an assessment
`program stored in a memory of a computing device located geographically
`remote from the handheld device”
`
`Rappaport contemplates modeling wireless networks in “any environment.”
`Reply at 11‐13.
`
`Reply at 11‐13; Rappaport at 3:31‐33, 3:54‐59.
`
`Rappaport
`
`12
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “the assessment program being configured to enable a field assessment
`in a specific industry” (Claim 1)
`
`Rappaport
`
`’581 Patent
`
`Petition at 26‐27; Lav. Decl. ¶¶ 113‐120; Rappaport at 3:31‐33, 3:40‐49, 5:18‐27, 18:12‐18; ’581 patent at 13:13‐18.
`
`13
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “collecting field data associated with the field assessment using the
`handheld device in response to the assessment program”
`
`Rappaport discloses collecting data about a wireless network and collecting
`measurements for its performance. Lav. Decl. ¶ 121.
`
`Petition at 13‐15, 27‐29; Lav. Decl. ¶¶ 121‐125; Rappaport at 4:41‐60, 12:14‐27, 18:12‐18, 18:67‐19:8.
`
`14
`
`Rappaport
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “collecting field data associated with the field assessment using the
`handheld device in response to the assessment program”
`
`Rappaport discloses collecting data based on an updated model, and repeating
`the cycle. Lav. Decl. ¶¶ 122‐124.
`
`Petition at 28‐29; Reply at 9‐10; Lav. Decl. ¶¶ 122‐124; Rappaport at 12:5‐27, 18:30‐50, 18:64–19:8.
`
`15
`
`Rappaport
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “collecting field data associated with the field assessment using the
`handheld device in response to the assessment program”
`
`No limitation on the type of user or specific input provided to initiate the
`“collecting.” Reply at 9‐11.
`Rappaport: wireless networks designed/optimized using on‐site inspection
`and inputs from remote server computer. Id.
`
`Rappaport
`
`Sharony Dep.
`
`Reply at 9‐11; Ex. 1012 at 106:16‐108:8; Rappaport at 18:64–19:8.
`
`16
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 1: “collecting field data associated with the field assessment using the
`handheld device in response to the assessment program”
`
`Rappaport is not limited to “initial network designs” because it discloses
`optimizing existing networks. Reply at 10‐11.
`
`Reply at 10‐11; Rappaport at 18:67–19:8; Ex. 1012 at 61:7‐62:4.
`
`17
`
`Sharony Dep.
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 7: “A handheld device, comprising: a communication module configured to
`download a field management program stored in a computing device located
`remotely from the handheld device”
`
`Rappaport renders this feature obvious. Lav. Decl. ¶¶ 158‐165; Reply at 13‐15.
`– (i) handheld computer software
`– (ii) wired and wireless communications
`– (iii) transferring applications generally
`
`Pet. at 37‐39; Reply at 13‐15; Lav. Decl. ¶¶ 158‐165; Rappaport at 6:45‐56, 8:31‐36, 8:64‐67.
`
`18
`
`Rappaport
`
`
`
`
`
`Ground 1: Claims 1‐15 are obvious over RappaportGround 1: Claims 1‐15 are obvious over Rappaport
`
`Claim 7: “A handheld device, comprising: a communication module configured to
`download a field management program stored in a computing device located
`remotely from the handheld device”
`
`Rappaport is not limited to transferring “large, comprehensive CAD program”
`– Rappaport: handheld computer program smaller than CAD program
`– Model size and data rate comparisons irrelevant
`
`Reply at 13‐15; Rappaport at 8:56‐67, 9:36‐41, 10:4‐17, 12:1‐11, 14:45‐54; Ex. 1012 at 94:16‐95:20; 96:7‐101:1.
`
`19
`
`Sharony Dep.
`
`
`
`
`
`Ground 2: Claim 16 is obvious over Rappaport and DeLormeGround 2: Claim 16 is obvious over Rappaport and DeLorme
`
`Claim 16: “The handheld device of claim 9, wherein the position module
`is further configured to provide navigable instructions to enable finding
`the geographic location of the field.”
`
`Rappaport and DeLorme render obvious claim 16 of the ’581 patent
`– A skilled artisan would have been motivated to combine Rappaport with
`DeLorme
`– Rappaport and DeLorme teach or suggest each claim limitation
`– Patent Owner does not separately argue the limitations of claim 9
`
`Pet. at 57‐59; Reply at 16‐18.
`
`20
`
`
`
`
`
`Overview of DeLormeOverview of DeLorme
`
`U.S. Patent No. 6,321,158
`Integrated Routing/Mapping Information
`
`DeLorme at cover, Fig. 1A1; Petition at 57‐59.
`
`21
`
`
`
`
`
`Ground 2: Claim 16 is obvious over Rappaport and DeLormeGround 2: Claim 16 is obvious over Rappaport and DeLorme
`
`Claim 16: “wherein the position module is further configured to provide
`navigable instructions to enable finding the geographic location of the field.”
`
`Petitioner provided reasons why it would have been obvious to combine
`Rappaport with DeLorme:
`– finding locations within a campus of buildings, locations to be serviced.
`Lav. Decl. ¶¶ 224‐225.
`– both disclose GPS were prevalent in handheld devices. Lav. Decl. ¶ 225.
`
`Pet. at 57‐59; Rappaport at 14:54‐64, 4:61‐64 , Fig. 2; Lav. Decl. ¶¶ 224‐226; DeLorme at Abstract; Fig. 1A4(a), (b).
`
`22
`
`DeLorme
`
`Rappaport
`
`
`
`
`
`Ground 2: Claim 16 is obvious over Rappaport and DeLormeGround 2: Claim 16 is obvious over Rappaport and DeLorme
`
`Claim 16: “wherein the position module is further configured to provide
`navigable instructions to enable finding the geographic location of the field.”
`
`DeLorme is not limited to traveling “long distances,” but contemplates
`shorter trips by “on foot.” Reply at 16‐17.
`
`Reply at 16‐17; DeLorme at 59:42‐60:23; Ex. 1012 at 190:23‐191:25, 194:23‐195:4.
`
`23
`
`DeLorme
`
`Sharony Dep.
`
`
`
`
`
`Ground 2: Claim 16 is obvious over Rappaport and DeLormeGround 2: Claim 16 is obvious over Rappaport and DeLorme
`
`Claim 16: “wherein the position module is further configured to provide
`navigable instructions to enable finding the geographic location of the field.”
`
`Patent Owner’s “practical reasons” are purely speculative. Reply at 17‐18.
`– Unknown from Rappaport and DeLorme:
`• the power and memory requirements of handheld device programs; and
`• the battery and memory capacity of handheld device.
`
`Rappaport
`
`DeLorme
`
`Reply at 17‐18.
`
`24
`
`
`
`
`
`Ground 2: Claim 16 is obvious over Rappaport and DeLormeGround 2: Claim 16 is obvious over Rappaport and DeLorme
`
`Claim 16: “wherein the position module is further configured to provide
`navigable instructions to enable finding the geographic location of the field.”
`
`Rappaport and DeLorme teach all elements of claim 16. Lav. Decl. ¶¶ 227‐228.
`
`DeLorme
`
`Rappaport
`
`Pet. at 59‐60; DeLorme at Abstract; Rappaport at 14:60‐64, 4:61‐5:3; Lav. Decl. ¶¶ 222‐228.
`
`25
`
`
`
`
`
`Ground 2: Claim 16 is obvious over Rappaport and DeLormeGround 2: Claim 16 is obvious over Rappaport and DeLorme
`
`Claim 9: “wherein the communication module is further configured to enable
`real‐time access to the field management program stored in the computing
`device”
`
`Rappaport teaches all elements of claim 9. Pet. at 43; Lav. Decl. ¶¶ 181‐182.
`
`Pet. at 43; Rappaport at 12:5‐11, 18:12‐18, 14:22‐26, 16:14‐19; Lav. Decl. ¶¶ 181‐182.
`
`26
`
`Rappaport
`
`
`
`
`
`Ground 3: Claim 17 is obvious over Rappaport and WrightGround 3: Claim 17 is obvious over Rappaport and Wright
`
`Claim 17: “The handheld device of claim 9, wherein the field management
`program includes an inventory program accessible from the handheld device and
`configured to enable access to inventory data stored in the computing device.”
`
`Rappaport and Wright render obvious claim 17 of the ’581 patent
`– A skilled artisan would have been motivated to combine Rappaport with
`Wright. Lav. Decl. ¶¶ 231‐240.
`– Rappaport and Wright teach or suggest each claim limitation. Lav.
`Decl. ¶¶ 241‐245.
`– Patent Owner does not separately argue the limitations of claim 9
`
`Pet. at 60‐65; Lav. Decl. ¶¶ 229‐245; Reply at 18‐21.
`
`27
`
`
`
`
`
`Overview of WrightOverview of Wright
`
`U.S. Patent No. 5,857,201
`Enterprise Connectivity to Handheld Devices
`
`Wright at cover, Fig. 2; Petition at 60‐65.
`
`28
`
`
`
`
`
`Ground 3: Claim 17 is obvious over Rappaport and WrightGround 3: Claim 17 is obvious over Rappaport and Wright
`
`Claim 17: “wherein the field management program includes an inventory
`program accessible from the handheld device and configured to enable access to
`inventory data stored in the computing device”
`
`Rappaport discloses a “field management program” that includes providing a
`bill of materials. Pet. at 61‐65; Lav. Decl. ¶¶ 230‐242.
`
`Pet. at 61‐65; Rappaport at 11:9‐14, 11: 17‐21; 11:9‐13, Fig. 2; Lav. Decl. ¶¶ 230‐242; Ex. 1008 at Abstract, Fig. 17‐18.
`
`29
`
`Petition
`
`Ex. 1008
`
`
`
`
`
`Ground 3: Claim 17 is obvious over Rappaport and WrightGround 3: Claim 17 is obvious over Rappaport and Wright
`
`Claim 17: “wherein the field management program includes an inventory
`program accessible from the handheld device and configured to enable access to
`inventory data stored in the computing device”
`
`Wright discloses an “inventory program” “to receive both work orders and inventory
`about particular components in the work orders.” Lav. Decl. ¶¶ 230‐31, 236.
`
`. . .
`
`Wright
`
`Pet. at 61‐65; Lav. Decl. ¶¶ 230‐31, 236; Wright at 1:7‐10, 2:24‐38, 4:61‐5:10, 7:1‐8, 6:46‐56, 7:45‐53, Fig. 2.
`
`30
`
`
`
`
`
`Ground 3: Claim 17 is obvious over Rappaport and WrightGround 3: Claim 17 is obvious over Rappaport and Wright
`
`Claim 17: “wherein the field management program includes an inventory
`program accessible from the handheld device and configured to enable access to
`inventory data stored in the computing device”
`
`It would have been obvious to incorporate the functionality of Wright’s “inventory
`program” into Rappaport’s “field management program” to “enabl[e] access to
`inventory data stored in the computing device.” Lav. Decl. ¶¶ 237‐240; Pet. at 64‐65;
`Reply at 18‐19.
`
`Pet. at 61‐65; Lav. Decl. ¶¶ 232‐245; Wright at 1:7‐10, 2:24‐38, 4:61‐5:10, 7:1‐8, 6:46‐56, 7:45‐53, Fig. 2.
`
`31
`
`Petition
`
`
`
`
`
`Ground 3: Claim 17 is obvious over Rappaport and WrightGround 3: Claim 17 is obvious over Rappaport and Wright
`
`Claim 17: “wherein the field management program includes an inventory
`program accessible from the handheld device and configured to enable access to
`inventory data stored in the computing device”
`
`Patent Owner’s expert testimony regarding the scope of the “computing device” with
`respect to Wright should be given no weight. Reply at 19‐21.
`
`Reply at 19‐21; Ex. 1013 at 42.
`
`32
`
`Ex. 1013
`
`
`
`
`
`Ground 3: Claim 17 is obvious over Rappaport and WrightGround 3: Claim 17 is obvious over Rappaport and Wright
`
`Claim 17: “wherein the field management program includes an inventory
`program accessible from the handheld device and configured to enable access to
`inventory data stored in the computing device”
`
`Wright discloses an inventory data stored in “the computing device.” Lav. Decl. ¶ 234.
`
`Patent Owner’s arbitrary line drawing
`
`Patent Owner Response
`Pet. at 65; Lav. Decl. ¶¶ 232‐245; Reply at 19‐21; POR at 37‐39.
`
`33
`
`
`
`
`
`Claim 1Claim 1
`
`’581 patent at claim 1.
`
`34
`
`
`
`
`
`Claim 2Claim 2
`
`’581 patent at claim 2.
`
`35
`
`
`
`
`
`Claim 3Claim 3
`
`’581 patent at claim 3.
`
`36
`
`
`
`
`
`Claim 4Claim 4
`
`’581 patent at claim 4.
`
`37
`
`
`
`
`
`Claim 5Claim 5
`
`’581 patent at claim 5.
`
`38
`
`
`
`
`
`Claim 6Claim 6
`
`’581 patent at claim 6.
`
`39
`
`
`
`
`
`Claim 7Claim 7
`
`’581 patent at claim 7.
`
`40
`
`
`
`
`
`Claim 8Claim 8
`
`’581 patent at claim 8.
`
`41
`
`
`
`
`
`Claim 9Claim 9
`
`’581 patent at claim 9.
`
`42
`
`
`
`
`
`Claim 10Claim 10
`
`’581 patent at claim 10.
`
`43
`
`
`
`
`
`Claim 11Claim 11
`
`’581 patent at claim 11.
`
`44
`
`
`
`
`
`Claim 12Claim 12
`
`’581 patent at claim 12.
`
`45
`
`
`
`
`
`Claim 13Claim 13
`
`’581 patent at claim 13.
`
`46
`
`
`
`
`
`Claim 14Claim 14
`
`’581 patent at claim 14.
`
`47
`
`
`
`
`
`Claim 15Claim 15
`
`’581 patent at claim 15.
`
`48
`
`
`
`
`
`Claim 16Claim 16
`
`’581 patent at claim 16.
`
`49
`
`
`
`
`
`Claim 17Claim 17
`
`’581 patent at claim 17.
`
`50
`
`
`
`
`
`CERTIFICATE OF SERVICE
`foregoing PETITIONER’S
`The undersigned
`certifies
`that
`the
`
`DEMONSTRATIVES was served electronically via e-mail pursuant to 37 C.F.R.
`
`§ 42.6(e) on April 19, 2018, in its entirety to all parties in the matter, as follows:
`
`Tim R. Seeley (Reg. No. 53,575)
`tim@intven.com
`
`James R. Hietala (Reg. No. 51,802)
`jhietala@intven.com
`INTELLECTUAL VENTURES
`3150 139th Avenue, SE
`Bellevue, WA 98005
`Tel: (425) 467-2300
`Fax: (425) 467-2350
`
`
`Andrew G. Heinz (Reg. No. 59,996)
`aheinz@desmaraisllp.com
`
`Kevin K. McNish (Reg. No. 65,047)
`kkm-ptab@desmaraisllp.com
`
`Alan S. Kellman (Reg. No. 46,822)
`akellman@desmaraisllp.com
`
`Lauren M. Nowierski (pro hac vice)
`lnowierski@desmaraisllp.com
`
`Adam D. Steinmetz (Reg. No. 65,555)
`asteinmetz@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Tel: (212) 351-3400
`Fax: (212) 351-3401
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/William Esper/
`William Esper
`Legal Assistant
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
