`
`Case IPR2017-00729
`U.S. Patent No. 8,494,581
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`
`
`FEDEX CORP.
`Petitioner
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`
`
`v.
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`
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`__________________
`
`
`
`Case IPR2017-00729
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`
`U.S. Patent No. 8,494,581
`TITLE: SYSTEM AND METHODS FOR MANAGEMENT OF MOBILE FIELD
`ASSETS VIA WIRELESS HANDHELD DEVICES
`Issue Date: July 23, 2013
`
`__________________
`
`DECLARATION OF JACOB SHARONY, Ph.D., MBA
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`Exhibit 2001 Page 1
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`IV Exhibit 2001
`FedEx v. IV
`Case IPR2017-00729
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`Case IPR2017-00729
`U.S. Patent No. 8,494,581
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`TABLE OF CONTENTS
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`Page
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`I. 
`INTRODUCTION ........................................................................................... 4 
`BASES FOR OPINIONS ................................................................................ 4 
`II. 
`III.  MATERIALS REVIEWED ............................................................................ 5 
`IV.  EDUCATION AND EXPERIENCE ............................................................... 5 
`V. 
`LEGAL STANDARDS ................................................................................... 8 
`VI.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 11 
`VII.  OVERVIEW OF THE ’581 PATENT .......................................................... 12 
`VIII.  OVERVIEW OF THE PRIOR ART ............................................................. 15 
`A.  U.S. Patent No. 6,971,063 To Rappaport ............................................ 15 
`B. 
`U.S. Patent No. 6,321,158 To DeLorme ............................................. 18 
`C. 
`U.S. Patent No. 5,857,201 To Wright ................................................. 19 
`D.  U.S. Patent No. 6,633,900 To Khalessi ............................................... 20 
`IX.  OPINIONS ..................................................................................................... 21 
`A.  A Person Of Ordinary Skill In The Art Would Not Have
`Combined The Various Embodiments Of Rappaport To Arrive
`At ’581 Patent Claims 1-15, 18, 19, 21, 23, And 24. .......................... 21 
`A Person Of Ordinary Skill In The Art Would Not Have
`Combined Rappaport With DeLorme To Arrive At ’581 Patent
`Claim 16. ............................................................................................. 24 
`A Person Of Ordinary Skill In The Art Would Not Have
`Combined Rappaport With Khalessi To Arrive At ’581 Patent
`Claim 20. ............................................................................................. 27 
`D.  Other Opinions .................................................................................... 29 
`
`B. 
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`C. 
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`Exhibit 2001 Page 2
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`Case IPR2017-00729
`U.S. Patent No. 8,494,581
`X.  APPENDIX A: THE CHALLENGED CLAIMS OF THE ’581
`PATENT ........................................................................................................ 32 
`XI.  APPENDIX B: DR. JACOB SHARONY CV .............................................. 36 
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`Exhibit 2001 Page 3
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`Case IPR2017-00729
`U.S. Patent No. 8,494,581
`I.
`INTRODUCTION
`
`I, Jacob Sharony, a resident of Dix Hills, New York over 18 years of age,
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`
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`
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`hereby declare as follows:
`
`1.
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`I have personal knowledge of all of the matters about which I testify
`
`in this declaration.
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`2.
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`Desmarais LLP retained me on behalf of Intellectual Ventures II LLC
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`(“Intellectual Ventures”) to provide my technical opinions and testimony about
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`U.S. Patent Number 8,494,581 to Barbosa et al. (“the ’581 Patent”). I understand
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`that FedEx Corporation (“the Petitioner”) is challenging the validity of claims 1-24
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`of the ’581 Patent. I will refer to those claims in this declaration as the “challenged
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`claims.” I have provided the full text of the challenged claims in Appendix A to
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`my declaration.
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`3.
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`I am being compensated for my work at my usual consulting rate in
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`this proceeding and receiving reimbursement for expenses incurred in the course of
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`my work. My compensation is not contingent in any way on either the opinions I
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`have reached and will reach, or on the outcome of this case.
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`II. BASES FOR OPINIONS
`4.
`I have reviewed and considered the documents and other materials
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`listed below in Section III in light of my specialized knowledge provided by my
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`education, training, research, and experience, as summarized in Section IV and
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`Exhibit 2001 Page 4
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`described in further detail in my CV, which is provided as Appendix B. My
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`analysis of those materials, combined with the specialized knowledge that I have
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`obtained over the course of my education and career, form the bases for my
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`opinions in this declaration.
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`III. MATERIALS REVIEWED
`5.
`I have reviewed and analyzed the parties’ papers and exhibits in this
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`proceeding, including the ’581 patent, its prosecution history, the Petition, and the
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`exhibits cited by Petitioner. I have also reviewed and analyzed the exhibits cited in
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`this declaration.
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`IV. EDUCATION AND EXPERIENCE
`6.
`I have 25 years of experience working in mobile and wireless
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`technology, which has resulted in over 50 issued patents and numerous
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`publications in scientific journals and conferences. I have also served on various
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`government expert panels, including for the National Science Foundation and
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`National Institutes of Health.
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`7.
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`Since 2010, I have been an Adjunct Professor in Electrical
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`Engineering at Columbia University, teaching graduate level courses on advanced
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`wireless technologies including in the areas of wireless sensing technology,
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`mmWave communications, and applications for 5G wireless networks and
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`systems.
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`Exhibit 2001 Page 5
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`8.
`I received a Bachelor’s Degree and Master’s Degree (1984) in
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`Electrical Engineering from Tel Aviv University. I have M.Phil. (1991) and Ph.D.
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`(1993) Degrees in Electrical Engineering from Columbia University. I also have
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`an MBA Degree (1989) from Tel Aviv University.
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`9.
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`After obtaining my Ph.D., I led the advanced mobile networking
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`group at BAE Systems, developing tactical mesh-based wireless network systems
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`for the Department of Defense. I also conducted research and development in
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`advanced mobile and wireless networks. My work resulted in several issued
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`patents including patents such as U.S. Patent No. 5,652,751 titled “Architecture for
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`mobile radio networks with dynamically changing topology using virtual subnets,”
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`and U.S. Patent No. 5,742,593 titled “On-line distributed TDMA/FDMA/CDMA
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`link assignment in mobile radio networks with flexible directivity.”
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`10. From 1997-2005, I held various positions at Motorola (formerly
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`Symbol Technologies) enterprise mobility division.
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` While working at
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`Motorola/Symbol I gained substantial experience in application-specific mobile
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`device, and wireless networking and architecture solutions in several vertical
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`applications, e.g., transportation and logistics, healthcare, warehousing, retail,
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`education, among others. As Senior Director, Research and Development, I
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`initiated and led several research and development programs in wireless LAN
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`technologies including mobile device management and security. As Senior
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`Director, Technology Strategy and Development, I was responsible for the
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`research and development of new mobile applications for delivering multimedia-
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`rich content to mobile devices connected over heterogeneous networks. That work
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`resulted in several U.S. patents, including U.S. Patent No. 7,778,649 titled “System
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`and method for asset location in wireless networks” and U.S. Patent No. 6,925,094
`
`titled “System and method for wireless network channel management.”
`
`11.
`
`In 2004, I founded Mobius Consulting, a consulting firm providing
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`professional services in mobile wireless strategy, technologies, systems, and
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`applications, including enterprise mobility, wireless communication networks,
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`mobile embedded devices, device management, and mobile applications and
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`services. In this capacity, I have worked with many companies in the mobile and
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`wireless ecosystem including service providers and operators, equipment vendors,
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`and semiconductor companies. Since founding Mobius Consulting, I have worked
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`with many enterprises interested in deploying mobile and wireless solutions in
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`order to become more productive, efficient, and cost effective. These solutions
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`spanned numerous industry sectors and involved various mobile and wireless
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`technologies including 3G/4G Cellular, Wi-Fi, Bluetooth, ZigBee, and RFID.
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`Exhibit 2001 Page 7
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`12.
` From 2008 to present, I have performed numerous RF site-surveys
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`on the enterprise level, including for the Ford Foundation and the Plaza Hotel.1 I
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`performed these measurements using a laptop equipped with a USB dongle for
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`measuring RF signal strength and performance, as is commonly done in the
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`industry. Further, the laptops I used to perform the surveys were running Ekahau
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`or AirMagnet site-survey and planning software.
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`13.
`
`In addition to the summary I have provided here, I describe my
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`education and experience in greater detail in my CV, Appendix B.
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`V. LEGAL STANDARDS
`14.
`Intellectual Ventures’ attorneys have informed me that Petitioner in
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`this proceeding is asserting that the challenged claims are unpatentable because
`
`they are “obvious.” Intellectual Ventures’ attorneys have explained to me the legal
`
`standards that apply to Petitioner’s obviousness challenge. My understanding of
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`those standards is described below. I am not an attorney, and I do not have formal
`
`1 RF site-survey is highly recommended before and after deploying a wireless
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`network (e.g., Wi-Fi) in every floor of a building. The main goal of a pre-
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`deployment RF site-survey is to determine how many access points are required
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`and their location on the floor for a desired performance level. It is also used in
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`post-deployments to detect any performance issues (e.g., coverage holes) once the
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`network is installed.
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`Exhibit 2001 Page 8
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`training in the law regarding patents. I have used my understanding of the
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`following legal principles set forth in this section in reaching my opinions.
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`15.
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`I am informed that a claim is unpatentable as obvious if the
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`differences between the claim and the prior art are such that the subject matter as a
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`whole would have been obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which the subject matter pertains at the time of
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`the invention.
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`16.
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`I am informed that obviousness is a question of law based on
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`underlying factual issues. Those factual issues are: (1) the scope and content of the
`
`prior art; (2) differences between the prior art and the claimed invention as a
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`whole; (3) the level of ordinary skill in the art at the time the invention was made;
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`and (4) objective indicia of non-obviousness.
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`17.
`
`I am informed that an obviousness case based on modifying or
`
`combining one or more prior art references requires the petitioner to show that a
`
`person of ordinary skill in the art would have had a reason to modify or combine
`
`those prior art references to achieve the claimed invention.
`
`18.
`
`I am informed that example reasons to combine or modify prior art
`
`references that may support a conclusion of obviousness include: combining prior
`
`art elements according to known methods to yield predictable results; simple
`
`substitution of one known element for another to obtain predictable results; use of
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`a known technique to improve similar techniques; combining elements in a way
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`that would be “obvious to try” where there exists a finite number of identified,
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`predictable solutions and a reasonable expectation of success; design incentives or
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`market forces that would prompt variations of known work if those variations were
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`predictable to a person of ordinary skill in the art; a teaching, suggestion, or
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`motivation in the prior art to combine or modify prior art references to arrive at the
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`claimed subject matter; and optimization of a recognized result-effective variable
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`by a person of ordinary skill in the art if that optimization would be routine.
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`19.
`
`I am informed that there are also reasons that would prevent a person
`
`of ordinary skill in the art from modifying or combining prior art references.
`
`Examples of prior art references that a person of ordinary skill in the art would not
`
`combine or modify to achieve the claimed invention include: prior art references
`
`that teach away from one another; prior art references that teach away from the
`
`claimed invention; prior art references whose combination or modification would
`
`change the principle of operation of either prior art reference; and prior art
`
`references whose combination or modification would render them inoperable or
`
`unsuitable for their intended purpose.
`
`20.
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`I am informed that in determining whether a person of ordinary skill
`
`in the art would combine or modify prior art references, the entire contents of each
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`
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`Exhibit 2001 Page 10
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`prior art reference must be considered, including parts of those references that
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`would suggest against the proposed combination or modification.
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
`21. As I mentioned above, I have been informed by Intellectual Ventures’
`
`attorneys that obviousness is considered from the perspective of a person of
`
`ordinary skill in the art at the time of the invention.
`
`22.
`
`I am informed that several factors are considered in determining the
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`level of ordinary skill in the art, including the educational level of active workers
`
`in the field, the types of problems encountered in the art, the nature of prior art
`
`solutions to those problems, prior art patents and publications, the activities of
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`others, the sophistication of the technology involved, and the rapidity of
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`innovations in the field.
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`23.
`
`I have been informed by Intellectual Ventures’ attorneys that the ’581
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`patent has an effective filing date on or around September 18, 2000. Accordingly,
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`my analysis in this case is based on the perspective of a person of ordinary skill in
`
`the art as of around that time.
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`24.
`
`I am informed that Petitioner has asserted that a person of ordinary
`
`skill at the time of the invention of the ’581 patent would have held at least a
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`Bachelor’s Degree in Electrical Engineering, Computer Engineering, Computer
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`Science, or the equivalent, and two or more years of industry experience in the
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`field of mobile communications, or the academic equivalent thereof. Petitioner has
`
`asserted that such a person would have been familiar with the standard
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`components, methods, and protocols used at the time of the invention to
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`communicate between handheld devices and a server. 2
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`25. At this time, I do not make any assertions regarding whether
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`Petitioner’s asserted level of skill in the art is correct. Rather, solely for purposes
`
`of this declaration, I have adopted Petitioner’s proposed level of skill in the art.
`
`VII. OVERVIEW OF THE ’581 PATENT
`26. The ’581 patent is titled “System and Methods for Management of
`
`Mobile Field Assets via Wireless Handheld Devices.” I observe that the ’581
`
`2 Petitioner’s expert, Dr. Tal Lavian, proposes a slightly different definition of a
`
`person of ordinary skill in the art. In Dr. Lavian’s opinion, a person of ordinary
`
`skill in the art at the time of the invention of the ’581 patent would have held a
`
`bachelor’s degree in electrical engineering, computer engineering, computer
`
`science, or the equivalent, and had at least two years of industry experience in the
`
`field of mobile communications. In his opinion, a person at this ordinary level of
`
`experience would have been familiar with the typical components, processes, and
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`protocols used at the time of the invention of the ’581 patent to communicate
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`between handheld/mobile devices and a server. The distinctions between
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`Petitioner’s and Dr. Lavian’s proposed definitions do not affect my opinions.
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`Exhibit 2001 Page 12
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`patent was issued on July 23, 2013, and that the related provisional application was
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`filed on September 18, 2000.
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`27. At a high level, the ’581 patent teaches empowering a mobile work
`
`force dispersed across a wide area. The ’581 patent enables enterprises that want
`
`to be more productive, efficient, and cost effective by using the methods and
`
`devices it describes.
`
`28. The ’581 patent generally relates to providing “systems and methods
`
`for managing assets in the field (e.g., personnel, equipment, and/or inventory) via
`
`handheld devices.” (’581 patent, at 3:47-45.) Specifically, the purpose of the ’581
`
`patent is to allow a mobile workforce to “efficiently and accurately operate in the
`
`field,” resulting in the completion of various tasks that are vital for the enterprise.
`
`(’581 patent, at 3:33-41.)
`
`29. The ’581 patent improves efficiency and accuracy of a mobile
`
`workforce by providing “field operators portable access to industry specific field
`
`data management programs,” “solutions for assisting personnel in finding and
`
`conducting field operations,” and “instructions . . . to: collect data at the field
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`location,” among other developments over earlier systems and apparatuses. (’581
`
`patent, at 3:48-54, 4:7-10.) The ’581 patent specifically describes providing
`
`instructions to field operators, thus limiting their decision making and avoiding
`
`potential errors. (’581 patent, at 12:15-31.)
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`30. As one example, the ’581 patent teaches a method of conducting a
`
`field operation using a handheld data management device that can include the steps
`
`of:
`
`obtaining directions to a field location using positioning
`and navigation means provided through said handheld
`data management device; starting a program associated
`with the field problem; providing specific information
`required by the field data management program and
`related to the field problem; analysis of said specific
`information by said handheld data management device;
`and rendering output by said handheld data management
`device for use in support of said field problem.
`(’581 patent, at 4:38-46.)
`
`31. Furthermore, the ’581 patent allows the enterprise as a whole to
`
`become mobile by enabling numerous workers distributed over a wide area in the
`
`field to capture field data at the point of activity (where it matters the most). (’581
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`patent, at 11:63-12:7.)
`
`32.
`
`In addition, the ’581 patent allows the field workers to provide the
`
`handheld device’s location information along with their assessments back to the
`
`enterprise computing system throughout the course of the field assessment. (’581
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`patent, at 10:28-30.)
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`VIII. OVERVIEW OF THE PRIOR ART
`A.
`U.S. Patent No. 6,971,063 To Rappaport
`
`
`
`
`33. U.S. Patent Number 6,971,063 to Rappaport (“Rappaport”) is titled
`
`“System, Method, and Apparatus for Portable Design, Deployment, Test, and
`
`Optimization of a Communication Network.” I observe that Rappaport was issued
`
`on November 29, 2005, and that the application was filed on July 28, 2000.
`
`34. Rappaport is specifically directed to solving issues in designing and
`
`optimizing communication network performance within local wired and/or
`
`wireless environments. (Rappaport, at 1:9-18.) Local wired or wireless
`
`environments include, for example, an office occupying one or more floors in a
`
`building or an organization or college occupying several multi-floored buildings in
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`a campus of buildings. As I explain above in Section IV, I have substantial
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`experience in designing and optimizing wired and wireless network architectures
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`for those types of environments, including at the Plaza Hotel in New York City.
`
`35. Rappaport explains that previously known design and optimization
`
`systems “do not address the complexities of the three dimensional world of in-
`
`building systems, which is significantly more difficult to model and visualize due
`
`to multiple stories or unique three dimensional features.” (Rappaport, at 3:19-25.)
`
`Rappaport’s system attempts to address those apparent disadvantages and improve
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`the design and optimize installation of those local wired and wireless networks.
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`36. To that end, Rappaport describes a system utilizing a “hand-held,
`
`portable computer” which provides the technicians with access to “all or a portion
`
`of a three dimensional model” of the building in which a local wired or wireless
`
`network is being installed. (Rappaport, at 6:41-48.) Rappaport explains that using
`
`his system “engineer[s] may take the portable hand held computer into the field,
`
`and make alterations to the components, position of the components, orientation of
`
`the components, etc. based on on-site inspection.” (Rappaport, at Abstract.)
`
`Rappaport describes off-the-shelf portable handheld computers such as the Palm
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`IIIc from Palm Computing Inc., other PDAs running the PalmOS operating system,
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`Pocket PCs running the Windows CE OS from Microsoft, Inc., and tablet
`
`computers running Windows, Linux, or Be operating systems. (Rappaport, at
`
`6:27-41.)
`
`37. Like many systems designed to install and optimize local wired or
`
`wireless networks at that time (and even today), Rappaport’s system requires a
`
`trained professional (e.g., an engineer or technician)—preferably familiar with
`
`SitePlanner®3 or similar computer aided design (“CAD”) software—to use the
`
`3 I understand that SitePlanner® software is CAD software from Wireless Valley
`
`Communications, Inc. Wireless Valley Communications, Inc. is or was Mr.
`
`Rappaport’s company. I observe that Wireless Valley Communications, Inc. is the
`
`assignee of the Rappaport reference.
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`system to design a wireless network and optimize network coverage and
`
`performance. For example, the SitePlanner® program, as described in Rappaport,
`
`does not provide an average person with instructions for how to properly design
`
`and/or measure network coverage and performance. SitePlanner® instead assumes
`
`that the user is a professional that has been trained to design the communication
`
`network. I know this based on my own experience designing local networks using
`
`CAD software, as well as the disclosure in Rappaport. (See, e.g., Rappaport, at
`
`Abstract, 18:30-36.) Indeed, when using such software, the engineer or technician
`
`using the software has multiple degrees of freedom to choose from when designing
`
`a communication network, e.g., what components to select and where to place
`
`them in the network design. (See Rappaport, at 10:55-63, 18:30-36) (“[T]he
`
`technician charged with deploying or optimizing the communications network is
`
`provided with a hand-held computer from which he can view the components
`
`contemplated for the system, and can, within his or her discretion select alternative
`
`components for use in the system.”) For example, in my experience, a trained
`
`professional is required for making determinations about where to put access
`
`points to avoid interference, reflections, and attenuations.
`
`38.
`
`In Rappaport’s system, the electronic database provides to the
`
`handheld device “WPD files” containing three dimensional models of the physical
`
`environment and design information (e.g., 3-D representations of a multi-floored
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`Exhibit 2001 Page 17
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`building and campuses of multi-floored buildings) stored as CAD models in an
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`electronic database. (Rappaport, at 3:54-56, 7:1-6.) Rappaport describes those
`
`WPD files as using binary “opcodes and operands.” (Rappaport, at 8:3-30.) Given
`
`the limited memory of the portable handheld computers in 2000, Rappaport also
`
`explains that those binary WPD files can be even further compressed using the
`
`LZ77 compression technique. (Rappaport, at 8:3-30.)
`
`B.
`
`U.S. Patent No. 6,321,158 To DeLorme
`
`39. U.S. Patent Number 6,321,158 to DeLorme (“DeLorme”) is titled
`
`“Integrated Routing/Mapping Information.” I observe that DeLorme was issued on
`
`November 20, 2001, and that the application was filed on August 31, 1998.
`
`40. DeLorme discloses a system for “travel planning, travel guidance, and
`
`recording travel locations and paths during business or recreational use,
`
`particularly in regards to the linkage of small, memory-limited computing systems
`
`with personal and/or mainframe computers.” (DeLorme, at 1:22-27.) For
`
`example, Fig. 1N shows DeLorme’s Map-N-Go Travel Plan, including various
`
`points of interest along the way, between Burlington, VT and Montpelier, VT.
`
`(DeLorme, at Fig. 1N.) Points of interest may include restaurants, hotels, and
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`other tourist attractions. (DeLorme, at Figs. 1B-C, 45:23-31.)
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`41. DeLorme also discloses that portable devices linked with the personal
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`and/or mainframe computers “may be optionally equipped with, or connected to,
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`portable Global Positioning System (GPS) or [an] equivalent position sensing
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`device.” (DeLorme, at Abstract.)
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`C.
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`U.S. Patent No. 5,857,201 To Wright
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`42. U.S. Patent Number 5,857,201 to Wright (“Wright”) is titled
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`“Enterprise Connectivity to Handheld Devices.” I observe that Wright was issued
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`on January 5, 1999, and that the application was filed on June, 18, 1996.
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`43. Wright generally relates to a “client/server system and method to
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`access existing enterprise data sources on an occasional basis.” (Wright, at
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`Abstract.)
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`44. Wright attempts to address an alleged need in the prior art for “a
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`client/server architecture that supports occasional connections between low
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`performance, low overhead, mobile computing devices and existing enterprise
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`computing systems.” (Wright, at 30-33.)
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`45. As one example, Wright addresses this problem through disclosing
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`access to an inventory service where “[a]n inventory service 192 [that] provides
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`the UpdateInventory task 208 and InterrogateInventory task 210, and is connected
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`to an inventory data source 182.” (Wright, at 7:51-53.) Wright provides that a
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`server “serves as a gateway between the [clients] and enterprise data sources,” such
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`as inventory data source 182, in providing the ability “to link hardware devices…to
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`access existing enterprise data sources on an occasional basis.” (Wright, at 6:22-
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`30.)
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`D.
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`U.S. Patent No. 6,633,900 To Khalessi
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`46. U.S. Patent Number 6,633,900 to Khalessi (“Khalessi”) is titled
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`“Mobile Crew Management System for Distributing Work Order Assignments to
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`Mobile Field Crew Units.” I observe that Khalessi was issued on Oct. 14, 2003,
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`and that the related PCT and provisional applications were filed on Jan. 8, 1999
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`and January 9, 1998, respectively. I also note that Khalessi has been asserted
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`against FedEx Corp. in the related case captioned Intellectual Ventures II LLC v.
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`FedEx Corp., No. 2:16-cv-00980 (E.D. Tex. filed Aug. 31, 2016).
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`47. Khalessi generally relates to “management information systems and
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`more particularly to automated systems and methods for work order assignment
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`and field communication.” (Khalessi, at 1:12-15.)
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`48.
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` Khalessi explains “[b]usinesses such as utility companies which
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`deploy numerous employees over a wide geographic area to service a dispersed
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`infrastructure or client base are faced with the particularly cumbersome task of
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`communicating work assignments and related data to personnel that are dispersed
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`in the field.” (Khalessi, at 1:18-23.)
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`49. As one example, Khalessi addresses this problem by disclosing that
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`“[f]ield personnel can use a mobile field unit to access the enterprise computing
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`system and gather information about the work order as well as to update the
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`enterprise computing system with details regarding the status of the work order.”
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`(Khalessi, at 1:42-45.)
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`IX. OPINIONS
`A.
`A Person Of Ordinary Skill In The Art Would Not Have
`Combined The Various Embodiments Of Rappaport To Arrive At ’581
`Patent Claims 1-15, 18, 19, 21, 23, And 24.
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`50.
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`In reading Rappaport, a person of ordinary skill in the art would have
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`understood that Rappaport was disclosing at least four distinct embodiments for
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`achieving the purpose of its invention—a system for designing and measuring
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`communication network performance within buildings pre- and post-wireless
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`network deployment. One embodiment includes a portable handheld computer, as
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`depicted in Fig. 1, which includes a display, user interface (UI) buttons, and a
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`serial port for communication. (Rappaport, at 6:27-7:6, Fig. 1.) A second
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`embodiment, as depicted in FIG. 3, includes a portable computer, on a cradle, and
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`a server computer, where the cradle is connected via wire (a serial port) to a server
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`computer for exchanging data. (Rappaport, at 9:27-48, Fig. 3.) FIG. 9 depicts a
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`third embodiment, which includes a portable handheld computer operating in the
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`field and communicating with a server computer through an interface box.
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`(Rappaport, at 14:16-16:55, Fig. 9.) And a fourth embodiment is depicted in FIG.
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`10, which includes a portable handheld computer connected via wire with a
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`measurement tool. (Rappaport, at 16:56-18:18, Fig. 10.)
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`51.
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`In my opinion, just because Rappaport represents the handheld
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`devices through similar pictures does not provide a reason for a person of ordinary
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`skill in 2000 to be motivated to combine the different embodiments. As just one
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`example, a person of skill in the art would not have been motivated to combine the
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`embodiments illustrated in Figs. 9 and 10 of Rappaport, even though the handheld
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`devices are similarly depicted in pictures.
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`52. Combining the embodiments of Figs. 9 and 10 is impractical and
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`counterintuitive because wired/wireless connections between
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`the handheld
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`computer and a remote server computer would not be guaranteed. This is
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`especially true when performing network measurements and design from inside a
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`building (which
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`is what Rappaport relates
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`to).
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` For example,
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`if an
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`engineer/technician is performing a pre-deployment RF site-survey or design
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`inside a building for a greenfield installation (in a place where no network exists
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`yet), then the engineer or technician would be unable to report network
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`performance information because no wireless connection currently exists. In this
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`instance, it would be preferable to have a standalone computer performing the RF
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`site-survey or design and not relying on a server computer.
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`53. Furthermore, relying on cellular wide area networks within large
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`buildings to communicate with a remote server would not be practical in the year
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`2000 for at least two reasons. First, there would be many locations in a multi-
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`floored building that would have poor or no cellular reception because of weak
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`cellular signal inside the building due to penetration loss. Second, any cellular
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`reception that may have been present would not have been adequate for expedited
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`exchange of the CAD files described in Rappaport with a remote computing
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`device. Sending a CAD fi